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means known to the law, as alleged in the bill, or to exercise the greatest possible diligence, as claimed at the bar.
During the progress of the arguments, the court anxiously looked for practical illustrations of what was meant by the high degree of diligence referred to, what practically could be done to satisfy its demands, and wherein, if accepted as necessary to relieve the applicant from the charge of a course of conduct unlawful or by implication fraudulent, it differed in its practical requirements from what was in fact done. The court failed to receive light in this direction; and it regards it as an answer to the proposition of the United States on this part of the case that what it did obtain was a mass of theoretical propositions, which, if applied practically, might or might not have involved the case, in its progress through the patent office, in greater complications and difficulties than those which did in truth surround it. In other words, so far as the proofs go, the course of the application was in accordance with the usages of that office, and was such as the officials there, acting in good faith and according to their practical experience, determined at the time to be on the whole the best. What would have been the practical result of the theoretical courses suggested, with an application around which centered so much powerful hostility as gathered about this one, it is impossible to ascertain by any methods of determination given to the courts. If, instead of suggesting theories as to what might have been done, the United States could have pointed out among the usages of the patent office an existing pathway other than that which was adopted, we would have some rule by which to estimate what could have been done in the exercise of extraordinary diligence other than was done.
One proposition of the United States, illustrating generally what they say might have been done, we give in the exact terms stated to us at the bar:
“The duty of the Bell Company was to get its patent with the least possible delay by the exercise of all its legal rights. Whatever it had a right to do to expedite an application in its own interest it was in this case bound to do in the public interest. If a situation arose in which the commissioner was not doing his duty, and in which it would have had a right to challenge his conduct in its own interest, it was its duty to challenge his conduct in the public interest. Its submission in silence to delay directed by the commissioner in violation of his duty was a failure in the discharge of its duty."
In its own interest, the American Bell Telephone Company had a right to go to congress for legislation touching the general course of proceedings in the patent office, as did the commissioner himself in 1889. It might have applied for the removal of subordinates for the purpose of substituting others who would attempt a more radical course of proceedings. It might have applied for the remoral of the commissioner himself, and the appointment of a successor who would have turned his energies more in the direction of forwarding the application under discussion. It might hare applied to the commissioner for a general revision of the rules of practice of the patent office. The imagination can hardly put a limit to the things it had a right to do. To say, therefore, that it was bound to do in the public interest all that it had right to do in its own, and that, if it did not do this, it should pay the penalty of a forfeiture of an invention said to be extremely valuable, is a proposition so unreasonable that the mere statement of it by the United States seems to confess the weakness of their case.
Another suggestion of a general character in this same direction was made by the United States as follows:
“The officials of the patent office were guilty of gross dereliction of duty in their treatment of the Berliner application, but there is no reason to believe that anything would have been necessary to secure prompt and proper action by them except a fair, candid, full, strong, and persistent presentation of the facts by the Bell Company, with reasonably ingenious suggestions from it of ways of meeting the difficulties which were encountered in the progress of the application."
This is a merely negative proposition so far as it attempts to reach the defendant corporation without specification, while the case requires an affirmative one with specifications and proofs. But the proposition is that there was on the part of these officials a gross dereliction of duty. Indeed, in the presentation of the case of the United States we have heard very much in censure of the public officials, clothed in the strongest epithets, of which we have already given some instances. We are compelled to say that, if this record suggests any dereliction of official duty, it was in the form of a continued hostility to the American Bell Telephone Company, and of an indisposition to grant the application for the Berliner microphone, with a concurrent disposition to nurse and favor the Drawbaugh application, either for its own direct advantage, or for the purpose of defeating inventions controlled by the defendant corporation. Notwithstanding, as we have already said, the proofs do not convict the officials, they show enough to have warranted the American Bell Telephone Company in guarding itself against the possibility of such a disposition during the nine years between June 9, 1882, and the issuing of the patent now in dispute. Under these circumstances, and after the American Bell Telephone Company and its solicitors had performed the customary duties with reference to the forwarding of its application, including all those things required by statute or by the patent office, the prompt performance of all which is conceded by the United States, it is not for a court of law to say that that corporation, as to all the unofficial methods which it might take, or might omit to take, for the advantage of its case, was not entitled to use its own judgment with reference to the persistency of representation to public officers, especially those whom they had some reason to regard as unfriendly.
