Northern Electric Co. Ltd. And Western Electric Co. Inc. v. Photo Sound Corpn. and Perkins

Northern Electric Co. Ltd. And Western Electric Co. Inc. v. Photo Sound Corpn. and Perkins
Collection
Supreme Court Judgments
Date
1936-11-09
Report
[1936] SCR 649
Judges
Duff, Lyman Poore; Rinfret, Thibaudeau; Crocket, Oswald Smith; Davis, Henry Hague; Kerwin, Patrick
On appeal from
Canada
Subjects
Intellectual property
Decision Content
Supreme Court of Canada
Northern Electric Co. Ltd. And Western Electric Co. Inc. v. Photo Sound Corpn. and Perkins, [1936] S.C.R. 649
Date: 1936-11-09
Northern Electric Company, Ltd., and Western Electric Company, Inc. (Plaintiffs) Appellants;
and
Photo Sound Corporation and George Perkins (Defendants) Respondents.
1936: March 17, 18, 19; 1936: November 9.
Present: Duff C.J. and Rinfret, Crocket, Davis and Kerwin JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Patent—Re-issue patent—Conditions necessary for grant of—Patent Act, R.S.C. 1906, c. 69, s. 24—Interpretation—Conditions that original patent be deemed “defective” by reason of “insufficient description or specification” arising from “inadvertence, accident or mistake” within the statute—Action for infringement of re-issue patent—Validity of amendments in re-issue patent—Proper limits of expert testimony.
The issue of a new patent (a re-issue patent) in accordance with an amended description and specification, under s. 24 of the Patent Act, R.S.C. 1906, c. 69, is not justified if the invention described in the amended description or specification and protected by the new patent is not the same invention as that to which the original patent related. The relief authorized by said s. 24 in respect of “insufficient description or specification” is limited to correcting insufficiency (arising “from inadvertence, accident or mistake”) in describing or specifying in the original patent the invention in respect of which the applicant therefor intended to ask protection. The statute did not contemplate a case in which an inventor has failed to claim protection in respect of something he has invented but failed to describe or specify adequately because he did not know or believe that what he had done constituted invention in the sense of the patent law and, consequently, had no intention of describing or specifying or claiming it in his original patent. The original patent cannot be “deemed defective” within s. 24 in a case where it obviously completely fulfilled the applicant’s intention—where the invention in respect of which he intended to obtain protection is quite certainly and sufficiently described and specified.
On appeal from the judgment of Maclean J., President of the Exchequer Court of Canada ([1936] Ex. C.R. 75), dismissing the plaintiffs’ action for alleged infringement of a re-issue patent (for an alleged new and useful improvement in radio communications):
Held: The appeal should be dismissed. The grant of the re-issue patent was unauthorized, as the conditions necessary for its grant under s. 24 (as above interpreted) were absent. The proper conclusion from the documents was that there was no defect in the statutory sense in the original patent (there was no suggestion that it could be deemed “inoperative”)—no reasonable ground for apprehending that it was defective in failing sufficiently to describe the inventions in respect of which the applicant for it was intending to claim invention; no “inadvertence, accident or mistake” of the applicant in respect of the description or specification of the invention that the applicant had in mind. The pertinent documents conclusively negatived any intention on the part of the applicant for the original patent to describe or to specify any of the inventions, so-called, embraced within the amendments in the re-issue patent in so far as they were material to the present appeal. Also, in view of the evidence as to the state of the art at the time of the application for the original patent, and at the time when the applicant therefor was alleged to have conceived and perfected the inventions embraced within the amendments in respect of which relief was now claimed, it was highly improbable that he believed he was entitled to obtain protection in respect thereof; and the balance of probability supported the conclusion that he was not so entitled.
A large part of the expert evidence given in the case (on both sides) was the subject of adverse comment by this Court, which held that much of it was not legal evidence and could not properly be taken into consideration. With reference to specified examples thereof, it was held, that any inference to be drawn from the applicant’s specification in the original patent, as to whether or not the devices and arrangements in question in these proceedings were inventions of said applicant (to establish the affirmative of which was a substantive part of plaintiffs’ case), was matter of fact for the court and not a matter upon which it was competent to any expert witness to pronounce; also (with reference to a witness being shown said original patent and being asked broadly to explain what said applicant was trying to do), that the issue touching the identity of the invention to which said original patent related, was a substantive issue in the action, and upon that issue no expert witness should have been permitted to express an opinion. Comments upon the proper limits of expert testimony in British Celanese Ld. v, Courtaulds Ld., 52 R.P.C. 171, at 196-8, quoted.
