United States v. American Bell Telephone Company (167 U.S. 224)

[Syllabus from pages 224-226 intentionally omitted]

On February 1, 1893, the United States filed in the circuit court of the United States in and for the district of Massachusetts a bill in equity against the American Bell Telephone Company and Emile Berliner, praying a decree to set aside and cancel patent No. 463,569, issued on November 17, 1891, to the telephone company, as assignee of Berliner. Upon amended pleadings and proofs the circuit court on January 3, 1895 (65 Fed. 86), entered a decree as prayed for. On appeal to the court of appeals for the First circuit, this decree was on May 18, 1895, reversed, and a decree entered directing a dismissal of the bill. 33 U.S. App. 236, 15 C. C. A. 569, and 68 Fed. 542. Thereupon the United States took an appeal to this court. A motion was made to dismiss the appeal for want of jurisdiction, which was denied (159 U.S. 548, 16 Sup. Ct. 69), and the case was argued upon the merits.

As stated by counsel for the appellant, four grounds for relief were presented and discussed in the circuit court. Those grounds are:

'(1) That the delay of the application in the office for thirteen years was, under the circumstances alleged in the bill, unlawful and fraudulent.

'(2) That a patent, issued November 2, 1880, upon a division of the original application, covers the same invention as that covered by the patent in suit, and exhausted the power of the commissioner as to that invention.

'(3) That the patent is not for the same invention which was described in the application as filed.

'(4) That, taking the application to date from the time when it was made by amendment to cover the invention described and claimed in the patent as issued, it was barred by public use for more than two years.'

By that court only the first two were considered, and the argument in the court of appeals was confined to those questions.

R. S. Taylor and Causten Browne, for appellant.

[Argument of Counsel from pages 227-237 intentionally omitted]

Frederick P. Fish and Joseph H. Choate, for appellees.

Mr. Justice BREWER, after stating the facts in the foregoing language, delivered the opinion of the court.