United States v. American Bell Tel Co.

• Decision Date: 18 December 1894
• Docket Number: 341.
• Parties: UNITED STATES v. AMERICAN BELL TEL. CO. et al.
• Court: U.S. District Court — District of Massachusetts

65 F. 86

UNITED STATES v. AMERICAN BELL TEL. CO. et al.

No. 341.

United States Circuit Court, D. Massachusetts.

December 18, 1894

Bill by the United States against the American Bell Telephone Company and others, to cancel certain letters patent. Decree for plaintiffs.

1. PATENTS-- CORROBORATION. TELEPHONE TRANSMITTER.

Patent No. 463,569, issued November 17, 1891, to Emile Berliner, as assignor to the American Bell Telephone Company, for combined telegraph and telephone, is for a device for transmitting articulate speech, which is identical with the device for the same purpose covered by patent No. 233,969, issued to Emile Berliner November 2, 1880, for electric telephone, and is void.

2. PATENTS-- CANCELLATION-- UNLAWFUL DELAY IN ISSUING.

In an action by the United States to cancel patent No. 463,569 issued November 17, 1891, to Emile Berliner, as assignor to defendant, for combined telegraph and telephone, it appeared that the application was filed June 4, 1877; that defendant had ample means to prosecute it; that it then owned a patent which covered the art of electrical transmission of articulate speech, which expired in 1893; that in 1882 defendant was notified that, 'as at present advised, it is believed that the claims presented may be allowed,' but final action must be suspended in view of probable interferences with other pending applications; that the application with which interference was anticipated was filed July 26, 1880; that there was abundant evidence on file in the patent office showing public use of the device as early as July 26, 1878, and the latter applicant declined to take evidence in contradiction of such public use; that in March 1888, defendant's application was suspended until May 1 1888, on the ground of expected interference, and 'for the purpose of awaiting the determination of the telephone case in the supreme court'; that defendant acquiesced in a 'general understanding' that the decision of its application should await the decision in such case; that it was evident that the claimant in such case was not entitled to a patent, because of prior use of his invention; that the case might not be decided for many years, and, when decided would not necessarily throw any light on the question of defendant's right to a patent; that the case was decided in March 1888; and that in 1886 defendant's solicitor wrote it that he was working the 'cases along quietly,' and thought they would be granted by the examiner without interferences or appeals. Held, that the issue of such patent was unlawfully delayed by defendant's fault, for a fraudulent purpose, and that the patent should be canceled.

The Attorney General, the United States Attorney, Causten Browne, and Robert S. Taylor, for the United States.

William G. Russell, James J. Storrow, William W. Swan, and Frederick P. Fish, for defendants.

CARPENTER District Judge.

This is a bill in equity praying the repeal of letters patent No. 463,569, issued November 17, 1891, to Emile Berliner, as assignor to the American Bell Telephone Company, for combined telegraph and telephone. The first ground of the bill to which I shall refer is that the patent is void as being beyond the power of the commissioner to issue, in view of the issue of a former patent, No. 233,969, issued November 2, 1880, to Emile Berliner, for electric telephone. The patent of 1891 is for a transmitter for a speaking telephone. The fourth claim of the patent of 1880 is as follows:

'(4) A system of two or more telephone instruments in electrical connection with each other, each consisting of two or more poles of an electrical circuit in contact one with the other, either or both poles of each instrument being connected with a vibratory plate, so that any vibration which is made at one contact is reproduced at the other, substantially as set forth.'

This patent is, therefore, for the 'system' or combination of a transmitter and a receiver for a speaking telephone. The whole apparatus is shown in the drawings of both patents, and is identically the same in both. The transmitter and the receiver are identical in form and differ in function according as they are placed at the transmitting or at the receiving end of the telephone wire. It therefore appears that one of the functions of the device shown in the patent of 1880, namely, the function of transmitting articulate speech, is identical with the sole object or function of the device covered by the patent of 1891, and that the device for effecting the transmission is identical in both patents. The patent, therefore, seems to me to be void, and beyond the power of the commissioner to issue. Miller v. Manufacturing Co., 151 U.S. 186, 14 Sup.Ct. 310.

The second ground of the bill is that the issue of the patent was unlawfully delayed through the fault of the respondents. The respondent company were the owners of a patent previously granted to Alexander Graham Bell, which covered the art of electrical transmission of articulate speech. The device of Berliner, as both parties in this case agree, covers the only commercially practicable and useful method at present known for effecting such transmission. In this state of facts, the claim of the complainant under this bill is fully and briefly stated by counsel in the following words:

'The proposition is that the Bell Company intentionally delayed the prosecution of the Berliner application and the issue of the Berliner patent for the purpose and with the result of prolonging their control of the art of telephony, which would cease with the expiration of the Bell patent in 1893; and that they did this by submitting to delays on the part of the officers of the patent office, which delays they, the Bell Company, had it in their power to prevent, and refrained from preventing, for an unlawful purpose. This conduct is alleged to constitute a fraud practiced upon the public through the commissioner of patents and his assistants. And it is claimed that the patent so obtained by such fraud may be and should be annulled by the decree of the court, on the authority of U.S. v. American Bell Tel. Co., 128 U.S. 315, 9 Sup.Ct. 90, because there is no substantial difference between a fraud practiced upon the commissioner as an agent of the public and a fraud practiced upon the public with the commissioner's connivance or acquiescence.'

The application for the patent was filed June 4, 1877, and the patent was issued November 17, 1891. The patent to Bell expired in March, 1893. The device covered by the patent in suit had been in public use by the respondent corporation since the year 1878. The respondent corporation was of ample means to prosecute the application. The result of any delay which might take place in the issue of the Berliner patent would evidently be to continue so much longer the practical monopoly of the art of electrical transmission of articulate speech. Under these circumstances, I think it clear that the duty of the respondent corporation was to use the greatest degree of diligence in prosecuting the application to an early issue. There should have been, at least, as great diligence as their own interests would have called for, had their business been...