APPEAL by the plaintiffs from the judgment of Maclean J., President of the Exchequer Court of Canada[1], dismissing their action, which was brought for a declaration that as between the parties certain letters patent alleged to be owned by the plaintiffs were valid and had been infringed by the defendants, and for an injunction and damages.
One patent in question was a re-issue of a patent for an alleged new and useful improvement in radio communications. As to this patent in question, Maclean J. dismissed the action on the ground of lack of invention and on the ground that there was no statutory authority for the granting of the re-issue patent, as it embraced more than the invention described and claimed or intended to be described and claimed in the original patent (and the claim in the action being for infringement of features claimed as invention which appear in the re-issue only); and the appeal to this Court was (by the judgment now reported) dismissed on grounds similar to the latter ground mentioned.
The other patent in question was a re-issue of a patent for an alleged new and useful improvement in electrical receiving or repeating apparatus. As to this patent in question, Maclean J. dismissed the action on the ground that there was no infringement by the defendants; and the appeal to this Court was (by the judgment now reported) dismissed on the same ground.
O. M. Biggar K.C. and R. S. Smart K.C. for the appellants.
H. N. Chauvin K.C. and F. B. Chauvin for the respondents.
The judgment of the court was delivered by
Duff C.J.—It will be convenient at the outset to quote the section of the statute of 1906 (R.S.C. 1906, c. 69, s. 24) from which the authority to grant the re-issue patent must be derived if such authority exists:
24. Whenever any patent is deemed defective or inoperative by reason of insufficient description or specification, or by reason of the patentee claiming more than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, the Commissioner may, upon the surrender of such patent and the payment of the further fee hereinafter provided, cause a new patent, in accordance with an amended description and specification made by such patentee, to be issued to him for the same invention, for any part or for the whole of the then unexpired residue of the term for which the original patent was, or might have been granted.
2. In the event of the death of the original patentee or of his having assigned the patent, a like right shall vest in his assignee or his legal representative.
3. Such new patent, and the amended description and specification, shall have the same effect in law, on the trial of any action thereafter commenced for any cause subsequently accruing, as if the same had been originally filed in such corrected form before the issue of the original patent.
4. The Commissioner may entertain separate applications, and cause patents to be issued for distinct and separate parts of the invention patented, upon payment of the fee for a re-issue for each of such re-issue patents.
First of all, the invention described in the amended description or specification and protected by the new patent must be the same invention as that to which the original patent related. Second, it is plain that the authority to issue a new patent in accordance with the amended description or specification is an authority by the exercise of which it is intended that the original patentee, or those claiming under him, shall have relief in respect of certain strictly specified things. These things, for our present purpose, are insufficient description or insufficient specification,—obviously, insufficient description or insufficient specification of the invention to which the original patent related.
Thirdly, such insufficiency of description or specification in respect of which relief is authorized under this section must have arisen from inadvertence, accident or mistake.
These conditions necessarily imply that the inadvertence, accident or mistake must be inadvertence, accident or mistake affecting the sufficiency of the description or specification in the original patent, and it is only in respect of such inadvertence, accident or mistake that the statute contemplates relief.
The statute does not contemplate a case in which an inventor has failed to claim protection in respect of something he has invented but failed to describe or specify adequately because he did not know or believe that what he had done constituted invention in the sense of the patent law and, consequently, had no intention of describing or specifying or claiming it in his original patent. The tenor of the section decisively negatives any intention to make provision for relief in such a case.
In this connection it is to be observed that, while the section provides for relief where the patentee claims too much, there is no provision for relief where the patentee fails to claim something to which he may be entitled. In this last mentioned case, he can only obtain relief if he can bring himself within the condition relating to insufficiency of description or specification arising from inadvertence, accident or mistake affecting the sufficiency of the description or specification.
