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167 U.S. 224
AMERICAN BELL TEL. CO. et al.
May 10, 1897
[167 U.S. 224, 226] On February 1, 1893, the United States filed in the circuit court of the United States in and for the district of Massachusetts a bill in equity against the American Bell Telephone Company and Emile Berliner, praying a decree to set aside and cancel patent No. 463,569, issued on November 17, 1891, to the telephone company, as assignee of Berliner. Upon amended pleadings and proofs the circuit court on January 3, 1895 (65 Fed. 86), entered a decree as prayed for. On appeal to the court of appeals for the First circuit, this decree was on May 18, 1895, reversed, and a decree entered directing a dismissal of the bill. 33 U. S. App. 236, 15 C. C. A. 569, and 68 Fed. 542. Thereupon the United States took an appeal to this court. A motion was made to dismiss the appeal for want of jurisdiction, which was denied ( 159 U.S. 548 , 16 Sup. Ct. 69), and the case was argued upon the merits.
As stated by counsel for the appellant, four grounds for relief were presented and discussed in the circuit court. Those grounds are:
By that court only the first two were considered, and the argument in the court of appeals was confined to those questions.
R. S. Taylor and Causten Browne, for appellant.
[167 U.S. 224, 237] Frederick P. Fish and Joseph H. Choate, for appellees.
Mr. Justice BREWER, after stating the facts in the foregoing language, delivered the opinion of the court.
This is a suit by the United States to set aside a patent for an invention as wrongfully issued. It is, we believe, the first [167 U.S. 224, 238] case in this court in which upon proofs such an application has been presented. The right of the United States to maintain such a suit was affirmed in U. S. v. American Bell Tel. Co., 128 U.S. 315 , 9 Sup. Ct. 90. The question now is whether upon the facts disclosed in this record the relief prayed for ought to be awarded. It becomes, therefore, a matter of moment to determine under what circumstances and upon what conditions the United States are entitled to have a patent, issued in due course of law, set aside and canceled.
Many cases have come to this court in which patents for lands have been sought to be set aside, and the rules controlling such suits have been frequently considered. Such decisions will naturally throw light upon the question here presented, though before adverting to them it may be well to note the difference between patents for land and patents for inventions. While the same term is used, the same grantor is in each, and, although each vests in the patentee certain rights, yet they are not in all things alike. The patent for land is a conveyance to an individual of that which is the absolute property of the government, and to which, but for the conveyance, the individual would have no right of title. It is a transfer of tangible property; of property in existence before the right is conveyed; of property which the government has the full right to dispose of as it sees fit, and may retain to itself or convey to one individual or another; and it creates a title which lasts for all time. On the other hand, the patent for an invention is not a conveyance of something which the government owns. It does not convey that which, but for the conveyance, the government could use and dispose of as it sees fit, and to which no one save the government has any right or title except for the conveyance. But for the patent the thing patented is open to the use of any one. Were it not for this patent, any one would have the right to manufacture and use the Berliner transmitter. It was not something which belonged to the government before Berliner invented it. It was open to the manufacture and use of any one, and any one who knew how could contrive, manufacture, and use the instrument. It conveyed to Berliner, so far as [167 U.S. 224, 239] respects rights in the instrument itself, nothing that he did not have theretofore. The only effect of it was to restrain others from manufacturing and using that which he invented. After his invention he could have kept the discovery secret to himself. He need not have disclosed it to any one. But in order to induce him to make that invention public, to give all a share in the benefits resulting from such an invention, congress, by its legislation made in pursuance of the constitution, has guarantied to him an exclusive right to it for a limited time; and the purpose of the patent is to protect him in this monopoly, not to give him a use which, save for the patent, he did not have before, but only to separate to him an exclusive use. The government parted with nothing by the patent. It lost no property. Its possessions were not diminished. The patentee, so far as a personal use is concerned, received nothing which he did not have without the patent, and the monopoly which he did receive was only for a few years. So the government may well insist that it has higher rights in a suit to set aside a patent for land than it has in a suit to set aside a patent for an invention. There are weightier reasons why the government should not be permanently deprived of its property, through fraudulent representations or other wrongful means, than there are for questioning the validity of a temporary monopoly or depriving an individual of the exclusive use for a limited time of that whose actual use he claims to have made possible, and which, after such time, will be open and free to all. Bearing in mind this distinction, let us inquire upon what conditions the government may maintain a suit to set aside a patent for land.
