General Talking Pictures Corp. v. Western Electric Co. et al.

Summary

The Supreme Court held that a patent owner may grant a licensee authority to manufacture and sell patented devices only within specified fields of use. A purchaser that knowingly acquired amplifiers through sales outside the license scope infringed the patents by using them in theaters. The Court also upheld the validity of the challenged continuation patents and affirmed the judgment below.

Holdings

1. A party that obtains a writ of certiorari to review specified questions is not entitled to obtain a decision on issues not formally presented in the petition.
2. A patent owner may grant a license to manufacture and sell patented devices subject to a restriction limiting the licensed activity to a defined field of use.
3. A nonexclusive licensee cannot convey authority to sell a patented device for a use that the license expressly excludes, and a purchaser who knowingly participates in such an unauthorized sale cannot treat the transaction as a sale under the patent.
4. A purchaser that knowingly buys patented devices through sales constituting infringement and then leases them for a use excluded by the license infringes the patents embodied in the devices.
5. Claims in continuation applications may receive the effective filing date of the original applications when the claimed subject matter was disclosed in the original applications and the patentee's use did not precede the original filings by two years, absent intervening adverse rights.

Questions Presented

1. Whether a patent owner may grant a license to manufacture and sell a patented device subject to a field-of-use restriction.
2. Whether sales made by a licensee outside the scope of its field-of-use license are sales under the patent or the authority of the patent owner.
3. Whether a purchaser that knowingly buys patented devices through sales outside the scope of the seller's license infringes by using or leasing the devices for the prohibited purpose.
4. Whether an inventor may obtain valid patents through continuation applications when the inventions were disclosed in original applications and the relevant public use did not precede the original filings by two years.
5. Whether the Court could decide issues not formally presented in the petition for certiorari.

Disposition

affirmed