Joseph McKenna

“ We have seen that it has been the judgment of Congress from the beginning that the sciences and the useful arts could be best advanced by giving an exclusive right to an inventor. The only qualification ever made was against aliens, in the act of 1832. That act extended the privilege of the patent law to aliens, but required them 'to introduce into public use in the United States the invention or improvement within one year from the issuing thereof,' and indulged no intermission of the public use for any period longer than six months. ”

“ The court further said: 'Counsel seem to argue that one who has made an invention and thereupon applies for a patent therefor occupies, as it were, the position of a quasi trustee for the public; that he is under a sort of moral obligation to see that the public acquires the right to the free use of that invention as soon as is conveniently possible. We dissent entirely from the thought thus urged. The inventor is one who has discovered something of value. ”

“ An inventor must describe what he conceives to be the best mode, but he is not confined to that. If this were not so most patents would be of little worth. 'The principle of the invention is a unit, and invariable; the modes of its embodiment in the concrete invention may be numerous and in appearance very different from each other.' 2 Robinson, Patents, § 485. The invention, of course, must be described and the mode of putting it to practical use, but the claims measure the invention. ”

“ It does not depend, counsel for the Continental Company says, 'upon any issue of fact, but does depend, as questions of infringement' sometimes do, upon a 'point of law.' This point of law, it is further said, has been formulated in a decision of this court as follows: 'Where the patent does not embody a primary invention, but only an improvement on the prior art, and defendant's machines can be differentiated, the charge of infringement is not sustained.' Counsel for respondent do not contend that the Liddell invention is primary within the definition given of that term by petitioner. ”

“ The foundation of the argument of the petitioner is, as we have intimated, the policy of the patent laws executing the purpose of the Constitution of the United States to promote the progress of science and useful arts by securing for limited times to inventors the exclusive right to their respective discoveries. ”

“ Before any inventor or discoverer shall receive a patent for his invention or discovery, he shall make application therefor, in writing, to the Commissioner of Patents, and shall file in the Patent Office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same ”

“ Let us see what the courts say and what petitioner says. The circuit court says:
'We have stated that no machine for practical manufacturing purposes was ever constructed under the Liddell patent. The record also shows that the complainant, so to speak, locked up its patent. It has never attempted to make any practical use of it, either itself or through licenses, and, apparently, its proposed policy has been to avoid this. In this respect it has not the common excuse of a lack of means, as it is unquestioned that the complainant is a powerful and wealthy corporation. ”

“ It is worthy of note that all that has been deemed necessary for that purpose, through the experience of years, has been to provide for an exclusive right to inventors to make, use, and vend their inventions. In other words, the language of complete monopoly has been employed; and though at first only a remedy at law was given for a violation of the right, a remedy in equity was given as early as 1819. ”

“ We have no doubt that the complainant stands in the common class of manufacturers who accumulate patents merely for the purpose of protecting their general industries and shutting out competitors.'
The comment of the circuit court of appeals is:
'The machine of the patent in suit is mechanically operative, as was shown experimentally for the purposes of this suit, but it has not been put into commercial use. No reason for the nonuser appears in the evidence, so far as we can discover. The defendant's machine has been an assured commercial success for some years. ”

“ Counsel, however, contends that the circuit court, in its decision, virtually gave Liddell a patent for a function by holding that he was entitled to every means to cause the forming plate to oscillate about its rear edge.
The distinction between a practically operative mechanism and it function is said to be difficult to define. Robinson, Patents, §§ 144 et seq. It becomes more difficult when a definition is attempted of a function of an element of a combination which is the means by which other elements are connected and by which they coact and make complete and efficient the invention. ”

“ A violation of the law rendered the patent void. The act was repealed in 1836. It is manifest, as is said in Walker on Patents, § 106, that Congress has not 'overlooked the subject of nonuser of patented inventions.' And another fact may be mentioned. In some foreign countries the right granted to an inventor is affected by nonuse. This policy, we must assume, Congress has not been ignorant of nor of its effects. It has, nevertheless, selected another policy; it has continued that policy through many years. ”

“ From the character of the right of the patentee we may judge of his remedies. It hardly needs to be pointed out that the right can only retain its attribute of exclusiveness by a prevention of its violation. Anything but prevention takes away the privilege which the law confers upon the patentee. ”

“ Respondent attacks the conclusion of Judge Aldrich and that of petitioner, and insists that there is nothing in the record to show that the nonuse of the patent was either unreasonable or sinister. A very strong argument is presented by respondent. ”

“ And it is argued that neither claim designates 'operating means,' either by names or by reference letters or numerals, and recourse must therefore be had to the descriptive part of the specification to ascertain what 'operating means' are meant, and then construe the claim as calling for those 'operating means' or their equivalents. ”

“ Therein the description is distinguished from the description in the Liddell patent. Liddell was explicit in the declaration that there might be alternatives for the device described and illustrated by him. He was explicit in saying that, in place of the device for controlling the movement of the forming plate relatively to the cylinder, that the plate might 'be moved or operated by any other suitable means.
This court said in Cimiotti Unhairing Co. v. American Fur Ref. Co. supra: 'In making his claim the inventor is at liberty to choose his own form of expression ”