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U.S. Supreme Court

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

Marconi Wireless Tel. Co. v. United States

No. 369

Argued April 9, 12, 1943

Decided June 21, 1943*

320 U.S. 1


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

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

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

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

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

Page 320 U. S. 2

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

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

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

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

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

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

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

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

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

Page 320 U. S. 3

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

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

99 Ct.Cls. 1, affirmed in part.

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

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