It is to be noted that the section is retroactive in an important respect. The amendment speaks from the date of the original patent as regards causes of action arising after the date of the new patent. Even on the strictest construction, a serious injustice may arise from the operation of this provision where people have made arrangements and expended money on the faith of the specification in the patent between the date of the original patent and of the re-issue patent,—a period which in this case extended to five years. It is our duty, I think, in the circumstances, not to extend the language of the section beyond cases clearly within its intendment.
It will be unnecessary to discuss at length the introductory words, “Whenever any patent is deemed defective or inoperative by reason * * *,” but one observation naturally arises out of the circumstances of the present appeal. There is no suggestion that the original patent was inoperative or could be deemed inoperative. It is essential, therefore, to enable the appellants to invoke the section, that the original patent should have been deemed defective by reason of insufficiency of description or specification arising from inadvertence, accident or mistake.
It is immaterial to my present purpose whether the word “deemed” contemplates the view of the Commissioner or the view of the Court before whom the question of the validity of the re-issue patent comes for decision, or the view of the parties concerned. At the lowest, the statute must contemplate some kind of reasonable ground for apprehension on the part of the original patentee that the patent is defective in the sense of the section It would, in my opinion, be an abuse of this language to apply it to a case in which it is obvious that a patent completely fulfils the intention of the applicant, where there is plainly neither insufficiency of description nor specification, for the purpose which the applicant had in view; where, in other words, the invention in respect of which the patentee intended to obtain protection is quite certainly and sufficiently described and specified. In such a case, the patent is not in any proper sense of the phrase defective.
There is another view of the statute advanced by the appellants which I shall discuss later; but, in the view just expressed, the appellants necessarily fail; first, because the pertinent documents, the original application for the United States patent, the specification and claims in the original Canadian patent, conclusively negative any intention on the part of the applicant Arnold to describe or to specify any of the inventions, so-called, embraced within the amendments in so far as they are material to the present appeal; second, because, having regard to the evidence properly before us as to the state of the art at the time of the application for the Canadian patent, and at the time when Arnold is alleged to have conceived and perfected the inventions in respect of which relief is claimed by the appellants, it is highly improbable that Arnold believed he was entitled to obtain the protection of the law in respect of these so-called inventions; and that the balance of probability supports the conclusion that Arnold was not entitled to the protection of the patent law for these improvements, in respect of which protection is claimed.
In giving my reasons for these conclusions, I shall first consider the documents themselves; which constitute most weighty evidence. The two documents, the importance of which I shall emphasize, do not differ from one another in any material respect; they are Arnold’s application for his United States patent, and the specification and claims in the original Canadian patent. Both these documents are signed by Arnold. There is, of course, a presumption, which is a presumption of law, that Arnold, in signing these documents, knew the nature of their contents. This presumption of law is fortified by a very powerful presumption of fact. There is quite sufficient evidence in the record to show, what nobody disputes, that Arnold was an accomplished physicist, a most competent radio engineer and master of the radio art and an experienced inventor. The documents before us, which include a number of specifications signed by him, make it quite clear that he was skilled in the art of scientific exposition, and that, also, nobody disputes.
At the material times, Arnold was associated with Richards, to whom reference will be made later, as assistant of Dr. Colpitts in the laboratory of the Western Electric Company, and with his staff was engaged in investigating radio communication and the practical and theoretical problems connected with it. It would hardly be disputed that few people were better fitted than he to appreciate the value of a given improvement or to form a just judgment upon the merit of it. He was an inventor accustomed to framing specifications and we may assume that he was little likely to be misled upon the point whether a given improvement gave evidence only of the application by a skilled engineer of principles and methods well known among skilled radio engineers, or of something exceptional involving invention.
We must proceed upon the view, in the absence of some evidence to the contrary, that Arnold knew the contents of the documents I am now about to discuss and that he knew the effect of them in accordance with their proper construction.
On the 31st of August, 1915, Arnold signed his application for the original U.S. patent. The meaning of the application in its relevant aspects is not doubtful. The first two paragraphs are as follows:
Be it known that I, Harold DeForest Arnold, a citizen of the United States, residing at East Orange, in the County of Essex and State of New Jersey, have invented certain new and useful improvements in radio communication, of which the following is a full, clear, concise and exact description.
