must be satisfied that sufficient grounds exist for submitting the question to the courts, and if he is in doubt he may be guided by the opinion of the Commissioner. In cases where the patent is alleged to have been fraudulently obtained he may act at the instigation of a private party, but not in cases where the matter urged as the reason for refusal could be employed by the relator in his own defence against the patent. In whosesoever interest and for whatever purpose the proceedings are commenced, they remain always under his control, and can be prosecuted or discontinued by him as his judgment of the merits of the controversy may require.1 §730. Procedure and Judgment upon a Bill for Repeal. Upon this bill in equity the process, pleadings, hearing, and decrees follow the usual course of chancery proceedings.1 All persons to be affected by the repeal of the patent must be made parties, and the grounds of the repeal must be established beyond reasonable doubt. The effect of a judgment in favor of the public is to extinguish the patent and all rights accruing under it, even in the hands of an innocent bona fide purchaser; and the owners of the patent must thereupon sur 2 That the name of the United States should be used in a bill for repeal only when the Commissioner is satisfied that the patent should be repealed, or the courts have doubted the validity of the patent, or the patent was fraudulently obtained, see Opinion Atty. Gen. (1874), 6 O. G. 723. 8 That a bill to repeal a patent on the ground of a false oath will not lie in the name of the United States in the interest of private parties, though they file a bond indemnifying the United States, if the same matters could be set up in their defence when sued, see United States v. Frazer (1884), 22 Fed. Rep. 106. That suits to annul patents are wholly within the control of the United States attorney, and there is no obligation resting on him to institute or proceed with them, see New York and Baltimore Coffee Polishing Co. v. New York Coffee Polishing Co. (1881), 9 Fed. Rep. 578; 20 Blatch. 174. § 730. 1 That pending a suit on behalf of the United States for the repeal of a patent, an injunction to restrain or suspend actions for infringement will not be granted, the United States having no interest in such actions, see United States v. Colgate (1884), 22 Blatch. 412; 21 Fed. Rep. 318. That the institution of a suit to repeal a patent raises no presumption of its invalidity, see American Bell Telephone Co. v. National Improved Telephone Co. (1886), 27 Fed. Rep. 663. render it to the Patent Office that it may be duly cancelled.' Costs may be decreed against any owners of the patent whose false suggestions led to its original issue, but not against an owner who was not a party to the fraud. 2 That a patent will be repealed on account of the fraud of the patentee, when he was not the true inventor, although his co-owner was not a party to the fraud, but was a bona fide as signee for valuable consideration, no 1 CHAPTER IV. OF THE CONSTRUCTION OF LETTERS-PATENT. §731. Nature and Scope of the Patent Monopoly Determined by the Legal Interpretation of the Letters-Patent. THE character and scope of a patent privilege is determined by the construction given to the letters-patent.1 The patented invention is not necessarily the art or instrument which has been actually discovered or produced by the inventor, nor that which he endeavored to protect or thinks he has protected by his patent; 2 it is the art or instrument which his patent really describes and claims, according to its true legal interpretation. Hence all his rights in reference to the exclusive use of his invention, and all the rights of the public to its free enjoyment, depend in the last resort upon the meaning which the law attaches to the language of his patent. The duty of interpreting letters-patent, therefore, imposes vast responsibilities upon the tribunal to which it is confided, and its proper discharge demands a high degree of industrial skill and knowledge. § 732. Interpretation of Letters-Patent a Matter of Law for the Court. The duty of interpreting letters-patent has been committed to the courts.1 A patent is a legal instrument, to be construed, § 731. 1 That a patent grants just what the courts construe it to grant, see Serrell v. Collins (1857), 1 Fisher, 289. 2 That the opinions of patentees on legal questions connected with their patents are not binding on them, see Adams v. Edwards (1848), 1 Fisher, 1. That the rights of a patentee do not rest on what he supposes the invention VOL. II. -31 to be, but on what the patent covers when properly construed, see Masury v. Anderson (1873), 11 Blatch. 162; 6 Fisher, 457; 4 O. G. 55. § 732. 1 In Emerson v. Hogg (1845), 2 Blatch. 