320 U.S. 1 | SCOTUS | 1943
Lead Opinion
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
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,
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 this and other countries for improvements on his system of radio communication.
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 signalling device. At the sending station there is an open antenna circuit which is “a good radiator,” connected with the secondary coil of a transformer, and through it inductively coupled with a closed circuit, which is connected with the primary coil of the transformer, this closed circuit being a “persistent oscillator.” At the receiving station there is an open antenna circuit constituting a “good absorber” inductively coupled with a closed circuit capable of accumulating the received oscillations.
The patent, in describing the arrangement of the apparatus so as to secure the desired resonance or tuning, specifies: “The capacity and self-induction of the four
The drawings and specifications show a closed circuit at the transmitting station connected with the primary
The receiver consists of a similar antenna circuit connected with the primary coil of a transformer, and having a variable induction coil located between the antenna or plate and the transformer. A shunt circuit bridging the transformer and containing a condenser which is preferably adjustable may also be added. The secondary coil of the transformer is connected through one or more interposed inductance coils, “preferably of variable inductance,” with'the terminals of a coherer
The patent describes the operation of the four circuits as follows, beginning with the transmitter:
“In operation the signalling-key b is pressed, and this closes the primary of the induction-coil. Current then rushes through the transformer-circuit and the condenser e is charged and subsequently discharges through the spark-gap. If the capacity, the inductance, and the resistance of the circuit are of suitable values, the discharge is oscillatory, with the result that alternating currents of high frequency pass through the primary of the transformer and induce similar oscillations in the secondary, these oscillations being rapidly radiated in the form of electric waves by the elevated conductor [antenna].
“For the best results and in order to effect the selection of the station or stations whereat the transmitted oscillations are to be localized I include in the open secondary circuit of the transformer, and preferably between the radiator / and the secondary coil cV, an inductance-coil g, Fig. 1, having numerous coils, and the connection is such that a greater or less number of turns of the coil can be put in use, the proper number being ascertained by experiment.”
Long before Marconi’s application for this patent the scientific principles of which he made use were well understood and the particular appliances constituting elements in the apparatus combination which he claimed were well known. About seventy years ago Clerk Maxwell described the scientific theory of wireless communication through the transmission of electrical energy by ether waves.
By connecting the spark gap to large area plates in the open circuit Hertz increased the capacity and thus not only increased the force of the sparks but also changed one of the two factors determining the frequency of the oscillations in the circuit, and hence the wave length of the oscillations transmitted. Hertz’s receiver was shown as a rectangle of wire connected to the knobs of a spark gap, both the wire and the spark gap being of specified lengths of such relationship as to render the circuit reso-> nant to the wave lengths in the transmitter. At times Hertz attached to the rectangle additional vertical wires which provided additional capacity, and whose length could readily be varied so as to vary the wave lengths to which the receiver was responsive, thus providing a “method of adjusting the capacity” of the receiver.
Lodge, writing in the London Electrician in 1894, elaborated further on the discoveries of Hertz and on his own experiments along the same lines. In one article, of June 8, 1894, he discussed phenomena of resonance and made an observation which underlies several of the disclosures in Marconi’s patent. Lodge pointed out that some circuits were by their nature persistent vibrators, i. e., were able to sustain for a long period oscillations set up in them, while others were so constructed that their oscillations were rapidly damped. He said that a receiver so constructed as to be rapidly damped would respond to waves of almost any frequency, while one that was a persistent vibrator would respond only to waves of its own natural periodicity. Lodge pointed out further that Hertz’s transmitter “radiates very powerfully” but that “In consequence of its radiation of energy, its vibrations are rapidly damped, and it only gives some three or four good strong swings. Hence it follows that it has a wide range of excitation, i. e., it can excite sparks in conductors barely at all in tune with it.” On the other hand Hertz’s receiver was “not a good absorber but a persistent vibrator, well adapted for picking up disturbances of precise
In 1892, Crookes published an article in the Fortnightly Review in which he definitely suggested the use of Hert-zian waves for wireless telegraphy and pointed out that the method of achieving that result was to be found in the use and improvement of then known means of generating electrical waves of any desired wave length, to be transmitted through the ether to a receiver, both sending and receiving instruments being attuned to a definite wave length.
Marconi’s original patent No. 586,193, which was granted July 13, 1897, and became reissue No. 11,913, disclosed a two-circuit system for the transmission and reception of Hertzian waves. The transmitter comprised an antenna circuit connected at one end to an aerial plate and at the other to the ground, and containing a spark gap. To the knobs of the spark gap was connected a transformer whose secondary was connected with a source of current and a signalling key. The low frequency current thereby induced in the antenna circuit was caused to discharge through the spark gap, producing the high frequency oscillations which were radiated by the antenna. The receiver similiarly contained an antenna circuit between an elevated plate and the ground, in which
The Tesla patent No. 645,576, applied for September 2, 1897 and allowed March 20, 1900, disclosed a four-circuit system, having two circuits each at transmitter and receiver, and recommended that all four circuits be tuned to the same frequency. Tesla’s apparatus was devised primarily for the transmission of energy to any form of energy-consuming device by using the rarified atmosphere at high elevations as a conductor when subjected to the electrical pressure of a very high voltage. But he also recognized that his apparatus could, without change, be used for wireless communication, which is dependent upon the transmission of electrical energy. His specifications declare: “The apparatus which I have shown will obviously have many other valuable uses— as, for instance, when it is desired to transmit intelligible messages to great distances . . .”
Tesla’s specifications disclosed an arrangement of four circuits, an open antenna circuit coupled, through a transformer, to a closed charging circuit at the transmitter, and an open antenna circuit at the receiver similarly coupled to a closed detector circuit. His patent also in
Tesla thus anticipated the following features of the Marconi patent: A charging circuit in the transmitter for causing oscillations of the desired frequency, coupled, through a transformer, with the open antenna circuit, and the synchronization of the two circuits by the proper disposition of the inductance in either the closed or the antenna circuit or both. By this and the added disclosure of the two-circuit arrangement in the receiver with similar adjustment, he anticipated the four-circuit tuned
In patent No. 609,154, applied for February 1,1898 and allowed August 16, 1898, before Marconi’s application, Lodge disclosed an adjustable induction coil in the open or antenna circuit in a wireless transmitter or receiver or both to enable transmitter and receiver to be tuned together. His patent provided for the use, in the open circuits of a transmitter and a receiver of Hertzian waves, of a self-induction coil between a pair of capacity areas which he stated might be antenna and earth. His specifications state that a coil located as described could be made adjustable at will so as to vary the value of its self-inductance; that the adjustment, to secure the “desired frequency of vibration or syntony with a particular distant station,” may be attained either “by replacing one coil by another” or by the use of a coil constructed with a movable switch so related to the coil as to short circuit, when closed, any desired number of turns of the wire, “so that the whole or any smaller portion of the inductance available may be used in accordance with the correspondingly-attuned receiver at the particular station to which it is desired to signal.” Thus Lodge adjusted his tuning by varying the self-inductance of the antenna circuits, for, as he explained, the adjustment of wave lengths, and hence of frequency in the circuits, could be made by varying either or both the inductance and capacity, which are the factors controlling wave length and hence frequency in the antenna circuits.
Lodge thus broadly claimed the tuning, by means of a variable inductance, of the antenna circuits in a system of radio communication. His specifications disclose what is substantially a two-circuit system, with one high fre
The Stone patent No. 714,756, applied for February 8, 1900, nine months before Marconi’s application, and allowed December 2, 1902, a year and a half before the grant of Marconi’s patent, showed a four-circuit wireless telegraph apparatus substantially like that later specified and patented by Marconi. It described adjustable tuning, by means of a variable inductance, of the closed circuits of both transmitter and receiver. It also recommended that the two antenna circuits be so constructed as to be resonant to the same frequencies as the closed circuits. This recommendation was added by amendment to the specifications made after Marconi had filed his application, and the principal question is whether the amendments were in point of substance a departure from Stone’s invention as disclosed by his application.
Stone’s application shows an intimate understanding of the mathematical and physical principles underlying radio communication and electrical circuits in general.
Stone discusses in some detail the difference between “natural” and “forced” oscillations. He says “If the electrical equilibrium of a conductor be abruptly disturbed and the conductor thereafter be left to itself, electric currents will flow in the conductor, which tend to ultimately restore the condition of electrical equilibrium.” He points out that a closed circuit containing a condenser and a coil is “capable of oscillatory restoration of equilibrium upon the sudden discharge of the condenser” and that “the electrical oscillations which it supports when its equilibrium is abruptly disturbed and it is then left to itself are known as the natural vibrations or oscillations of the system.”
In addition to its ability to originate “natural vibrations” when its electrical equilibrium is disturbed, Stone says that an electrical circuit is also “capable of supporting what are termed forced vibrations” when electrical oscillations elsewhere created are impressed upon it. In contrast to the “natural” vibrations of a circuit, whose frequency depends upon “the relation between the electromagnetic constants [capacity and self-inductance] of the circuit,” the frequency of the “forced” vibrations is “independent of the constants of the circuit” on which they are impressed and “'depends only upon the period [frequency] of the impressed force.” In other words, Stone found that it was possible not only to originate high-
Stone points out that in the existing systems of radio transmission the electric oscillations are “naturally” developed in the antenna circuit by the sudden discharge of accumulated electrical force through a spark gap in that circuit. Such oscillations are “necessarily of a complex character and consist of a great variety of superimposed simple harmonic vibrations of different frequencies.” “Similarly the vertical conductor at the receiving station is capable of receiving and responding to vibrations of a great variety of frequencies so that the electro-magnetic waves which emanate from one vertical conductor used as a transmitter are capable of exciting vibrations in any other vertical wire as a receiver . . . and the messages from the transmitting station will not be selectively received by the particular receiving station with which it is desirous to communicate, and will interfere with the operation of other receiving stations within its sphere of influence.”
