320 U.S. 1 (1943), 369, Marconi Wireless Tel. Co. v. United States

Docket Nº:No. 369
Citation:320 U.S. 1, 63 S.Ct. 1393, 87 L.Ed. 1731
Party Name:Marconi Wireless Tel. Co. v. United States
Case Date:June 21, 1943
Court:United States Supreme Court

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320 U.S. 1 (1943)

63 S.Ct. 1393, 87 L.Ed. 1731

Marconi Wireless Tel. Co.


United States

No. 369

United States Supreme Court

June 21, 1943

Argued April 9, 12, 1943



1. The broad claims of the Marconi Patent No. 763,772, for improvements in apparatus for wireless telegraphy -- briefly, for a structure and arrangement of four high-frequency circuits with means of independently adjusting each so that all four may be brought into electrical resonance with one another -- held invalid because anticipated. P. 38.

Marconi showed no invention over Stone (Patent No. 714,756) by making the tuning of his antenna circuit adjustable, or by using Lodge's (Patent No. 609, 154) variable inductance for that purpose. Whether Stone's patent involved invention is not here determined.

2. Merely making a known element of a known combination adjustable by a means of adjustment known to the art, when no new or unexpected result is obtained, is not invention. P. 32.

3. As between two inventors, priority of invention will be awarded to the one who by satisfying proof can show that he first conceived of the invention. P. 34.

4. Commercial success achieved by the later inventor and patentee cannot save his patent from the defense of anticipation by a prior inventor. P. 35.

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5. In the exercise of its appellate power, this Court may consider any evidence of record which, whether or not called to the attention of the court below, is relevant to, and may affect the correctness of its decision sustaining or denying any contention which a party has made before it. P. 44.

6. Although the interlocutory decision of the Court of Claims in this case that Claim 16 of Marconi Patent No. 763,772 was valid and infringed was appealable, the decision was not final until the conclusion of the accounting; hence, the court did not lack power at any time prior to entry of its final judgment at the close of the accounting to reconsider any portion of its decision and reopen any part of the case, and it was free in its discretion to grant a reargument based either on all the evidence then of record or only the evidence before the court when it rendered its interlocutory decision, or to reopen the case for further evidence. P. 47.

7. The judgment of the Court of Claims holding valid and infringed Claim 16 of Marconi Patent No. 763,772 is vacated and remanded in order that that court may determine whether to reconsider its decision in the light of the Government's present contention that Claim 16, as construed by the Court of Claims, was anticipated by the patents to Pupin, No. 640,516, and Fessenden, No. 706,735. P. 48.

8. A defendant in a patent infringement suit who has added noninfringing and valuable improvements which contributed to the making of the profits is not liable for benefits resulting from such improvements. P. 50.

9. Disclosure by publication more than two years before application for a patent bars any claim for a patent for an invention embodying the published disclosure. P. 57.

10. Invalidity in part of a patent defeats the entire patent unless the invalid portion was claimed through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, and is disclaimed without unreasonable neglect or delay. P. 57.

11. Fleming Patent No. 803,864 held invalid by reason of an improper disclaimer. P. 58.

The specifications plainly contemplated the use of the claimed device with low as well as high frequency currents, and the patent was invalid for want of invention so far as applicable to use with low frequency currents; the claim was not inadvertent, and the delay of ten years in making the disclaimer was unreasonable.

12. That the patentee's claim for more than he had invented was not inadvertent, and that his delay in making disclaimer was unreasonable, were questions of fact; but, since the Court of Claims in

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its opinion in this case plainly states its conclusions a to them, and those conclusions are supported by substantial evidence, its omission to make formal findings of fact is immaterial. P. 58.

13. The disclaimer statutes are applicable to one who acquires a patent under an assignment of the application. P. 59.

99 Ct.Cls. 1, affirmed in part.

Writs of certiorari, 317 U.S. 620, on cross-petitions to review a judgment in a suit against the United States to recover damages for infringement of patents. See 81 Ct.Cls. 741.

STONE, J., lead opinion

MR. CHIEF JUSTICE STONE delivered the opinion of the Court.