But there are more serious difficulties with this proposition. It relates, of course, to unofficial or informal solicitation, including personal interviews. So far as the presentation of the case was concerned, the proofs show that there was at least a reasonable and ordinary amount of this. But what the United States require, as we have already shown, was a high degree of zeal in this direction. Whether, however, the law's measure is that of reasonable diligence or the highest, the courts have no standard by which they can determine what amount of informal solicitation would have been proper, all the formal channels of communication having been occupied, as they were in this case, or what amount would have been permitted by the public officers concerned; nor is there any. thing in this record which affords proof to the court that informal solicitations beyond those which were actually used would have been effective. It must be admitted that it is not only necessary for the United States to prove that there was a lack in this direction, but that the lack contributed to the result. The court might guess that additional informal solicitations would have advanced the application, or, perhaps, have retarded it; but there is no proof which enables us to form proper judicial conclusions on this point, and probably, from the nature of the thing, there could be none.
If the record showed that the American Bell Telephone Company had failed to make the usual communications, whether oral or written, there might be something which the law could take hold of; but, as the proofs stand, the fact is otherwise.
The United States urge strenuously Machine Co. v. Keith, 101 U. S. 479, 485. This case related to the obligations of a patentee as towards alleged infringers, and not towards the United States or the public at large. It, moreover, differed essentially from the case at bar, because here the United States seeks to establish a rule, heretofore unknown in the general administration of the law, by which a person who has acquired a legal title is sought to be deprived of it on the ground of laches; while Machine Co. v. Keith related strictly to a question of abandonment, not as a conclusion of law, but as a matter of fact. But in Smith v. Vulcanite Co., 93 U. S. 486, where a similar claim of abandonment was set up, it appeared that the caveat was filed in May, 1852. The application for the patent was made in 1855, and was rejected three times, the third time being in 1856. Thus the matter lay until 1864, when a new petition was filed; and the patent was finally granted June 7, 1864, more than 12 years after the caveat was filed, and 9 years after the first application. The question was again purely one of intention, and the circumstances of the delay were met and overcome by the poverty and ill health of the applicant. The court, observing on this case in Machine Co. v. Keith, said, on page 488, that the patentee never relaxed his vigilance, he left nothing undone which he could do, and nobody had been encouraged by any action of his to appropriate his invention. His patent was sustained. It is to be borne in mind that, as the statute then stood with reference to each of these cases, the limitations now found in section 4894 of the Revised Statutes did not exist; so that the question stood on the common law. On the whole, in the cases of Smith v. Vulcanite Co. and Machine Co. v. Keith, in each of which the question was one purely of intent, facts of the character raised by the contention of the United States which we are now considering were clearly relevant, and easily and justly weighed and applied; but in the case at bar, where the proposition relates to the alleged legal duty of an inventor, the application of Machine Co. v. Keith, and by consequent necessity of Smith v. Vulcanite Co., would raise a crop of undefinable discriminations, according to the peculiar personal circum
stances as to financial ability or inability, health or ill health, of different inventors, not recognized by the law wherever a positive duty is imposed. Indeed, the whole tenor of the case of the United States, so far as it is supported by the proofs, has this same aspect, through the appearance of requiring of the defendant corporation a degree of diligence and astuteness apparently greater than that which would be expected from other inventors.
These, we think, are the only general propositions made to us in illustration of the rule of diligence demanded, and we might properly dispose of the case on this general view of its substantial features; but its importance requires us to look at it somewhat closer, and to test it in detail at certain stages. The United States divide the history of this application into three periods: The first from June 4, 1877, to June 9, 1882; the second from June 9, 1882, to March 19, 1888; and the third from March 19, 1888, to November 17, 1891, when the patent issued.