In contrast to the two-circuit system whose inadequacies he had thus described, Stone’s drawings and specifications disclose a four-circuit system for transmitting and receiving radio waves which was very similar to that later disclosed by Marconi. The transmitter included a source of low frequency oscillating current and a telegraph or signalling key connected in a circuit which was inductively coupled with another closed circuit. This included an induction coil, a condenser, and a spark gap capable of generating high frequency oscillations. It in turn was inductively coupled through a transformer with an open antenna circuit connected to an aerial capacity at one end and the earth at the other. The receiver included a sim
Stone thus recognized, although he used different terminology, the fact, previously observed by Lodge, that an open antenna circuit, so constructed as to be an efficient radiator, was not an oscillator capable of producing natural waves of a single well-defined periodicity, and consequently had a wide range of excitation. He adopted the same remedy for this defect as Marconi later did, namely to produce the oscillations in a closed circuit capable of generating persistent vibrations of well-defined periodicity, and then induce those oscillations in an open antenna circuit capable of radiating them efficiently to a distant resonant receiver. He states that the vibrations in his closed circuit “begin with a maximum of amplitude and gradually die away,” a good description of the results obtainable by a “persistent oscillator.”
Stone’s application recommends that the inductance coils in the closed circuits at transmitter and receiver “be made adjustable and serve as a means whereby the operators may adjust the apparatus to the particular frequency which it is intended to employ.” He thus disclosed a means of adjusting the tuning of the closed circuits by variable inductance. His original application nowhere states in so many words that the antenna circuits should be tuned, nor do its specifications or drawings explicitly disclose any means for adjusting the tuning of those circuits. But there is nothing in them to suggest that Stone did not intend to have the antenna circuits tuned, and we think that the principles which he recognized in his application, the purpose which he sought to achieve, and certain passages in his specifications, show that he recognized, as they plainly suggest to those skilled in the art, the desirability of tuning the antenna circuits as well. The disclosures of his application were thus an adequate basis for the specific recommendation, later added by amendment, as to the desirability of constructing the
The major purpose of Stone's system was the achievement of greater selectivity of tuning. His objective was to transmit waves “of but a single frequency” and to receive them at a station which “shall be operated only by electric waves of a single frequency and no others.” He states:
“By my invention the vertical conductor of the transmitting station is made the source of electro-magnetic waves of but a single periodicity, and the translating apparatus at the receiving station is caused to be selectively responsive to waves of but a single periodicity so that the transmitting apparatus corresponds to a tuning fork sending but a single simple musical tone, and the receiving apparatus corresponds to an acoustic resonator capable of absorbing the energy of that single, simple musical tone only.”
He says that “when the apparatus at a particular [receiving] station” is properly tuned to a particular transmitting station the receiver will selectively receive messages from it. He adds:
“Moreover, by my invention the operator at the transmitting or receiving station may at will adjust the apparatus at his command in such a way as to place himself in communication with any one of a number of stations ... by bringing his apparatus into resonance with the periodicity employed.”
And with respect to the transmitter he says, “It is to be understood that any suitable device may be employed to develop the simple harmonic force impressed upon the vertical wire [antenna]. It is sufficient to develop in the vertical wire practically simple harmonic vibrations of a fixed and high frequency.”
Stone thus emphasized the desirability of making the entire transmitting and receiving “apparatus” resonant to a particular frequency. As none of the circuits are resonant to a desired frequency unless they are tuned to that frequency, this reference to the transmitting and receiving apparatus as being brought into resonance with each other cannot fairly be said to mean that only some of the circuits at the transmitter and receiver were to be tuned. To say that by this reference to the tuning of sending and receiving apparatus he meant to confine his invention to the tuning of some only of the circuits in that apparatus is to read into his specifications a restriction which is plainly not there and which contradicts everything they say about the desirability of resonance of the apparatus. It is to read the specifications, which taken in their entirety are merely descriptive or illustrative of his invention, compare Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 418, 419-20, as though they were claims whose function is to exclude from the patent all that is not specifically claimed. Mahn v. Harwood, 112 U. S. 354, 361; McClain v. Ortmayer, 141 U. S. 419, 423-5; Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 146.
Stone’s full appreciation of the value of making all of his circuits resonant to the same frequency is shown by his suggestion to insert, between the closed and antenna circuits at the transmitter and receiver, one or more additional closed circuits, so constructed as to be highly resonant to the particular frequency employed. 'He says that the purpose of such an intermediate circuit is “to weed out and thereby screen” the antenna circuit at the transmitter and the detecting device at the receiver from any harmonics or other impurities in the wave structure.
He states: “This screening action of an interposed resonant circuit is due to the well known property of such circuits by which a resonant circuit favors the development in it of simple harmonic currents of the period to which it is attuned and strongly opposes the development in it of simple harmonic currents of other periodicities.” His original application thus disclosed the advantage, where vibrations created in one circuit are to be impressed on another, of making the latter circuit resonant to the same frequency as the former, in view of the “well
Stone’s application shows that these principles of resonant circuits were no less applicable to the antenna circuit, and suggests the use of “any suitable device” to “develop” in the antenna circuit the “simple harmonic force impressed” upon it. It was then well known in the art that every electrical circuit is to some degree resonant to a particular frequency to which it responds more readily and powerfully than to others. Although the degree of resonance attained by a vertical wire is small, its natural resonance is no different in kind from that of a closed circuit such as Stone’s screening circuit. Stone recognized this in his application. In describing the complex natural vibrations set up by a sudden discharge in an antenna circuit, such as that commonly used at the time of his application, Stone said that “the vibrations consist of a simple harmonic vibration of lower period than all the others, known as the fundamental with a great variety of superimposed simple harmonics of higher periodicity superimposed thereon.” And he says that the oscillations developed in the charging circuit of his system “induce corresponding oscillations in the vertical wire,” which are “virtually” forced vibrations, and “practically independent, as regards their frequency, of the constants of the second circuit in which they are induced” — a plain recognition that the antenna circuit has electro-magnetic constants which affect its natural periodicity, and that that natural periodicity does have some effect on the frequency of the vibrations impressed upon the antenna circuit.
The Marconi Company argues that Stone’s theory of “forced” oscillations presupposes that the open transmitter circuit be untuned. It is true that Stone said that such “forced” oscillations have a period of vibration which is “independent of the electrical constants of the circuit” on which they are impressed. But the fact that the “forced” vibration will retain its natural period whatever the frequency of the antenna circuit may be, does not preclude, as Stone showed, the tuning of that circuit so as to achieve maximum responsiveness to the vibrations impressed upon it. Stone’s specifications indicate that he used the term “forced” merely as meaning that the vibrations are developed in another circuit and then transferred to the antenna circuit by inductive coupling, as distinguished from “natural” vibrations which originate in the antenna or radiating circuit — in short that “forced” is merely used as a synonym for “in
Hence there is ample support for the finding of the court below that
“By free oscillations is meant that their frequency was determined by the constants of the circuit in which they were generated. The Stone application as filed impressed these oscillations upon the open circuit, and therefore used 'forced5 oscillations in the open circuit of the transmitter, that is, the frequency of the oscillations in the open circuit was determined by the frequency of the oscillations in the closed circuit.
“The effect of forcing vibrations upon a tuned and un-tuned circuit may be likened unto the effect of a tuning fork upon a stretched cord in a viscous medium. When the cord is vibrated by the tuning fork it has the same period as does the fork regardless of whether such period be that of the natural period of the cord, but when the fork vibrations are in tune with the natural period or*28 fundamental of the cord, then the amplitude of vibrations in the cord is a maximum.”
Thus Stone’s application, prior to Marconi, showed a four-circuit system, in which the oscillations were produced in a closed charging circuit and impressed on an open antenna circuit in the transmitter, and were similarly received in an open antenna circuit and by it induced in a closed circuit containing a detector. He showed the effect of resonance on the circuits resulting from their tuning to a desired frequency, and emphasized the importance of making the transmitting and receiving apparatus resonant to that frequency.
Stone’s patent,
Stone’s 1902 amendments also suggested that an “elevated conductor that is aperiodic may be employed”— i. e., one having very weak natural periodicity and consequently “adapted to receive or transmit all frequencies.” But this suggestion was accompanied by the alternative recommendation in the 1902 amendments that the antenna circuits at transmitter and receiver “may with advantage be made resonant to a particular frequency,” i. e., be periodic. No inference can be drawn from this that only an aperiodic antenna was contemplated either by the application or the amendments. The application was sufficiently broad to cover both types, since both were suitable means of achieving under different conditions the results which the application described and sought to attain. The amendments thus merely clarified and explained in fuller detail two alternative means which could be employed in the invention described in the original application, one of those means being the construction of the antenna so as to be highly resonant, i. e., tuned, to a particular frequency.
The only respects in which it is seriously contended that Marconi disclosed invention over Stone are that Marconi explicitly claimed four-circuit tuning before
For reasons already indicated we think it clear that Stone showed tuning of the antenna circuits before Marconi, and if this involved invention Stone was the first inventor. Stone’s application emphasized the desirability of tuning, and disclosed means of adjusting the tuning of the closed circuits. His very explicit recognition of the increased selectivity attained by inductive coupling of several resonant circuits plainly suggested to those skilled in the art that the antenna circuit could with advantage be a resonant circuit, that is to say a tuned circuit, and hence that it was one of the circuits to be tuned. He stressed the importance of tuning “by any suitable device” the “apparatus” at transmitter and receiver, which included at both an antenna circuit.
Since no invention over Stone was involved in tuning the antenna circuits, neither Marconi nor Stone made an invention by providing adjustable tuning of any of the circuits or by employing Lodge’s variable inductance as a means of adjusting the tuning of the resonant four-circuit arrangement earlier disclosed by Stone’s application and patented by him. No invention was involved in employing the Lodge variable inductance for tuning
Stone's conception of his invention as disclosed by his patent antedated his application. It is carried back to June 30,1899, seven months before his application, when, in a letter to Baker, he described in text and drawings his four-circuit system for wireless telegraphy in substantially the same form as that disclosed by the application. His letter is explicit in recommending the tuning of the antenna circuits. In part he wrote as follows:
“Instead of utilizing the vertical wire [antenna] itself at the transmitting station as the oscillator, I propose to impress upon this vertical wire, oscillations from an oscillator, which oscillations shall be of a frequency corresponding to the fundamental of the wire. Similarly at the receiving station, I shall draw from the vertical wire, only that component of the complex wave which is of lowest frequency.
“If now the fundamental of the wire at the receiving station be the same as that of the wire at the transmitting station, then the receiving station may receive signals from the transmitting station, but if it be different from that of the transmitting station, it may not receive those signals.
“The tuning of these circuits one to another and all to the same frequency will probably be best accomplished*33 empirically, though the best general proportions may be determined mathematically.”
