In response to the solicitor of the American Bell Telephone Company the examiner wrote him on June 9, 1882:

"As at present advised, it is believed that the claims presented may be allowed; but final action in this case must be suspended in view of probable interferences with other pending applications, which will be declared as soon as possible."

It is admitted that the "other pending applications" included Drawbaugh. Nothing further was heard in this direction until October 8, 1883, when the solicitor having in charge the Berliner application wrote the commissioner, referring to this letter of June 9, 1882: "Since then I have been awaiting the official action. I beg to call attention to the case, and ask that it may receive action."

The United States urge strenuously that the official record shows inaction between the dates of June 9, 1882, and October 8, 1883. The proofs of the informal proceedings show otherwise; but this is rendered of no consequence by the reply of the patent office, which came promptly within a few days, as follows:

"In response to applicant's letter filed Oct. 9, 1883, it is stated that further action in this case on the part of the office must be still further postponed, until the conditions of interfering applications will permit the declaration of interference, which seems unavoidable."

This renders unnecessary any consideration of the intervening period last referred to, because all the rules of equity require that it should, under the circumstances, be accepted as the adjudication by the United States, through the only officials to whom the respondent corporation could apply, that efforts during that period on the part of that corporation would have been unavailing. But the substantial complaint of the United States comes down to the proposition that during this period the application was suspended, and the patent held from issue, for "a single, continuous, and wholly insufficient reason." This reason is stated to be the awaiting of the decision of the Drawbaugh suit, embraced in The Telephone Cases, 126 U. S. 1, 8 Sup. Ct. 778, by virtue of an alleged agreement, to which it is said the commissioner of patents, the Bell Company, and Drawbaugh were all parties. The United States claim that this arrangement, whatever it was, was in terms an agreement, and an unlawful one. There was no allegation in the bill to this effect, nor do the proofs support it. There was undoubtedly a common understanding and a common consent. It is testified positively that the commissioner shared this common understanding, and that he personally understood the whole situation. We have already alluded to the testimony of the president of the respondent corporation to the effect that, if Drawbaugh's story was substantially true, it cut up by the roots all that Edison and Berliner had done. He also added that the quickest thing to do was to try the case in the court where it was, and that, by common consent, the Berliner application waited till the determination of that suit. The examiner at one time in charge of these conflicting applications also testified that he felt, and believed it was felt and understood by all parties, that it would be a much quicker and more satisfactory way of determining the

whole question to await the decision of the courts. He also testified that it was the tacit understanding between the office, and, as he understood, the parties in interest, that the proceedings then being had in the courts would be the best solution of the difficulty.

When this agreement, arrangement, or understanding, whatever it was, was first entered into, has not been pointed out to us; but the correspondence, to which we have already referred, between the office and the solicitor of the defendant corporation, running to October, 1883, indicates that it had not taken form at that date, or that it was understood that it was purely of an indefinite character, especially with reference to the time for which it was to run. It may also be questioned whether, when it first took form, it extended beyond awaiting the decision at the circuit. However this may have been, there is nothing in the case to show that the parties undertook to enter into an agreement. The evidence and the reason and probabilities of the thing satisfy us that whatever common consent there was to abide the result of the litigation was the consequence of the independent judgment, formed fairly and honestly,-at least by the officials of the patent office and by the representatives of the American Bell Telephone Company,--that on the whole this was the best thing to do; and the common consent consisted only in the interchange of these views. Now, can it be said that, under the circumstances, this common judgment, and the so-called "common consent" arising from it, were not wise? Before we can condemn, we must put ourselves in the position of the parties at the time, with all the surrounding difficulties, and assume to understand them better than the gentlemen concerned on either side, with the extensive practical experience which all of them possessed. But assuming that it was not wise, that, under the circumstances, the commissioner made an error of judg ment, that it was his duty to have proceeded regardless of the pending litigation, and that also the American Bell Telephone Company committed an error in sharing his judgment, is this court to impose on this corporation the penalty of losing its valuable patent on that account, and give the United States, whose officers also shared in the same error, the entire benefit of the penalty? On every principle such a conclusion would be an outrage on justice, and in violation of the fundamental rules by which the law refrains from imposing punishments on parties who honestly exercise their judgments under the existing circumstances, especially circumstances of difficulty. The United States claim also that the position was changed when the decision was made at the circuit in the litigation referred to in December, 1885. In speaking of this litigation while in the circuit court, we will, for convenience, though somewhat inaccurately, describe it as "The Telephone Cases." In direct inconsistency with their proposition, made in another connection, that the microphone was not in issue in this litigation, the United States in this connection insist, as a substantial and important proposition, that it was at this time decided that Drawbaugh never invented the microphone at all. Assuming this all to be true, and that the dev.68F.no.5-36

