American Bell Tel. Co. v. United States

Citation68 F. 542
Decision Date18 May 1895
Docket Number121.
PartiesAMERICAN BELL TEL. CO. et al. v. UNITED STATES.
CourtUnited States Courts of Appeals. United States Court of Appeals (1st Circuit)

William G. Russell, James J. Storrow, and Frederick P. Fish (William W. Swan and William K. Richardson, on the brief), for appellants.

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

Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge.

PUTNAM Circuit Judge.

This is a bill in equity, filed February 9, 1893, signed in behalf of the United States by its attorney general, against the American Bell Telephone Company and Emile Berliner containing a prayer in the alternative touching patent issued November 17, 1891, numbered 463,569, to the American Bell Telephone Company, as assignee of Berliner. The prayer is that the patent be in all things recalled, repealed, and decreed absolutely null, but that, if the patent is not deserving to be wholly repealed, but is repealable in part, a decree be made repealing only such parts as the court shall deem to be repealable. As to the latter part of this alternative prayer for relief the court has heard nothing and there is no occasion to consider it.

The bill contains enough on its face and in its frame, and in its signature by the attorney general, to bring it within U.S. v. American Bell Tel. Co., 128 U.S. 315, 9 Sup.Ct. 90. But in the development of the proofs all allegations of affirmative or positive fraud dropped out; so U.S. v. American Bell Tel. Co. fails to reach the merits of this cause.

Berliner's original application was filed June 4, 1877, and patent 463,569 was issued more than 14 years thereafter. This patent is sufficiently described for the purposes of this case by saying in a general way that it covers the microphone. In addition to this, the American Bell Telephone Company, as assignee of Berliner, holds, or held, a patent issued to Berliner, November 2, 1880, numbered 233,969. It is represented that the patent of November 2, 1880, was a divisional one, growing out of the same original application which supports patent 463,569. It is also represented that this patent covers the invention described and claimed in patent 463,569, under such circumstances that the latter comes within Miller v. Manufacture Co., 151 U.S 186, 14 Sup.Ct. 310.

The pith of the case, as stated briefly by the counsel for the United States, is (1) that patent 463,569 is void for illegal delay in its issue, and (2) that it is also void on the ground that the prior patent, 233,969, 'was granted upon the same application to the same applicant for the same invention. ' Each proposition will be stated hereafter more fully, and in the precise form in which it came to the court. Berliner, having no interest, need not be further noticed by us.

As to the first ground of proceeding, the case is found in the following extracts from the bill:

'On June 4, 1877, said Emile Berliner * * * filed in the patent office of the United States an application, executed in due form, asking a grant of letters patent for certain improvements in combined telegraph and telephone. * * * Upon said application such proceedings were held in the patent office that on November 17, 1891, a patent, numbered 463,569, was issued to the respondent the American Bell Telephone Company, as assignee of said Emile Berliner, * * * the title to which patent remains and is now in said American Bell Telephone Company, as owner of the entire interest therein. * * * And your orator alleges that said patent was unlawfully obtained by said respondent the American Bell Telephone Company, and unlawfully issued by the commissioner of patents, and is an illegal grant, and ought of right to be annulled, for reasons which are hereinafter set forth; and as an act of duty and justice towards the citizens of the United States, all whose rights and privileges are unlawfully and unjustly abridged by said patent, your orator brings this bill for the repeal thereof. * * * Your orator shows further on information and belief that after the filing of the application aforesaid by said Berliner, and at some time prior to October 23, 1878, said Berliner sold the invention described in said application and his right to a patent therefore to one of the predecessors and grantors of the respondent company aforesaid, viz. either to said Bell Telephone Company or said National Bell Telephone Company (corporations organized under the laws of Massachusetts), or both, the precise fact in this regard being unknown to your orator. * * * And your orator avers further that the broad claims of said patent 463,569, cover in their scope every form of constant contact telephonic transmitter which it is possible to make. * * * And pointing out the circumstance * * * that from the time of acquiring title to the invention of said Berliner, as aforesaid, until the issue of said patent 463,569, said respondent company and its predecessor or predecessors had control of said application of said Berliner, and at the same time owned the inventions and patents of Blake, Berliner, and others, under which it was enjoying a monopoly of the use of the broad invention of the constant contact telephonic transmitter, your orator avers that there rested upon said respondent company an extraordinary duty to speed said application by every means known to the law, and that if, by any act or omission of said company, the issue of said patent 463,569 was to any extent delayed beyond the date when it might have been issued (if it could of right be issued at all), such delay ought to and does invalidate said patent. And your orator expressly charges that, so far from performing that duty, set said respondent company, by a course of conduct which is hereinafter in part set forth in detail, designedly, and with intent thereby to prolong its monopoly aforesaid, delayed and prolonged the pendency of said application for more than thirteen years after it obtained control of the same as aforesaid.'

