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tition, filed without notice to the adverse parties, was delayed for 3 years and 5 months after the decision of the Examiner of Interferences awarding priority to Bell, and was then accompanied by a request that it should not be acted upon until further motion was made.


For reasons stated, the charges in Gray's petition that Bell had fraudulently secured access to his caveat, purloined his invention, and interpolated a description thereof in his application Held not sustained.


Held that the decision of Commissioner Butterworth, of March 3, 1885, was elaborately considered and deliberately rendered, and that a rehearing could only be justified upon clear and satisfactory evidence showing in such decision error in the conclusions of fact or in the application of the law, and that evidence could be produced establishing that Gray could antedate Bell's invention, that he could prove a prior conception and reduction to practice, or that, having made an earlier conception, he had diligently prosecuted it to a reduction to practice. In the absence of showing the existence of such evidence, upon the testimony filed before and considered by the various tribunals in the Office, Held that "the award of priority of invention was justly given to Bell," and, in view of the construction given by the Office and the courts to the patent, the grant was properly issued, and the protection afforded the inventor was authorized. 4. EXTENDING THE MONOPOLY.

The public has a direct and immediate interest in the further prosecution of Gray's application for a patent. If the award of priority given to Bell can be vacated and set aside, it should only be done upon a showing of merits that would entitle Gray to a patent. Such patent would run for a period of 17 years from its date, and would dominate and control all devices relating to the telephone for another period of 17 years. The effect would be to subject the public to a renewed monopoly in all nearly, if not quite, thirty-four years. Such result would be in contravention of the spirit of the statute, and, in view of the liberal provisions of the patent system, cannot be tolerated except when the inflexible rules of law and justice compel it, especially in the present case, wherein it is clearly shown that the Bell Company is the "equitable if not the legal owner of Gray's telephone inventions."


The Commissioner has no equitable jurisdiction over the rights of parties claim ing under assignments and grants of inventions and patents. He cannot set aside or vacate such instruments, nor can he recognize equitable rights growing out of transactions between inventors and applicants and other parties. While the Commissioner is authorized to recognize formal legal assignments, and when they have been filed in the Patent Office before patent issues may give the assignee control of the management and prosecution of an application and direct the patent to issue in the name of the assignee, yet he can not recognize equitable rights under executory or other equitable contracts; but where the relief asked, as in a petition for rehearing, is founded upon an alleged state of the title to the invention, the Commissioner possesses the power to determine the allegation as to title in order to exercise his discretion in granting or refusing the relief. 6. MCDONOUGH'S PETITIONS.

As to the petition of McDonough that he be allowed to demonstrate the operativeness of the make-and-break principle, the Commissioner holds that the decisions of his predecessors are conclusive on that question; that McDonough never claimed to be the original inventor of the telephone, but a mere improver upon Reis's instruments; that he accepted and still accepts the make-and-break system of Reis as the foundation of his invention; and, in view of the settled judgment of the Patent Office that speech can not be transmitted by an instrument which

operates solely by the making and breaking of the circuit, and also in view of the fact that the Supreme Court of the United States has also definitely settled this question with reference to Reis, he must regard the matter res adjudicata. 7. NO INTERFERENCE BETWEEN MCDONOUGH AND BELL.

As to the petition to reopen on the merits, the Commissioner holds that McDonough's original claim for the receiver having been rejected on reference to Bell's patent, and he submitting thereto and canceling the claim, and McDonough having been brought into the interference in consequence of the later applicants, so as to compel them to establish an earlier date of invention than himself, it follows, inasmuch as there could have been no interference between McDonough and Bell alone, that when Gray and the other later applicants were defeated and taken out of the interference there could be left no contest between McDonough and Bell.


Whether an applicant who has voluntarily eliminated his claims and apparently abandoned them should be permitted, after the invention has been publicly introduced and made commercially valuable, to return after eleven years and amend and claim an interference with a patent so long outstanding is a serious question, and the right to the relief should be most convincing.


Petitions denied because the showing is deemed insufficient to justify the Commissioner in setting aside former decisions and decrees, since he is fully convinced that another trial on the question of priority would result in another award in favor of Bell.

PETITIONS of Elisha Gray and James W. McDonough to amend and to reopen.


A. G. Bell, Patent No. 174,465 granted March 7, 1876, on application filed February 14, 1876. A. G. Bell, Patent No. 186,787, granted January 30, 1877, on application filed January 15, 1877. Elisha Gray, applications Nos. 1, 2, and 3, filed October 29, 1877. James W. McDon. ough, application filed April 10, 1876.