On July 18, 1899, Stone again wrote to Baker, mathematically demonstrating how to achieve the single frequency by means of forced vibrations. He expressed as a trigonometric function the form taken by the forced wave “if the period of the impressed force be the same as that of the fundamental of the vertical wire.” He also pointed out that the transmitting circuit which he had disclosed in his earlier letter to Baker, “is practically the same as that employed by Tesla,” except that Stone added an inductance coil in the closed circuit “to give additional means of tuning” and to “swamp” the reactions from the coil of the oscillation transformer and thus loosen the coupling between the open and closed circuit of the transmitter.
Stone disclosed his invention to others, and in January, 1900, described it to his class at the Massachusetts Institute of Technology. Before 1900 he was diligent in obtaining capital to promote his invention. Early in 1901 a syndicate was organized to finance laboratory experiments. The Stone Telegraph & Telephone Co. was organized in December, 1901. It constructed several experimental stations in 1902 and 1903; beginning in 1904
We think that Stone’s original application sufficiently disclosed the desirability that the antenna circuits in transmitter and receiver be resonant to the same frequency as the closed circuits, as he expressly recommended in his patent. But in any event it is plain that no departure from or improper addition to the specifications was involved in the 1902 amendments, which merely made explicit what was already implicit. Hobbs v. Beach, 180 U. S. 383, 395-7. We would ordinarily be slow to recognize amendments made after the filing of Marconi’s application and disclosing features shown in that application. Cf. Schriber-Schroth Co. v. Cleveland Trust Co., 305 U. S. 47, 57; Powers-Kennedy Corporations. Concrete Co., 282 U. S. 175,185-6; Mackay Radio Co. v. Radio Corporation, 306 U. S. 86. But here Stone’s letters to Baker, whose authenticity has not been questioned in this case, afford convincing proof that Stone had conceived of the idea of tuning all four circuits prior to the date of Marconi’s invention. Cf. Bickell v. Smith-Hambury-Scott Welding Co., 53 F. 2d 356, 358.
It is well established that 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. Philadelphia & Trenton R. Co. v. Stimpson, 14 Pet. 448, 462; Loom Co. v. Higgins, 105 U. S. 580, 593; Radio Corporation v. Radio Laboratories, 293 U. S. 1, 11-13; Christie v. Seybold, 55 F. 69, 76; Automatic Weighing Mach. Co. v. Pneumatic Scale Corp., 158 F. 415, 417-
Commercial success achieved by the later inventor and patentee cannot save his patent from the defense of anticipation by a prior inventor.
Marconi’s patent No. 763,772 was sustained by a United States District Court in Marconi Wireless Telegraph Co. v. National Signalling Co., 213 F. 815, and his invention as specified in his corresponding British patent No. 7777 of 1900, was upheld in Marconi v. British Radio & Telegraph Co., 27 T. L. R. 274, 28 R. P. C. 18. The French court likewise sustained his French patent, Civil Tribunal of the Seine, Dec. 24, 1912. None of these courts considered the Stone patent or his letters. All rest their findings of invention on Marconi’s disclosure of a four-circuit system and on his tuning of the four circuits, in the
Marconi’s reputation as the man who first achieved successful radio transmission rests on his original patent, which became reissue No. 11,913, and which is not here
Claim 16 of Marconi 'patent No. 763,772.
The Government asks us to review so much of the decision of the Court of Claims as held valid and infringed Claim 16 of Marconi’s patent No. 763,772. That claim is for an antenna circuit at the receiver connected at one end to “an oscillation-receiving conductor” and at the other to a capacity (which could be the earth), containing the primary winding of a transformer, “means for adjusting the two transformer-circuits in electrical resonance with each other,” and “an adjustable condenser in a shunt connected with the open circuit, and around said transformer-coil.” Marconi thus discloses and claims the addition to the receiver antenna of an adjustable condenser connected in a shunt around the primary of the transformer. The specifications describe the condenser as “preferably one provided with two telescoping metallic tubes separated by a dielectric and arranged to readily
Although the claim broadly provides for “means of adjusting the two transformer-circuits in electrical resonance,” Marconi’s drawings disclose the use of a variable inductance connected between the aerial conductor and the transformer-coil in such a manner that the variable inductance is not included in that part of the antenna circuit which is bridged by the condenser. The condenser is thus arranged in parallel with the transformer coil and in series with the variable inductance. In his specifications Marconi enumerates a number of preferred adjustments for tuning the transmitting and receiving stations, showing the precise equipment to be used to achieve tuning to the desired wave-length. The two tunings which show the use of the adjustable condenser in the receiver antenna also make use of the variable inductance. And his specifications state: “In a shunt around said primary f- [the primary of the transformer] I usually place a condenser h . . . An inductance coil g
In this respect the devices which the court below found to infringe Claim 16 exhibit somewhat different arrangements. Apparatus manufactured by the Kilbourne and Clark Company, and used by the Government, had a receiver antenna circuit containing a variable inductance'in addition to the transformer coil, and having an adjustable condenser so constructed that it could be connected either in series with the two inductances, or in a shunt bridging both of them. Apparatus manufactured by the Telefunken Company showed a similar antenna circuit having no variable inductance, but having an adjustable condenser so arranged that it could be connected either in
The Marconi patent does not disclose the function which is served by the adjustable condenser disclosed by Claim 16, except in so far as Marconi in his specifications, in describing the means of tuning the receiver circuits to a particular desired frequency, prescribes specific values for both the variable inductance and the adjustable condenser in the receiver antenna circuit. The Court of Claims found that this indicated “that the purpose of the condenser connected in shunt with the primary winding of the transformer of the receiver, is to enable the electrical periodicity or tuning of the open circuit of the receiver to be altered.”
The court thus based its holding that Claim 16 disclosed patentable invention on its finding that Marconi, by the use of an adjustable condenser in the antenna circuit, disclosed a new and useful method of tuning that circuit. The Government contends that the arrangement of the antenna circuit disclosed by Marconi’s specifications— with the condenser shunted around the transformer coil but not around the variable inductance — is such that the condenser cannot increase the wave-length over what it would be without such a condenser, and that it can decrease that wave-length only when adjusted to have a very small capacity. The Government contends therefore that its principal function is not that of tuning but of providing “loose coupling.”
As we have seen from our discussion of the other claims of the Marconi patent, the idea of tuning the antenna circuits involved no patentable invention. It was well known that tuning was achieved by the proper adjustment of either the inductance or the capacity in a circuit, or both. Lodge and Stone had achieved tuning by the use of an adjustable induction coil, so arranged that its effective inductance could readily be varied.
But capacity was no less important in tuning. De Tunzelmann’s descriptions of Hertz’s experiments show that Hertz, in order to make his receiving apparatus resonant to the particular frequency radiated by the transmitter, carefully determined the capacity of both, and indeed disclosed a means of adjusting the capacity of the receiver by attaching to it wires whose length could readily be varied. Marconi in his prior patent No. 686,193, granted July 13, 1897, which became reissue No. 11,913, had disclosed a two-circuit system for the transmission of radio waves in which both transmitter and-receiver had large metal plates serving as capacity areas. His specifications describe the construction of transmitting and receiving stations so as to be resonant to the same frequency by calculation of the length of these metal plates, thereby determining the capacity of the antenna circuits of transmitter and receiver respectively. He states that the plates are “preferably of such a length as to be electrically . tuned with the electric oscillations transmitted,” and describes means of achieving this result so as to determine “the length most appropriate to the length of wave emitted by the oscillator.” Claim 24 of his patent claims “the combination of a transmitter capable of producing electrical oscillations or rays of definite character at the
Moreover the use of an adjustable condenser as a means of tuning was known to the prior art. Pupin in patent No. 640,516, applied for May 28, 1895, and granted January 2, 1900, before Marconi, disclosed the use of an adjustable condenser as a means of tuning a receiving circuit in a system of wired telegraphy. Pupin’s patent was designed to permit the simultaneous transmission over a wire of several messages at different frequencies, and the selective reception at a given receiving station of the particular message desired, by tuning the receiving circuit to the frequency at which that message was transmitted. His specifications and drawings disclose at the receiver a telegraph key or other suitable detecting instrument located in a shunt from the wire along which the messages were passed. The shunt circuit included a condenser “of adjustable capacity,” an adjustable induction coil, and a detecting instrument. His specifications state that “the capacity of the condenser H and the self-induction of the [induction] coil I being such that the natural period or frequency of the shunt or resonance circuit HI is the same as the period of one of the electromotive forces which produce the current coming over the line . . . this circuit PII will be in resonance with the current and therefore will act selectively with respect to it.” He disclosed an alternative system in which a similar shunt circuit containing a condenser, already described as of adjustable capacity, and the primary of a transformer, was inductively coupled with another circuit containing the secondary of the transformer, an induction coil, an adjustable condenser, and a receiving device. He thus in effect dis
Thus Pupin showed the use of an adjustable condenser as a means of tuning an electrical circuit so as to be selectively receptive to impulses of a particular frequency. It is true that his patent related not to the radio art but to the art of wired telegraphy, an art which employed much lower frequencies. But so far as we are informed the principles of resonance, and the methods of achieving it, applicable to the low frequencies used by Pupin are the same as those applicable to high frequency radio transmission and reception.
Fessenden, in patent No. 706,735, applied for Dec. 15, 1899, before Marconi, and granted Aug. 12,1902, disclosed, in the antenna circuit of a radio receiver, a condenser in a shunt around a coil. The coil was used in effect as a transformer; by the magnetic lines of force set up when a current passed through it an indicator was caused to move, thereby either closing an electrical connection or giving a visible signal. Fessenden’s specifications do not clearly disclose the purpose of his condenser, but they specify that it must be “of the proper size.” He also discloses a condenser in a shunt circuit around the terminals of a spark gap in the antenna circuit of the transmitter, and his specifications prescribe that.“This shunt-circuit must be tuned to the receiving-conductor; otherwise the oscillations produced by it will have no action upon the wave-responsive device at the receiving-station.”
We have referred to the Pupin and Fessenden patents, not for the purpose of determining whether they anticipate Claim 16 of Marconi, as the Government insists, but to indicate the importance of considering them in that
Although the Pupin and Fessenden patents were in the record before the Court of Claims when it entered its decision finding Claim 16 valid and infringed, they were not referred to in connection with Claim 16 either in the court’s opinion or in its findings, evidently because not urged upon that court by the Government as anticipating Claim 16. But this Court, in the exercise of its appellate power, is not precluded from looking at 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. Muncie Gear Co. v. Outboard Motor Co., 315 U. S. 759, 766-8; Act of May 22, 1939, 28 U. S. C. § 288; cf. Hormel v. Helvering, 312 U. S. 552, 556.
