Editors’ note: We are struck, once again, with how the importance of communication technologies inspires continuing debate regarding their invention and development. The complex evolution of these complicated devices and systems makes the process of attribution exceptionally difficult. This essay responds to “Misreading the Supreme Court: A Puzzling Chapter in the History of Radio” by A. David Wunsch in the November 1998 issue of Antenna.
As regular readers of this newsletter know, on June 21, 1943, the Supreme Court affirmed a 1935 ruling of the United States Court of Claims which essentially invalidated Marconi’s claim of having invented radio, and clarified Tesla’s role in inventing radio.
The granting of a patent in itself does not help to establish priority of invention. Unlike an infringement action, in a patent grant application no one but the examiner goes out of his way to dig up facts that provide a basis for the rejection of the patent. The patent examiner tries to do this, but is limited to papers on file in the patent office or available to him without great effort or expense. The applicant’s attorney is supposed to bring to the examiner’s attention all the adverse information he runs across, but he doesn’t waste his client’s money trying to find data which will help the examiner find grounds to deny the patent.
The radio litigation discussed here arose in the Court of Claims, in a claim for taking intellectual property that was basically the same as an infringement action. Marconi filed a claim against the U. S. government for taking four patents. The patents were: reissue no. 11,913 of patent no. 586,193, granted to Marconi on June 4, 1901, for a two-circuit system for transmitting and receiving signals (one circuit in the transmitter; another in the receiver); patent no. 763,772, granted to Marconi on June 28, 1904, for a four-circuit system of wireless telegraphy; and two patents granted to Oliver Lodge and John Fleming, but assigned to Marconi. The total claim was for $6,000,000, a lot of money in 1916, and justified full development of the facts by the parties to the litigation. It was worthwhile to the government to spend the money to determine whether there was prior art that would invalidate Marconi’s patent.
I will first summarize the rulings of the Court of Claims and the Supreme Court, which took the case on petition, then provide more detail on their decisions. I focus on the decision of the Court of Claims, because unless the upper court says it is reversing or vacating the decision below, or affirming it on other grounds, the opinion of the upper court should be read as additional to the opinion of the trial court, not in lieu of it. In fact, more attention should be paid to the affirmed lower court’s opinion, because the trial court is closer to the facts. Its decision recites a view that has been accepted by two courts, not just one.
The Court of Claims decided that the government did not infringe Marconi’s two-circuit patent. That patent was not an issue before the Supreme Court, which had no jurisdiction to rule on the patent, because the Constitution limits the Supreme Court to ruling on cases in controversy. Furthermore, even if the two-circuit system were found to be a viable system of radio communication, the four-circuit system made it obsolete. The focus of the Court of Claims litigation thus was on the four-circuit patent.
Fifteen of the twenty claims made in the four-circuit patent application were the subject of the litigation. The Court of Claims found for Marconi only one, claim 16, which the Supreme Court sent back for reconsideration. It never was reconsidered; Marconi settled all claims for about $34,000 plus interest.
As for the validity of Marconi’s four-circuit patent, no. 763,772, the Court of Claims noted the great difficulty Marconi had in obtaining the patent. Marconi repeatedly filed new specifications and claims, but these were rejected because of prior art. After J. P. Morgan became one of Marconi’s backers, Marconi presented another petition for revival on February 19, 1904. The Commissioner of Patents granted it. A new examiner acted on the case and allowed all claims formerly rejected for reasons stated in a brief letter.
The Court of Claims, however, disagreed with the new patent examiner. The initial examiner had disallowed Marconi’s patent based on, among several others, two patents of Tesla that preceded Marconi’s, numbers 645576 and 649621, in which he used four tuned circuits. Although Tesla had not specified how to tune the circuits, one of the patent examiners stated that it was fair to assume Tesla intended to use either of the two available methods. Furthermore, Tesla’s earlier patent no. 645576 of March 20,1900, referred to tuning no less than six times.