1, Betts, J.: (6) "It is the province and the duty of the court to settle the meaning of the patent, and, if that cannot be ascertained satisfac like other legal instruments, according to its tenor. Whether its Claims are valid or invalid, whether or not they embrace a given invention, and what may be the actual nature of the invention which they do embrace, are questions of law for the court, to be decided upon an inspection of the instrument itself. No evidence of any kind, no opinions of other persons, can have any direct influence upon this decision. Where technical terms are used, or where the qualities of substances or operations mentioned or any similar data necessary to the comprehension of the language of the patent are unknown to the judge, the testimony of witnesses may be received upon these subjects, and any other means of information be employed. But in the actual interpretation of the patent the torily upon the face of the specification, the law declares it insufficient for ambiguity and uncertainty. (Godson on Pat. 109, and Supp. 29; Phillips on Pat. 249, 252.) The meaning of the terms employed, in view of the object the inventor had in contemplation, and to ascertain the extent of his claim, must be determined and declared by the court. The specification is laid before the jury as defined and settled by the exposition of the court, and the matters of fact presented by the respective parties to support or defeat the patent are then to be examined and applied as if the construction fixed by the court had been incorporated in the specification." Further, that the interpretation of a patent is a matter of law for the courts, see National Car Brake Shoe Co. v. Terre Haute Car & Mfg. Co. (1884), 19 Fed. Rep. 514; 28 O. G. 1007; Jackson v. Allen (1876), 120 Mass. 64; Union Sugar Refinery v. Matthiesson (1865), 2 Fisher, 600; 3 Clifford, 639; Page v. Ferry (1857), 1 Fisher, 298; Parker v. Hulme (1849), 1 Fisher, 44; Davoll v. Brown (1845), 1 W. & M. 53; 2 Robb, 303. That the construction of the patent is for the court, its application to the facts is for the jury, see Teese v. Phelps (1855), 1 McAllister, 48. That it is for the court to say what the patent covers, and for the jury to say if the patent is sufficiently clear and full to enable the public to practise the invention, see Parker v. Stiles (1849), 5 McLean, 44; Davis v. Palmer (1827), 2 Brock. 298; 1 Robb, 518. 2 That the construction of a specification is for the court as a matter of law, see Conover v. Roach (1857), 4 Fisher, 12; Emerson v. Hogg (1845), 2 Blatch. 1. That the construction of the Claims of a patent is matter of law for the court, unless technical terms require evidence to explain them, see Ransom v. Mayor of N. Y. (1856), 1 Fisher, 252. That whether a given èlement is claimed as essential or not is a question for the court, see Vance v. Campbell (1859), 1 Fisher, 483. That the question as to the validity of the Claims is largely a question of law, see Burdett v. Estey (1878), 15 O. G. 877; 15 Blatch. 349. That the court need not construe the patent for the jury in an action on a contract unless so requested, see Holliday v. Rheem (1852), 18 Pa. St. 465. 3 In Day v. Stellman (1859), 1 Fisher, 487, Giles, J.: (491) "The court would remark that while the interpretation and construction of all written instru court proceeds upon its own responsibility, as an arbiter of the law, giving to the patent its true and final character and force. § 733. Advantages of Confiding the Interpretation of Letters Patent to the Courts as Matter of Law. Apart from the general principles upon which this duty of interpretation is entrusted to the court, there are advantages attending it which the inventor could not otherwise enjoy.1 To treat the nature of the patented invention as a matter of fact, to be inquired of and determined by a jury, would at once deprive the inventor of the opportunity to obtain a permanent ments is for the court, it nevertheless will bring to its aid the testimony of witnesses to explain terms of art, and make itself acquainted with the material with which the contracts deal, and with the circumstances under which they were made; but neither the testimony of witnesses in general, nor of professors, experts or mechanics, can be received, to prove to the court what is the proper or legal construction of any instrument of writing. Such evidence is inadmissible." That extraneous matters may be considered to aid construction when it becomes necessary, see Day v. Cary (1859), 1 Fisher, 424. That the court is not to be controlled by expert evidence in the construction of the patent nor as to the novelty of the invention, see Jackson v. Allen (1876), 120 Mass. 64. § 733. 1 In Parker v. Hulme (1849), 1 Fisher, 44, Kane, J.: (46) "The specification being an instrument of writing, and the words of which it is made up having a fixed and plain import, its interpretation is a matter exclusively for the court, who must explain it. This part of the case is not for the jury, who for the purposes of this cause will adopt and act upon the interpretation given to it by the There is great reason and im court. portance for this distribution of the respective duties of the court and the jury. The import of the instrument is purely a question of law. The interpretation of complicated instruments of writing is a special occupation, requir ing, like all others, special training and practice. The judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury; and he is, therefore, more likely to be right in performing such a duty than a jury can be expected to be. The action of a judge, in such a case as that of interpreting the specification, is moreover open to review and correction, by reconsideration on his part, or by the revisal of a superior or appellate court, where his reasoning can be tested. This is not so with a jury, who assign no reasons for their opinion, cannot be called on and are not permitted to review or reverse their action, and who, passing upon many questions in their private deliberations, do not declare by their verdict upon what particular elements they at last unite in a verdict; and it is impossible for a court to analyze them. The rule is, therefore, established, that on the judge is placed the responsibility, and he must declare the proper interpretation of written instruments." See also §§ 1017, 1174–1184 and notes, post. |