Robert H. Jackson

“ But my concurrence in the holding that Claims 18, 20, 22 and 23 are valid does not rest merely on findings of the District Court and the Court of Appeals that those claims were valid. While accepting the findings of those two courts on what I consider to be questions of fact, it is my view that determination of the ultimate question of patentability cannot properly be classified as a finding of fact. I would adhere to this Court's earlier pronouncement that 'whether the thing patented amounts to a patentable invention' is a question of law to be decided by the courts as such. ”

“ While the cases more often have dealt with efforts to resort to specifications to expand claims, it is clear that the latter fail equally to perform their function as a measure of the grant when they overclaim the invention. When they do so to the point of invalidity and are free from ambiguity which might justify resort to the specifications, we agree with the District Court that they are not to be saved because the latter are less inclusive. ”

“ The court concluded that it is impossible to say with complete certainty that there is not an arc and one of the plaintiff's expert witnesses gave substantial support to the idea that the arc is still present, although it is shielded by the flux in the Jones patent.
The same deference is due to the findings of the trial court which overturn claims as to those which sustain them. Technicians may and probably will continue to debate with plausible arguments on each side as to what this obscure process really is. ”