Telephone cases

Posted by Anton Hughes on Monday, March 20, 2006 with No comments
Citation: Dolbear et al v American Bell Tel. Co.; Molecular Tel. Co. v Same; Americal Bell Tel. Co. et al v Molecular Tel. Co. et al; Clay Commercial Tel. Co. et al v American Bell Tel. Co. et al; People's Tel. Co. et al v Same; Overland Tel. Co. et al v Same (1888) 126 U.S. 1; 8 SS.Ct. 778.

Jurisdiction: US Supreme Court

Facts: All cases were bills for infringement of Alexander Graham Bell's 1876 patent for 'improvements in telegraphy' and 1877 patent for 'improvements in electric telephony'.

Outcome: The decree in all cases except Molecular was in favour of the patents. In Molecular, the decision was adverse only in relation to the 5th claim of the 1877 patent.

  • Held that the discovery in finding the art , and invention in devising the means of making it useful, were both involved, and that the patent was properly issued.
  • The fact that the particular instrument which Bell had tried did not reproduce spoken words so that they could be clearly understood, did not invalidate the patent, as other instruments made in accordance with the specifications would operate successfully.
  • The claim was not for the mere use of electricty, as distinct from the particular process with which it is connected in the patent.

Waite CJ

At 781: "In doing this, both discovery and invention, in the popular sense of those terms, were involved: discovery in finding the art, and invention in decising the means of making it useful. ... Other inventors may compete with him for the ways of giving effect to the discovery, but the new art he has found will belong to him, and those cliaming under him, during the life of his patent. If another discovers a different art or method of doing the same thing, reduces it to practical use, and gets a patent for his discovery, the new discovery will be the property of the new discoverer; and thereafter the two will be permitted to operate each in his own way, wihtuot interference by the other. The only question between them will be whether the second discovery is in fact different from the first. The patent for the art does not mention of any means, in the specification or descriptive portion of the patent, is only necessary to show that the art can be used; for it is only useful arts – arts which may be used to advantage - that can be made the subject of a patent."

At 782: "In the present case the claim is not for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current, in a closed circuit, into a certain specified condition, suited to the transmission of vocal and other sounds, and using it in that condition for that purpose. ... It may be that electricity cannot be used at all for the transmission of speech, except in the way bell has discovered, and that therefore, practically, his patent gives him its exclusive use for that purpose; but that does not make his claim one for the use of electricity distinct from the particular process with which it is connected in his patent.

But it is insistent that the claim cannot be sustained because, when the patent was issued, Bell had not in fact completed his discovery. While it is conceded that he was acting on the right principle, and had adopted that true theory, it is claimed that the discovery lacked that practical development which was necessary to make it patentable... [B]ut in his specification he did describe accurately, and with admirable clearness, his process... and he also decribed, with sufficient precision to enable one of ordinary skill in such matteers to make it, a form of apparatus which, if used in the way pointed out, would produce the required effect, receive the words, and carry them to and deliver them at the appointed place."

At 783: Quoting Loom v Higgins 105 US 580, 586 "when the question is whether a thing can be done or not, it is always easy to find persons ready to show how not to do it."

At 783: "The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection; it is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation."

At 784: "It is true that Bell transmits speech by transmitting it, and that long before he did so it was believed by scientists that it could be done by means of electricity, if the requisite electrical effect could be produced... This was the thing to be done, and Bell discovered the way of doing it. ... No one before him had found out how to use electricity with the same effect."