This invention relates to receiving systems for radio communication, particularly to devices for limiting the electrical power which may be transmitted to a receiving instrument in such a system, and more particularly to devices in which such limiting action is obtained by employing electric currents in an evacuated vessel.
The next paragraph states the object of the invention: which is to provide means by which a definite upper limit is set upon the amount of power that may be communicated to a receiving circuit or apparatus. Then, in the next paragraph, the desirability of such a limitation is explained, and the explanation given is that “foreign disturbances” which are often “of large magnitude compared with that of the normally received signals” may thereby be reduced to a value not exceeding that of such signals. Then it is stated that this object is attained by an arrangement of audions described, which will be conveniently referred to hereafter as the push-pull arrangement, and by causing the thermionic currents in audions so arranged to flow
by impressing upon their limiting electrodes, in multiple, an electromotive force operating through a high impedance, said high impedance being essential to the operation of the device for the purpose specified, * * *
such purpose being to put a definite upper limit upon the amount of power communicated to the receiving apparatus.
Then there is an explanation of the accompanying drawing which is said to represent a “receiving system” embodying the invention.
It will be observed that, up to this point, the invention is specifically stated to consist in a method for limiting the “electrical power” which may be transmitted to a receiving instrument in a system for radio communication. A drawing is attached to the application for the purpose of communicating a fuller understanding of the nature of the invention and for that purpose alone; and represents a receiving system for radio communication in which the invention, the power limiting device, operates in the final stage of amplification and restricts the amount of power transmitted therefrom to the ultimate receiving apparatus. The inventor declares:
The nature of this invention will be more fully understood by reference to the drawing, which represents a receiving system for radio communication embodying this invention, * * *
The specification then proceeds to trace the construction of the network by reference to the numbered parts of the drawing with explanations in some instances of the functions of those parts; and, the explanation having arrived at “amplifier 38,” proceeds:
The output circuit of amplifier 38 is supplied by battery 34 and contains choke coil 42, condenser 40 and coil 41, whose functions are the same as those of the corresponding elements in the previous amplifier. It also contains condenser 43 and coil 44.
Then we are told:
The apparatus to the right of 44. comprises the power-limiting device and the receiving circuit.
Referring now to the first and second paragraphs, it is self evident that it is in the apparatus to the right of 44 that are to be found the devices limiting the amount of power which may be communicated to the final receiving circuit or apparatus; and in the conception and design of which resides the invention. It is in respect of these devices that the inventor declares he has produced an invention, and only in respect of these devices. A description of the apparatus to the right of 44 follows.
In explaining the operation of the system it is summarily stated that power received by the antenna is transferred to the circuit 5, 6, is augmented by the amplifier 7, is then communicated to the circuit 19, 20, is then transformed into low frequency form by rectification in element 21, is then augmented by amplifiers 31 and 38; and after this summary reference to the anterior parts of the drawing, the inventor states that the power is finally
passed to the receiving instrument through the power limiting device whose operation will now be explained. Then follow three paragraphs in which the operation of the power limiting device comprised in the apparatus to the right of 44 is explained. Here again it is self evident that it is the power limiting device whose operation he is explaining.
Once again, the claims are explicitly limited to this power limiting device, with the exception of claim 1, which appears to be a combination claim for a combination of the power limiting device with the enumerated antecedent elements of a receiving system: an antenna, a tuned receiving circuit, and so on.
As I have already said, the inventor has left no room for doubt as to the meaning and effect of his application. He has invented, he says in his introductory paragraph, certain new and useful improvements in radio communication; and in what follows, he declares in emphatic words, he has given a full, clear and exact description of the new and useful improvements he has invented and for which in his claims he claims protection. This invention he sets forth as constituting an improvement both new and useful in a receiving circuit for radio communication. There is no other invention described. There is no suggestion that he has invented any other new and useful improvement or any other improvement, or that he has made any other invention of any description.
It would be an abuse of language to aver, for any purpose relevant to any controversy on this appeal, that this application describes or relates to any other invention.
The drawing, as I have said, was produced solely with the object of enabling the reader to comprehend the invention; that is to say, the invention with which the application is concerned. The drawing cannot be legitimately construed in any other way.