These suits may be conveniently grouped in three classes: First, where, the government being the only party interested, the patent is charged to have been obtained by fraud in representations or conduct; second, where the land by appropriate reservation is not subject to patent, but is, nevertheless, erroneously patented; third, where the land, though subject to patent in the ordinary administration of the land office, is patented to the wrong person either through fraud or by reason of mistake or inadvertence. In the first class are the following [167 U.S. 224, 240] cases; U. S. v. Hughes, 11 How. 552; U. S. v. Throckmorton, 98 U.S. 61 ; U. S. v. Atherton, 102 U.S. 372 ; Moffat v. U. S., 112 U.S. 24 , 5 Sup. Ct. 10; U. S. v. Minor, 114 U.S. 233 , 5 Sup. Ct. 836; Maxwell Land-Grant Case, 121 U.S. 325 , 7 Sup. Ct. 1015; Colorado Coal & Iron Co. v. U. S., 123 U.S. 307 , 8 Sup. Ct. 131; U. S. v. San Jacinto Tin Co., 125 U.S. 273 , 8 Sup. Ct. 850; U. S. v. Iron Silver Min. Co., 128 U.S. 673 , 9 Sup. Ct. 195; U. S. v. Hancock, 133 U.S. 193 , 10 Sup. Ct. 264; U. S. v. Trinidad Coal & Coking Co., 137 U.S. 160 , 11 Sup. Ct. 57; U. S. v. Budd, 144 U.S. 154 , 12 Sup. Ct. 575; San Pedro & Ca non del Agua Co. v. U. S., 146 U.S. 120 , 13 Sup. Ct. 94. In the second are these: U. S. v. Stone, 2 Wall. 525; Leavenworth, etc., R. Co. v. U. S. 92 U.S. 733 ; McLaughlin v. U. S., 107 U. S.526, 2 Sup. Ct. 802; Western Pac. R. Co. v. U. S., 108 U.S. 510 , 2 Sup. Ct. 802; Mullan v. U. S., 118 U.S. 271 , 6 Sup. Ct. 1041. And in the third the following: Hughes v. U. S., 4 Wall. 232; U. S. v. Beebe, 127 U.S. 338 , 8 Sup. Ct. 1083; U. S. v. Marshall Silver Min. Co., 129 U.S. 579 , 9 Sup. Ct. 343; U. S. v. Missouri, K. & T. Ry. Co., 141 U.S. 358 , 12 Sup. Ct. 13; U. S. v. Southern Pac. R. Co., 146 U.S. 570 , 13 Sup. Ct. 152.
The second and third classes are not paralleled in this case, for it is not claimed that there was no invention, or that the patent issued to the wrong party. The decisions in those classes need not be considered. The first class comprises all cases in which the land, though subject to patent and therefore within the jurisdiction of the land department, was charged to have been patented in consequence of fraudulent representations or conduct on the part of the patentee. The representations may have been as to the matter of right or the matter of quantity. The patentee may have been entitled to no land, or to less, or a different tract than that patented. In any event, fraud was the basis of the relief sought, and as fraud, actual or constructive, in the issue of the patent, is the burden of this suit, we will quote from the opinions in some of these cases. In the Maxwell Land-Grant Case, Mr. Justice Miller, delivering the opinion of the court, said (page 381, 121 U. S., and page 1029, 7 Sup. Ct.):
In Colorado Coal & Iron Co. v. U. S., Mr. Justice Matthews, after quoting part of the foregoing, adds (page 317, 123 U. S., and page 135, 8 Sup. Ct.):
Then, after quotations from many authorities, the learned justice closes the discussion with these words from 1 Greenl. Ev. 80:
In U. S. v. Marshall Min. Co., Mr. Justice Miller again refers to this matter, saying (page 589, 129 U. S., and page 346, 9 Sup. Ct.):
With these declarations of the law controlling such cases we proceed to consider that which, according to the brief of counsel for the government, is the principal matter in this case. We quote their words:
After discussing the injury to the public which results from the conduct described, they add:
It will be perceived that it is conceded that some delay is unavoidable. In the very nature of things that is so. It is not possible that an application for a patent can be considered and determined on the instant. So it is not the fact, but the excessiveness, of the delay of which complaint is made. The mere fact of delay does not, therefore, operate to deprive the inventor of his legal rights. Before he can be punished it must be shown that he has been guilty of a wrong,-that he has caused the delay. It matters not whether the delay be reasonable or unreasonable, for a brief time or for many years, if the applicant is not responsible for it. Whatever may be the injury to the public, if the delay is caused solely through the negligence or inattention of the tribunal before which the application is pending it is something for which the applicant is not responsible, and which does not affect his legal rights. There is often great delay in suits in the courts. Cases not infrequently are argued before the highest courts and not decided by them for weeks and sometimes for years. Whatever effect such delay may have upon the interests of others or of the public, so long as it results from the mere nonaction of the courts, the rights of the suitor are unaffected. He cannot be punished on account of the delay of the tribunal before which he is presenting his suit.
