United States v. American Bell Tel. Co.

• Decision Date: 26 September 1887
• Citation: 32 F. 591
• Parties: UNITED STATES v. AMERICAN BELL TEL. CO. and others. [1]
• Court: U.S. District Court — District of Massachusetts

32 F. 591

UNITED STATES v. AMERICAN BELL TEL. CO. and others. ^[1]

United States Circuit Court, D. Massachusetts.

September 26, 1887

These patents have been vindicated in the courts. Telephone Co v. Dolbear, 15 F. 448; Same v. Telephone Co., 27 F. 663. When this bill was filed the records in these suits were under advertisement by the supreme court. This bill asks this court to usurp the place of the supreme court to find that all those decisions are wrong; to restrain those courts from enforcing their orders; to enjoin the supreme court from hearing those cases; to enjoin this court and all other circuit courts from obeying the supreme court mandates in those cases; to enjoin the Bell Company from asserting any right under those patents in any tribunal whatever. This cannot be done. Attorney General v. Chemical Works, 2 Ban. & A. 298, post, 608; Neilson's Hot-Blast Patent, Webst. Pat. Cas. 665; U.S. v. Colgate, 21 F 318.

The attorney general has no power to bring, nor this court any power to entertain, a bill to cancel a patent for inventions under any circumstances. The attorney general is an officer of limited powers; this court is a court of limited jurisdiction. They can only exercise such powers as have been conferred upon them by law.

The terms of the patent act, and the practice and decisions under it, show that the proceeding has not been authorized. From 1790 to 1836 the power existed by statute in certain cases. Those statutes were repealed in 1836. Since that time only one patent has been canceled by bill, (Gunning's Case, 18 F. 511,) and in that case the patentee confessed that his patent was void. The other cases (four in number) have been dismissed on demurrer.

Where the patent system is the creation of statute this proceeding rests on positive enactment. In England, where the system rests solely on royal prerogative, scire facias to cancel patents has been adopted both by the crown and by express statute. Congress has the 'sole power' over patents and by the acts of 1790 and 1793 gave scire facias in certain cases. The power rested solely on the statute, and could not be exercised without it. Ex parte Wood, 9 Wheat. 603, (1824.) Act of 1836 repealed all provisions allowing proceedings to cancel patents, except in the case of interfering patents, which was retained by express enactment.

A bill in equity to cancel a patent for an invention cannot be maintained where a scire facias cannot. To grant a patent is an act of sovereignty. Its cancellation is equally an act of sovereignty. A bill will lie to cancel a patent for lands because the king may come into chancery in respect to his property like any other party. Attorney General v. Vernon, 1 Vern. 277. So the United States, as a property owner, may file a bill to cancel a patent for lands. But the United States does not grant a patent for an invention out of that which was property in its hands before the grant, or will become property in its hands after the expiration or cancellation of the patent.

The right to grant or cancel a patent for an invention is a governmental prerogative which congress alone has power to exercise. To assert that the 'government' which grants can cancel, is to say that congress,-- the legislative power, and not the judicial power,-- can authorize the suit to recall. Mowry v. Whitney, 14 Wall. 439. The power can only be exercised in the manner prescribed by congress, and not otherwise. McCulloch v. Maryland, 4 Wheat. 317; Osborn v. Bank, 9 Wheat. 738; McClurg v. Kingsland, 1 How. 206; Evans v. Jordan, (a suit on a patent,) 9 Cranch, 199; Kohl v. U.S., 91 U.S. 367. This is the basis for suits to cancel patents for land. U.S. v. Schurz, 102 U.S., and citations.

Congress has not only by failing to give the power in the case of patents for inventions, by any existing legislation, but by its course of legislation,--its former grant of it, and the repeal of that grant,-- prohibited it.

The power invoked has never been sustained by the supreme court, nor has any case been before it which called for its decision. It has never been elaborately considered at circuit but once, and then the power was denied. Attorney General v. Chemical Works, 2 Ban. & A. 298, 9 O.G. 1062, and post, 608. In Rubber Co. V. Goodyear, 9 Wall. 796, (an infringement suit,) the court decided that the question of fraud in procuring an extension was not open in an infringement suit, and left it to be regulated by 'the principles of general jurisprudence.' An action was then brought to cancel the patent, (Rubber Co. v. Goodyear, 9 Wall. 811,) and the bill was dismissed for want of action to cancel a patent brought in the name of a private individual, and the court held the action could not be maintained. In Mahn v. Harwood, 112 U.S. 354, 5 S.Ct. 174, no reference was made to proceedings to cancel except to distinguish them from defenses in an infringement suit. Gunning's Case, 18 F. 511, held a bill would lie to cancel for fraud; but the action was not defended, and the fraud was admitted. In U.S. v. Colgate, post, 624, Judge WALLACE dismissed the bill as not resting on charges of fraud, and the patent had already been sustained. In U.S. v. Frazer, 22 F. 106, bill was dismissed as not involving fraud, and the ground could be considered in an infringement suit.