Then follow various allegations stating in detail the delay in the progress of the application before June 9, 1882. These we omit, because the counsel for the United States now admit that no point is made for that period.

Then come the following:

'Your orator shows further that it is advised that it is claimed and pretended by said respondent company that from and after about June 9, 1882, the progress of said application was delayed in the patent office by the pendency of other applications which interfered or might have interfered with the application of said Berliner, and that for that reason it was impossible for it to procure the issue of said patent 463,569 at an earlier date than that on which the same was issued, which your orator denies, however, to be true; and your orator in that behalf avers the truth to be, on information and belief, that, while after the year 1882 said application was embraced in one other interference, it need not have delayed the progress of said application to any substantial extent, because it was upon a minor feature of invention, which could have been separated by division from said broad claims of invention as other minor matters were; and, further, that it did in fact occupy in the aggregate only three months out of the nine years which elapsed after said last-mentioned date. And, as to other pending applications which might or could have interfered with said application of said Berliner, your orator avers, on information and belief, that there were only two, of which one was an application by Thomas A. Edison, which was owned and controlled by said respondent company itself, and the other an application filed by one Daniel Drawbaugh, July 26, 1880. And your orator avers on information and belief that said application of said Drawbaugh was never, prior to the issue of said patent 463,569, completed or presented for allowance by the patent office in such form as to be allowable, independently or any interference with said application of said Berliner which could or might have been found to exist; and if, as said respondent company claims and pretends, the examiners or the patent office kept said patent 463,569 suspended from issue for nine years, waiting to see whether said Drawbaugh would present his application in such form as to warrant a declaration of interference between it and said application of said Berliner, such procedure on their part was contrary to law and the duty imposed on them, and it was within the power of the respondent company, by timely and proper assertion of its rights before the patent office, to terminate such unlawful delay, and secure final action on said application. * * * But your orator charges that said respondent company, being interested in prolonging such delay as aforesaid, countenanced and acquiesced in the inaction of the examiners of the patent office, and, though it made at long intervals some pretenses on the record of a desire that said application should be taken up and acted upon, it did not during all that time bring the subject of the extraordinary delay in said proceedings to the knowledge of the commissioner of patents, or in any way challenge the right of the examiner to keep said application waiting year after year for a possible interference with some other application, or take any step whatever to promote the advance of said application, all of which course of conduct amounted, as your orator avers, to a consent and agreement on the part of said respondent company to the unlawful and unauthorized postponement of action on said application by the examiners of the patent office, and affects the said company with the same responsibility for said delay which would attach to it if the same had been by its express act instead of its express sufferance. * *
...

To continue reading

Request your trial
6 cases
  • In re Gamewell Fire-Alarm Tel. Co.
    • United States
    • U.S. Court of Appeals — First Circuit
    • 23 Abril 1896
    ...73 F. 908 In re GAMEWELL FIRE-ALARM TEL. CO. et al. No. 180.United States Court of Appeals, First Circuit.April 23, 1896 ... This ... Machine ... Co., 11 C.C.A. 353, 63 F. 609, 611; American Bell ... Tel. Co. v. U.S., 15 C.C.A. 569, 68 F. 542, 570, and ... ...
  • Eastern Paper Bag Co. v. Continental Paper Bag Co.
    • United States
    • U.S. District Court — District of Maine
    • 9 Octubre 1905
    ... ... v. CONTINENTAL PAPER BAG CO. No. 546. United States Circuit Court, D. Maine. October 9, 1905 ... this circuit, in American Bell Telephone Company v ... United States, 68 F. 542, ... ...
  • Post v. Beacon Vacuum Pump & Electrical Co., 216.
    • United States
    • U.S. Court of Appeals — First Circuit
    • 14 Junio 1898
    ... ... BEACON VACUUM PUMP & ELECTRICAL CO. et al. No. 216.United States Court of Appeals, First Circuit.June 14, 1898 [89 ... 353, 63 F. 609, 611, decided June ... 23, 1894; American Bell Tel. Co. v. U.S., 15 C.C.A ... 569, 68 F. 542, 570, ... ...
  • American Brake Shoe & Foundry Co. v. Hoadley Brake Shoe Co.
    • United States
    • U.S. District Court — District of Massachusetts
    • 1 Marzo 1915
    ... ... v. HOADLEY BRAKE SHOE CO. No. 268.United States District Court, D. Massachusetts.March 1, 1915 [222 F. 328] ... Continental Paper Bag Co. (C.C.) 142 F. 479, 500; ... American Bell Telephone Co. v. United States, 68 F ... 542, 15 C.C.A. 569; Id., 167 ... ...
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT