Joseph McKenna

“ The statute has no other purpose. It is not intended to confound rights, and to make one invention free because another is made so. This will even more distinctly appear in case of a patent for a combination, such as claim 35 is of the patent in suit.
A combination is a union of elements, which may be partly old and partly new, or wholly old or wholly new. But, whether new or old, the combination is a means-an invention-distinct from them. They, if new, may be inventions and the proper subjects of patents, or they may be covered by claims in the same patent with the combination. ”

“ The circuit court felt a like embarrassment, as well be observed from its opinion. The court did not pass on the defense of infringement, and said that, except as to one patent, the petitioner had failed to introduce any new matter which would have led the courts in the other case, if such matter had been before them, to have reached a different conclusion. ”

“ That policy is, as we have seen, that an American patent is not precluded by a foreign patent for the same invention, but, if a foreign patent be granted, an American patent is granted upon the condition that the 'invention shall be free to the American people whenever, by reason of the expiration of the foreign patent, it becomes free to the people abroad.' Bate Refrigerating Co. ”

“ Each invention is given the full period of seventeen years, which the statute prescribes for it. If limited at all, it can only be by a prior foreign patent identical with it. Nor can confusion result. Why should it? It does not result from analogous applications of the patent laws. Claims are independent inventions. One may be infringed, others not, and the redress of the patentee is limited to the injury he suffers, not by the abstract rights which have been granted him in other claims. ”

“ No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. ”

“ Every patent shall contain a short title or description of the invention or discovery, correctly indicating its nature and design, and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery throughout the United States, and the territories thereof, referring to the specification for the particulars thereof. ”

“ Of course, an element is a part, an essential part, of the combination, and enters as an operative agent in the performance of its functions. But this does not make it identical with the combination. It may be novel, patentable of itself, subject to its own special monopoly, or it may be free for everybody's use ”

“ The principal invention is in both; and if the American patent contains additional improvements, this fact cannot save the patent from the operation of the law which is invoked, if it is subject to that law at all. A patent cannot be exempt from the operation of the law by adding some new improvements to the invention ”

“ There yet remains the Suess Canadian patent to be considered. It was granted to Berliner as the assignee of Suess, and Judge Townsend, in the circuit court, said that the patent disclosed and broadly claimed the invention covered by the claims in suit, and, on account of it, defendant (petitioner here) contended that Berliner thereby admitted that Suess was the inventor of the reproducing apparatus of those claims ”

“ In the patent in suit such independent means are dispensed with. The stylus is made to engage with the grooves in the record tablet, is vibrated laterally by its undulations, and guided or propelled at the same time with its diaphragm attachment across the face of the tablet, the successive portions of the groove reproducing the sound waves, which are transmitted to the air. ”

“ The motion for preliminary injunction was made upon affidavits. Those of respondent (complainant in the circuit court) described the invention and the machine made in accordance therewith, averred the practical identity of petitioner's machine therewith, and set forth the record in the case of Victor Talking Mach. Co. v. American Graphophone Co., instituted in the circuit court for the southern district of New York. The affidavits averred that the suit was pending and awaiting decision when this suit was brought, and was subsequently decided ”