Mr. James J. Storrow and Mr. Roscoe Conkling for Bell.
Mr. Robert G. Ingersoll and Mr. Frank H. Hurd for McDonough.
Mr. M. B. Philipp and Mr. Casey Young for Gray.


Statement of the litigation growing out of the several interferences declared between the patents granted to A. G. Bell and the applica tions of later applicants; the inventions distinguished and compared with the previous state of the art, and the decisions rendered by the various tribunals in the Office considered and discussed.

HALL, Commissioner:

On the 26th of March, 1878, a series of interferences, lettered from A to M, were declared, and by an order of the Commissioner, dated March 6, 1879, case H was consolidated with case F and case K was merged in case I. By a stipulation between the parties thereto it was agreed that case No. 1 of a series of six interferences, declared August 14. 1879. should be proceeded with and presented in connection with

the lettered series In September, 1880, case M was suspended by consent. Owing to the complex nature of the inventions and the variety of detail of events involved in the controversy the issues were tried together upon the evidence taken by the respective parties, so far as it was relevant to the several issues.

The parties originally involved in one or more of the issues were A. G. Bell, James W. McDonough, T. A. Edison, E. Berliner, G. B. Richmond, E. Gray, A. E. Dolbear, A. G. Holcombe, C. E. Chinnock, C. A. Randall, F. Blake, J. H. Irwin, and G. M. Phelps. W. L. Voelker was made a party to case No. 1 November 3, 1879, and cases A and B De

cember 29, 1879.

Prior to the date on which the cases were submitted to the Examiner of Interferences decisions had been rendered against Richmond (except as to case C,) Holcombe, Randall, Phelps, Chinnock, and Berliber, so that they were no longer parties to the controversy.

The evidence presented to the Examiner of Interferences was contained in 5 volumes: I. Testimony on behalf of Edison. II. Exhibits of Edison. III. Testimony on behalf of Voelker, Irwin, Gray, Dolbear, McDonough, Blake, and Bell. IV. Vol. 1 of the record in the case of the Bell Telephone Company v. Dowd, comprising Bell's answers and proofs introduced by stipulation. V. Vol. 2 of the record in the Dowd case, comprising exhibits, etc.

The taking of evidence was practically concluded in May, 1881. The case was argued before the Examiner of Interferences, and fully submitted to him in October and November, 1881. He held the case under advisement until July 21, 1883, when he filed his decision, which covers 348 pages of closely printed matter. In cases A, B, C, E, F, I, J, and L he awarded priority of invention to Bell; in cases D and No. 1 to Edison, and in case G to McDonough. From this decision of the Examiner of Interferences Edison appealed to the Examiners-in-Chief in cases A, B, C, G, J, and L. Voelker appealed in cases A and B aud No. 1. Bell and Gray appealed in case G, and Irwin in case No. 1. This relieved the controversy of cases D, F, and I, which remained finally disposed of by the decision of the Examiner of Interferences.

After having held the cases under advisement nearly a year the Examiners-in-Chief, on October 23, 1884, rendered a decision affirming the decision of the Examiner of Interferences as to all of the issues except issue G, as to which they reversed him and awarded priority to Bell. From this decision Voelker appealed to the Commissioner as to the issues A and B, but Gray acquiesced therein and took no appeal. McDonough and Gray appealed as to issue G.

Pending the appeal before the Commissioner, McDonough, ou December 19, 1884, presented a motion

to have the above-mentioned interference (G) reopened in order that I may be permitted to introduce proof before the proper tribunal as to the operative character of the telephone transmitter shown in my application of April 10, 1876, involved herein, and for such other and further action in the premises as may be rendered necessary.

The grounds of the motion were that the Examiners-in-Chief had held that a make-and-break apparatus such as McDonough described was incapable of transmitting articulate speech; that this was at variance with the action of the Primary Examiner in declaring the interference, who must have found the apparatus to have been an operative one, and because, under the rules, the only method of raising the question of operativeness was by reference to the Primary Examiner. After full argument this motion was denied by the Commissioner on January 16, 1885.

On March 3, 1885, the Commissioner filed his decision affirming the action of the Examiners-in-Chief as to all issues. This was a final

award of priority in favor of Bell upon all the issues involved.

