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

Citation:128 U.S. 315, 9 S.Ct. 90, 32 L.Ed. 450
Party Name:UNITED STATES v. AMERICAN BELL TEL. CO.
Case Date:November 12, 1888
Court:United States Supreme Court
 
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Page 315

128 U.S. 315 (1888)

9 S.Ct. 90, 32 L.Ed. 450

UNITED STATES

v.

AMERICAN BELL TEL. CO.

United States Supreme Court.

November 12, 1888

COUNSEL

[9 S.Ct. 90] George A. Jenks, Sol. Gen., A. G. Thurman, Eppa Hunton, Jeff. Chandler, and C. S. Whitman, for appellant,

J. J. Storrow, E. N. Dickerson, and Chauncey Smith, for appellee.

OPINION

MILLER, J.

This is an appeal from the circuit court of the United States for the district of Massachusetts.

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The United States brought its suit in equity in that court against the American Bell Telephone Company, a corporation organized under the laws of the state of Massachusetts, and against Alexander Graham Bell, a resident of the District of Columbia. The action purports to have been instituted by George M. Stearns, the United States district attorney for that district, by the direction of George A. Jenks, the solicitor general of the United States, acting as its attorney general in this matter, because the latter officer was under a disability to prosecute this suit. The object of the bill was to impeach two patents for inventions issued to said Bell, the first dated March 7, 1876, and numbered 174,465, and the second dated January 30, 1877, and numbered 186,787, with a prayer that they be declared void and of no effect, and that they be in all things recalled, repealed, and decreed absolutely null; that they be erased and obliterated from the records of the patent-office; and for other relief. To this bill the telephone company entered an appearance and filed a demurrer. It is not shown that Bell either appeared or filed any pleading. At the hearing on the demurrer it was sustained by the circuit court, the bill dismissed, (32 F. 591,) and the United States has brought the present appeal to reverse that ruling. The defendant demurs generally to the whole bill, and in that demurrer objects to specific portions of the bill, and it may be very doubtful whether these are not so mixed up in the same pleading as to make the demurrer void, so far as it relates to such parts of it. As the main questions on the demurrer, however, [9 S.Ct. 91] relate to matters which go to the merits of the whole bill, they are probably all that is necessary to consider here. Some of these points of demurrer, although stated as such in a general demurrer, are manifestly only such as could be taken under a special demurrer, and would not, if successful, defeat the entire bill.

The grounds of demurrer which we shall consider in this opinion are as follows: First. 'That the said bill is multifarious, in that it joins

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allegations and prayers for relief in respect of patent No. 174,465, dated March 7, 1876, and allegations and prayers for relief in respect of patent No. 186,787, dated January 30, 1877.' Second. The defendant demurs as to each patent specifically, 'that the complainant, in and by its said bill, does not show any power or authority, and no power or authority in law exists, in any person or party, or any court, to bring said suit, nor to entertain the same, nor to give the relief therein prayed, nor any relief thereunder or touching the subject-matter thereof;' and, further, 'that the complainant, in and by said bill, has not made or stated a case which calls upon or justifies this court, in the exercise of its discretion, to permit this bill to be entertained.' Third. The defendant specially demurs to the bill, 'for that it does not set forth any fraud in the procuring of said patents; and for that it does not specifically set forth what acts, if any, the complainant relies on as constituting fraud in procuring said patents; and for that it does not show when, how, from whom, or by what means the complainant first had knowledge or notice of each alleged fact, nor why, with due diligence, it would not have learned them earlier;' and also 'because the allegations contained in said bill, if true, would not entitle the complainant to the relief prayed for, nor to any relief in a court of equity.' While these grounds of demurrer are stated in the language of the demurrer itself, we have grouped them somewhat differently from the mode in which they are there stated, because we think the consideration of the three causes of demurrer here laid down must dispose of the case before us.