In order to determine whether this Court should consider the evidence which the Government now presses upon it, and should on the basis of that evidence either decide for itself whether Claim 16 is valid and infringed or remand that question to the Court of Claims for further consideration, it is necessary to set out in some detail the relevant proceedings below. The case was referred to a special commissioner for the taking of testimony under a stipulation that the issue of reasonable compensation for damages and profits be postponed until the determination of the issues of validity and infringement. On June 26, 1933, the Commissioner filed a report in which he made the following findings with regard to Claim 16, which the Court of Claims later adopted in substance:
*45 “LXII. Claim 16 of Marconi #763772 is directed to subject matter which is new and useful . . .
“LXV. The receiving apparatus of the Kilbourne & Clark Company, shown in exhibit 95, and the receiver made by the Telefunken company, illustrated in exhibit 79, each has apparatus coming within the terminology of claim 16.”
Both parties filed exceptions to the Commissioner’s report. The Marconi Company excepted to part of finding LXII, and took several exceptions which were formally addressed to finding LXV. The Government, in a memorandum, opposed the suggested amendments to these findings. But the Government filed no exceptions to these two findings, nor did it, in its extensive brief before the Court of Claims, make any contention that Claim 16 either is invalid or was not infringed.
After the court had rendered its interlocutory decision holding Claim 16 valid and infringed, the case was sent back to the Commissioner to take evidence on the accounting. Much evidence was taken bearing on the function served by the condenser in the arrangement described in Claim 16 and in the Government’s receivers, and in that connection the Pupin and Fessenden patents were again introduced in evidence by the Government. When the Pupin patent was offered the Commissioner stated: “Obviously, as I understand the offer of this patent of Pupin, it does not in any way attack the validity of Claim 16 of the Marconi patent in suit. As you state Mr. Blackmar, that has been decided by the Court, and I do not recall just now what procedure was followed after the decision and prior to this accounting proceeding; but the defendant had at that time opportunity for a motion for a new trial and presentation of newly-discovered evidence and all those matters.” Accordingly, the Commissioner stated that he received the patent in evidence “for the sole purpose of aiding the witness and the Commissioner and the
In its exceptions to the Commissioner’s report on the accounting the Government asked the Court of Claims to make certain specific findings as to the mode of operation of the arrangements disclosed in the Pupin and Fes-senden patents, and also to find that
“The mode of connecting the primary condenser in parallel with the antenna-to-earth capacity used by the defendant followed the disclosure of Pupin 640,516 and the Fessenden patent 706,735 . . . and hence does not infringe the Marconi claim 16 which is based upon'a different arrangement, operating in a different manner to obtain a different result.”
The Government contended that there was no finding of fact that Claim 16 had been infringed, and that the court, in the course of the accounting proceeding had by an order of October 22, 1937, reopened the entire subject of infringement. We agree with the court that the Commissioner’s finding LXY, which the court adopted as finding LXIII, was a finding of infringement, and we see no reason to question the court’s conclusion that its order had not reopened the subject of infringement.
In view, however, of the Government’s apparent misunderstanding of the scope of the issues left open on the accounting we think that its request for a finding of non-infringement specifically addressed to the Pupin and Fes-senden patents was a sufficient request to the court to reconsider its previous decision of infringement. And while most of the argument on the Government’s exceptions to the Commissioner’s report was based on evidence taken upon the accounting, the Government’s briefs suf
The court, in rejecting the Government’s request for a finding of non-infringement, stated: “The question of infringement of Marconi Claim 16 ... is not before us in the present accounting.” “The sole purpose and function of an accounting in a patent infringement case is to ascertain the amount of compensation due. and no other issue can be brought into the accounting to change or alter the court’s prior decision.” We cannot say with certainty whether in rejecting the Government’s request the court thought that it lacked power to reconsider its prior decision, or whether it held merely that in the exercise of its discretion it should not do so. Nor does it appear that, assuming it considered the question to be one of discretion, it recognized that in part at least the Government’s request was based on evidence, having an important bearing on the validity and construction of Claim 16, which had been before the court but had not been considered by it when it held Claim 16 valid and infringed.
Although the interlocutory decision of the Court of Claims on the question of validity and infringement was appealable, United States v. Esnault-Pelterie, 299 U. S. 201, 303 U. S. 26; 28 U. S. C. § 288 (b), as are interlocutory orders of district courts in suits to enjoin infringment, 28 U. S. C. § 227 (a); Simmons Co. v. Grier Bros. Co., 258 U. S. 82, 89, the decision was not final until the conclusion of the accounting. Barnard v. Gibson, 7 How. 649; Humiston v. Stainthorp, 2 Wall. 106; Simmons Co. v. Grier Bros. Co., supra, 89. 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. Perkins v. Fourniquet, 6 How. 206, 208; McGourkey v. Toledo & Ohio Central Ry. Co., 146 U. S. 536, 544; Simmons Co.
Whether it should have taken any of these courses was a matter primarily for its discretion, to be exercised in the light of various considerations which this Court cannot properly appraise without more intimate knowledge than it has of the proceedings in a long and complex trial. Among those considerations are the questions whether, as appears to be the case from such portions of the record as have been filed in this Court or cited to us by counsel, the Government failed to make any contention as to the validity or construction of Claim 16 in the proceedings leading to the interlocutory decision; whether the showing of non-infringement which it now makes is sufficiently strong, and the public interest that an invalid patent be not sustained is sufficiently great, to justify reconsidering the decision as to Claim 16 despite the failure of Government counsel to press its contention at the proper time; whether adequate consideration of the question of non-infringement can be had on the existing record, or whether additional testimony should be received; and whether, balancing the strength or weakness of the Government's present showing of non-infringement against the undesirability of further prolonging this already extended litigation, the case is one which justifies reconsideration.
These are all matters requiring careful consideration by the trial court. In order that the case may receive that consideration, we vacate the judgment as to Claim 16 and remand .the cause to the Court of Claims for further proceedings in conformity to this opinion.
If on the remand the court should either decline to reconsider its decision of infringement, or should upon reconsideration adhere to that decision, it should pass upon
In computing the damages the court apparently did not take into account or attempt to appraise any contribution which may have been made by the improvement over Marconi which the Government asserts was included in the accused devices. The court found that where the condenser is connected in series with the inductance coils in the antenna it “can be used to shorten the natural resonant wave length of the antenna circuit but cannot lengthen it beyond what would be the resonant wave length if the condenser were not present.” On the other hand, it found that when the condenser is connected in parallel it enables the periodicity of the antenna to be lowered, permitting the reception of longer wave-lengths.
The computation of damages was based on the premise that the advantage to the Government resulting from the infringement was derived from the ability which the accused devices had thus acquired to receive longer wavelengths. But there was substantial testimony that the ar
The judgment as to Claim 16 will be vacated and the cause remanded for further proceedings.
The Fleming Patent No. 808,684•
The Fleming patent, entitled: “Instrument for Converting Alternating Electric Currents into Continuous Currents” was applied for April 19, 1905, and granted on November 7, 1905 to the Marconi Company, as assignee
“This arrangement described above operates as an electric valve and permits negative electricity to flow from the hot carbon b to the metal cylinder c, but not in the reverse direction, so that the alternations induced in the coil k by the Hertzian waves received by the aerial wire n are rectified or transformed into a more or less continuous current capable of actuating the galvanometer l by which the signals can be read.”
The specifications further state:
“. . . the aerial wire n may be replaced by any circuit in which there is an alternating electromotive force, whether of low frequency or of high frequency . . ,”
*52 “Hence the device may be used for rectifying either high-frequency or low-frequency alternating currents of electrical oscillations . .
Only Claims 1 and 37 of the patent are in suit. They read as follows:
“1. The combination of a vacuous vessel, two conductors adjacent to but not touching each other in the vessel, means for heating one of the conductors, and a circuit outside the vessel connecting the two conductors.
“37. At a receiving-station in a system of wifeless telegraphy employing electrical oscillations of high frequency -a detector comprising a vacuous vessel, two conductors adjacent to but not touching each other in the vessel, means for heating one of the conductors, a circuit outside of the vessel connecting the two conductors, means for detecting a continuous current in the circuit, and means for impressing upon the circuit the received oscillations.”
The current applied to the filáment or cathode by' the battery sets up a flow of electrons (negative electric charges) from the heated cathode, which are attracted to 'the cold plate or anode when the latter is positively charged. When an alternating current is set up in the circuit containing the cathode, anode, and secondary of the transformer, the electronic discharge from the cathode closes the circuit and permits a continuous flow of electricity through it when the phase of the current is such that the anode is positively charged, while preventing any flow of current through the tube when the anode is negatively charged. The alternating current is thus rectified so as to produce a current flowing only in one direction. See DeForest Radio Co. v. General Electric Co., 283 U. S. 664; Radio Corporation v. Radio Laboratories, 293 U. S. 1; Detrola Radio Corp. v. Hazeltine Corporation, 313 U. S. 259.
Claims 1 and 37 of .the Fleming patent are . identical in their structural elements. Both claim the vacuum tube,
In the patent as originally issued there had been another differencé between the two claims. Claim 37 describes the tube as being used “in a system of wireless telegraphy em- • ploying electrical oscillations of high frequency.’ ’ No such limitation was placed on Claim 1 as originally claimed, and the specifications already quoted plainly contemplated the use of the claimed device with low as well as high frequency currents. This distinction was eliminated by a disclaimer filed by the Marconi Company November 17, 1915, restricting the combination of the elements of Claim I to a use “in connection with high frequency alternating ■electric currents or electric oscillations of the order employed in Hertzian wave transmission,” and deleting, certain references to low frequencies in the specifications. The result of the disclaimer was to limit both claims to the use of the patented device for rectifying high frequency alternating waves or. currents such -as were employed in wireless telegraphy.
The earliest date asserted for Fleming’s invention; as limited by the disclaimer, is November 16,1904. Twenty .years before, on October 21, 1884, Edison had secured United States Patent No. 307,031. In his specifications he stated:
“I have discovered that if a conducting substance is interposed anywhere in the vacuous spáce within the globe of an incandescent .electric lamp, and said, conducting substance is connected outside of the lamp with one terminal, ' preferably the positive one, of the incandescent conductor, a portion of the current will, when the lamp is. in opera*54 tion, pass through the shunt-circuit thus formed, which shunt includes a portion of the vacuous space within the lamp. This current I have found to be proportional to the degree of incandescence of the conductor or candlepower of the lamp.”