The parts of the drawing to the left of 44 are obviously, as matter of construction, there for the purpose of enabling the reader to realize the kind of network in which the invented devices operate and thereby the better to comprehend their purpose and mode of operation. To read the drawing in the other way is to read it as contradicting, not as illustrating, the text.
The application, therefore, with the appended drawing, construed in the only way in which it can properly be construed, negatives (as within the contemplation of the application) any claim by the inventor to having invented any improvement for which he is entitled to the protection of the law, in respect of any part of the apparatus disclosed by the drawing which is not involved in the invention explicitly claimed and set forth.
It is, therefore, of no relevancy in determining the invention to which this application relates that, by Arnold’s instructions, sets of a “receiving system” of which the drawing, so far as it goes, would be a correct delineation, were or had been constructed; the existence of such physical objects is of no relevancy because the application has plainly no relation to any such particular physical things or contemplated physical things. There is not a syllable in the application, there is nothing in its detail, there is nothing in its general scope, there is nothing in the drawing, which can afford a foundation for the proposition that the application relates to some actually existing physical “receiving system.” Indeed, it obviously could not be so. An actually existing physical system in operation, or capable of being put into operation, would be of fixed dimensions, of determined physical quantities. The windings of the transformers primary and secondary, for example, would be capable of exact mathematical description. So as to audions,—when actually existing in operation, or ready for operation, they must have certain physical constants, in an amplifier, an amplification factor, and so on. So also as to the condensers. There is no conceivable means by which any engineer could, from this drawing, construct any such actually existing physical system. Obviously, such a particular physical system as a whole, in all its various parts, was an invention not contemplated by this application. These physically existing sets, therefore, can be of no value in assisting us in determining what is the invention to which the application relates; they add nothing to the drawing.
They could not properly be resorted to for the purpose of explaining or for the purpose of limiting the scope of the invention expressly claimed. You could not properly, for example, restrict Arnold’s claim in respect of his power limiting device to a claim for a power limiting device employing audions of the precise dimensions and physical constants of the audions found in these receiving sets. Nor can you find anything in the documents as they stand which justifies the introduction of the elements of these physical receiving sets as elements to be considered in the determination of the meaning of the document. The drawing is there and may be used as illustrating the text, throwing light upon the meaning of it, but only for that purpose. I shall come later to the contention already mentioned that, for the purpose of applying the statute, these receiving sets serve as a link establishing the identity of the invention to which the original patent relates and the invention to which the amendments refer. For the present, I am concerned with applying the statute according to the interpretation above mentioned which limits admissible amendments to such as may be necessary to correct any insufficiency of description or specification arising from the error of the patentee in failing adequately to describe or specify an invention in respect of which he intended to apply for protection and arising from inadvertence, accident or mistake. These observations apply equally to the specification in the surrendered Canadian patent.
Now, I have no hesitation in drawing the inference that Arnold fully understood the scope and effect of the application of May 22nd, 1916, and of the specification in the original Canadian patent. He understood, that is to say, that he was excluding from the invention specified and claimed by him those devices and arrangements which are described and specified and claimed in the amendments in so far as we are presently concerned with such amendments. It is also very clear on the material before us that in the proceedings before the Commissioner leading up to the grant of the reissue patent no evidence was adduced to show that the specifications, the description or the claims of the original patent were insufficient to give effect to the intention of Arnold. Still less was there any evidence adduced to show that Arnold had failed to describe or to specify sufficiently the invention in respect of which he was claiming protection by reason of inadvertence, accident or mistake. Nor, indeed, is there any allegation to that effect. Again, no evidence was adduced at the trial directly bearing upon either of these points. I have examined the proceedings before the Commissioner and I cannot find there any statement made by Arnold personally that there was any such insufficiency of description or specification or any such inadvertence, accident or mistake. Indeed, there is not, I think, among these documents any statement by Arnold personally that he was the inventor of the alleged improvements to which the amendments relate. There is no reference in any of these documents to the receiving systems physically constructed upon which the appellants so much rely; still less any suggestion anywhere that the invention in respect of which the reissue patent is prayed for is to be found embodied in these existing physical things.