The Marconi Company brought this suit in the Court of Claims pursuant to 35 U.S.C. § 68, to recover damages for infringement of four United States patents. Two, No. 763,772 and reissue No. 11,913, were issued to Marconi, a third, No. 609, 154, to Lodge, and a fourth, No. 803,684, to Fleming. The court held that the Marconi reissue patent was not infringed. It held also that the claims in suit, other than Claim 16, of the Marconi patent, No. 763,772, are invalid, and that Claim 16 of the patent is valid and was infringed. It gave judgment for petitioner on this claim in the sum of $42,984.93 with interest. It held that the Lodge patent was valid and infringed, and that the Fleming patent was not infringed, and was rendered void by an improper disclaimer. The case comes here on certiorari, 317 U.S. 620, 28 U.S.C. § 288(b),

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on petition of the Marconi Company in No. 369, to review the judgment of the Court of Claims holding invalid the claims in suit, other than Claim 16, of the Marconi patent, and holding the Fleming patent invalid and not infringed, and on petition of the Government in No. 373, to review the decision allowing recovery for infringement of Claim 16 of the Marconi patent. No review was sought by either party of so much of the court's judgment as sustained the Lodge patent and held the first Marconi reissue patent not infringed.

Marconi Patent No. 763,772

This patent, granted June 28, 1904, on an application filed November 10, 1900, and assigned to the Marconi Company on March 6, 1905,1 is for improvements in apparatus for wireless telegraphy by means of Hertzian oscillations or electrical waves. In wireless telegraphy, signals given by means of controlled electrical pulsations are transmitted through the ether by means of the so-called Hertzian or radio waves. Hertzian waves are electrical oscillations which travel with the speed of light and have varying wave lengths and consequent frequencies intermediate between the frequency ranges of light and sound waves. The transmitting apparatus used for sending the signals is capable, when actuated by a telegraph key or other signaling device, of producing, for short periods of variable lengths, electrical oscillations of radio frequency (over 10,000 cycles per second) in an antenna or open circuit from which the oscillations are radiated to a distant receiving apparatus. The receiver has an open antenna circuit which is electrically responsive

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to the transmitted waves and is capable of using those responses to actuate by means of a relay or amplifier any convenient form of signaling apparatus for making audible an electrically transmitted signal, such as a telegraph sounder or a loudspeaker. In brief, signals at the transmitter are utilized to control high frequency electrical oscillations which are radiated by an antenna through the ether to the distant receiver and there produce an audible or visible signal.

All of these were familiar devices at the time of Marconi's application for the patent now in suit. By that time, radio had passed from the theoretical to the practical and commercially successful. Four years before, Marconi had applied for his original and basic patent, which was granted as No. 586, 193, July 13, 1897, and reissued June 4, 1901, as reissue No. 11,913. He applied for his corresponding British patent, No. 12039 of 1896, on June 2, 1896. Marconi's original patent showed a two-circuit system in which the high frequency oscillations originated in the transmitter antenna circuit and the detecting device was connected directly in the receiver antenna circuit. Between 1896 and 1900, he demonstrated on numerous occasions the practical success of his apparatus, attaining successful transmission at distances of 70 and 80 miles. During those years, he applied for a large number of patents in [63 S.Ct. 1396] this and other countries for improvements on his system of radio communication.2

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The particular advance said to have been achieved by the Marconi patent with which we are here concerned was the use of two high frequency circuits in the transmitter and two in the receiver, all four so adjusted as to be resonant to the same frequency or multiples of it. The circuits are so constructed that the electrical impulses in the antenna circuit of the transmitter vibrate longer with the application to the transmitter of a given amount of electrical energy than had been the case in the previous structures known to the art, and the selectively and sensitivity of the receiver is likewise enhanced. Thus, increased efficiency in the transmission and reception of signals is obtained. The specifications of the Marconi patent state that its object is

to increase the efficiency of the system and to provide new and simple means whereby oscillations of electrical waves from a transmitting station may be localized when desired at any one selected receiving station or stations out of a group of several receiving stations.

The specifications describe an arrangement of four high frequency circuits tuned to one another-two at the sending station associated with a source of low frequency oscillations, and two at the receiving station associated with a relay or amplifier operating a signaling device. At the sending station there is an open antenna circuit which is "a good radiator," connected with the secondary...

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