In the opinion of the Court of Claims, Tesla had shown the advantage of all four circuits being tuned. Oliver Lodge had taken the two-circuit system and tuned the open circuits in the same way used later by Marconi. Stone described a four-circuit system with the closed circuits tuned together. “A consideration of these three systems,” the Court decided, “would naturally suggest to one skilled in the art the tuning of all four circuits together by the use of the adjustable self-inductance method in the manner proposed by Lodge, and Stone put this suggestion into practice when he filed the amendment to his specifications. Marconi used the suggestion earlier in the application for his patent, but under the circumstances we think neither Stone nor Marconi was entitled to credit for it.” That is because Stone had acknowledged Tesla’s priority.
In summary, I read the Court of Claims’ opinion as deciding that the four-circuit system was invented by Tesla, based specifically on the above statement of the Court of Claims. Also persuasive is the reading of the Court of Claims opinion in the same way by Marconi’s attorney. Specifically, in his brief to the Supreme Court in 1943, he stated: “It is not quite clear whether the Court [of Claims] thought that the Tesla patents alone fully anticipated the Marconi claims, or whether a combination of Tesla, Lodge and Stone made the Marconi claims invalid.” Does the Supreme Court’s considerable reliance on the work of Stone in their opinion detract from Tesla’s deserved priority of invention? I think not for at least four reasons.
First, the Supreme Court affirmed the Court of Claims rejection of Marconi’s claims under the four-circuit patent (all except the lower court’s ruling in favor of Marconi on claim 16, which the Supreme Court vacated). Second, it is reasonable to expect the Supreme Court to emphasize the work of Stone to buttress the Court of Claims opinion. Marconi’s lawyer attacked the Tesla patent before the Supreme Court as being science fiction worthy of Jules Verne. It therefore was reasonable for the Supreme Court to respond to the argument by showing that Stone, a distinguished scientist, had priority over Marconi (based on Stone’s letters to Butler), but not Tesla. Third, as the Supreme Court mentioned, Stone, in a letter to his friend Butler, acknowledged that his four-circuit apparatus basically was the same as Tesla’s.
Fourth, the Court of Claims said it was unnecessary to find that Stone had priority because of Tesla’s priority. All that is left is the significance of the Court of Claims’ marginal award of invention to Marconi for the two-circuit system. The government’s lawyer claimed that Marconi’s two-circuit system essentially was the same as that used by Hertz to verify the theories of James Clerk Maxwell. Furthermore, Marconi’s own lawyer said that the two-circuit system “would operate, but only at short distances, because there was too much waste of energy.” Even Justice Frankfurter, who dissented bitterly in favor of Marconi, acknowledged that the two-circuit patent was not a significant factor in the innovation of radio.
Finally, there are the two portions of the Supreme Court Opinion sometimes cited as preserving Marconi’s priority of invention. The first is the sentence in the majority opinion that declares: “Marconi’s reputation as the man who first achieved successful radio transmission rests on his original patent, which became reissue no. 11, 9013, and which is not here in question.” The pronoun “which” has an ambiguous antecedent. Is it Marconi’s reputation or the validity of the patent that is “not here in question”? I interpret it as referring to Marconi’s reputation, as neither party sought review of the Court of Claims decision on the reissue patent. Even if it did refer to the patent, the statement would be significant only if Marconi’s combination of elements invented by others played an important role in the progress of radio. It did not, because the two-circuit system could transmit only a few miles. The second citation is to Justice Frankfurter’s dissenting opinion. It is clear that he found it difficult to understand the facts, because he failed to cite a single one in support of his view that those prior to Marconi lacked “the flash-that begot the idea in Marconi.” Perhaps it was for that reason that he failed to persuade the majority.
Marconi deserves great credit for his vigorous commercialization of wireless telegraphy and radio. He recognized the business advantages of a claim to invention of the products and services he marketed as a check on his competition. In those days, most monopolies were formed by merging or buying up the competition, or by driving smaller competitors out of business through costly patent litigation where possible. In sum, though, the evidence available from historical documents simply does not support Marconi’s claim of invention; it does clarify Tesla’s role in inventing radio.
Wallace Edward Brand worked as a federal government lawyer in several jobs, principally as a trial lawyer, including as lead government counsel in the seminal cases under the 1970 revision of the Atomic Energy Act which served to promote competition among electric utilities. From 1974 to 1999 he has been engaged in the private practice of energy law, principally cases involving electric power, representing small municipal and cooperative electric utilities in actions against larger ones. He is currently writing a book about the electric power business.