Edison proposed to use this discovery as a means of “indicating, variations in the electro-motive force in an electric circuit,” by connecting a lamp thus equipped at a point where the current was to be measured. The drawings of his patent show an electric circuit, including a filament (cathode) and a plate (anode) both “in the vacuous space within the globe” — an electric light bulb. The shunt-circuit extends from the plate through a galvanometer to the filament. His specifications disclose that the vacuous space within the globe is a conductor of current between the plate anode and the filament; that the strength of the current in the filament-to-plate circuit through the vacuum depends upon the degree of incandescence at the filament; and that the plate anode is preferably connected to the positive side of the current supply. The claims of the patent are for the combination of the filament, plate and interconnecting circuit, including the galvanometer. Claim 5, a typical claim, reads as follows:
“The combination, with an incandescent electric lamp, of a circuit having one terminal in the vacuous space within the globe of said lamp, and the other connected with one side of the lamp-circuit, and electrically controlled or operated apparatus in said circuit, substantially as set forth.”
The structure disclosed in Fleming’s Claims 1 and 37 thus- differed in no material respect from that disclosed by Edison. Since Fleming’s original Claim 1 is merely for the structure, it reads directly on Edison’s Claim 5 and could not be taken as invention over it.
On January 9, 1890, ten years before Fleming filed his application, he stated in a paper read before the Royal Society of London:
“It has been known for some time that if a platinum plate or wire is sealed through the glass bulb of an ordinary carbon filament incandescent lamp, this metallic plate being quite out of contact with the carbon conductor, a sensitive galvanometer connected between this insulated metal plate enclosed in the vacuum and the external positive electrode of the lamp indicates a current of some mil-liampéres passing through it when the lamp is set in action, but the same instrument when connected between the negative electrode of the lamp and the insulated metal plate indicates no sensible current. This phenomenon in carbon incandescence lamps was first observed by Mr. Edison, in 1884, and further examined by Mr. W. H. Preece, in 1885.” Proceedings of the Royal Society of London, vol. 47, pp. 118-9.
Fleming’s 1890 paper further pointed out that the vacuous space “possesses a curious unilateral conductivity”; that is, it permits current to “flow across the vacuous space from the hot carbon [cathode] to the cooler metal plate [anode], but not in the reverse direction.” Id. 122.
“When the lamp is actuated by an alternating current a continuous current is found flowing through a galvanometer, connected between the insulated plate and either terminal of the lamp. The direction of the current through the galvanometer is such as to show that negative electricity is flowing from the plate through the galvanometer to the lamp terminal.” Id. 120.
Fleming’s paper thus noted, contrary to the then popular conception, that it is negative electricity which flows from cathode to anode, but he emphasized that even this had been a part of general scientific knowledge, as follows:
“The effect of heating the negative electrode in facilitating discharge through vacuous spaces has previously been described by W. Hittorf (‘Annalen der Physik und Chemie/ vol. 21,1884, p. 90-139), and it is abundantly confirmed by the above experiments. We may say that a vacuous space bounded by two electrodes — one incandescent, and the other cold — possesses a unilateral conductivity for electric discharge when these electrodes are within a distance of the mean free path of projection of the molecules which the impressed electromotive force can detach and send off from the hot negative electrode.
“This unilateral conductivity of vacuous spaces having unequally heated electrodes has been examined by MM. Elster and Geitel (see Wiedemann’s Annalen,’ vol. 38, 1889, p. 40), and also by Goldstein (Wied. Ann.,’ vol. 24, 1885, p. 83), who in experiments of various kinds have demonstrated that when an electric discharge across a vacuous space takes place from a carbon conductor to another electrode, the discharge takes place at lower electromotive force when the carbon conductor is the negative electrode and is rendered incandescent.” Id. 125-6.
It is unnecessary to decide whether Fleming’s use of the Edison device for the purpose of rectifying high frequency Hertzian waves, as distinguished from low frequency waves, involved invention over the prior art, or whether the court below rightly held that the devices used by the Government did not infringe the claims sued upon, for we are of the opinion that the court was right in holding that Fleming’s patent was rendered invalid by an improper disclaimer. It is plain that Fleming’s original Claim 1, so far as applicable to use with low frequency alternating currents, involved nothing new, as Fleming himself must have known in view of his 1890 paper, and as he recognized by his disclaimer in 1915, made twenty-five years after his paper was published and ten years after his patent had been allowed. Its invalidity would defeat the entire patent unless the invalid portion had been claimed “through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention,” and was also disclaimed without “unreasonable” neglect or delay. R. S. §§ 4917, 4922; 35 U. S. C. §§ 65, 71; Ensten v. Simon Ascher & Co., 282 U. S. 445, 452; Altoona Theatres v. Tri-Ergon Corp., 294 U. S. 477, 493; Maytag Co. v. Hurley Co., 307 U. S. 243.
The purpose of the rule that a patent is invalid in its entirety if any part of it be invalid is the protection of the public from the threat of an invalid patent, and the purpose of the disclaimer statute is to enable the patentee to relieve himself from the consequences of making an invalid claim if he is able to show both that the invalid claim was inadvertent and that the disclaimer was made without unreasonable neglect or delay. Ensten v. Simon Ascher & Co., supra. Here the patentee has sustained neither burden.
Fleming’s paper of 1890 showed his own recognition that his claim of use of his patent for low frequency currents was anticipated by Edison and others. It taxes credulity to suppose, in the face of this publication, that Fleming’s claim for use of the Edison tube with low frequency currents was made “through inadvertence, accident or mistake,” which is prerequisite to a lawful disclaimer. No explanation or excuse is forthcoming for his claim of invention of a device which he had so often dem
The Marconi Company’s contention that it nowhere appears that Fleming was not the first inventor of the use of the patented device to rectify high frequency alternating currents is irrelevant to the question of the sufficiency of the disclaimer. The disclaimer itself is an assertion that the claimed use of the invention with low frequencies was not the invention of the patentee, whose rights were derived wholly from Fleming. This improper claim for something not the invention of the patentee rendered the whole patent invalid unless saved by a timely disclaimer which was not made.
The Marconi Company also asserts that, as it is suing as assignee of the patentee, it is unaffected by the provisions of the disclaimer statutes, which it construes as restricting to the “patentee” the consequences of unreasonable delay in making the disclaimer and as exempting the assignee from those consequences by the sentence “But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer.” 35 U. S. C. 71. As the court below found, the Marconi Company was itself the patentee to whom the patent was
The judgment in No. 373 is vacated and the cause remanded to the Court of Claims for further proceedings not inconsistent with this opinion.
The judgment in No. 369 is affirmed.
So ordered.
On November 20, 1919, the Marconi Company assigned to the Radio Corporation of America all of its assets, including the patents here in suit, but reserved, and agreed to prosecute, the present claims against the United States, on which it had instituted suit on July 29, 1916.
See Marconi Wireless Tel. Co. v. National Electric Signalling Co., 213 F. 815, 825, 829-31; Encyclopedia Britannica (14tb Ed.) vol. 14, p. 869; Dunlap, Marconi, The Man and His Wireless; Jacot and Collier, Marconi — Master of Space; Vyvyan, Wireless Over Thirty Years; Fleming, Electric Wave Telegraphy, 426-443.
Marconi was granted eight other United States patents for wireless apparatus on applications filed between the filing dates of Nos. 586,193 and 763,772. They are Nos. 624,516, 627,650, 647,007, 647,008, 647,-009, 650,109, 650,110, 668,315.
Capacity is the property of an electrical circuit which enables it to receive and store an electrical charge when a voltage is applied to it, and to release that charge as the applied voltage is withdrawn, thereby causing a current to flow in the circuit. Although any conductor of electricity has capacity to some degree, that property is substantially enhanced in a circuit by the use of a condenser, consisting of two or more metal plates separated by a non-conductor, such that when a voltage is applied to the circuit one plate will become positively and the other negatively charged.
Self-inductance is the property of a circuit by which, when the amount or direction of the current passing through it is changed, the magnetic stresses created induce a voltage opposed to the change. Although any conductor has self-inductance to some degree, that property is most marked in a coil.
See generally Albert, Electrical Fundamentals of Communication, Chs. Y, VI, VII, and IX; Terman, Radio Engineering, Chs. II and III; Morecroft, Principles of Radio Communication, Chs. I, II, III; Lauer and Brown, Radio Engineering Principles, Chs. I and II.
A coherer was a device disclosed by Branly as early as 1891. It was used by Lodge in experiments described in the London Electrician for June 15, 1894, p. 189, and was in common use thereafter as a detector of radio waves until replaced by the crystal and the cathode-anode tube. The most common form consisted of a tube containing metal filings which, in their normal state, were a non-conductor. When placed in a circuit through which high frequency oscillations passed, the filings aligned themselves in a continuous stream through which the low frequency electrical current operating a key or other
Of the claims in suit in No. 369, Claims 10 and 20 cover the four-circuit system, while Claims 1, 3, 6, 8, 11 and 12 cover the two transmitter circuits and Claims 2, 13, 14, 17, 18 and 19 cover the two receiver circuits. Claim 10 merely provides that the four circuits be in resonance with each other and hence does not prescribe means of adjusting the tuning. Claim 11 likewise prescribes no means of adjustment. The other claims provide means of adjustment, either a “variable inductance” (Claims 1, 2, 3, 8, 12, 13, 18, and 19) or more generally “means” for adjusting the period of the circuits (Claims 3, 6,14 and 17). Some of the claims merely provide means of adjusting the tuning of the antenna circuit (Claims 1, 2, 8, 12, and 13) and hence do not require that the closed circuits be tuned. Others either specifically prescribe the adjustable tuning of both circuits at transmitter (Claims 3, 6) or receiver (Claims 18 and 19) or both (Claim 20) or else prescribe “means for adjusting the two transformer-circuits in electrical resonance with each other, substantially as described” (Claims ■14 and 17).
A Dynamical Theory of the Electromagnetic Field (1864), 155 Philosophical Transactions of the Royal Society 459; 1 Scientific Papers of James Clerk Maxwell 526.