We find it more convenient to discuss the third period in advance of the second. The United States dispose of it very summarily, and the learned judge of the circuit court was of the opinion, as we understand him, that there was no effort, so far as he could see in the evidence, on the part of the respondent corporation, to prevent the delay covering this period. One proposition of the United States was as follows:
“With the decision of the supreme court in the Drawbaugh Case, the event happened which, by the understanding which had subsisted for six years between the Bell Company, the patent office, and Drawbaugh, was to determine the question of allowance of Berliner's application. The decision was as sweeping and comprehensive as could have been expected. The court held that Drawbaugh's story was, as a whole, a tissue of fraud and falsehood. The Bell Company, assignee of Berliner's invention, and the People's Telephone Company, assignee of Drawbaugh's invention, were parties to the record. If it was possible for the court within the issues to decide the question of priority of invention between Berliner and Drawbaugh, it became res adjudicata by the decree. If it was possible for the opinion of the supreme court to have any persuasive force with the commissioner of patents, that persuasion was overwhelming. * As to the third period, the time following the decision of the supreme court (excepting the interval between May 9, 1888, and February 26, 1889, during which time the application was standing upon a rejection by the examiner and appeal to the board), the Bell Company knew that the only obstacle in the way of the issue of the patent was the pendency of Drawbaugh's applications. It knew that the bar of public use against those applications was inseparable, and hence that no interference could ever be declared. It knew that the highest court in the land had decided, in a suit to which both claimants, through their assignees, were parties, that Drawbaugh's claim of prior invention was unfounded. Was there no way in which it could enforce that which it knew, and could so clearly show, to be its right?”
We see no criticism touching the American Bell Telephone Company with reference to this period, except what is suggested in the interrogatory quoted. On the other hand, as we have already remarked, public officials receive the weight of the criticism, the United States having pressed on us the following views:
“No explanation can be given of these shameful proceedings in the patent office that will acquit the commissioner from an imputation of corruption, or an indifference to the rights of the public which would be scarcely less criminal, except that he did not realize what was going on. The application was not before him personally, and it is only charitable to suppose that its existence, the character and scope of its claims, their relation to the art of telephony, and the effect which the delay in the grant of the patent would have in prolonging the monopoly of that art, were never present before his mind Logether, so as to give him a realizing sense of the gravity of the situation. As for the examiners, that excuse cannot be offered, or any other, unless it be that they had become so much the slaves of routine that they had no conception of duty, except to keep the applications in their hands rolling down ruts which had been worn by custom, and had become oblivious of all considerations of justice and right which exist apart from precedents and rules."
It is also said that a mere suggestion on the record that delay in this application was prolonging the monopoly of the microphone would have commanded instantly the co-operation of every member of the patent office corps in speeding its progress.
We may as well consider at this point, for the whole case, the propositions thus indirectly stated, that the commissioner was not personally advised of the true relations of this application, and that the American Bell Telephone Company was in fault for not bringing them personally to his attention. The record fully contradicts this. It shows beyond question that the Berliner and Edison applications, which went hand in hand, had become so notorious that the knowledge of them permeated the patent office from the head to the foot, and that the contest against them by Drawbaugh was so vigorous that it was impossible that any person, from commissioner to examiners, should not have understood their importance. The record shows by the testimony of four examiners, one assistant examiner, one commissioner, and one assistant commissioner, and by the reports of an additional examiner and five additional cominissioners, as well as by three separate decisions of the board of examiners in chief, acting either on the Berliner microphone or Drawbaugh's application, that all these officials and official bodies had personal knowledge of the existence and pith of the controversy, and of the parties to it, and more or less of the details. The testiniony cited by the United States touching an alleged agreement to await pending litigation in the suits known as “The Telephone Cases” (126 U. S. 1, 8 Sup. Ct. 778), which will be referred to more at length hereafter, states positively that at the time this alleged arrangement was made, which was in 1882 or 1883, “the whole situation was understood by the commissioner personally." In February, 1889, the commissioner directly interfered in the proceedings, under such circumstances that he could not have failed to appreciate the issues in the case. An examiner testifies that, for certain reasons which he explains, he constantly acquainted the then commissioner personally with all actions of importance which he contemplated, and solicited his views touching them.
This com missioner was in office from the spring of 1887 to the spring of 1889. At one point, as already stated, the case shows direct personal interference by the commissioner. A formal request from the examiner to the commissioner for a disposition of the Drawbaugh application, under date of January 19, 1889, bears the following indorsement, under date of February 20, 1889, signed by the com