With regard to the question of multifariousness, we do not think it needs much consideration. It is very true that the bill assails two patents, issued nearly a year apart, but they were issued to the same party, Alexander Graham Bell, and relate to the same subject, that of communicating messages at a distance by speech, and by the same general mode, the later patent being supposed to be for an improvement upon the invention of the earlier one. Both are held by the same defendant,

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the American Bell Telephone Company, and are used by it in the same operations. The principle of multifariousness is one very largely of convenience, and is more often applied where two parties are attempted to be brought together by a bill in chancery who have no common interest in the litigation, whereby one party is compelled to join in the expense and trouble of a suit in which he and his co-defendant have no common interest, or in which one party is joined as complainant with another party with whom in like manner he either has no interest at all, or no such interest as requires the defendant to litigate it in the same action. Oliver v. Piatt, 3 How. 333; Walker v. Powers, 104 U.S. 245. In the present case there is no such difficulty. The Bell Telephone Company and Mr. Bell himself are the only parties defendant, and their interest in sustaining the patents is the same. So, also, there is no such diversity of the subject-matter embraced in the assault on the two patents that they cannot be conveniently considered together, and although it may be possible that one patent may be sustained, and the other may not, yet it is competent for the court to make a decree in conformity with such finding. It seems to us in every way appropriate that the question of the validity of the two patents should be considered together.

It will be convenient, as a means of showing specifically the ground of complaint in the bill, to take up next the third group of the causes of demurrer. The point intended to be presented there is that the bill does not set forth any fraud in the procuring of the patents, and does not specifically set forth what acts, if any, the complainant relies upon as constituting fraud in their procurement, and also that the allegations contained in the bill, if true, would not entitle the complainant to the relief prayed for, nor to any relief in a court of equity. Assuming for the present that the circuit courts of the United States have the same jurisdiction in equity, in a case where the United States itself is plaintiff, that they have where a citizen is plaintiff, to relieve against accident, mistake, fraud, covin, and deceit, we proceed to examine into the sufficiency of the allegations in this bill to maintain such a suit.

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The fifth claim of invention of the patent of March 7, 1876, which was held to be a sufficient claim for an invention in the recent Telephone Cases, decided March 19, 1888, and reported in 126 U.S. 1, 8 S.Ct. 778, is as follows: '(5) The method of and apparatus for transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth.' The claims of invention under the patent of January 30, 1877, are eight in number, and may be stated generally to be for improvements in the instruments by which the vocal sounds mentioned in the foregoing paragraph are conveyed and received. The bill alleges that Bell, the patentee, knew at the time of filing his application for the patent of March 7, 1876, that he was not the original and first inventor, as the law required he should be, of all the improvements in telegraphy described and claimed in said specification; 'that certain of the so-called [9 S.Ct. 92] improvements had been previously known to and used by others, as is hereinafter more fully and at large set forth; that the said Bell, on the 20th day of January, 1876, and at the time of filing the said application, did not verily believe himself to be the original and first inventor of all the so-called improvements in telegraphy described and claimed in the said specification; and that on the said 20th day of January, 1876, and at the time of filing the said application, the said Bell did know and did believe that certain of the so-called improvements in telegraphy described and claimed in the specification aforesaid had been previously known to and used by others, as is hereinafter more fully set forth.' It is then charged that the said untrue statements made by said Bell constituted deception and fraud upon the government, and did deceive and defraud complainant, and did cause complainant to issue and deliver said patent No. 174,465 to said Bell, and that but for said fraudulent statements of said Bell said patents would not have been issued. The bill alleges, also, that in his application for the patent Bell misled the patent office by a statement that his invention

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was for 'an improvement in telegraphy,' and especially for a patent for a method of 'multiple telegraphy,' and that he carefully and intentionally refrained from any expression which would lead to the idea that his invention was to be used as a telephone, or was capable of such use. The bill then proceeds to describe various discoveries in the art to conveying articulate sounds by telegraphic wires prior to that of Bell, with which it is alleged Bell himself was well acquainted, and which anticipated his discovery, and render his patent void. Among them are those of Philip Reis, of...

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