cision on appeal to the supreme court should not have been awaited, yet there can be no criticism against the American Bell Telephone Company on this score. The examiner testifies that, soon after the decision of the circuit court, its solicitor urged the passage to a patent of both the Berliner and Edison applications. The result of this was that the examiner, who testifies that he acted on his best consideration, made personally the communication to the commissioner, of April 23, 1886, to which we have already referred, asking his direction touching this request. His reply was given on April 24, 1886, to which we have also already referred, not granting the request and suggesting the declaration of an interference. This, under the law as understood at the patent office, was impracticable, as we have already explained. The American Bell Telephone Company had done all that reasonable usage required of it, and after this the case drifted along until the decision of the supreme court was announced in March, 1888, and the third period commenced, which we have already disposed of.

The events which we have recited give us another opportunity of showing the inability of the United States to furnish a practical rule by which to test the high degree of diligence which they require. On being asked what course was practicable at this period to answer their demands in this direction, they seem uncertain what method should have been adopted. The United States at one point say that the commissioner could have read the evidence in the infringement case (meaning The Telephone Cases) for himself, and decided the question of priority on the facts there shown. Of course, a request of the commissioner to do this, or to cause it to be done by any one in the office, would have been fruitless. The principal suggestion of the United States on this score was worked out at great length, and apparently with much labor, but it need be only briefly stated by us. It commences by explaining a practice of the patent office, which came into force February 6, 1883, by which, on an issue of public use, hostile affidavits cannot be filed except subject to cross-examination by the applicant. It then suggests that, on the strength of the applicability of this practice, an issue of prior invention might have been made. It is said this would not have been strictly an adversary proceeding, as it would have been solely for the information of the commissioner; that, therefore, it would have been under his control; and that, instead of permitting the examination of the mass of witnesses who testified in The Telephone Cases, the commissioner might have said to Drawbaugh, "Produce a dozen of those who know most about your invention, examine them in the presence of Berliner, and let him cross-examine them!" or, the United States say, the commissioner might have fixed a limit of time, instead of the number of witnesses, and then there would have been no excuse even for consuming more than 60 days in the investigation. But for this proposed method of proceeding the United States show no hewn path. There is no evidence in the record that any such proceeding ever took place in the patent office. It is likewise merely theoretical. The practical sum

ming up of all these various suggestions is that the American Bell Telephone Company is in effect censured for not reforming the practice and the officials of the patent office. We think this demand is without parallel or precedent; that the case may justly be stated in this form; and that, when thus put, it shows itself so revolutionary as to require the legal mind to reject it on the mere statement.