Neither can a party pursuing a strictly legal remedy be adjudged in the wrong if he acts within the time allowed, and pursues the method prescribed by the statute. If the statute gives him five years within which to bring an action on a note, he cannot be denied relief simply because he waits four years and eleven months. If he has two years after a judgment against him within which to take an appeal, he may wait until the last day of the two years. Under section 4886, Rev. St., an inventor has two years from the time his invention is disclosed to the public within which to make his application, and unless an abandonment is shown during that time he is entitled to a patent, and the patent runs, as any other patent, for seventeen years from its date. He cannot [167 U.S. 224, 247] be deprived of this right by proof that if he had filed his application immediately after the invention the patent would have been issued two years earlier than it was, and the public, therefore, would have come into possession of the free use of the invention two years sooner. The statute has given this right, and no consideration of public benefit can take it from him. His right exists because congress has declared that it should. It will not do to say that, because congress has declared that seventeen years is the life of a patent, seventeen years is the limit of the possible monopoly; for the same legislation that gives seventeen years as the life of a patent gives two years within which an application for a patent may be made, and during that time, as well as while the application is pending in the department, the applicant has practically, if not legally, an exclusive use. A party seeking a right under the patent statutes may avail himself of all their provisions, and the courts may not deny him the benefit of a single one. These are questions not of natural, but of purely statutory, right. Congress, instead of fixing seventeen, had the power to fix thirty, years as the life of a patent. No court can disregard any statutory provisions in respect to these matters on the ground that in its judgment they are unwise or prejudicial to the interests of the public.
And in this connection it is also well to notice these facts: Section 4888, Rev. St., requires an inventor to make application in writing to the commissioner of patents. That and the two or three succeeding sections prescribe what the application shall state, and by what it shall be accompanied. Section 4893 provides that on the filing of the application and the payment of fees 'the commissioner of patents shall cause an examination to be made of the alleged new invention or discovery; and if on such examination it shall appear that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important, the commissioner shall issue a patent therefor.' Section 4894 reads:
Certain rules of procedure have been prescribed by the commissioner of patents, and a certain routine of practice has become established in that department. Now, all these matters of statutory enactments, rules of procedure, and routine of practice are things over which an applicant has no control. When he has once filed his application, complying with the statutory requirements, then the patent office takes possession of the matter. It determines when and how it will act, and the applicant can only ask and wait.
And why should he be called upon to do more? He comes before the tribunal which the government has established and presents his application. Why should the validity of the grant which that tribunal finally makes depend in any degree upon the number of times he has repeated his application? The true rule is that if application has been made, and the applicant has once called for action, he cannot be deprived of any benefits which flow from the ultimate action of the tribunal, although that tribunal may unnecessarily, negligently, or even wantonly, if that supposition were admissible, delay its judgment. If the public is interested in prompt action, if the government, which represents the public, thinks that more speed on the part of its tribunals is essential, it is the government which is called upon to act, and the applicant may with propriety wait until either the tribunal has acted, or until the government, having regard for the public interest, has interfered to compel action. Accepting the statement of counsel as to the facts to be correct in all its fullness, consider what would have been the ruling of a court if an application had been made to it based upon those facts. Suppose the applicant had presented its petition for a mandamus to compel prompt action on the part of the patent officials, and said: 'I have applied for and am entitled to a patent. It will be issued after a while without any judicial [167 U.S. 224, 249] compulsion. I can make large profits if the patent office will be dilatory, and yet I ask a mandamus to compel its immediate action,'-would not the ruling have been: 'By your own showing you are entitled to no relief; you have no cause of complaint. It is the government, representing the public, which alone can complain.' And if it could obtain no assistance by a suit in advance, can it be punished indirectly by being deprived of that which was finally awarded to it?
Much is said in the briefs and in the arguments about the practical continuance of the telephone monopoly. It is well to understand exactly what is meant thereby. No one questions that the Bell patent has expired, and that all of his invention is free to the use of the public. It is not denied that Berliner's invention is something independent and distinct from the Bell invention. It is the combination of these inventions with those of Blake and Edison which make the instrument in commercial use, and because this is the most serviceable it is the one that the public insists upon having. But each invention has independent rights. It loses nothing because when united with another it results in an instrument more valuable than either alone will give. Suppose that at the expiration of this Berliner patent some new invention shall be made by which, in connection with those already free to the public, an instrument can be manufactured far surpassing in utility that used to day, and the Bell Company shall purchase that invention the public, which always insists on having the best and most serviceable, will undoubtedly take the new instrument, and in that way it may happen that what is called the 'telephone monopoly' is practically still further continued. But surely that does not abridge the legal rights of any one. The inventor of the latest addition is entitled to full protection, and if the telephone company buys that invention it is entitled to all the rights which the inventor had. All that the patent law requires is that when a patent expires the invention covered by that patent shall be free to every one, and not that the public has the right to the use of any other invention, the patent for which has not expired, and which adds to the utility and advantage [167 U.S. 224, 250] of the instrument made as the result of the combined inventions.
