Looking for clarification regarding the Marconi Wireless Tel. Co. v. United States, 320 U.S. 1 (1943)

I had read years ago that Marconi’s lawsuit against the US for patent infringement never made it to the Supreme Court for a hearing/trial. I had also read that the Supreme court upheld Tesla’s patent 645, 576 but that the ruling never said anything to the effect of who was the absolute inventor of radio. I have since seen many websites drawing vastly differing conclusions. What is the best legal interpretation of the Supreme Court ruling and which conclusions should not be drawn from it based on its wording?

Does this analysis seem correct?

“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 in question. That reputation, however well-deserved, does not entitle him to a patent for every later improvement which he claims in the radio field.” … Chief Justice Stone

The Supreme Court declared various Marconi patents invalid, it affirmed prior work and patents by not only Nikola Tesla, but also patents that were held by Sir Oliver Lodge and John Stone Stone. The Tesla argument sounds good on the surface, until you read the court ruling. The syllabus at the beginning of the 1943 U.S. Supreme Court decision provides a summary of the ruling. You really have to dig into the decision to find references to Tesla.

Are you asking who invented something or what the outcome of the supreme court case was? Because of how patent law works those are not necessarily the same thing, and proof of one isn’t proof of the other.

I certainly would like a definitive answer as to who invented radio.
According to Simon Winchester’s “A Vast Ocean of a Million Stories” (p. 311)
As Thomas Edison later remarked to sceptics time and again, “Marconi is the one”. For Winchster there is no question that Marconi is the inventor. He doesn’t mention Nikola Tesla or Sir Oliver Lodge and John Stone Stone for that matter.

My only concern is to get at a reasonable interpretation of the Supreme Court ruling. Who were the winners and losers in the case? Why is the case so befuddling?

I’m not familiar with the history of these patents or the underlying inventor claims at all, but being relatively familiar with reading Supreme Court judgments I will summarize, but there are good transcripts online (here).

The underlying case appealed to the SCOTUS involved the following patents:

No. 763,772 - issued to Marconi
No. 11,913 - issued to Marconi
No. 609,154 - issued to Lodge
No. 803,684 - issued to Fleming

This was a case brought by the Marconi Wireless Telegraph Company of America–a question might be asked why a patent issued to Oliver Lodge, another famous early radio pioneer was involved–because the Marconi company had purchased the patent from Lodge to settle an earlier patent dispute.

The fourth patent held by John Fleming, was also owned by the Marconi Company, Fleming having been a consultant who did work for Marconi in several of its early efforts.

To understand the state of play when the SCOTUS reviewed this case, here were the findings of the lower courts:

11,913 - the court held it was not infringed that doesn’t mean the patent was ruled invalid, just that the patent had not been infringed by the behavior demonstrated during the trial. Neither party appealed this part of the lower court ruling to the Supreme Court.

It held that all of patent 763,772, other than claim 16 (a sub-part of the patent) were invalid–meaning not entitled to patent protection under U.S. law.

It held that the Lodge patent (609,154) was both valid and infringed. Neither party appealed this part of the lower court ruling to the Supreme Court.

It held that the Fleming patent (803,684) was invalid and thus not infringed. The Fleming patent was voided because of an improper disclaimer. Specifically–if a part of a patent is invalid, and the patentee is aware it is invalid and fails to disclaim it within a reasonable amount of time, then the entire patent is invalid. With the Fleming patent it indicated a device used with both low and high-frequency currents. However the claim was “invalid for want of invention” as regards low frequency currents (essentially meaning its use with low frequency currents was not considered a novel invention), its use with high frequency currents was invention, but because the patentee did not disclaim the invalid part for over ten years, the entire patent was voided for the improper disclaimer. What this means is basically they think the inventor knew part of his claim of novel invention was false, and he simply chose not to disclaim that because he wanted to keep the patent on it, that behavior is punished essentially by having the entire patent voided.

For the violation of claim 16 of patent 763,772, the court awarded the Marconi company $42,984.93.

That is the status of the case when it was then appealed to the Supreme Court, there was an appeal concerning the majority of 763,772 being found invalid, and an appeal of 803,684 being found invalid. The ruling on 11,913 and 609,154 was not being appealed.