See the London Electrician for September 21, 1888, p. 628.
Ebert, in the London Electrician for July 6, 1894, p. 333, likewise pointed out that Hertz’s receivers are “so arranged that they show the maximum resonant effect with a given exciter; they are ‘electrically tuned.’ ”
De Tunzelmann shows that Hertz clearly understood the principles of electrical resonance. Some of his early experiments were designed to determine whether principles of resonance were applicable to high frequency electrical circuits. From them Hertz concluded that “an oscillatory current of definite period would, other conditions being the same, exert a much greater inductive effect upon one of equal period than upon one differing even slightly from it.” Id. p. 626. Hertz knew that the frequency to which a circuit was resonant was a function of the square root of the product of the self-inductance and capacity in the circuit and by a formula similar to that now used he calculated the approximate frequency of the oscillations produced by his transmitter. Id., September 28, 1888, 664-5.
Fortnightly Review, No. 101, February, 1892, 173, 174-5.
Martin, Inventions, Researches and Writings of Nikola Tesla, pp. 346-8.
Tesla’s specifications state that the current should preferably be "of very considerable frequency.” In describing apparatus used experimentally by him, the specifications state that the oscillations are generated in the charging circuit by the periodic discharge of a condenser by means of “a mechanically operated break,” a means whose effects are similar to those of the spark gap generally used at this period in the radio art. He further states that the inductance of the charging circuit is so calculated that the “primary circuit vibrates generally according to adjustment, from two hundred and thirty thousand to two hundred and fifty thousand times per second.” The
Marconi’s patent No. 627,650, of June 27,1899, similarly showed a two-circuit receiving system, in which the coherer was placed in a closed circuit which was inductively coupled with a tuned antenna circuit. The Court of Claims found, however, that this patent did not clearly disclose the desirability of tuning both circuits.
That the closed circuit was intended to be a “persistent oscillator” is also brought out by Stone’s emphasis on “loose coupling.” Stone’s application explained in detail the fact that when two circuits are inductively coupled together there normally result “two degrees of freedom,” that is to say, the superposition of two frequencies in the same circuit because of the effect on each of the magnetic lines of force set up by the other. He discussed in detail methods of eliminating this superposition, which interfered with accurate selectivity of tuning, by so constructing his circuits as to be “loosely coupled.” This he achieved by including in the closed circuits a large inductance coil, which had the effect of “swamping” the undesirable effect of
But the testimony at the trial was in substantial agreement that the looser the coupling the slower is the transfer of energy from the closed charging circuit to the open antenna circuit. Hence the use of loose coupling presupposes a charging circuit that will store its energy for a considerable period, i. e., that will maintain persistent oscillations.
Stone’s recognition of the similarity between his antenna circuit and his screening circuit is further shown by his direction that the coupling between the screening circuit and the charging circuit, like that between the antenna and charging circuits where no screening circuit is used, be loose. See note 12, supra.
Stone’s language here makes it plain that throughout his allusions to a frequency developed in one circuit as being “impressed” or “forced” on another circuit when the two circuits are coupled through a transformer, are used figuratively or metaphorically only as synonymous with “induced.” Scientifically the oscillations in the charging circuit are not impressed or forced on the other. The stress in the magnetic field of the first circuit sets up or induces corresponding stresses in the magnetic field of the other circuit. The resulting frequency in the second circuit is affected both by the frequency of the oscillations in the charging circuit and the inductance and capacity in the second circuit. The result may be the superposition of two frequencies in the second circuit. This may be avoided and a single frequency developed, as Stone showed, by tuning the second circuit so as to be resonant to the frequencies created in the first.
At the insistence of the Patent Office Stone divided his original application, and was granted two patents, No. 714,756 for a method and No. 714,831 for apparatus. The former is the one particularly relied on here.
This is borne out by the subsequent letter from Stone to the Commissioner of Patents dated June 7, 1902. Stone there refers to a letter by the Patent Office saying that the statement that a simple harmonic wave developed in the closed circuit “can be transferred to the elevated conductor and from the latter to the ether without change of form” is “an argument the soundness of which the Office has no means of testing.” Stone replied with arguments to show that the vibrations radiated by the antenna circuit would be sufficiently pure for practical purposes either if the antenna circuit were
It is not without significance that Marconi’s application was at one time rejected by the Patent Office because anticipated by Stone, and was ultimately allowed, on renewal of his application, on the sole ground that Marconi showed the use of a variable inductance as a means of tuning the antenna circuits, whereas Stone, in the opinion of the Examiner, tuned his antenna circuits by adjusting the length of the aerial conductor. All of Marconi’s claims which included that element were allowed, and the Examiner stated that the remaining claims would be allowed if amended to include a variable inductance. Apparently through oversight, Claims 10 and 11, which failed to include that element, were included in the patent as granted. In allowing these claims the Examiner made no reference to Lodge’s prior disclosure of a variable inductance in the antenna circuit.
See footnote 13, supra.
Even if tbe lack of invention in Marconi's improvement over Stone — making adjustable tbe tuning of tbe antenna circuits which Stone bad said should be tuned — could be said to be in sufficient doubt so that commercial success could aid in resolving tbe doubt, Thropp’s Sons Co. v. Seiberling, 264 U. S. 320, 330; DeForest Radio Co. v. General Electric Co., 283 U. S. 664, 686; Altoona Theatres v. Tri-Ergon Corp., 294 U. S. 477, 488, it has not been established that tbe alleged improvement contributed in any material degree to that success. Compare Altoona Theatres v. Tri-Ergon Corp., supra. Marconi's specifications disclose a large number of details of construction, none of which is claimed as invention in this patent, in which his apparatus differed from, and may have been greatly superior to, Stone’s. Many of these formed the subject of prior patents. After his application for his patent, as well as before, Marconi made or adopted a great number of improvements in his system of wireless telegraphy. Two of his engineers have written that a major factor in his successful transmission across the Atlantic in December, 1901, was the use of much greater power and higher antennae than had previously been attempted, an improvement in no way suggested by the patent here in suit. Fleming, Electric Wave Telegraphy, 449-53; Vyvyan, Wireless Over Thirty Years, 22-33. Indeed both are agreed that in the actual transmission across the Atlantic tuning played no part; the receiver antenna consisted of a wire suspended by a kite which rose
By 1913, when he testified in the National Electric Signalling Co. case, that “due to the utilization of the invention” of this patent he had successfully transmitted messages 6,600 miles, he had, after almost continuous experimentation, further increased the power used, developed new apparatus capable of use with heavy power, enlarged his antennae and adopted the use of horizontal, “directional” antennae, and made use of improved types of spark gaps and detecting apparatus, including the Fleming cathode-anode tube, the crystal detector, and sound recording of the signals — to mention but a few of the improvements made. He had also discovered that much greater distances could be attained at night. See Vyvyan, supra, 3-4-47, 55-60. The success attained by the apparatus developed by Marconi and his fellow engineers by continuous experimentation over a period of years — however relevant it might be in resolving doubts whether the basic four-circuit, tuned system disclosed by Marconi, and before him by Stone, involved invention — cannot, without further proof, be attributed in significant degree to any particular one of the many improvements made by Marconi over Stone during a period of years. The fact that Marconi’s apparatus as a whole was successful does not entitle him to receive a patent for every feature of its structure.
A preliminary injunction restraining infringement was entered in Marconi Wireless Tel. Co. v. DeForest Co., 225 F. 65, affirmed, 225 F. 373, both courts, without independent discussion of the validity of the patent, determining that the decision in the National Signal-ling Co. case justified the grant of preliminary relief. A preliminary injunction was also granted in Marconi Wireless Tel. Co. v. Atlantic Communications Co., an action brought in the Eastern District of New York.
Stone’s letters were introduced in evidence in the Atlantic Communications Company case and the Kilbourne & Clark case. His deposition in the latter case, taken February 28 and 29, 1916, was incorporated in the record in this case. He there testified that he had refrained from producing proofs of the priority of his invention when called upon to testify in prior litigation in 1911 and 1914 because he wished the priority of his invention to be established by the owners of the patent — the Stone Telegraph Co. and its bondholders — in order to be sure that a bona fide defense would be made. He said that by May 1915, when he testified in the Atlantic Communications Co. case, he had concluded that the owners of the patent were not in a financial position to litigate, and that the Atlantic Co. “would make a bona fide Stone defense.”
See note 13, supra. Most of the current in the antenna circuit is said to pass through the condenser shunt and not through the transformer coil, thus minimizing the eifect upon the frequency of vibrations in the antenna circuit of the magnetic stresses set up in the primary of the transformer by the current induced in the secondary.
“Considering the exclusive right to invention as given not of natural right, but for the benefit of society, I know well the difficulty of drawing a fine between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not. As a member of the patent board for several years, while the law authorized a board to grant or refuse patents, I saw with what slow progress a system of general rules could be matured. . . . Instead of refusing a patent in the first instance, as the board was authorized to do, the patent now issues of course, subject to be declared void on such principles as should be established by the courts of law. This business, however, is but little analogous to their course of reading, since we might in vain turn over all the lubberly volumes of the law to find a single ray which would lighten the path of the mechanic or the mathematician. It is more within the information of a board of academical professors, and a previous refusal of patent would better guard our citizens against harassment by law-suits. But England had given it to her judges, and the usual predominancy of her examples carried it to ours.” Thomas Jefferson to Mr. Isaac M’Pher-son, August 13, 1813, Works of Thomas Jefferson, Wash. Ed., vol. VI, pp. 181-82.
“I cannot stop without calling attention to the extraordinary condition of the law which makes it possible for a man without any knowledge of even the rudiments of chemistry to pass upon such questions as these. The inordinate expense of time is the least of the resulting evils, for only a trained chemist is really capable of passing upon such facts, e. g., in this case the chemical character of Von Furth’s so-called ‘zinc compound,’ or the presence of inactive organic substances. . . . How long we shall continue to blunder along without the aid of unpartisán and authoritative scientific assistance in the administration of- justice, no one knows; but all fair persons not conventionalized by provincial legal habits of mind ought, I should think, unite to effect some such advance.” Judge Learned Hand in Parke-Davis & Co. v. Mulford Co., 189 F. 95, 115 (1911).
He was only twenty-six years old at the time be applied- for tbe patent in suit, but be bad already made substantial contributions to tbe field.