This bill does not state a case for equitable interference, within the general rules of equity jurisprudence.

The bill must affirmatively show that complainant is authorized to file it, and that the court is empowered to grant the relief.

The case made by the general frame of the bill, which is the only case the court deals with, (Eyre v. Potter, 15 How. 42,) rests on the general principles of equity jurisdiction relating to the cancellation of deeds, and can be extended no further. The bill avers that it is the right, and proper instances the duty, of the attorney general to bring the bill for cancellation. If the power to cancel, like the power to grant, is a sovereign power, it cannot be exercised without the positive authority of congress. If the bill is to be maintained on the general equity power to cancel deeds, then the United States is to be governed by the rules governing a bill of a private suitor to cancel a deed. U.S. v. Railroad, 98 U.S. 569; Fontain v. Ravenel, 17 How. 369; People v. Ingersoll, 58 N.Y. 1; City of Georgetown v. Coal Co., 12 Pet. 78; Irwin v. Dixion, 9 How. 27; Miller v. Kerr, 7 Wheat. 1; Attorney General v. Detroit, 26 Mich. 269; Attorney General v. Ice Co., 104 Mass. 239; Davenport v. Dodge, 105 U.S. 242. This doctrine is true also when equity is invoked in aid of the prerogative right. Root v. Railway Co., 105 U.S. 189, 192. Whatever be the foundation of the bill, it must not only make out a right, e.g., that the patent is invalid, but must show grounds calling for the interposition of equity. The United States as a plaintiff in equity is subject to the rules of equity. Brent v. Bank. 10 Pet. 596, 614; U.S. v. Throckmorton, 4 Sawy. 58, affirmed on appeal, 98 U.S. 61; U.S. v. Tichenor, 12 F. 415; U.S. v. Beebe, 17 F. 37, 41; Story, Eq. Pl. 813; 2 Story, Eq.Jur. § 1520, and note 3. The bill must show on its face by specific allegations not only an equity in support of it, but that there is no equity to impair it; and where there are any facts or circumstances from which a countervailing equity may reasonably be inferred, such inference must be displaced by positive averments in the bill. Miller v. Kerr, 7 Wheat. 1; U.S. v. Atherton, 102 U.S. 372; Sullivan v. Railroad Co., 94 U.S. 806; Lansdale v. Smith, 106 U.S. 391, 1 S.Ct. 350; Stearns v. Page, 7 How. 819, 829; Moore v. Greene, 2 Curt.C.C. 202, 19 How. 69; Badger v. Badger, 2 Wall. 87, 94; The Key City, 14 Wall. 653; Harwood v. Railroad Co., 17 Wall. 78; McQuiddy v. Ware, 20 Wall. 14, 19; Marsh v. Whitmore, 21 Wall. 178, 185; U.S. v. Throckmorton, 98 U.S. 61; Wood v. Carpenter, 101 U.S. 135, 140; Quinby v. Conlan, 104 U.S. 420; Ambler v. Choteau, 107 U.S. 586, 590, 1 S.Ct. 556; Wollensak v. Reiher, 115 U.S. 96, 5 S.Ct. 1137; Van Weel v. Winston, 115 U.S. 228, 6 S.Ct. 22; Blake v. Stafford, 6 Blatchf. 196, 200; Hazard v. Griswold, 21 F. 178; Wallingford v. Mutual Soc., 5 App.Cas. 685. This it does not do.

The bill rests mainly on the jurisdiction of equity to cancel or reform contracts in cases of fraud practiced by the grantee on the grantor, or mutual mistake. The mistake of the grantor alone is no ground. Kerr, Fraud & M. 479; Rooke v. Kensington, 2 Kay & J. 753; Fowler v. Fowler, 4 De Gex & J. 250; Griffiths v. Jones, L.R. 15 Eq. 279; Sells v. Sells, 1 Drew. & S. 42. No case of mutual mistake is made out, nor is there an allegation of a single fraudulent act of Bell or his representatives.

Equity will not interfere to cancel a deed or contract, simply because it is void, if the invalidity can be shown in any suit brought to enforce it, (Insurance Co. v. Bailey, 13 Wall. 616; Hannewinkle v. Georgetown, 15 Wall. 547; Phelps v. Harris, 101 U.S. 375; Hapgood v. Hewitt, 119 U.S. 226, 7 S.Ct. 193,) except to avoid a multiplicity of suits, in cases where the decision on the bill to cancel will be binding on all the parties, (Orton v. Smith, 18 How. 263;) or in cases where the facts showing invalidity rest merely in the memory of living witnesses, and the suit to enforce the contract may be delayed until such witnesses are dead. The bill does not state a case within these rules. The grounds which make the patent invalid could every one be set up in an infringement suit, and there is no suggestion in the bill to the contrary.

No controlling decision can be made here. The power invoked is unilateral since the defendants cannot file a cross-bill to reform the letters patent. Butterworth v. U.S., 112 U.S. 50, 5 S.Ct. 25. Equity...