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§ 715. Re-issued Patent not Collaterally Attackable for Fraud in Procuring the Re-issue.

Neither a re-issued nor an original patent can be collaterally attacked on the ground that it was granted through the fraud either of the applicant or the Commissioner. This question can be raised only on a proceeding to repeal the patent.1 Evidence of such fraud may be found in grossly Powder Co. v. California Vigorit Powder Co. (1880), 4 Fed. Rep. 720; 6 Sawyer, 508; 18 O. G. 1339; Wells v. Gill (1872), 2 O. G. 590; 6 Fisher, 89.

In several particulars, however, this rule has been necessarily departed from, and there seems no sufficient reason why it should be at all regarded. Evidence outside the record must sometimes be admitted to ascertain the character of the actual original invention and its identity with that embraced in the re-issue; and in determining the question of original inadvertence, etc., by the reasonableness of the delay in obtaining a re-issue, all the circumstances attending the delay may be, as they constantly are, subjected to examination, and the validity or the scope of the Claims of the re-issue be thus indirectly decided by matters appearing only by parol. The reluctance of the courts to formally adopt this position, and throw the whole field of inquiry upon these two questions open for any and every ordinary method of investigation seems to arise from an exaggerated view of the authority of the Commissioner and the effect of his decision in allowing a re-issue. As this fundamental doctrine becomes clearer and more accurately stated it may be confidently expected that these resulting questions will be settled on a rational basis, and that the same latitude of inquiry will be permitted as to the cause of the alleged defect in the original patent, as is now enjoyed in reference to the patentability of the invention and the priority of the inventive act.

§ 715. 1 In reference to this question also the law has undergone marked alterations. It was formerly held that the question of fraud in obtaining the re-issue was open and might be submitted to the jury. See Stimpson v. Westchester R. R. Co. (1846), 4 How. 380; 2 Robb, 335; and § 714, note 1, ante. In Graham v. Mason (1869), 5 Fisher, 1; 4 Clifford, 88, it was suggested that a reissue can be collaterally attacked either for fraud or want of identity. The current of authority is, however, to the contrary, and in spite of occasional apparent departures from the doctrine it may be regarded as the settled law that no objection to the re-issued patent on the ground of fraud in the patentee in procuring it, or corrup tion in the Commissioner in allowing it, can be raised except in a proceeding instituted by the United States for its repeal. Thus in Giant Powder Co. v. Safety Nitro-Powder Co. (1884), 10 Sawyer, 23, Sawyer, J.: (25) “The question whether there is a fraud in the surrender and application for a re-issue is one of fact, for the officers of the Patent Office alone to decide, and their determination is conclusive in a collateral proceeding." 27 O. G. 99 (100); 19 Fed. Rep. 509 (511).

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and unwarrantably extended Claims, or in descriptive matter clearly intended to mislead the public, or in extrinsic facts which manifest bad faith on the part of the patentee or corruption on the part of the Commissioner.2 This rule does

infringer, in a suit against him for an infringement, upon the ground that the letters-patent were procured by fraud in prosecuting the application for the same before the Commissioner." 6 O. G. 724 (725).

ago, decided that where an act was to be done or a patent granted upon proofs to be had before a public officer upon which he was to decide, the fact that such officer had done the act or granted the patent was prima facie evidence that the proofs had been regularly made and that they were satisfactory, even though the patent did not contain any recitals that the prerequisites to the grant had been fulfilled; and such continued to be the rule until the question came up under a later act, when the Supreme Court held that the granting of a re-issued patent closed all inquiry into the existence of inadvertence, accident, or mistake, and left open only the question of fraud for the jury. Railroad v. Stimpson, 14 Pet. 458; Stimp son v. Railroad, 4 How. 384. Since that time it has been definitely settled that neither re-issued nor extended patents can be abrogated by an infringer, in a suit against him for damages or profits, upon the ground that the letters of fact were involved de hors the ters-patent were procured by fraud in prosecuting the application for the same before the Commissioner. Rubber Co. v. Goodyear, 9 Wall. 797." 16 O. G. 541 (541).

In La Baw v. Hawkins (1874), 1 Bann. & A. 428, Nixon, J.: (429) “I take no notice of the denial in the defendant's answer, that the letterspatent were surrendered for good and lawful cause, or that they were inoperative or invalid, or deficient or insufficient in any respect, because that question is not open for examination here. Since the case of Seymour v. Osborne, 11 Wall. 516, it seems to be settled that neither re-issued nor extended patents can be abrogated by an

In Johnsen v. Beard (1875), 2 Bann. & A. 50, Woodruff, J. (51) "I understand the Supreme Court to have settled, distinctly and finally, that this court cannot enter into the examination of any question of fraud upon the Commissioner who granted the re-issue, or of any matter which is outside of the record; and that the only power which the courts have over re-issues, when their validity is sought to be impeached upon such grounds, is to look at the record of the original patent and of the re-issue, and to determine upon their face whether or not, as matter of law, the re-issue is a lawful one, without inquiring by what means it was procured, and without inquiring what mat

record. The act of the Commissioner in granting the re-issue is final and conclusive.' 8 O. G. 435 (436).

See to the same effect Schillinger v. Crawford (1886), 37 O. G. 1349; 4 Mackey, 450; Miller & Peters Mfg. Co. v. Du Brul (1877), 2 Bann. & A. 618; 12 O. G. 351; Birdsell v. McDonald (1874), 6 O. G. 682; 1 Bann. & A. 165; Milligan & Higgins Glue Co. v. Upton (1874), 6 O. G. 837; 4 Clifford, 237; 1 Bann. & A. 497; Corn Planter Patent (1874), 23 Wall. 181; 6 O. G. 392; Seymour v. Osborne (1870), 11 Wall. 516.

