Marconi Wireless Telegraph Co. v. Simon, 246 U.S. 46 (1918)

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE SECOND CIRCUIT

Syllabus

The Navy Department accepted respondent’s proposal to furnish certain sets of wireless telegraph appliances, the bid having been based on the Department’s specification describing the appliances desired and upon a sample submitted with the bid as the Department required. Before the contract was completed, this suit was brought to restrain him from making or delivering, upon the ground that petitioner’s patent rights would thereby be infringed. In the courts below, a decree dismissing the bill was made and affirmed upon the ground that the infringement, whether direct or contributory intrinsically, was not unlawful in view of the Act of June 25, 1910, c. 423, 36 Stat. 851.

Held, following Cramp & Sons Co. v. International Curtis Marine Turbine Co., ante,28: (1) That, if the making of the appliances would be per se an infringement, the Act of June 25, 1910, construed in that case, afforded no defense, but (2) if, as contended and not decided in the courts below, the appliances as called for were so far incomplete that their making and furnishing would at most contribute to infringement by the government in adjusting and using them for essential governmental purposes, the acts complained of would not be illegal or subject to injunction, in view of the statute as construed in the case cited and in Crozier v. Krupp, 224 U.S. 290. Held, further, (3) that, the nature of the infringement -- i.e., whether it was direct or contributory -- having been erroneously treated as irrelevant and so not decided by the courts below, the case should be remanded to the district court for consideration and determination of the rights of the parties in the light of this Court’s construction of the statute, not overlooking petitioner’s contentions that making the appliances for the government before the contract was completed, and making them for persons other than the government, would constitute direct infringements.

231 F. 1021 reversed.

The case is stated in the opinion.