There is a letter signed in Arnold’s name by R. R. Adams, attorney, which contains an argument, an ingenious argument, that the amendments contain nothing but permissible explanations of the drawings and the summary expressions in the text of the specification of the surrendered patent. The first paragraph is in these words:
It should be noted that in the re-issue application no change has been made in the drawing except to add three reference characters to the second vacuum tube, counting from the left, and that there is nothing, either in the specification or claims that is not illustrated in the drawing. The changes in the specification have been for the purpose of more clearly describing the parts of the device and are in the nature of insertions, amplifying somewhat the brief references in the original specification.
Then, the statement concludes:
It is felt that all of the claims are properly included in the re-issue application and come well within the scope of the original patent as defined by the statement of inventions repeated in lines 20 to 25 of page 2 of the original specification and the fourteen original claims. However, on review it has been thought several claims can be cancelled without substantial loss of protection to applicant’s invention and that some changes should be made in the other claims.
The ground upon which the application for the reissue patent is based is that everything in the amendments is to be found by implication in the specification of the original patent when read with the drawings. I have pointed out that, on the true construction of the specification, this is a wholly inadmissible proposition. What is material for my present purpose is that this letter contains no allegation that, in point of fact, it was Arnold’s intention to claim or to describe or to specify the alleged invention with which the proposed amendments are concerned; or that, by reason of inadvertence, accident or mistake, he was led into some insufficiency of description or specification. Still less is there any reference to any material adduced as evidence in support of an allegation of inadvertence, accident or mistake. I shall have a word later to say with regard to these proceedings.
It seems perfectly plain that the reissue patent ought not to have been granted and that, unless we are at liberty to empty the provisions of the enactment under which the conditions for the grant of a reissue patent are laid down, of all substance, we are inevitably forced to the conclusion that the grant of the reissue was an unauthorized and unwarranted act. For the present, however, I am concerned only with this: the proper conclusion from the documents, including the proceedings on the application for the reissue patent, is that there was no defect in the original patent in the statutory sense, no reasonable ground for apprehending that the patent was defective in failing sufficiently to describe the inventions in respect of which Arnold was intending to claim invention; no mistake on Arnold’s part in respect of the description or the specification of the invention to which his application related. Accident is not suggested nor is inadvertence in the pertinent sense; that is to say, no inadvertence in respect of any insufficiency of description or specification of the invention that the applicant had in mind. The statutable conditions governing the exercise of the authority to grant the reissue patent are all absent. This, in itself, is, of course, sufficient to dispose of the appeal.
But it is necessary to examine the validity of the reissue patent from a point of view which stands upon a view of the statute different from that which I have expressed and which I am satisfied is the true view. The appellants say that a number of “receiving systems,” to employ Arnold’s own expression, all of them answering the description to be found in the specification in the surrendered Canadian patents (including the drawing), had actually been constructed and set up and put in operation before the date of Arnold’s application for the original Canadian patent. Invoking the interpretation clause of the Patent Act, each one of these receiving systems, it is said, embodied the devices and arrangements claimed in the amendments in the reissue patent and in question in this litigation. These physically existing things were, it is argued, inventions within the definition in the interpretation clause of the Patent Act. The original patent, it is argued, was a patent in relation inter alia to these things and so was the reissue patent. Identity of invention, it is said, is established and we are asked to say that, consequently, the authority under the statute was exercisable.
This argument is not convincing.
First of all, the case of the appellants at the trial was that the inventive idea in respect of which Arnold was entitled to claim protection was not the condensers, the resistances, the coils, as physical things, but the use for which Arnold employed them. That is hardly consistent with the view that these physical things in themselves constituted the invention in respect of which the surrendered Canadian patent was granted.
On the argument before us, counsel for the appellants said, “What the patent was directed to was a physical object.” The case at the trial was not that the patent was directed to a physical object, but to certain physical objects employed in a certain way and for a certain purpose, and that it was in this employment that the merit of the inventive idea lay.
