dissenting.
In this case I avail myself of the first occasion which has fairly required it to give expression to my views in opposition to those expressed by the court in several cases in which reissues of patents have been held invalid.'
The principle on which the present case is decided, and ■which, if not the only ground of that decision, is emphasized in the opinion as the controlling ground, is that of laches in the application for the reissue. It is quite clear from the opinion, that, if in all other respects the patentee had been entitled to the reissue of the patent on which he relies in this case, it would give him no protection, because this court is of, opinion that, under the circumstances, the application for it came too late.
This proposition of the court does not grow out of any statute of limitation governing such applications, nor because the original patent, and, of course, the reissue, does not have a considerable time to run before it expires by law, but because the court, applying to the transaction as it came before the Commissioner of Patents, the equitable doctrine of laches — of improper delay — holds that, on that principle, the party came too late and the reissue is invalid. The distinction between the instrument being void and merely voidable is so well known that it can hardly be supposed to have, escaped the attention of the court, and since the judgment in this case can bind no one but -the parties to it, the patentee in another suit on the same patent against another party, by showing reasonable excuse for, his delay, may prove his patent to be valid, and in that suit he must recover, though he fails in this.
• Thus-every-infringer 'will have the right to retry, when' he is sued, .-the. question of whether the Commissioner of Patents exerciséd a sound discretion in allowing the surrender and reissue of the patent. Such g, doctrine renders the'labors of the *365Patent Office, with its Commissioner and corps of trained examiners, of very little value, and subjects the final decision in favor of a patentee to the re-examination of any number of juries on the very facts which were passed upon by the officers appointed by law for the purpose of deciding the questions necessary to the validity of the patent.
The doctrine is well established that a grant by the government, within its lawful authority, evidenced by a patent under its seal and the signature of the executive, cannot be impeached collaterally. It must be recognized as valid in all courts when it is introduced as evidence of the right which it confers, and can only be avoided by a direct proceeding by way of scire facias, or bill in chancery to set aside the grant for some of the reasons which made its original issue a wrongful act. In such case the government which issued the patent, by its attorney-general or other proper, officer, in a court of competent jurisdiction, obtains a decree, setting the patent aside, whereby it is rendered of no avail against all persons interested in the matter, as well as the'government.
For decisions which establish this doctrine, if there could be any doubt about it, I refer to the following cases: United States v. Stone, 2 Wall. 525; United States v. Throckmorton, 98 U. S. 61, 70; Mowry v. Whitney, 14 Wall. 434, which is the case of a patent for invention, and where the. whole subject is fully discussed.
Undoubtedly there are cases of patents, with all the solemn formalities attesting their validity, which are properly rejected by the courts when offered in evidence, because they show', upon their face, that no authority existed for their issue. The power to grant the rights, which they profess to-confer, did not exist.' Either it did not exist at all, or it did not exist in the officers or tribunal Avhich issued the patent. In such cases the court can see, from the face of the instrument, the nature of the grant, and the poAver Avhich the law confers on the officer who issued it, that it is Avholly void, and that no evidence to be iioav pioduced, or Avhich could have been produced before that officer could authorize the grant or make it valid. Such *366an instrument is void ab initio, is void always and' everywhere, for waüt of power in those who-made if.
. Can the present case come, under this exception ?
Clearly not. The question of . laches, of undue delay in making application to correct “ a mistake, accident, or inadvertenceby reason of which the. patentee does not get the full benefit of his invention, must depend on many circumstances which cannot appear on the face of the reissued patent. No mistake can be corrected until it is discovered. The period- of this discovery is always a matter of proof, which may be of the most varied character. If the discovery of the mistake was soon after the issue of the patent, and the delay defeated the right to the reissue, this was a matter into which the Patent Office should inquire. The duty to do so devolved on it, and the right to decide it necessarily followed. While the dates of the original patent and- of the application for a reissue might seem to show an unreasonable delay, this appearance might have been removed by evidence which-.afforded a full justification for it. Yery long delays have been justified by the. decisions of this court when set up as .objections to patents. See Smith v. Goodyear Dental Vulcanite Co., 93 U. S. 486.
That patents for inventions were intended by Congress to have this conclusive and unimpeachable character, is manifest from the legislation on this very point. § 4920 of the Revised Statutes, which was originally enacted in 1836, sets forth five distinct defences which may be pleaded to an action for infringement of a patent right. They are as follows :
“ 1. That, for the purpose of deceiving the public, the description and specification filed- by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect; or,
“2. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting or perfecting the same; or,
“ 3. That it had been patented or described in some printed publication prior to his supposed invention or discovery thereof; or,
*367“ 4. That he was not the original and first inventor or discov-. erer of any material and substantial part of the thing patented; or,
“ -5.' That it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public.”
The statute also requires the. defendant in such cases to give the patentee notice with great particularity of the persons who are prior inventors or have knowledge of prior use of the invention, and when and by whpm it has been used.
It will be-observed that, while these defences go to the validity of the patent, they all resolve themselves into want of novelty, or of priority of invention or discovery, except the first and the last.
Neither laches nor fraud is here mentioned as a defence to the patent.
Why were these five points made matter of defence by statute ? And why were no. others mentioned ? The answers to these two questions are obvious, and they are conclusive of the question before us.
The answer to the first question is that these defences go to impeach the patent, and destroy its value as evidence in that case; and by the law as it stood then and as it stands now this cannot be done without a special statute to authorize it.
Anri the reason why no other, grounds for impeaching the patent were allowed to be set up in defence was that Congress intended that all other causes for impeaching the patent should be prosecuted in the usual mode of seire facias, or bill in chancery, brought by the proper laAV officers of the government to set it aside and annul it.
, If Congress had intended that the patent issued Avith all the necessary formalities should be assailed collaterally -for every reason that might have been urged against its issue originally, it would .have said so in short terms, and not have "enumerated particular or special reasons for which it may be so attacked.
That laches is not one of these reasons is clear, and affords an unansAverable argument that it wras not intended that it should be a ground of defence for its. infringement in such actions.
*368The careful and studied enumeration of matters going to impeach the patent, where a suit is brought to enforce rights granted by it, is the strongest affirmation that no others are admissible for that purpose in that kind of suit.
In United States v. Throckmorton the court said, that “ in so important a matter as impeaching the grants óf the government under its seal, its highest law officer should be consulted, and should give the support of his name and authority to the suit.”
In Mowry v. Whitney, 14 Wall. 441, it is said that a suit by an individual could only be conclusive in result as between the parties, and would leave the instrument valid as to all others, and the patentee might be subjected to innumerable vexatious suits to set aside his patent. “It would seriously impair the value of the title which the government grants after regular proceedings before officers appointed for the purpose, if the va-. lidity 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.”
If the principles of the opinion in the present case are sound, then in every case where an action at law is brought, the jury must sit in judgment on the action of. the Commissioner of Patents, as to the existence of laches.where that is alleged, and as there may be a dozen jury trials in suits against as many different parties for infringing the same patent, each jury deciding on its own impression of the evidence before it, the question of the validity of the reissue can never be settled, nor the patentee or the public know whether his patent is valid or worthless.
Such a departure from the settled rules of law as applicable to these instruments cannot be justified in a court until authorized by legislative power.
In several cases which have preceded this one, especially Miller v. Brass Company, 104 U. S. 350, where this doctrine has been stated in the opinion, other grounds were also given as the foundation bf the judgment. I had hoped, when we came to a case where the question must be' decided, my brethren would *369not adopt it on full consideration. This must be my apology for any apparent acquiescence in it heretofore. I am of opinion that reissued patents are entitled to the same consideration as other patents issued by the government.