Counsel seem to argue that one who has made an invention, and thereupon applies for a patent therefor, occupies, as it were, the position of a quasi trustee for the public; that he is under a sort of moral obligation to see that the public acquires the right to the free use of that invention as soon as is conveniently possible. We dissent entirely from the thought thus urged. The inventor is one who has discovered something of value. It is his absolute property. He may withhold the knowledge of it from the public, and he may insist upon all the advantages and benefits which the statute promises to him who discloses to the public his invention. He does not make the law. He does not determine the measure of his rights. The legislative body, representing the people, has declared what the public will give for the free use of that invention. He cannot be heard in the courts to say that it is of such value that he is entitled to a larger and longer monopoly; that he is not fully compensated for the great benefit which his invention has bestowed by the pecuniary receipts during 17 years. No representative of the public is at liberty to negotiate with him for a new and independent contract as to the terms and conditions upon which he will give up his invention. He must come under the dominion of the statute, and take that which the public has proffered its willingness to give. As the lawmaking power has prescribed what the public will give, specified the terms and conditions of purchase, indicated the time and methods of determining the right of compensation, he on his part has an absolute legal right to avail himself of all the provisions thus made. It is not, of course, doubted that the courts in construing the patent as all other statutes, must have regard to the spirit as well as the letter. That simply requires that courts shall ascertain their true meaning, but when that is ascertained the applicant for a patent is entitled to all the benefits which those statutes thus construed give.
What are the evidences of wrong in this matter of delay? It may have been caused either by the negligent or wrongful [167 U.S. 224, 251] action of the officers of the department, and without any connivance, assistance, or concurrence on the part of the applicant, or it may have been brought about by the applicant, either through its corruption of the public officers or through other misconduct on its part. If the fault is wholly that of the department, the applicant ought not to suffer therefor. While, on the other hand, if its conduct has been wrongful, it may and ought to suffer. There is no presumption against the applicant. If a tribunal charged with official action delays such action, whatever of presumption surrounds the delay attaches to the tribunal, and, no evidence of wrong being given, the presumption would be that the delay was at the instance of the tribunal, and not caused by the applicant. The government, therefore, in order to make out its case, must affirmatively show that the delay has been caused in some way by the conduct of the applicant, and before its patent can be set aside the government must, in accordance with the rules laid down in respect to land patents, establish that fact clearly. It may not rest on mere inferences, mere suggestions, but must prove the wrong in such a manner as to satisfy the judgment before it can destroy that which its own agents have created. We reiterate what was said by Mr. Justice Miller for the court in the Maxwell Land Grant Case, that a suit between individuals to set aside an instrument for fraud can only be sustained when the testimony in respect to the fraud is clear, unequivocal, and convincing, and cannot be done upon a bare preponderance of evidence which leaves the issue in doubt, and that, if this be the settled rule in respect to suits between individuals, it is much more so when the government attempts to set aside its solemn patent. And we may here again repeat that if this is true when the suit is to set aside a patent for land, which conveys for all time the title, a fortiori it must be true when the suit is one to set aside a patent for an invention, which only grants a temporary right.
What evidence has the government produced? We premise by saying that there is not a scintilla of testimony as to any corruption of the officers of the department by the defendants, or any attempt at such corruption. Counsel do not [167 U.S. 224, 252] put the finger on a single fact tending to show that any money was ever paid to any official of the patent office, or that any undue influence was ever attempted to be exerted upon or improper suggestion made to any one. So far as the record discloses, there never was an intimation made to a single official that he could profit in any way by a moment's delay. All thought of wrong in this respect may, therefore, be put aside. If there was no corruption on the part of the defendants, what did they do that calls for condemnation? And we turn to the brief of the learned counsel for the government to see what evidences of wrong they have found in the record. After noting that their inquiry begins at June 9, 1882, thus impliedly conceding that there is no reason to question the delay up to that time (a period of five years), they call attention to the subsequent correspondence between the solicitor in charge of the application and the officials of the department, which, so far as is material, is as follows:
After these quotations, counsel observe as follows:
This presents the burden of the case on the part of the government. It amounts to only this: The defendant company was not active, but passive. If millions were to be added to its profit by active effort it would have been importunate, and have secured this patent long before it did. As millions came to it by reason of its being passive, it ought to suffer for its omission to be importunate. It must keep coming before the commissioner, like the widow before the unjust judge in the parable, until it compels the declaration, 'though I fear not God nor regard man, yet, because this widow troubleth me, I will avenge her, lest by her continual coming she weary me.' But is this the rule to measure the conduct of those who apply for official action? What is the amount of the importunity which will afford protection to the grant finally obtained? How frequent must the demand be? It is easy to say that the applications of this defendant, coming only at the interval of months and years, were, taken with the replies of the patent office, mere 'perfunctory exchanges of compliments,' but this does not change the fact that action was asked and repeatedly asked; that no request was made for delay; no intimation that it was desired or would be acceptable.
In this connection may well be noticed the letter of the solicitor, in March, 1881, to the commissioner, in which he urged the modification of rule No. 94 in respect to interferences, [167 U.S. 224, 255] and this in order to hasten the issue of the patent. In this letter, besides pointing out how the rule as it then existed would tend to delay, he adds these statements:
It may be added that the modification was made in October, 1881.