The case has been strenuously pressed on the court as one to which should be applied the legal maxim, "Sic utere tuo ut alienum non laedas." But the attempt to apply this merely brings us back to the investigation of the same legal propositions. The United States seem to assume, as is frequently done, that this is a maxim of universal benevolence, and that the word "laedas," and the word "injure," into which it is commonly translated, are each to be used in the general sense, and not in that of the law. This is entirely a mistake. The words are used in this connection in their primary and technical sense. Literally translated, the matter relates only to injuries committed to property; but Broom's Legal Maxims, in the note to page 327, gives as its true substantive meaning, "So use your own property as not to injure the rights of another;" and in the text he states the general rule to the same effect. He sums up his discussion touching this maxim by laying down the principle that one must use and enjoy his own property so as "not to affect injuriously the rights of his fellow subjects." He also says, in the same summing up, that, where rights conflict, we must consider whether their exercise is not restrained by the existence of some duty; "and," he continues, "whether such duty be or be not imposed, must be determined by reference to abstract rules and principles of law." So it is plain that no attempt to apply this maxim would relieve us from the necessity of doing what we have already done; that is to say, from ascertaining from sources outside of the maxim what obligations the law imposed on the American Bell Telephone Company under the circumstances of this case.

We have thus shown, by testing at various points, that the United States give no practical rule for measuring in this case the obligation demanded by them; that is to say, "an extraordinary duty, which could be discharged only by the greatest possible diligence in the prosecution of the application." Therefore, if there was any such obligation, the United States have failed to meet the burden resting on them of proving that any lack of compliance with it had any practical result in producing the delays complained of. It would, indeed, be quite plausible to declare that the American Bell Telephone Company, with all its resources, could have found some way to break the deadlock if it had earnestly desired so to do. This is, in fact, what the United States say. Perhaps this is true. But the courts have never yet been vested with authority to deprive any person or corporation of property or rights on the strength of any such mere assertion, nor without allegations and proofs in a definite and practical form. The lack of these, under the circumstances we have explained, aids the proposition that

there is no such obligation, as claimed by the United States. There is no precedent brought forward by the United States to support their position, nor has this court found any, either in this department of the law or in any other. Nor does the proposition of the United States rest on any principle which can be supported by authority from any quarter; or by any method of reasoning which connects it with any fundamental legal doctrine. By granting a patent for a meritorious invention the United States parts with nothing which it before had, but only recognizes and supports for a limited period the equitable title of the patentee. We think this is the first instance in which either the people or the king, wherever the common law prevails, has sought to revoke by legal proceedings, on the ground of imputed or merely legal fraud, a grant of this character, issued to a subject after full official knowledge of all the facts, where there has been no deceit, collusion, or corruption, and where the subject duly complied with all statutory and departmental requirements, merely because the officers in charge have been dilatory, and the subject failed to use zeal in spurring them on. The law goes quite far enough in protecting the state against the acts and omissions of its agents, without our pushing it to the extreme of adopting this heretofore unheard-of proposition. We do not, however, intend to have it inferred that we have determined that the law requires any degree of diligence beyond a compliance with statutory provisions, official regulations, and the formal demands from time to time of the public officials charged with duties under the patent law. We do not determine that any degree of laches whatever will forfeit a patent once granted, reserving, of course, cases of abandonment, and other cases where, through laches, the equities of strangers have become established, neither of which classes are involved in the suit at bar. Congress, in sections 4894 and 4904 of the Revised Statutes, established certain fixed periods for giving progress to applications for patents, which the supreme court has so far recognized by analogy as to apply the limitation to a bill in equity filed under section 4915 of the Revised Statutes. Gandy v. Marble, 122 U. S. 432, 7 Sup. Ct. 1290. The United States ask us to establish a period of limitations other than fixed by statute, and we do not decide that, under any circumstances, we have any authority so to do. We merely determine that the case of extreme diligence, as made by the United States, cannot be maintained.

While the delay in this case was unusual, it was not unprecedented. We have referred to Smith v. Vulcanite Co., 93 U. S. 486, where the patent was granted nearly 9 years after the application was filed, and nearly 12 years after the caveat was deposited in the patent office. The appellants have shown from the record that, during the two years of 1893 and 1894, 49 patents issued, with an average of 10 years after the applications were filed, 10 of them 10 years or over, and several of them 14 years or over; and they well observe that the number of these long-pending cases is enough to show that something in the patent-office system produces them. Although the case shows that the applications of commissioners