# Mowry v. Whitney/Opinion of the Court

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* Case Syllabus
* Opinion of the Court
United States Supreme Court
81 U.S. 434
Mowry v. Whitney
The bill was demurred to, and the demurrer sustained, on two grounds:
First. That the extended patent had expired, by its own limitation, before the bill was filed; and
Secondly. That the complainant could not, in his own right, sustain such a suit.
As regards the first of these propositions we do not deem it necessary to make any decision. When a case arises in which the United States, or the Attorney-General, shall initiate a suit to have a patent declared null, ab initio, which, though no longer in force as to present or future infringements, is used to sustain suits for infringements during its vitality, the question will be considered; for we are of opinion that no one but the government, either in its own name or the name of its appropriate officer, or by some form of proceeding which gives official assurance of the sanction of the proper authority, can institute judicial proceedings for the purpose of vacating or rescinding the patent which the government has issued to an individual, except in the cases provided for in section sixteen of the act of July 4th, 1836.
The ancient mode of doing this in the English courts was by scire facias, and three classes of cases are laid down in which this may be done.
1. When the king by his letters-patent has by different patents granted the same thing to several persons, the first patentee shall have a scire facias to repeal the second.
2. When the king has granted a thing by false suggestion, he may be scire facias repeal his own grant.
3. When he has granted that which by law he cannot grant, he jure regis, and for the advancement of justice and right, may have a scire facias to repeal his own letters-patent.
The scire facias to repeal a patent was brought in chancery where the patent was of record. And though in this country the writ of scire facias is not in use as a chancery proceeding, the nature of the chancery jurisdiction and its mode of proceeding have established it as the appropriate tribunal for the annulling of a grant or patent from the government. This is settled so far as this court is concerned by the case of the United States v. Stone, in which it is said that the bill in chancery is found a more convenient remedy. A bill of this character was also sustained in the English chancery in the case of the Attorney-General v. Vernon, on the ground of the equitable jurisdiction in matters of fraud. And in the case of Jackson v. Lawton, Chancellor Kent says that in addition to the writ of scire facias, which has ceased to be applicable with us, there is another remedy by bill in the equity side of the court of chancery.
It will be observed that in the case of a conflict under two patents granting the same right, the scire facias may, according to the authorities cited, be brought in the name of one of the patentees, but in the other cases, when the patent was obtained by a fraud upon the king, by false suggestion, or where it was issued without authority, and for the good of the public and right and justice it should be repealed, the writ is to issue in the king's name or his attorney-general's. It is also said that when a patent is granted to the prejudice of the subject, the king of right is to permit him upon his petition to use his name for the repeal of it, in scire facias at the king's suit.
The 16th section of the Patent Act of 1836 seems to have in view the same distinction made by the common law in regard to annulling patents, for while it authorizes individuals claiming under conflicting patents, or one whose claim to a patent has been rejected because his invention was covered by a patent already issued, to try the conflicting claim in chancery, and authorizes the court to annul or set aside a patent so far as may be found necessary to protect the right, the suit by individuals is limited to that class of cases. And it is provided that the decree shall be of no validity except between the parties to the suit. The general public is left to the protection of the government and its officers.
It seems reasonable that the remedy by bill in chancery, which is substituted for the scire facias, should have the like limitation in its use. The reasons for requiring official authority for such a proceeding are obvious. 1. The fraud, if one exists, has been practiced on the government, and as the party injured, it is the appropriate party to assert the remedy or seek relief. 2. A suit by an individual could only be conclusive in result as between the patentee and the party suing, and it would remain a valid instrument as to all others. 3. The patentee would or might be subjected to innumerable vexatious suits to set aside his patent, since a decree in his favor in one suit would be no bar to a suit by another party. If, on the other hand, an individual finds himself injured, either specially or as a part of the general public, it is no hardship to require him to satisfy the Attorney-General that the case is one in which the government ought to interfere either directly by instituting the suit, or indirectly by authorizing the use of its name, by which the Attorney-General would retain such control of the matter as would enable him to prevent oppression and abuse in the exercise of the right to prosecute such a suit.
It would seriously impair the value of the title which the government grants after regular proceedings before officers appointed for the purpose, if the validity of the instrument by which the grant is made, can be impeached by any one whose interest may be affected by it, and would tend to discredit the authority of the government in such matters.
DECREE AFFIRMED.

## Notes

* ↑ 4 Institutes, 88; Dyer, 197-8, and 276, 279.
* ↑ 2 Wallace, 525.
* ↑ 1 Vernon, 277.
* ↑ 10 Johnson, 24
* ↑ The King v. Sir Oliver Butler, 3 Levinz, 220.
This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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