In respect to this letter, and especially the second paragraph, quoted above, counsel for the government say:
But is the applicant to be condemned because, having once made an urgent request for action and pointed out reasons therefor, it was not continually repeating that request, because it did not see that such request was placed on the files of this particular application, or, as intimated in the words of counsel, nailed on the doors of the patent office? [167 U.S. 224, 256] It is, of course, easy to say that these applications, plications, these suggestions and requests, meant nothing; that they were a mere blind. But something more than assertion of counsel is necessary to destroy their significance, or to establish collusion between the applicant and the officials of the department. But the case does not stand upon the fact that the formal communications from the solicitor in charge of this application were few in number. While in every one in which the matter was referred to there was a request for action, it also appears from the testimony of Messrs. Freeman, Lyons, and Kintner, who were the examiners in charge during the major portion of the time in dispute, that the representatives of the Bell Company were urgent in pushing the Berliner application. For instance, Examiner Lyons testified:
And Examiner Kintner (who was in office from May, 1883, to April, 1887), in reply to a question as to what Mr. Swan, one of the representatives of the telephone company, did in respect to the application, said:
Another matter referred to by counsel is what they call the 'tacit understanding.' The facts are these: One Daniel Drawbaugh claimed to have invented the telephone prior to [167 U.S. 224, 257] Bell. He assigned his inventions to the People's Telephone Company, between whom and the defendant company a heated and protracted litigation arose. Now, it is said that there was an agreement, or, at least, a tacit understanding, between the officials of the patent office, the People's Company, and the defendant company that the proceedings in the patent office in respect to the Berliner application should wait the determination of the litigation between the two telephone companies. It is insisted that the officials had no right to enter into such an agreement; that it was unlawful in its character. Assuming that this is so, still the fact appears that the proposition therefor came from the representatives of the Drawbaugh interest, that it was deemed by the officers of the patent office to be for the best interests of all, and that it was simply assented to by the defendant. Nowhere does it appear that the defendant urged, or even suggested, the propriety of such a delay. For the present we do not consider the wisdom or the rightfulness of the course pursued. All that we desire to notice is that it was not at the instance of the defendant.
It is further said that, even if there were at first any excuse for such 'tacit understanding,' and the patent office properly delayed action on this application until after the litigation between Drawbaugh and Bell had ended, a judgment therein was rendered in the circuit court in 1884; and that then the office should have proceeded promptly, and that there was no excuse for waiting until the decision of the appeal by this court in 1888; and, least of all, for any delay after that final decision by this court.
Summing up their argument on this branch of the case, counsel say:
Were it conceded that these two assumptions were 'false assumptions,' as counsel call them, what are they but errors of judgment on the part of the patent officials as to the course of procedure; and can it be possible that an applicant for a right, who has under the statute no choice of tribunals or course of procedure, but is compelled to apply to one tribunal which has exclusive jurisdiction in the matter, and must abide by its rulings as to procedure, can be held to have forfeited his right simply because of errors of judgment by such tribunal as to the procedure? The statement of the question seems to us to carry its own answer. It is true counsel follow this declaration of the errors on the part of the office in the matter of procedure with the further statement:
Indeed, the case which the counsel present to us may be summed up in these words: The application for this patent was duly filed. The patent office after the filing had full jurisdiction over the procedure; the applicant had no control over its action. We have been unable to offer a syllable of testimony tending to show that the applicant ever in any way corrupted, or attempted to corrupt, any of the officials of the department. We have been unable to show that any delay or postponement was made at the instance or on the suggestion of the applicant. Every communication that it made during those years carried with it a request for action, yet because the delay has resulted in enlarged profits to the applicant, and the fact that it would so result ought to have been known to it, it must be assumed that in some way it did cause the delay, and, having so caused the delay, ought to suffer therefor. There is seldom presented a case in which there is such an absolute and total failure of proof of wrong.
The defendant company might safely have left the case here, but it has not been content to rest the controversy with the failure on the part of the government to show any wrong. It has not been content to accept the Scotch verdict of 'not proven.' It has called as witnesses the examiners who were in charge of this application, and taken their testimony as to what did in fact take place, and as to how and why the long delay occurred. Whatever judgment may be pronounced upon the wisdom of the course pursued by these officials, or the sufficiency of the reasons given by them therefor, there is no ground for controverting that they acted in good faith. The case is not one of arbitrary, peremptory postponements and delay. [167 U.S. 224, 260] They supposed they were acting in compliance with the rules of the patent office, and out of proper regard for the rights of conflicting interests. No just estimate can be placed upon the propriety of their conduct without taking into consideration the whole subject of telephonic inventions and litigation. As heretofore stated, and as is well known, Bell claimed to be the pioneer in this matter of telephonic communication. His claim was disputed, and out of that dispute came the most important, the most protracted, litigation which has arisen under the patent system in this country. For years this litigation was pending in the trial courts, subsequently brought to this court, and finally decided in 1888. So great was this litigation, so immense the volume of testimony, and so important the rights involved, that it is the only case in the history of this court to which an entire volume of our Reports is devoted. 126 U. S., 8 Sup. Ct. The argument was protracted throught weeks, and the case was held under consideration for a year, and finally decided by a closely-divided court. Is it strange that, when the primary right was being so vigorously contested, and was so much a matter of doubt, when (as appears from the testimony in this case) the judgment of the law department of the government was adverse to the claims of Bell, and to the validity of the patent which he had obtained,-is it strange, we ask, in view of these facts, that the disposition of the apparently minor matter should be held in abeyance in the patent office until a final decision of the primary right?
