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U.S. Supreme Court

United States v. American Bell Telephone Co., 128 U.S. 315 (1888)

United States v. American Bell Telephone Company

No. 846

Argued October 9-10, 1888

Decided November l2, 1885

128 U.S. 315


A bill in equity which assails two patents, issued nearly a year apart, but to the same party and relating to the same subject, both held by the same corporation defendant and used by it in the same operations, is not multifarious.

Where a patent for a grant of any kind, issued by the United States, has been obtained by fraud, by mistake, or by accident, or where there is any error in the patent itself capable of correction, a suit by the United States against the patentee is the appropriate remedy for relief. This proposition is supported by precedents in the High Court of Chancery of England, and in other courts of that country.

The more usual remedy, under the English law, to repeal or revoke a patent obtained by fraud from the King was a writ of scire facias returnable either into the Court of King's Bench or of Chancery, though it has been said that the jurisdiction of the Court of Chancery arises not from its general jurisdiction to give relief for fraud, but because the patents issuing from the King were kept as records in the petty-bag office of that court. The case, however, of The Attorney General v. Vernon, 1 Vernon 277, and other cases seem to indicate that by virtue of its general equity powers, the Court of Chancery had jurisdiction to give relief against fraud in obtaining patents.

In England, grants and charters for special privileges were supposed to issue from the King, as prerogatives of the Crown, and the power to annul them was long exercised by the King by his own order or decree. This mode of vacating charters and patents gradually fell into disuse, and the same object was obtained by scire facias returnable into the Court of King's Bench or of Chancery.

In this country, where there is no Kingly prerogative, but where patents for lands and inventions are issued by the authority of the government and by officers appointed for that purpose, who may have been imposed upon by fraud or deceit or may have erred as to their power, or made mistakes in the instrument itself, the remedy for such evils is by proceedings before the judicial department of the government.

Both the Constitution and the acts of Congress organizing the courts of the United States have in express terms provided that the United States may bring suits in those courts, and they are all very largely engaged in chanroblesvirtualawlibrary

Page 128 U. S. 316

the business of affording a remedy where the United States has a legal right to relief.

The present suit -- a bill in Chancery in the Circuit Court of the United States for the District of Massachusetts wherein the United States are plaintiffs, brought against the defendant to set aside patents for inventions on the ground that they were obtained by fraud -- is a proper subject of the jurisdiction of that court as defined in § 1, c. 37, Act of March 3, 1875, 18 Stat. 470, and is well brought under the direction of the Solicitor General on account of the disability of the Attorney General to take part in the case, and its allegations of fraud and deception on the part of the patentee in procuring the patents are sufficient, if sustained, to authorize a decree setting aside and vacating the patents as null and void.

Section 4920 of the Revised Statutes, which enumerates five grounds of defense to a patent for an invention that may be set up by anyone charged with an infringement of the rights of the patentee, was not intended to supersede, nor does it operate as a repeal or withdrawal of, the right of the government to institute an action to vacate a patent for fraud.

In equity. The object of the bill, which was signed by the District Attorney of the United States for the District of Massachusetts and the Solicitor General, acting in this case as Attorney General, was to obtain the cancellation, avoidance, recall and repeal of the two patents granted to Alexander Graham Bell which formed the subject of the litigation in The Telephone Cases, and which will be found in 126 U.S. at pages 126 U. S. 4 and 5, one being numbered 174,46 and dated March 7, 1876; the other No. 186,787, dated January 30, 1877. It was charged that the patents were and each of them was "procured to be issued by means of fraud, false suggestion, concealment and wrong on the part of the said Alexander Graham Bell," and that he and the Telephone Company, which was his assignee, had at all times known and had full knowledge of the alleged frauds and concealment.

It was alleged

"that up to the time of the issuing of the said [first] patent, the said Bell had never in fact been able to transmit articulate speech by the method or with the apparatus described in his said application, but that he purposely framed his said application and claim in ambiguous and general terms in order to cover both antecedent and future inventions and to deceive and mislead the examiners of the

Page 128 U. S. 317

Patent Office and the public, and did not set forth or declare that his alleged invention had any relation to the art of transmitting articulate speech by means of electricity, but entitled it an application for 'an improvement in telegraphy,' and made special reference to a then recent application made by himself for a patent for a method of 'multiple telegraphy,' and treated his alleged new invention as another method thereof, and set forth advantages which it had over the other, but did not include or mention its capacity, or claim for it any capacity, to transmit speech."

"And your orator further shows and charges that by the means aforesaid, the said Bell not only failed to meet the requirements of the statute as to the form of his application, but did in fact mislead and deceive the examining officers of the Patent Office, and did cause them to regard the said alleged invention as a mere improvement in telegraphy, and not as an invention of the telephone, and did lead them to suppose that it had no relation to the art of transmitting articulate speech by electricity, and did thus cause them not to make an inquiry as to the state of that art, or the patents or the printed publications concerning it; that accordingly, no such inquiry was made by any of them, and that thereby the said Bell did mislead and deceive your orator, and did cause your orator to issue the said patent No. 174,465 in the form and according to the tenor aforesaid, and that but for the said delusive and ambiguous application the said patent, would not have been granted or issued by your orator as aforesaid; wherefore your orator avers that the said patent No. 174,465, issued upon said delusive and ambiguous application, was and is void and of no effect."

"Your orator further avers and charges upon information and belief that at the time of filing the said application, the said Be