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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, 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 of 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 of 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 appli
cation 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. * * * Wherefore your orator says the wrong and injury perpetrated upon the people of the United States by the issue of said patent 463,569, 14 years after the application therefor, has come about by the design, machination, and connivance of said respondent company, and by means of the abuse by it of the generosity and liberality of the government of the United States and the patent laws, and in justice and equity said company ought not to derive or receive any profit or advantage therefrom."
There is much additional matter bearing on these last propositions, but we have given enough to show this part of the case. There are also allegations that, prior to acquiring the invention of Berliner, the defendant corporation became the owner of the patent numbered 174,465, issued March 7, 1876, to Alexander Graham Bell, covering the transmission of sound by means of an undulatory current of electricity, and the same considered in The Telephone Cases, 126 U. S. 1, 8 Sup. Ct. 778; that patent 463,569, if valid, will continue without substantial diminution, during the full term thereof, the same close monopoly of the art of telephoning enjoyed under the patent to Bell; and that this is against justice and equity, and contrary to the plain spirit and intent of the patent laws.
These are pointed out as circumstances on which the bill bases an alleged extraordinary duty of the defendant corporation to speed the Berliner application. If it were necessary to examine the motives of the American Bell Telephone Company, as bearing on a question of either positive or implied fraud, or on a question whether it did in fact speed the application of Berliner, and its purposes in relation thereto, these facts might become relevant as evidence, as might also the alleged great value of the microphone. But it is clear that all such allegations are irrelevant to the bill itself. So far as the law is concerned, the patent in suit is to be tested independently of the Bell patent. There can be but one law touching alleged delays in the progress of an application through the patent office, and touching the duty of applicants with reference thereto, whether the invention was from the outset seen to be valuable, or only afterwards proves to be so, or always remains of little account. To deny this is to deny that the laws are equal, and would furnish a standard for the determination of the rights of patentees too fickle and imaginative to form a proper basis for the use of a court of law. Therefore, we have not set out these allegations as proper portions of the bill, and do not deem it necessary to make further explanations in reference to them.
The following extracts from the answer of the American Bell Telephone Company sufficiently illustrate its defense on this point:
"In and by that patent, the United States, plaintiff herein, by its secretary of the interior, its commissioner of patents, and its various other officers in its patent office, by it duly appointed, employed, and empowered to make the grant, and to make, conduct, and supervise the examination and other proceedings which preceded it, announced and declared that it had found and adjudged that the said Berliner had duly presented a petition praying for the grant of letters patent for the invention and improvement in said patent, and its said specification described, had assigned the same to this respondent; and that he and this respondent had complied with the various requirements of law in such case made and provided; and that, upon due examination made, the United States had adjudged said grantee to be justly entitled to said patent under the law. * * * The United States, plaintiff herein, had in fact so adjudged by its duly-authorized officers, after due, full, elaborate, and complete examination touching each and all such matters. Each such examination and decision was made by the officers whom the plaintiff held out as having, and who actually had, jurisdiction to make that examination, and to determine, regulate, supervise, and control the manner and form of the proceedings, and the whole conduct thereof. Those examinations and decisions were made with a full knowledge of all material facts. They included an actual consideration of all the objections set forth in said bill, and of the truth or falsity and legal effect of every matter therein alleged as matter of fact; and the patent was issued in consequence and as the result of conclusions intelligently and deliberately reached upon such examination and adjudication. Its grant was not in any degree the consequence or result of any fraud, accident, or mistake, as in said bill most falsely is alleged, or purports to be allegéd, nor was there any violation of law or error in the proceedings upon which it was granted. This respondent and said Berliner, in the initiation and in the prosecution of the application which resulted in said patent, and in all the proceedings with relation thereto, in all respects conformed to and complied with the various requirements of law in such case made and provided; did nothing which in law, justice, or good conscience they ought not to have done; and omitted nothing which in law, justice, or good conscience they ought to have done. All their respective statements and representations were intended by them, and were believed by them, respectively, to express the truth. They disclosed and communicated to the patent office everything which it was their duty to disclose or communicate. They did not conceal nor attempt to conceal from any official of the patent office anything which they were bound to communicate, or which they believed that it was material for him to know. They did not deceive or mislead any such official, nor did they attempt nor intend so to do. They did not take advantage of any ignorance of any such official, nor attempt to do so; nor did they profit by any such ignorance or seek to. They did not commit any abuse of process, proceedings, or forms of law, nor contrive, attempt, nor intend so to do, and. were not guilty of any fraud, concealment, imposition, or false suggestion whatever. They did not practice, nor attempt to practice, any fraud, deceit, suppression, or subterfuge, but in all respects conformed to law and to the highest good faith and honesty. * * * Whether Berliner's application was pending for a longer time than was necessary or proper this respondent is not sufficiently informed to fully admit or deny, and therefore requires the plaintiff to produce proof thereof, if material. But this respondent did not designedly, with intent to postpone the expiration of said patent and its rights thereunder, delay or prolong the pendency of the application, nor do any act tending to that end. Neither the pendency nor the progress of the application nor the issue of the patent in suit were delayed by any act, omission, or slowness of either respondent. It never omitted to take promptly every action which it was incumbent on it to take, or the taking of which it believed would hasten that issue. It never failed to prosecute the same promptly, and it used every means known to the law to speed the application, including applications to the commissioner in person as often as they seemed likely to result in speeding the case. It avers that the slowness alleged in the bill was the act of the plaintiff itself. Neither respondent in any way contributed thereto by act or by omission. Neither such delay, nor any action, inaction, or slowness which caused it or contributed to it, was in any way aided, promoted, due to, desired, intended, designed, contrived, countenanced, acquiesced in, or connived at, by either of the respondents; and neither of them is responsible therefor, nor for the consequences and results thereof."