The argument involves, of course, the proposition that it is sufficient, in order to obtain relief under the statute, to show that the drawing in the original patent exhibits a device in respect of which the patentee might have claimed protection if he had asked for it and sufficiently disclosed the nature of the invention. This, of course, is to discard the parts of the statute that I have been emphasizing, which make it very plain that the design of the statute is to afford relief only in respect of an invention clearly conceived as such, for which the original patentee intended to claim protection, but in respect of which, through the causes defined by the statute, there is insufficient description or specification. Identity of invention is only one of the conditions of the statute.
Then, as I have already pointed out, there is nothing in the original patent or in the specification of the original patent or the specification of the re-issue patent, or in the material before the Commissioner on the petition for the granting of the re-issue patent, dealing with these physical instruments. I have already given my reasons, and I will not repeat them, for the conclusion that it would not be sufficient to show that the devices in these physical instruments constituted improvements in respect of which Arnold might have obtained protection if he had asked for it but had no intention of asking for it, either because he was deliberately abandoning them to the public, or because he was satisfied they were not inventions in respect of which he could properly claim protection, or because he overlooked the merit of them from the point of view of invention. That is not sufficient because the inadvertence, accident or mistake in respect of the sufficiency of description or specification must constitute a defect in the patent in the sense that it fails adequately to give effect to the intention of the applicant; I repeat, these physical sets add nothing to the drawing.
As I have already indicated, the weight of evidence appears to me to support the conclusion that the devices and arrangements in question in this litigation were not regarded by Arnold as inventions in respect of which he was entitled to a patent, and that this conclusion is that which best accords with the balance of probability arising from all the circumstances.
I shall deal specifically with the alleged patentable features of the alleged inventions which are described in the pertinent parts of the amended specification and claims in the re-issue patent. Before doing so, it is convenient to sketch some facts in the development of the instrument known as the audion. The audion, as invented by DeForest about the year 1906 or 1907, was a valve having three electrodes. The record contains the specifications in several patents granted to him in respect of improvements in the audion and circuits in which the audion was a part. A fact which it is useful to keep in mind in considering the evidence before us, and the arguments presented to us, is that the audion, as conceived and devised by DeForest, operated by a current of electricity passed through a gaseous medium. I do not wish to be misunderstood. In modern vacuum tubes a very high degree of evacuation has been achieved and the pure electron stream which passes from the cathode to the anode is not in any way dependent upon the conductivity of the small amount of residual atmospheric air or gas that may remain within the tube. But the audion, as conceived by DeForest, was an instrument in which the conductivity of a gaseous content was made use of purposely, and the term “audion,” which was applied by DeForest to his instrument, continued, at all events, down to the end of the period with which we are concerned in this appeal, to be applied to that type of instrument; although for the last twenty years or so it may have been used to describe a vacuum tube having the general features of the audion as invented by DeForest but evacuated as completely as the pumps and other means at the command of engineers and manufacturers make possible.
There is some oral evidence with regard to these matters which is not very satisfactory and I have been obliged to resort to the documents in the record to obtain information upon them. Specifications of United States patents applied for by DeForest on the 14th February, 1906, 27th August, 1906, and 25th October, 1906, and 29th January, 1907, are in evidence. The first paragraph of the claim in the first of these is thus expressed:
An oscillation-detector comprising two electrodes separated by a heated gaseous medium, one of said electrodes consisting of mercury.
In the second, the description of the invention contains this sentence:
D represents an evacuated vessel of glass or other suitable material having two separated electrodes F and F’ between which intervenes the gaseous medium which, when sufficiently heated or otherwise made highly conducting, forms the sensitive element of my oscillation detector.
In the third, there is described a three-electrode device, in other words, an audion, in which the first claim is expressed as follows:
In a device for amplifying electrical currents, an evacuated vessel inclosing a sensitive conducting gaseous medium maintained in a condition of molecular activity, * * *
In the last of them, the objects of the invention are thus stated:
* * * to increase the sensitiveness of oscillation detectors comprising in their construction a gaseous medium by means of the structural features and circuit arrangements which are hereinafter more fully described.
This specification describes a particular type of audion which is referred to later in a specification of a patent issued to Arnold upon an application of the 28th May, 1914.
The invention, the specification states, is for “new and useful improvements in gaseous repeaters in circuits of low impedance.” The specification proceeds to state that, of these improvements, the “ following is a full, clear, concise and exact