The Top Ten Patent Wars – Radio (#9)

Like many great inventions, radio had many fathers. But Guglielmo Marconi is generally regarded as the “inventor of radio”. Marconi, an Italian who lived in England, was the first to practically deploy a system for wireless communication, also referred to generally as “radio” because such communication carries “radio waves” within the electromagnetic spectrum. Marconi did not discover these waves, but his early patents from around 1900 are generally recognized as being the first showing what became the basis for wireless communications of today.

The biggest patent war involving radio did not directly involve who was the “first” to invent wireless communication, but rather whether the American Marconi company could collect certain royalties for later improvements to wireless communications used by the U.S. government through the 1940s. Marconi had formed an American company based on his American patents, which was later sold to General Electric, which then formed the Radio Corporation of America (RCA). However, previously, American Marconi company had launched a patent infringement case in 1916 against the United States for unpaid royalties based on a later Marconi tuning patent. The American Marconi company kept this claim against the United States even after it sold virtually all of its other assets to General Electric. The case took more than 25 years(!) to eventually resolve, but Marconi’s recognition as the inventor of radio was solidified when the Supreme Court found that the asserted Marconi tuning patent issued in 1904 (U.S. Pat. No. 763,772) was invalid as against other prior art, all the while recognizing Marconi’s earlier patents as the fundamental patents in the emerging wireless communication space. The U.S. government argued that it did not owe royalties because other “tuning” patents had anticipated the Marconi tuning patent, even though it was an improvement on Marconi’s initial radio patents.

In a major Supreme Court decision, Marconi Wireless Telegraph Co. of America v. U.S., 320 U.S. 1 (1943), Chief Justice Stone stated ““Marconi’s reputation as the man who first achieved successful radio transmission rests on his original patent… which is not here in question. That reputation, however well-deserved, does not entitle him to a patent for every later improvement which he claims in the radio field.” The Supreme Court upheld a lower court’s ruling that Oliver Lodge’s (U.S. Pat. No. 609,154) patent for variable inductance for tuning and John Stone Stone’s (U.S. Pat. No. 714,756) patent for the tuning of an adjustable antenna circuit had priority over the Marconi tuning patent being asserted in that case. The majority stated that “commercial success achieved by the later inventor and patentee cannot save his patent from the defense of anticipation by a prior inventor.”

There was a strong dissent by Justice Frankfurter, calling Marconi a genius amongst geniuses like Clerk Maxwell, Sir Oliver Lodge, and Nikola Tesla, who had also worked on wireless communication inventions, but had failed to be the first to patent a practical means by which to utilize radio waves as Marconi did through his initial radio patents. Frankfurter, foreshadowing a debate that continues today, questioned the entire purpose of the patent system if a genius like Marconi was denied royalties by judges who were unfit to analyze complex inventions. Frankfurther stated, “For all I know the basic assumption of our patent law may be false, and inventors and their financial backers do not need the incentive of a limited monopoly to stimulate invention.”

This patent war is thus fascinating on a number of levels. On the one hand, the patent system was vindicated as vital in determining Marconi to be the main inventor of radio, even while he was denied royalties for a later invention. Procuring patents was an important part of his commercial success, as his initial patents entitled him to such recognition. On the other hand, denying Marconi royalties for an extended period based on non-commercially successful prior patents was deemed by Justice Frankfurter to call into question the entire system, as have many subsequent litigants against patent “trolls” who have argued that inventors who are commercially successful should not be held back by those who were not. Marconi is remembered as radio’s inventor, and this Supreme Court case is but a footnote, as are the other inventors who were found by no less than a majority of the Supreme Court to also have had a hand in important radio-related inventions. Many patent plaintiffs today feel in a similar quandary.

We will next look at earlier patent war in the 19th century where one of Frankfurter’s concerns had come to life – Eli Whitney’s invention of the cotton gin, which was revolutionary but failed to net him the appropriate financial windfall to which he should have been entitled.

Jeremy T. Elman

Jeremy T. Elman

Jeremy T. Elman is a trial lawyer who has appeared in over 75 IP matters for Fortune 500 companies and other high-profile technology companies, nearly a third as lead counsel.  He regularly writes about cutting-edge legal issues in the industry, especially in the software space.  Jeremy has been named as one of the Top 20 Cyber / AI Lawyers by the Daily Journal and the Most Effective Lawyer in IP by the Daily Business Review.  Jeremy practices in the areas of patent litigation, trade secret litigation, trademark litigation, copyright litigation, and other technology disputes.

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