Dissenting Opinion
dissenting in part:
I regret to find myself unable to agree to the Court’s conclusion regarding the invalidity of the broad claims of Marconi’s patent. Since broad considerations control the significance and assessment of the details on which judgment in the circumstances of a case like this is based, I shall indicate the general direction of my views.
It is an old observation that the training of Anglo-American judges ill fits them to discharge the duties cast
The discoveries of science are the discoveries of the laws of nature, and like nature do not go by leaps. Even Newton and Einstein, Harvey and Darwin, built on the past and on their predecessors. Seldom indeed has a great discoverer or inventor wandered lonely as a cloud. Great inventions have always been parts of an evolution, the culmination at a particular moment of an antecedent process. So true is this that the history of thought records striking coincidental discoveries — showing that the new insight first declared to the world by a particular individual was “in the air” and ripe for discovery and disclosure.
The real question is how significant a jump is the new disclosure from the old knowledge. Reconstruction by hindsight, making obvious something that was not at all obvious to superior minds until someone pointed it out,— this is too often a tempting exercise for astute minds. The result is to remove the opportunity of obtaining what Congress has seen fit to make available.
The inescapable fact is that Marconi in his basic patent hit upon something that had eluded the best brains of the time working on the problem of wireless communication — Clerk Maxwell and Sir Oliver Lodge and Nikola Tesla. Genius is a word that ought to be reserved for the rarest of gifts. I am not qualified to say whether Marconi was a genius. Certainly the great eminence of Clerk Maxwell and Sir Oliver Lodge and Nikola Tesla
To find in 1943 that what Marconi did really did not promote the progress of science because it had been anticipated is more than a mirage of hindsight. Wireless is so unconscious a part of us, like the automobile to the modern child, that it is almost impossible to imagine ourselves back into the time when Marconi gave to the world what for us is part of the order of our universe. And yet, because a judge of unusual capacity for understanding scientific matters is able to demonstrate by a process of intricate ratiocination that anyone could have drawn precisely the inferences that Marconi drew and that Stone hinted at on paper, the Court finds that Marconi’s patent was invalid although nobody except Marconi did in fact draw the right inferences that were embodied into a workable boon for mankind. Eor me it speaks volumes that it should have taken forty years to reveal the fatal bearing of Stone’s relation to Marconi’s achievement by a retrospective reading of his application to mean this rather than that. This is for me, and I say it with much diffidence, too easy a transition from what was not to what became.
I have little doubt, in so far as I am entitled to express an opinion, that the vast transforming forces of technology have rendered obsolete much in our patent law. For all I know the basic assumption of our patent law may be false, and inventors and their financial backers do not need the incentive of a limited monopoly to stimulate
Dissenting Opinion
dissenting in part: •'
Until now law
At such an altitude, to work at all with success is to qualify-for genius, if that is important. And a short step forward gives- evidence of inventive power. . For at that height a merely slight advance comes through insight only a. first-rate mind can produce. ■. This is so, whether it;comes by years of hard work tracking down. the. sought secret or by intuition flashed from subconsciousness made fertile by long experience or shorter intensive concentration. At this level and in this company Marconi worked and won.
He won by the test of results. No one disputes this. His invention had immediate and vast success, where all that had been done before, including his own work, gave but narrowly limited utility. To make useful improvement at -this plane, by such a leap, itself shows high capacity. . And that is true,, although it was inherent in the situation that Marconi’s success should come by only a small margin of difference in conception. There was not roqm for. any great leap ,of thought, beyond what he and others had done, to bring to birth the practical and useful result. The most .eminent men of. the time were conscious of the. problem, were interested in it, had sought for years the exactly right arrangement, always approaching more nearly but never quite reaching the stage of prac
When to altitude of the plane of conception and results so immediate and useful is added well-nigh unanimous contemporary judgment, one who long afterward would overturn the invention assumes a double burden. He undertakes to overcome what would offer strong resistance fresh in its original setting. He seeks also to overthrow the verdict of time. Long-range retroactive diagnosis, however competent the physician, becomes hazardous by progression as the passing years add distortions of the past and destroy its perspective. No light task is accepted therefore in undertaking to overthrow a verdict settled so long and so well, and especially one so foreign to the art of judges.
In lawyers' terms this means a burden of proof, not insurmountable, but inhospitable to implications and inferences which in less settled situations would be permissible to swing the balance of judgment against the claimed invention. That Marconi received patents elsewhere which, once established, have stood the test of time as well as of contemporary judgment, and secured his American patent only after years were required to convince our office he had found what so many others sought, but emphasizes the weight and clarity of proof required to overcome his claim.
Marconi received patents here, in England, and in France.
Litigation followed at once. Among Marconi’s American victories were the decisions cited above.
It is important, in considering the references, to state the parties’ contentions concisely. The Government’s statement is that they differ over whether Marconi was first to conceive four-circuit “tuning” for transmission of sound by Hertzian waves. It says this was taught previously by Tesla, Lodge and Stone. Petitioner however says none of them taught what Marconi did. It contends that Marconi was the first to accomplish the kind of tun
Specifically petitioner urges' that Tesla had nothing to do with either Hertzian waves or tuning, but in fact his transmitting and receiving wires could not be tuned.
Petitioner does-not claim the general principles - of tuning. It admits they had long been familiar to physicists and that Lodge and others fully .understood them. But it asserts Lodge did not know what circuits should be tuned, to accomplish what Marconi achieved, and that, to secure this, “knowledge that tuning is possible is not enough — there is also required the. knowlédge of whether or- not to tune and how much.”
Likewise, petitioner does not deny that Stone knew and utilized the principles of tuning; but urges, with respect to the claim he applied them to all of the four circuits, that the only ones tuned, in his original application, were the closed circuits and therefore that the antenna circuits were not tuned; although it is not denied that the effects of tuning the closed circuits were reflected in the open ones by what Stone describes as “producing forced simple
The Stone amendments of 1902, made more than a year after Marconi’s filing date, .admittedly disclose tuning of both the closed and the open circuits, and were made for the purpose of stating expressly, the latter effect, claimed to. be implicit in the original application. Petitioner denies this was implicit and argues, in effect, that what Stone originally meant by “producing forced... . . vibrations”. was creating the desired effects in the antenna by force, not by tuning; and therefore that the two methods were patentably different. ■ ■ ¡
It seems clear that the parties use the word “tuning” to mean different things and the ambiguity, if there is one, must be resolved before .the crucial questions can be stated with meaning: ■ It will aid, in deciding whether there is ambiguity or only confusion, to consider the term and the possible conceptions it may ^convey in the light of the problems Marconi and Stone, as well as other references, were seeking to solve.-
. Marconi had in mind first a specific difficulty, as did the principal references. It arose from what, to the time of his invention, had been a baffling problem in the art. Shortly and simply, it was that an electrical circuit which is a good, conserver of energy is a bad radiator and, conr versely, a good radiator is a bad conserver of energy. Effective use of Hertzian waves over long distances required both effects. To state the matter differently, Lodge had explained in 1894 the difficulties of fully utilizing the principle of sympathetic resonance in detecting ether waves. To secure this, it was necessary, on the one hand, to discharge a long series of waves of equal or apr proximately equal length. Such a series can be produced only by a circuit which conserves its energy- well, wh$t Marconi calls a persistent, oscillator. On.the other hand, for distant detection, the waves must be of substantial
Since the difficulty was inherent in a single circuit, whether at one end or the other, Marconi used two in both transmitter and receiver, four in all. In each station he used one circuit to obtain one of the necessary advantages and the other circuit to secure the other advantage. The antenna (or open) circuits he made “good radiators” (or absorbers). The closed circuits he constructed as “good conservers.” By coupling the two at each end loosely he secured from their combination the dual advantages he sought. At the transmitter, the closed circuit, by virtue of its capacity for conserving energy, gave persistent oscillation, which passed substantially undiminished through the coupling transformer to the “good radiator” open circuit and from it was discharged with little loss of energy into the ether. Thence it was picked up by the “good absorber” open circuit and passed, without serious loss of energy, through the coupling transformer, into the closed “good conserving” circuit, where it accumulated to break the coherer and give detection.
Moreover, and for present purposes this is the important thing, Marconi brought the closed and open circuits into almost complete harmony by placing variable inductance in each. Through this the periodicity of the open circuit was adjusted automatically to that of the closed one; and, since the circuits of the receiving’ station were similarly adjustable, the maximum resonance was secured throughout the system. Marconi thus not only solved
In 1911 this solution was held inventive, as against Lodge, Marconi's prior patents, Braun and other references, in Marconi v. British Radio Tel. & Tel. Co., 27 T. L. R. 274. Mr. Justice Parker carefully reviewed the prior art, stated the problem, Marconi’s solution, and in disposing of Braun’s specification concluded it “did not contain even the remotest suggestion of the problem . . ., much less any suggestion bearing on its solution. . . As to Lodge, Mr. Justice Parker observed, referring first to Marconi:
“. . . It is important to notice that in the receiver the mere introduction of two circuits instead of one was no novelty. A figure in Lodge’s 1897 patent shows the open circuit of his receiving aerial linked through a transformer with a closed circuit containing the coherer, his idea being, as he states, to leave his receiving aerial freer to vibrate electrically without disturbance from attached wires. This secondary circuit, as shown, is not tuned to, nor can it be tuned to, the circuit of the aerial. This, in my opinion, is exceedingly strong evidence that Marconi’s 1900 invention was not so obvious as to deprive it of subject matter. In the literature quoted there is no trace of the idea underlying Mr. Marconi’s invention, nor, so far as I can see, a single suggestion from which a competent engineer could arrive at this idea.” (Emphasis added.)
It was therefore clearly Mr. Justice Parker’s view, in his closer perspective to the origin of the invention and the references he considered, that in none of them, and particularly not in Lodge or Braun, was there anticipation of Marconi’s solution.
He did not mean that the references did not apply “the principle of resonance as between transmitter and re
From these and other statements.in the opinion it is obvious that Mr: Justice Parker found Marconi’s invention in something more than merely the application of the “principle of resonance,” or “sympathetic resonance,” or its use. to “tune” together the transmitting, and receiving circuits. For Marconi in his own prior inventions, Lodge and the other references.,, in fact all who had constructed, any system using Hertzian waves capable of transmitting and detecting sound, necessarily had made use,, in some manner and to some extent, of “the principle of .resonance”. or “sympathetic resonance.’’ That principle is inherent in the idea of wireless communication -by Hertzian .waves. So that, necessarily, all the prior conceptions included the. idea that. common periodicity must appear in all of the circuits employed'.