To the answer replication was duly filed and proofs taken. The cause was heard in the circuit court, and there decided in favor of the United States, on each of the points we have briefly stated as being issues in the cause, from which appeal was duly taken to this court.
The case has been so thoroughly argued here on either side that the court has found little difficulty in apprehending it. We deem it prudent to refrain from determining ultimately any questions of fact, except so far as we find.it necessary so to do in order to apply the appropriate rules of law. The bill alleges, in portions of it which we have not cited, that Berliner's application was abandoned at one stage of the proceedings. In order to correctly estimate the issue under discussion, it is necessary to note that this is not now relied on. The United States have somewhat variously stated their position, and our first duty is to understand precisely what it is. In the very lucid and careful opinion of the learned judge who heard this case in the circuit court, one statement of it is repeated as follows:
“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.”
This is far from precise. It uses the words "intentionally delayed,” while it is necessarily conceded that there is no evidence to support that expression in its natural sense, and that the case comes down to a claim that the American Bell Telephone Company submitted to delays which it was in its power to prevent. It continues that the defendant corporation refrained from prevention for an unlawful purpose. The “unlawful purpose” is understood to mean an expectation that its monopoly would be extended through the delays on the part of the patent office. This, in some aspects, it might well regard as advantageous; but to undertake to lay down a rule of :aw or of fact that acquiescence in the delay of a public official who is bound to perform a certain act involves an unlawful purpose because it may result to the advantage of the applicant omits an important element.
If the applicant is under no obligation touching the delay, there is no rule of law by which it can be said that, because he may receive an incidental benefit therefrom, his purpose in relation thereto is unlawful. A man's motives will not make wrongful an act which, in itself, is not wrongful. This came directly in issue, and was so given by Chief Justice Jervis, in Heald v. Carey, 11 C. B. 977, 993; but it is not necessary to cite authorities to this proposition.
This citation further states that there is no substantial difference between a fraud practiced upon a commissioner which is an injury to the public and one practiced on the public with the commissioner's connivance and acquiescence. This is probably a true statement of the law, because either hypothesis involves positive and affirmative fraud of a public character; but of this there is no claim whatever in the case at bar as it now stands. We must therefore look somewhere else for an accurate statement of the position of the United States. At the hearing at bar the propositions were that the American Bell Telephone Company owed the public some duty in the matter under consideration; that that duty is to be sought in the principle of legal ethics that every man is bound to enjoy his own in such a manner as not to interfere with a like enjoyment of their own by others; that if the exercise of the rights of the American Bell Telephone Company under the Berliner application was liable to work injury to the public, in a way foreseeable by the company, it was bound to take notice of that fact, and conduct its proceedings in such a manner as to avoid that injury, if possible; that, if this situation imposed any duty on the American Bell Telephone Company towards the public, it was a duty commensurate with the interests involved; and that no doctrine of reasonable diligence will reach the case unless reasonable diligence is held to be the utmost diligence; and that it owed the public an extraordinary duty in the matter, which could be discharged only by the greatest possible diligence in the prosecution of its application. It was further claimed that the delays set up in the bill were unwarrantable and illegal; that the attitude of the American Bell Telephone Company towards them was not only one of consent, but of interested consent, of acquiescence, of guilty connivance; that the commissioner was betraying his trust in permitting these delays; that it knew this, and knew the practical effect of what he was doing; and that it was its duty to stir the commissioner to action, instead of refraining from so doing. It was further said that, if the American Bell Telephone Company had bribed the commissioner for holding Berliner's application from year to year for the purpose of prolonging its monopoly, this would plainly be a fraud on the public, through the commissioner; but that to reach the same result by an intentional reliance on his ignorance, incapacity, and neglect of duty, instead of his cupidity, and by conduct in keeping with such reliance, the same injury results to the public, with only the degree less of moral heinousness of behavior on the part of the applicant. We ought to say that all these epithets charging the commissioner or any other officer of the patent office with any conscious violation or neglect of duty, or ignorance and incapacity, are not sufficiently supported by the proofs in the case, unless it can be claimed that they constitute the language which the law applies in consequence of delays which possibly might have been prevented by the public officials. The United States having thus stated its position, we do not find ourselves required to recite the details of the proofs. It is enough to say that the case shows that all the allegations in the answer which we have quoted are sustained, except only that we do not deem it necessary for the purposes of this case to determine fully the condition of the proofs on the proposition that there rested on the American Bell Telephone Company an extraordinary duty to speed its application by every