2 In Goodyear v. Berry (1868), 2 Bond, 189, per Curiam: (202) "If the Claims of a re-issued patent clearly imply an

not forbid the admission, in a suit for the infringement of a re-issued patent, of testimony tending to establish that the alleged defects in the original patent arose from a fraudulent or deceptive intention on the part of the inventor, or prevent the courts from holding that the endeavor to correct such fraudulent defects by the re-issue cannot be sustained.3

expansion of the invention beyond the Claims of the original patent there is always ground for a presumption that there was a fraudulent intent to anticipate and cover subsequent inventions, and thus bar the door against patents for all subsequent discoveries. This is clearly against the policy of our patent-right system, and has been wisely condemned by the uniform decisions of the courts of the United States." 3 Fisher, 439 (449).

That where a re-issue fraudulently misleads the public it is void, see Aultman v. Holley (1873), 6 Fisher, 534; 11 Blatch. 317; 5 O. G. 3; Swift v. Whisen (1867), 3 Fisher, 343; 2 Bond, 115.

That a re-issue is not fraudulent merely because its object was to enlarge the scope of the original patent and was first suggested by judicial construction, see Poppenhusen v. Falke (1862), 2 Fisher, 213; 5 Blatch. 46.

That fraud, whether actual or constructive, renders a re-issue void, see Swift v. Whisen (1867), 3 Fisher, 343, 2 Bond, 115.

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That if a re-issue is fraudulent all its Claims are void, see Odell v. Stout (1884), 22 Fed. Rep. 159; 29 O. G. 862.

8 Fraud in obtaining a re-issue must not be confounded either with a fraudulent attempt to conceal the true nature of the invention from the public, which is a good defence under the statute against any patent, or with a fraudulent and deceptive intention in the omission or misstatement in the original patent now corrected in the re-issue, which according to the authorities cited in the notes to the last paragraph is a valid objection to a re-issue whenever its validity can be inquired into by the courts. The first is a matter between the government and the patentee, and is properly adjudicated only in a proceeding by the government to rescind its own grant. The other two concern the public generally, and the defendant in an infringement suit in particular, and may, therefore, be set up by him in his defence, and so far as the suit against him is concerned be conclusively determined by the courts.

CHAPTER III.

OF THE REPEAL OF LETTERS-PATENT.

§ 716. Three Classes of Persons Interested in the Repeal of LettersPatent: Infringers: Prior Inventors: The Public.

THREE distinct rights are either limited or suspended by the grant of a patent, and three classes of persons are thus interested in its repeal. The first class embraces those persons who practise the invention in violation of the exclusive privilege conferred upon the patentee, and who thereby become liable to compensate him for the injury unless his patent can be shown to be invalid. The second class consists of prior inventors whose monopoly is denied or restricted in its enjoyment on account of the existence of an antagonistic patent, and whose rights never can be perfectly secured until the adverse patent is repealed. The third class are the general public whose free use of the invention is suspended while the patent is in force, and whose power to grant a later valid patent to a different and more meritorious inventor has been impaired by the mistaken issue of the first. For the protection of the rights of all these persons against unlawful patents the law properly provides measures commensurate with the requirements of the different classes, whereby the patents may either be declared inoperative in reference to certain individuals or may be universally and permanently repealed.

§ 717. Interests of Infringers Protected without Special Proceedings for a Repeal.

The rights of the first class are sufficiently preserved by the protection afforded to the third class, of which they are always members, and by allowing them to defend themselves in any suit for a violation of the patent by showing that, as to all

the points involved in such suit, the patent is invalid. Those who simply practise the invention require no other relief against an unlawful patent than that which frees them from a liability to pay for its infringement. It is not necessary that the validity of the patent in itself, or as a public grant, be called in question, nor that the judgment of the court pronounce it null and void. The statutes in permitting an infringer to attack the patent upon every matter relating to the patentability of the invention and the priority of the patentee's inventive act, and in conferring upon the court the power to declare the patent invalid so far as the pending controversy is concerned, have secured the practical employer of the art or instrument against an undue interference with his rights under color of an unlawful patent, except in cases where the invalidity of the patent arises from the fact that it was originally obtained by fraud. In these cases the infringer is left to the protection accorded to him as a member of the general public. It is true that it might often be to his advantage were he allowed in his defence to show that the patentee had secured his grant by fraud or by corruption, but for obvious reasons such defence cannot be made. The issue of a patent is the decree of a tribunal to whom the duty of awarding patents to the original inventors of patentable arts and instruments has been confided by the law, and its decrees within its jurisdiction, like those of other courts, cannot be collaterally impeached. Thus though an infringer may defeat the operation of the patent, as against himself, on the ground that if it covers the invention which he uses the Patent Office had no jurisdiction to award it, either because the invention was not patentable or because the patentee was not its first inventor, he cannot claim in his defence that a grant within the jurisdiction of the Patent Office is invalid because it was corruptly or fraudulently obtained.1 This is a question which can be raised only by a proceeding instituted for that pur

§ 717. That a patent cannot be collaterally attacked for fraud in procuring it, but may be set aside and repealed on a direct proceeding for that purpose, see Eureka Co. v. Bailey Wash

ing Mach. Co. (1870), 11 Wall. 488;
Crompton v. Belknap Mills (1869), 3
Fisher, 536; Goodyear v. Providence
Rubber Co. (1864), 2 Clifford, 351; 2
Fisher, 499.

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