Neither can any just estimate be placed upon their conduct without taking into account the volume of business, and the pressure on account thereof, in the patent office. Beyond the fact, which is a matter of common knowledge, that thousands of applications are filed and thousands of patents granted each year, the record discloses something as to the multitude of applications for patents for telephones and telephonic devices which were pending during these years. Mr. Townsend, who was an examiner up to November 15, 1880, while unable to state the number of applications, was able to say that he had examined over 120 that went to [167 U.S. 224, 261] patent. This it will be remembered was in the early days of telephonic investigation and invention. It appears also from a communication made by the commissioner of patents to the secretary of the interior, on December 13, 1892, advising against this suit, that at that time a gentleman, who is called in the letter the 'relator,' had pending in the patent office 152 applications for patents on telephones and telephone systems. These facts may be only side lights, but they show that the examiners and other officials in the patent office had something else to do besides considering this application.
Of course, it is easy to say that the patent office could have disposed of this application more promptly than it did; that it ought to have done so; and that, in view of the termination of the great litigation favorable to the claims of Bell, its delay has resulted in large pecuniary benefits to the defendants. But a wisdom born after the event is the cheapest of all wisdom. Anybody could have discovered America after 1492. The question is not whether a better judgment on the part of the patent officials would have disposed of this application long before it was, is not, indeed, whether there was any error of judgment, but whether they acted wrongfully, and their action was induced by or at the instance of the defendants.
One thing more deserves notice. The argument of the counsel for the government proceeds all along on the assumption of the superior knowledge of the representatives of the defendant company; that they saw the end from the beginning; that they knew that their client had an invention which was patentable, and that they would ultimately obtain a patent therefor, and also that Bell was and would finally be adjudged the primary inventor of the telephone; and that, possessed of all of this knowledge, they planned the delay in securing the Berliner patent in order that thereby they might extend to the termination of its life the telephone monopoly. But what an assumption this is, and how illy justified by the facts! The very process and termination of the Bell-Drawbaugh litigation demonstrates the doubtfulness of the question there in issue, and is absolute evidence that there was up to the close [167 U.S. 224, 262] of that litigation an uncertainty as to the result. Equally uncertain was the outcome of the Berliner application. Indeed, there is an uncertainty as to every application. No one can foretell what will be the judgment of the patent office upon the questions of novelty and utility. And in respect to this Berliner application the matters which are subsequently to be considered attest that there was more than ordinary doubt as to the outcome. On account of those matters, it is earnestly contended that there was no merit in the application, and that it ought to have been denied. Further than that, they knew that the officials of the patent office were subject to change,-as in fact they were changed during the pendency of these proceedings,-and, even if they had any direct intimations from the first examiner or the first commissioner, there was no certainty that a subsequent examiner and subsequent commissioner would entertain the same views. If the Bell-Drawbaugh litigation had terminated the other way, and a different opinion on the part of a single member of this court would have changed this result, or if when the time came the commissioner of the patent office had decided against the Berliner application, and his decision been sustained on appeal to the supreme court of the District of Columbia, then all this brilliant scheme of realizing millions would have vanished into thin air. If they were possessed of the wisdom which the government attributes to them, the representatives of the Bell Company must have realized that the certainty which attends a final decision and the issue of a patent was something worth striving for, and not lightly to be ignored. And if this underlying assumption has so little foundation, what shall be said of an inference and an imputation unsupported by evidence and based upon that assumption?
Our conclusions on this branch of the case are: First. That before the government is entitled to a decree canceling a patent for an invention on the ground that it has been fraudulently and wrongfully obtained, it must, as in the case of a like suit to set aside a patent for land, establish the fraud and the wrong by testimony which is clear, convincing, and satisfactory. Second. That congress has established a department, [167 U.S. 224, 263] with officials selected by the government, to whom all applications for patents must be made; has prescribed the terms and conditions of such applications, and intrusted the entire management of affairs of the department to those officials; that when an applicant for a patent complies with the terms and conditions prescribed, and files his application with the officers of the department, he must abide their action, and cannot be held to suffer or lose rights by reason of any delay on the part of those officials, whether reasonable or unreasonable, unless such delay has been brought about through his corruption of the officials, or through his inducement, or at his instance. Proof that they were in fault, that they acted unwisely, unreasonably, and even that they were culpably dilatory, casts no blame on him and abridges none of his rights. Third. The evidence in this case does not in the least degree tend to show any corruption by the applicant of any of the officials of the department, or any undue or improper influence exerted or attempted to be exerted by it upon them, and, on the other hand, does affirmatively show that it urged promptness on the part of the officials of the department, and that the delay was the result of the actions of those officials. And, fourth, if the circumstances do not make it clear that this delay on the part of the officials was wholly justified, they do show that it was not wholly unwarranted, and that there were reasons for the action such officials which at least deserve consideration and cannot be condemned as trivial.