Nothing further appears to have been done by any of the parties in the interferences until December 30, 1886, when there was received by the Office the following petition of Gray:

To Hon. M. V. Montgomery, Commissioner of Patents:

Elisha Gray, one of the parties to the above-stated proceedings, brings this, his petition, to set aside the various orders, decisions, and judgments heretofore made and rendered therein, and to reopen the same upon the following grounds, viz:


Upon the ground of newly-discovered evidence, important and material in its character, and which would, as petitioner believes, have changed the various orders and judgments made and rendered in the progress of, and upon the final hearing of, said interference proceedings, if the same had been presented at the proper time to the officers of the Patent Office having them in charge and passing upon the matters and things pertaining thereto, and which evidence was not known to petitioner to exist, nor did he have any reason to suspect that it did, until long after the final decision in said interference proceedings was rendered against him, and in favor of A. G. Bell, upon nearly all the material issues therein involved; and therefore no laches can be imputed to him in not having earlier discovered and presented the



The said newly-discovered evidence will, as petitioner is informed and believes, establish the following facts, viz: That on or about the 1st day of March, 1876, A. G. Bell, the successful party in said interference proceedings, went to the Patent Office, and by undue and unlawful means and influences procured full knowledge of the contents of, and drawings attached to, a certain caveat, accurately describing a speaking-telephone, then recently (viz., on the 14th day of February, 1876) filed by petitioner, and upon which caveat, and the invention therein set forth, and the apparatus therein described, were based the three (3) several applications for patent for a speaking-telephone afterward filed by petitioner and involved in said above mentioned interferences.


By the knowledge thus obtained, in violation of law and the rights of petitioner, the said Bell was enabled to construct an apparatus, a few days afterward, by which he succeeded in transmitting articulate speech, and which apparatus, so constructed in exact accordance with the drawings attached to and the description and specification set out and contained in petitioner's said caveat, he, the said Bell, subsequently

claimed was the apparatus set ont, described in, and covered by an application which he had filed in the Patent Office on the said 14th day of February, 1876, purporting on its face to be an application for patent for "an improvement in telegraphy," but was never in any way claimed by the said A. G. Bell to be for a speakingtelephone, nor recognized as such by any one else, until long after a patent had been issued thereon, on the 7th day of March, 1876, numbered 174,465, and which was involved in the aforesaid interference, while in fact no one of the devices or appa. ratuses set out and described in the said application never had previous thereto and never since, as petitioner is informed and believes, been made to transmit articulate speech.


It was not until after the time and the occurrences above narrated that the said Bell claimed he had invented the speaking telephone, or that he had mentioned, described, or claimed any such invention, or any device or apparatus constituting a part thereof, in said application filed on the aforesaid 14th day of February, styled an "improvement in telegraphy," and the fact is that the said Bell did not in his said application, describe or claim any apparatus or device that could or can be made to operate as a variable-resistance telephone for the transmission of articulate speech; but by reason of having wrongfully and illegally obtained information as to the nature and contents of petitioner's aforesaid caveat, and of being thereby enabled to construct an apparatus theretofore unknown to and never previously conceived of by him that would transmit speech, and which apparatus he forthwith claimed as his own, the officers of the Patent Office were induced to adjudge him to be the first and original inventor of the speaking-telephone, as against petitioner and others, be cause, as it was then believed, by reason of the above-recited fraudulent acts upo the part of the said Bell, he had first reduced the same to practice, though it wa found and so reported by the Examiner of Interferences that he was not otherwis entitled to claim, or have awarded to him, priority over peitioner as to the said in ventions; and it was further found and so reported by said Examiner of Interfer ences that petitioner lost whatever right he might have had and secured under hi said caveat to be adjudged the first and original inventor of said art of telephony a against said Bell, because of his own laches in not completing and reducing it t practice before the same was done by him, the said Bell.


Petitioner further shows that by reasou and in consequence of the aforesaid wrongfu and fraudulent acts and doings upon the part of the said Bell, together with certain other irregular and illegal proceedings, hereafter to be set out, had and taken in the Patent Office concerning and in respect to his aforesaid caveat and the application o the sail Beli, he, petitioner, was deceived and misled as to his real legal status in the Patent Office in respect to the speaking-telephone and as to his rights in relation thereto acquired by virtue of having filed his said caveat, and which rights were subsequently involved in the interferences aforesaid; and by being so deceived and misled he failed and neglected to take such action and to obtain and present such proof in the beginning and during the progress of said interferences as he would otherwise have done, and which would, as he believes, have secured a judgment in his favor upon all the material issues involved therein, instead of being given in favor of said Bell; and among the said irregular, wrongful, and illegal acts and doings petitioner submits the following, to wit:


The aforesaid caveat of petitioner and application of said Bell being filed in the Patent Office on the same day, to wit, the 14th day of February, 1876, without any noting of the hour at which the respective filing occurred, the same was entitled to and should have been considered as a simultaneous act; and when said caveat

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