Nor did Mr. Justice Parker’s opinion find the inventive feature in the use of two circuits instead of one, at any rate in the receiver. For he expressly notes this in Lodge; But he.points out that Lodge added the separate- circuit “to leave his receiving aerial freer to vibrate electrically without disturbance from attached wires.” ■ And he goes oil .to note that this secondary (or closed) circuit not only was not, but could not be, “tuned” to the aerial 'circuit. And this he finds “exceedingly strong evidence” that “Marconi’s 1900 invention was not so obvious-as .to: deprive it of subject matter.” .Lodge had “tuned” the.antenna circuit, by placing in it a variable inductance. '..But
;In short, Mr. Justice Parker -found the gist of Marconi’s- invention, not in - mere application of the general principle or -principles of resonance to- a four-circuit system, -or in the use of four circuits or the substitution of two for one in each or either station; but, as petitioner now contends, in recognition- of the principle- -that, whether in the transmitter or the receiver, attainment of ■the maximum resonance, required that means for tuning the closed to the open circuit be inserted in both. ■ That recognized, the method of accomplishing the adjustment was obvious, and different methods, as by using variable inductance or a condenser, were available. As petitioner’s reply brief states the matter, “The Marconi invention, was not the-use of a variable inductance, nor indeed any other specific way of tuning an antenna — before Marconi it was known that electrical circuits' could be tuned or hot tuned, by inductance coils -or condensers. . His broad invention was the combination of a tuned antenna circuit and a tuned closed circuit/’ (Emphasis added.) And it is.only -in this view that the action of the Patent Office in finally awarding the ..patent to Marcpni can. be explained or sustained, for it allowed claims both limited to and not specifying variable inductance. That feature was essential for both circuits in principle, but not in the particular method by which. Marconi accomplished it. And it was recognition of this which eventually induced allowance of the -claims, ■ notwithstanding the previous
In the perspective of this decade, Marconi’s advance, in requiring “independent tuning,” that is, positive means of tuning located in both closed and open circuits, seems simple and obvious. It was simple. But, as is often true with great inventions, the simplest and therefore generally the best solution is not obvious at the time, though it becomes so immediately it is seen and stated. Looking back now at Edison’s light bulb one might think it absurd that that highly useful and beneficial idea had not been worked out long before, by anyone who knew the elementary laws of resistance in the field of electric conduction. But it would be shocking, notwithstanding the presently obvious character of what Edison did, for any court now to rule he made no invention.
The same thing applies to Marconi. Though what he did was simple, it was brilliant, and it brought big results. Admittedly the margin of difference between his conception and those of the references, especially Lodge and Stone, was small. It came down to this, that Lodge saw the need for and used means for performing the function which variable inductance achieves in the antenna or open circuit, Stone did the same thing in the closed circuit, but Marconi first did it in both. Slight as each of these steps may seem now, in departure from the others, it is as true as it was in 1911, when Mr. Justice Parker wrote, that the very fact men of the eminence of Lodge and Stone saw the necessity of taking the step for one circuit but not for the other is strong, if not conclusive, evidence that taking it for both circuits was not obvious. If this was so clearly indicated that anyone skilled in the art should have seen it, the unanswered and I think unanswerable question remains, why did not Lodge and Stone, both assiduously searching for the secret and both preeminent in the field, recognize the
It remains to give further attention concerning Stone. Admittedly his original application did not require tuning, in Marconi’s sense, of the antenna circuit, though it specified this for the closed one. He included variable inductance in the latter, but not in the former. His device therefore was, in this respect, exactly the converse of Lodge. But it is said his omission to specify the function (as distinguished from the apparatus which performed it) for the antenna circuit was not important, because the function was implicit in the specification and therefore supported his later amendment, filed more than a year following Marconi’s date, expressly specifying this feature for the open circuit.
Substantially the same answer may be made to this as Mr. Justice Parker made to the claim based on Lodge. Tuning both circuits, that is, including in each independent means for variable adjustment, was the very gist of Marconi’s invention. And it was what made possible the highly successful result. It seems strange that one who saw not only the problem, but the complete solution, should specify only half what was necessary to achieve it, neglecting to mention the other and equally important
Apart from the significance of omitting to express a'feature so important, I am unable to find convincing evidence the idea was implicit in Stone as he originally filed. His distinction between “natural” and “forced” oscillations seems to me to prove, in the light of his original disclosure, not that “tuning” of .the antenna circuit as Marconi required this was implicit; but rather that it was not present in that application at all. It is true he sought, as Marconi did, to make the antenna circuit at the transmitter the source of waves of but a single periodicity and the samé circuit at the receiver an absorber only of the waves so transmitted. .But the methods they used were not the same. ■ Stone’s method was to' provide “what are substantially, forced vibrations” in the.transmitter’s antenna circuit and, at the receiver, to impose “between'the vertical conductor [the antenna] . . . and the translating devices [in the closed .circuit] .[other] resonant circuits attuned to. the particular frequency of the electro-magnetic waves-
• When Stone, states that “the vertical -conductor at the transmitter station is made the source of . i . waves of but a single periodicity,” I find nothing to suggest that this is accomplished by specially tuning that circuit, or; in fact; anything more than that this circuit is a good conductor sending out the single period waves forced into it from the
The same is true of the other passages relied upon by the Court for suggestion. No word or hint can be found in them that Stone intended or contemplated independently tuning the antenna. They merely suggested, on the one hand, that when “the apparatus” at the receiving station is properly tuned to a particular transmitter, it will receive selectively messages from the latter and, further, that the operator may at will adjust “the apparatus at his command” so as to communicate with any one of several sending stations; on the other hand, that “any suitable device” may be used at the transmitter “to develop the simple harmonic force impressed upon” the antenna. “The apparatus,” as used in the statements concerning the adjustments at the receiving station, clearly means “the apparatus at his command,” that is, the whole of that station’s equipment, which contained in the intermediate and closed circuits, but not in the open one, the means for making the adjustments described. There is nothing whatever to suggest including a tuning device also in the open circuit. The statement concerning the use of “any
Finally, Stone was no novice. He too was “a very expert person and one of the best men in the art.” National Electric Signalling Co. v. Telefunken Wireless Tel. Co., 209 F. 856, 864 (D. C.). He knew the difference between tuned and untuned circuits, how to describe them, and how to apply them when he wanted to do so. He used this knowledge when he specified including means for tuning in his closed circuit. He did not use it to specify similarly tuning the open one. The omission, in such circumstances, could hardly have been intentional. In my opinion he deliberately selected an aperiodic aerial, one to which the many receiving circuits his application contemplated could be adjusted and one which would carry to them, from his transmitter’s tuned periodicity and by its force alone, what it sent forward. In short, Stone deliberately selected an untuned antenna, a tuned
It may be that by his method he attained results comparable, or nearly so, to those Marconi achieved. The record does not show that he did so prior to his amendment. If he did, that only goes to show he accomplished: in consequence what Marconi did, but by .a .different method. That, both had the same “broa,d purpose” of providing a high degree of tuning at both stations, and that both may have accomplished this object substantially, does not show that they did so in the same way or that Stone, by his different method, anticipated Marconi.
In my opinion therefore Stone's amendment was not supported by anything in his original application and should not have been allowed. As petitioner says, it added the new feature of tuning the antennat and in that respect resembled the amendment of a Fessenden application "to include- the tuning of the closed circuit.” National Electric Signalling Co. v. Telefunken Wireless Tel. Co., supra. The amendment here should receive the samp fate as befell the one there involved.
Stone’s-letters to Baker, quoted in the Court's opinion, show no more, than his original application disclosed. There is no hint or suggestion in them, of tuning the antenna circuits “independently” as Marconi did. And- the correspondence gives further proof he contemplated introducing the inductance coil (or a device equivalent in function) into the closed circuit, but expressed no idea of doing the same thing in the open one.
. In my opinion therefore the judgment -should be reversed,, in so far. as, it holds Marconi’s broad claims invalid.
Marconi v. British Radio Tel. & Tel. Co., 27 T. L. R. 274; Marconi v. Helsby Wireless Tel. Co., 30 T. L. R. 688; Société Marconi v. Société Générale, etc., Civil Tribunal of the Seine, 3d Chamber, Dec. 24, 1912; Marconi Wireless Telegraph Co. v. National Electric Signalling Co., 213 F. 815 (D. C.); Marconi Wireless Telegraph Co. v. Kilbourne & Clark Mfg. Co., 265 F. 644 (C. C. A.), aff’g 239 F. 328 (D.C.).
Cf., e. g., 14 Encyc. Britannica (14th ed.) 869.
His earliest American patent, U. S. Patent No. 586,193, granted, on' July 13, 1897, later becoming Reissue Patent No. H',913, is not in suit’here. That, patent did not embrace many .of the crucial claims here involved and its product cannot compare in--commercial usefulness with that of the patent in suit.
Courts closer to it chronologically than we are have characterized, it as a “conspicuous advance in wireless telegraphy”; “a real accomplishment”'and the ideas' involved in the patent were said-to “have proven of great value to the world,” to have brought' about “an entirely new and useful result,” “a new and very important-industrial result” and “a wonderful conquest.” “The Marco'ni patent standout as an unassailable monument until new. discoveries -are.made.”, Cf. the authorities cited in note 1, supra. "
U. S. Patent No. 763,772; British Patent No. 7777 of 1900; French Patent No. 305,060 of Nov. 3, 1900.
British patent to Lodge No. 29,505.
Cf. note 3 supra.
U. S. Patent to Tesla No. 649,621, May 15, 1900, division of 645,576, March 20,1900 (filed Sept. 2,1897).
Cf. text infra.
Cf. note 1 supra.
Ibid.
Tesla in fact did not use Hertzian waves. His idea was to make the ether a conductor for long distances by using extremely high voltage, 20,000,000 to 30,000,000 volts, and extremely high altitudes, 30,000 to 40,000 feet or more, to secure transmission from aerial to aerial. Balloons, with wires attached reaching to the ground, were his suggested aerials. His system was .really one for transmitting power for motors, lighting, etc.', to “any terrestrial distance,” though he incidentally mentions “intelligible messages.” As he did not use Hertzian waves, he had no such problem of selectivity as Marconi, Lodge, Stone and others were working on later.