The three remaining grounds of relief asserted by the government may be considered together. Defendants contend that as the last two, although urged in the circuit court, were not presented to the court of appeals ( referring for this fact to the opinion of the latter court, and also a notice which was contained in the brief of counsel for the government), we are precluded from noticing them, citing as authority Bell v. Bruen, 1 How. 169; Alviso v. U. S., 8 Wall. 337; National Bank v. Com., 9 Wall. 353; Rogers v. Ritter, 12 Wall. 317; Klein v. Russell, 19 Wall. 433; Supervisors v. Lackawana Co., 96 U.S. 619 ; Wilson v. McNamee, 102 U.S. 572 ; Wood v. Weimar, 104 U.S. 786 ; Toplitz [167 U.S. 224, 264] v. Toplitz, 145 U.S. 156 , 12 Sup. Ct. 825; McGahan v. Bank, 156 U.S. 218 , 15 Sup. Ct. 347; and Carr v. Fife, 156 U.S. 494 , 15 Sup. Ct. 427,-in which cases, with more or less particularity, the proposition is announced that this court will not consider questions not presented to and passed upon by the lower court, We deem it unnecessary to determine how far that rule is applicable in this case, for the reasons which compel us to deny relief on the first of these grounds are, when applied to the facts developed by the testimony, equally potent as to the others. That ground, as stated, is 'that a patent issued November 2, 1880, upon a division of the original application, covers the same invention as that covered by the patent in suit, and exhausted the power of the commissioner as to that invention.' The patent of 1880 is for a receiver; that of 1891 for a transmitter. It is claimed that the two instruments are alike in form and alike in function, save as they are operated at different ends of the telephone wire. The transmitter can be placed at the other end of the wire, and then becomes a receiver, and so vice versa. Popularly speaking, it may be said that the transmitter takes the varying sounds of the human voice, and passes them on to the telephone wire, to be borne along thereon by the undulatory electric current until they reach the receiver, which takes and passes them to the human ear. In a sense the receiver is also a transmitter, for it passes the sounds from the wire to the ear. We agree with the court of appeals that it is unnecessary to determine whether there are two separate inventions in the transmitter and the receiver, or whether the patent of 1891 is for an invention which was covered by the patent of 1880. The judgment of the patent office, the tribunal established by congress to determine such questions, was adverse to the contention of the government, and such judgment cannot be reviewed in this suit.
Suits may be maintained by the government in its own courts to set aside one of its patents, not only when it has a proprietary and pecuniary interest in the result, but also when it is necessary in order to enable it to discharge its obligations to the public, and sometimes when the purpose and effect are simply to enforce the rights of an individual. In [167 U.S. 224, 265] the former cases it has all the privileges and rights of a sovereign. The statutes of limitation do not run against it. The laches of its own officials does not debar its right. Van Brocklin v. Tennessee, 117 U.S. 151 , 6 Sup. Ct. 670; U. S. v. Nashville, C. & St. L. Ry. Co., 118 U.S. 120 , 6 Sup. Ct. 1006; U. S. v. Inseley, 130 U.S. 263 , 9 Sup. Ct. 485. But when it has no proprietary or pecuniary result in the setting aside of the patent; is not seeking to discharge its obligations to the public; when it has brought the suit simply to help an individual, making itself, as it were, the instrument by which the right of that individual against the patentee can be established,-then it becomes subject to the rules governing like suits between private litigants. As said in U. S. v. Beebe, 127 U.S. 338, 347 , 8 S. Sup. Ct. 1083, 1088:
Now, in the case at bar the United States has no proprietary or pecuniary interest. The result, if favorable to it, would put no money in its treasury or property in its possession. It has a standing in court either in the discharge of its obligation to protect the public against a monopoly it has wrongfully created, or simply because it owes a duty to other patentees to secure to them the full enjoyment of the rights which it [167 U.S. 224, 266] has conferred by its patents to them. Perhaps both of these objects were in view. In so far as the latter was and is the purpose of this suit, it brings it within the rule laid down in U. S. v. Beebe, supra. Doubtless the removal from the public of the burden of a monopoly charged to have been wrongfully created was also one of the objects, and perhaps the principal object. U. S. v. American Bell Tel. Co., 159 U.S. 548 , 16 Sup. Ct. 69. To what extent this may relieve the government as suitor from all the rules governing the suits of private individuals need not be specifically determined here.
