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invention. But whatever revamping our patent laws may need, it is the business of Congress to do the revamping. We have neither constitutional authority nor scientific competence for the task.

MR. JUSTICE ROBERTS joins in this opinion.

MR. JUSTICE RUTLEDGE, dissenting in part:

Until now law has united with almost universal repute 2 in acknowledging Marconi as the first to establish wireless telegraphy on a commercial basis. Before his invention, now in issue, ether-borne communication traveled some eighty miles. He lengthened the arc to 6,000. Whether or not this was "inventive" legally, it was a great and beneficial achievement. Today, forty years after the event, the Court's decision reduces it to an electrical mechanic's application of mere skill in the art.

1 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.).

2 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. 11,913, 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 Marconi patent stands out as an unassailable monument until new discoveries are made." Cf. the authorities cited in note 1, supra.

1

RUTLEDGE, J., dissenting.

By present knowledge, it would be no more. School boys and mechanics now could perform what Marconi did in 1900. But before then wizards had tried and failed. The search was at the pinnacle of electrical knowledge. There, seeking, among others, were Tesla, Lodge and Stone, old hands and great ones. With them was Marconi, still young as the company went obsessed with youth's zeal for the hunt.

5

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 room 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

* He was only twenty-six years old at the time he applied for the patent in suit, but he had already made substantial contributions to the field.

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tical success. The invention was, so to speak, hovering in the general climate of science, momentarily awaiting birth. But just the right releasing touch had not been found. Marconi added it.

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. The American patent was not issued perfunctorily. It came forth only after a long struggle had brought about reversal of the Patent Office's original and later rejections. The application was filed in November,

6 U. S. Patent No. 763,772; British Patent No. 7777 of 1900; French Patent No. 305,060 of Nov. 3, 1900.

1

RUTLEDGE, J., dissenting.

1900. In December it was rejected on Lodge," and an earlier patent to Marconi. It was amended and again rejected. Further amendments followed and operation of the system was explained. Again rejection took place, this time on Lodge, the earlier Marconi, Braun and other patents. After further proceedings, the claims were rejected on Tesla." A year elapsed, but in March, 1904, reconsideration was granted. Some claims then were rejected on Stone,10 others were amended, still others were cancelled, and finally on June 28, 1904, the patent issued. French and British patents had been granted in 1900.

Litigation followed at once. Among Marconi's American victories were the decisions cited above." Abroad the results were similar.12 Until 1935, when the Court of Claims held it invalid in this case, 81 Ct. Cl. 671, no court had found Marconi's patent wanting in invention. It stood without adverse judicial decision for over thirty years. In the face of the burden this history creates, we turn to the references, chiefly Tesla, Lodge and Stone. The Court relies principally on Stone, but without deciding whether this was inventive.

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

British patent to Lodge No. 29,505.

8 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).

10 Cf. text infra.

11 Cf. note 1 supra.

12 Ibid.

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ing he achieved, and in effect urges this was patentably different from other forms found earlier.

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.13 Lodge, it claims, disclosed a tuned antenna, for either transmitter or receiver or both, but the closed circuits associated with the antenna ones were not tuned. Finally it is said Stone does not describe tuning the antenna, but does show tuning of the associated closed circuit. And Marconi tuned both.

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 knowledge 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

13 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.