On 763,772, the Supreme Court essentially upholds the lower court because it finds that most of the claims in 763,772 were prior invention covered by previous patents. While Tesla is mentioned here for one of his earlier patents–a patent held by Stone (714,756) is the one most significantly referenced in justifying the holding that 763,772 does not contain novel invention (except in its Claim 16.) The final word of the court on 763,772 is:

Hence the judgment below holding invalid the broad claims of the Marconi patent must be affirmed. In view of our interpretation of the Stone application and patent we need not consider the correctness of the court’s conclusion that even if Stone’s disclosures should be read as failing to direct that the antenna circuits be made resonant to a particular frequency, Marconi’s patent involved no invention over Lodge, Tesla, and Stone.

The ruling on claim 16 by the lower court (the one that awarded the Marconi Company $42,984.93) was vacated and remanded–the Supreme Court felt that two patents–640,516 by Pupin and 706,735 by Fessenden anticipated the invention of 16, the Supreme Court remanded it to the lower court to reconsider its ruling in light of the Supreme Court’s information (I do not know how the lower court handled it on remand.)

This now leaves us with patent 803,684, which the lower court had vacated. The court examines the history of the invention and some prior patents by Edison and others covering some of the same, it also references decades old papers by Fleming, it ultimately finds that due to a paper written 25 years before the Marconi company issued a disclaimer on the low frequency claim, that Fleming would have known in 1905 when the patent was secured that the low frequency claim was not novel invention. It then went another 10 years after that before it was disclaimed, which invalidates it under the law. As the court says:

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.

This case does not make any ruling about who was the absolute inventor of radio, it is dealing with complex patent law issues relating to specific parts of relatively complicated at the time patents, and some procedural faults involving Marconi and Fleming in one of their patents, it found that Marconi’s most important radio patent and the one that gives him a lot of claims in general culture to being the inventor of radio, was valid but not infringed–it doesn’t adjudicate if that patent was really the original invention of “radio” or not, but there were similar patents around the same time.

Understandable. I am not very well educated on the early history of radio, it’s something I should read more about when I get the chance. What I can tell you from the Supreme Court case I summarized is that was not really what the court was adjudicating. The court was adjudicating a number of patents and whether they had been infringed and whether they were valid or not.

While some inventions can be encapsulated in a single patent, a lot of inventions really come down to integrating various extant technologies together for the first time. Most of the patents that the case discusses (and it does go into fairly in depth detail about what the patents cover), are dealing with variations on transmitting of radio waves and certain other electrical inventions. I’m not sure you could really say any of these patents unambiguously represents “the invention of radio”, but they do represent the invention of systems necessary for radio.

It also suggests from the court ruling that the Stone patent and the Lodge patent had a lot of importance in making Marconi’s work possible. That doesn’t necessarily mean Marconi didn’t invent radio as we understand it, though.

I think that was just outside the bounds of what the court was investigating.

Without knowing more about it, at least to me, it seems like the controversy bears some resemblance to the “first in flight” debate. While no unambiguous proof of someone succeeding at heavier-than-air flight can be found that predates the Wright Brothers, it probably wouldn’t change much if it was found. What was really important in the development of the airplane wasn’t the Wright Brothers first flight, it was all the refinements they did over the next ten years, which built the aviation industry.

Likewise with Marconi, his company was really the pioneer in early radio, so even if he wasn’t the “inventor” he was the one who basically succeeded in the mass commercialization of it. I don’t have any evidence to suggest he wasn’t the inventor, just saying even if someone may have beaten him on some technical aspect of the invention, he had a significantly bigger overall impact in establishing radio as we know it.

Marconi invented the first practical radiotelegraphy device. It used use radio waves to transmit and receive Morse code. Nothing changes that as a significant first, however, radio technology developed rapidly from that point and Marconi’s patents weren’t sufficient to hold onto the rights to all devices later developed that used radio waves . He does have a very strong claim to ‘inventing radio’, it’s pretty rare to get a clean first like that in the development of technology. Nobody else started with the simple electrical gap devices that already existed and developed a commercially feasible long distance wireless communication device.

From that point on there were many firsts in the development of radio. I don’t recall Marconi doing any of them.