One of the familiar rules of equity, reinforced by statute (section 723, Rev. St.), is that 'suits in equity shall not be sustained in either of the courts of the United States in any case where a plain, adequate, and complete remedy may be had at law.' The objection to the validity of this patent on the ground that it was already covered by the patent of 1880 is a defense which, under the statutes (section 4920, Rev. St.), is open to every individual charged by the patentee with infringement, whether the proceeding against him be an action at law or a suit in equity. The government, therefore, if seeking simply to protect the right of an individual, ought not to be permitted to maintain a suit in equity to cancel that against which the individual has a perfect legal defense available in any action brought by or against him. The query is pressed whether the same rule would not also apply when the government is only seeking to protect the public at large, for the public is but the aggregation of all the individuals, and, if each of them has a perfect defense to the patent, so all together have. Again, and as an illustration, perhaps, of the extent of the rule referred to, it has often been held that while one having the title to and possession of a tract of land can maintain a suit in equity to cancel a deed or other instrument which is a cloud upon the title, such suit cannot be sustained if the deed or instrument is void upon its face, its invalidity resting upon matters of record, and not affected by any lapse of time or statute of limitations. In other words, the deed or instrument is not considered a [167 U.S. 224, 267] cloud if it can never be used to destroy his title or disturb his possession. The objection to this patent on the ground stated is an objection resting upon matters of record,-of record in the patent office,- not dependent on oral testimony nor subject to change, and in no way affected by lapse of time. Within the scope of this specific application of the general rule, it would seem that equity has no jurisdiction either at the suit of the government or of an individual to formally cancel that which by record and unfailing evidence is, as claimed, absolutely void.
But, further, congress has established the patent office, and thereby created a tribunal to pass upon all questions of novelty and utility. It has given to that office exclusive jurisdiction in the first instance, and has specifically provided under what circumstances its decisions may be reviewed, either collaterally or by appeal. As said in Butter-worth v. Hoe, 112 U.S. 50, 67 , 5 S. Sup. Ct. 25, 34: 'That it was intended that the commissioner of patents, in issuing or withholding patents, in reissues, interferences, and extensions, should exercise quasi judicial functions, is apparent from the nature of the examinations and decisions he is required to make, and the modes provided by law, according to which, exclusively, they may be reviewed.'
Sections 4911-4914, Rev. St., grant appeals in certain cases to the supreme court of the District of Columbia. It is true those sections do not authorize appeals on behalf of the government, but the failure so to do may be evidence that congress thought the government ought not to interfere, and because it believed it had made ample provision for securing the rights of all without the intervention of the government. Section 4915, Rev. St., authorizes a suit in equity on behalf of an applicant for a patent whose application has been refused. Morgan v. Daniels, 153 U.S. 120 , 14 Sup. Ct. 772, presented a controversy under that section, and in the opinion, on page 124, 153 U. S., and page 773, 14 Sup. Ct., we said: 'It is a controversy between two individuals over a question of fact which has once been settled by a special tribunal, intrusted with full power in the premises. As such it might be well argued, were it not for the terms of this [167 U.S. 224, 268] statute, that the decision of the patent office was a finality upon every matter of fact.'
It is true that all these sections refer to proceedings between individuals, but the government is as much bound by the laws of congress as an individual, and when congress has created a tribunal to which it has given exclusive determination in the first instance of certain questions of fact, and has specifically provided under what circumstances that determination may be reviewed by the courts, the argument is a forcible one that such determination should be held conclusive upon the government, subject to the same limitations as apply in suits between individuals.
There is nothing in U. S. v. Bell Tel. Co., 128 U.S. 315 , 9 Sup. Ct. 90, and U. S. v. American Bell Tel. Co., 159 U.S. 548 , 16 Sup. Ct. 69, to conflict with the views above expressed. In the former case the question presented was whether the government could maintain a bill to set aside a patent for an invention on the ground of fraud in its issue, and among the objections urged was the fact that congress had, in section 4920, Rev. St., made specific provision for certain defenses in suits by an infringer. It was held that the government could maintain such a bill, and that these special statutory provisions did not defeat its right, the court summing up the discussion in these words (page 373, 128 U. S., and page 99, 9 Sup Ct.):
In the latter case, which is the one now before us, there [167 U.S. 224, 269] was decided a motion to dismiss for want of jurisdiction in this court of an appeal from the decision of the court of appeals, and it was adjudged that this court had jurisdiction. It is true, at the close of the opinion is found this general statement as to the power to maintain such a suit ( page 555, 159 U. S., and page 72, 16 Sup. Ct.):
But, while there was thus rightfully affirmed the power of the government to proceed by suit in equity against one who had wrongfully obtained a patent for land or for an invention, there was no attempt to define the character of the fraud, or deceit, or mistake, or the extent of the error as to power which must be established before a decree could be entered canceling the patent. It was not affirmed that proof of any fraud, or deceit, or the existence of any error on the part of the officers as to the extent of their power, or that any mistake in the instrument, was sufficient to justify a decree of cancellation. Least of all was it intended to be affirmed that the courts of the United States, sitting as courts of equity, could entertain jurisdiction of a suit by the United States to set aside a patent for an invention on the mere ground of error of judgment on the part of the patent officials. That would be an attempt on the part of the courts in collateral attack to exercise an appellate jurisdiction over the decisions of the patent office, although no appellate jurisdiction has been by the statutes conferred. We are of opinion, therefore, that the question, as stated, is not open for consideration in [167 U.S. 224, 270] this case. We see no error in the decision of the court of appeals, and its decree, dismissing the bill, is affirmed.
Mr. Justice HARLAN dissented.
Mr. Justice GRAY and Mr. Justice BROWN were not present at the argument, and took no part in the decision.