RUTLEDGE, J., dissenting.

324 U.S.

was responsible for their creation. This Court should take the responsibility for their removal. I would adopt the view of Hoe v. Knap, supra. In a case like the present (Butterworth v. Hoe, 112 U. S. 50, 61), as in infringement suits (Morton Salt Co. v. Suppiger Co., 314 U. S. 488, 492– 494), the Court sits as a court of equity. It should withhold its aid from a patentee who has employed or plans to employ the patent not to exploit the invention but to suppress it in order to protect another patent or otherwise. Cf. Ethyl Gasoline Corp. v. United States, 309 U. S. 436, 459. If that purpose were clear, a patent should not issue in the first instance. If it has been issued and not cancelled and the patent has been suppressed, any one should be permitted to use it at least on payment of reasonable royalties. In that way the constitutional objective will be more nearly realized-the product of the inventive genius of the human mind will be put to work in the economy.

3

MR. JUSTICE RUTLEDGE, dissenting.

I would affirm the judgment. But I do not reach the interesting and important questions debated by the Court's opinion and my dissenting brethren. They are of such a character that, in my opinion, they should not be determined in the absence of a record presenting facts and issues making this necessary. In this case the facts do not so clearly present the issues of "fencing" and "blocking" that decision upon them is required or appropriate.

Those issues were not raised or considered until the case reached the Court of Appeals. Evidence concerning intent to suppress was not received in the District Court and

3 These situations are to be distinguished from the case of the inventor who though he has an expectation of exploiting the patent has not yet arranged the necessary financing, or, for other reasons, has not yet been able to go into production.

370

RUTLEDGE, J., dissenting.

petitioner is entitled to its day in court upon that question, unless it has conceded it. The record, as this Court's opinion indicates, is not clear that the concession has been made with the effect of admitting that petitioner had no intention to exploit the patent. If, as the trial court found, the machine without the splitting knife would not "produce any useful result," this fact together with the assertion of the claims relating to the full combination, or with it and the concessions apparently made in the Court of Appeals, might be sufficient to sustain that court's conclusion that the only purpose of the alleged invention was to "fence" or "block." But the Court of Appeals expressly rejected the trial court's finding in this respect; and a showing of motion pictures here, such as took place in the Court of Appeals, appeared to demonstrate conclusively that the machine not only works without the cutting knife, but produces a highly useful result if the pears are split before being placed in the machine for bobbing, peeling and coring. Whatever foundation might have been found, therefore, to support the conclusion of intent to fence or block, in the machine's lack of capacity to produce any useful result, disappears from the case.

The record, however, discloses another ground which was considered in the Patent Office and the District Court, wholly sufficient to dispose of the case and requiring affirmance of the judgment. This was that the claims in issue are too broad to cover the invention. No one of the claims specifies or indicates that the pears must be presplit in order for the invention to be used or to produce a useful result. With commendable candor, counsel conceded this in the argument here, and indeed the claims on their face require the concession. Patents are not to be granted upon claims which do not accurately describe the invention and all of its essential features. These claims are stated in language broad enough to include whole

was responsil the responsi1 view of Hoe · (Butterwor suits (Mor! 494), the C

hold its ai

employ t! suppress wise.3 ( 436, 459. issue in cancel' should sona. tive

bed of a navigable stream between high ugh his title is recognized by the State, is tion from the United States for a decrease d resulting from operations by the United ement of navigation. P. 390.

e fast lands were not invaded is not entitled the United States for a decrease, resulting from ited States for the improvement of navigation, ands may have had by reason of their proximity 8. P. 390.

at to which a navigable water was dredged and erial was deposited in a connecting navigable water, ed for the improvement of shore facilities and though e connecting water was thereby blocked, was an ineet which bore a substantial relation to commerce or and the rule of governmental non-liability was applicable.

...tutional

power

of the federal government to regulate

may be exercised to block navigation at one place in order

: at another. P. 393.

220, reversed.

STIORARI, 323 U. S. 698, to review the affirmance of a ent for the plaintiff in a suit against the United Sa.es under the Tucker Act.

Solicitor General Fahy, with whom Messrs. J. Edward Williams, Chester T. Lane and Vernon L. Wilkinson were on the brief, for the United States.

Mr. W. R. Ashburn for respondent.

MR. JUSTICE BLACK delivered the opinion of the Court. The United States dredged a tidewater navigable bay and deposited the dredged materials in a navigable arm of the bay called Mason Creek, thereby destroying its navigability, and impairing certain benefits alleged to inhere in the proximity of the land to a navigable tidewater creek. The broad question presented is whether the Fifth Amendment requires the government to compensate an owner of residential property contiguous to the creek, whose fast lands, though not physically invaded, were decreased in market value.

Commodore Park, Inc., an owner of lands on the creek about a mile away from the filled-in segment, brought this suit in the District Court under the Tucker Act, 24 Stat. 505, 28 U. S. C. 41 (20) for damages resulting from a "taking" by the government of its property for public use, in connection with a naval facilities expansion program. As the case comes to us,' the material findings,

1In the District Court respondent also claimed that mud and silt had been cast on his fast lands. This part of the claim was denied by the District Court, and we need not consider it. With reference to it the Circuit Court of Appeals said: "This relief dredging gave rise to the additional claim on the part of the plaintiff that mud and silt had been deposited on its land, not only between high and low water mark but also above high water mark. But the District Judge disallowed this part of the claim as he found that no material damage had been suffered in excess of the benefit which the plaintiff had derived from the partial filling of low marshes, inlets and coves on its property. No appeal was taken by the plaintiff." United States v. Commodore Park, 143 F. 2d 720, 722.

A

rovernment (1) caused mud n" of the land in question lying pe&navigable tidewater creek nieted, and (2) destroyed the thereby depriving respondent value of its fast land attributaccessibility to a fresh tidewater

8 navigable state. The governmaterial to our decision, is that ownership of the land between high and its "riparian rights" of access both were subordinate to the gov&thority over navigable waters of st its program was effectuated purand that consequently there had "private property" within the mean

mendment.

A held that the entire project had no navigation or commerce, and found

~~*ing to navigation

calue of the land lying between high and had been decreased by the mud and silt that respondent's fast land had been rebecause of the loss of the riparian rights navigation, fishing, boating, and the like. rendered judgment for respondent "for the .. sustained as a result of the taking of its

achts and lands.

The Circuit Court of

animously agreed that the dredging operation in furtherance of navigation and commerce, but held that the depositing of the dredged material Preek was not in aid of navigation, and therefore - the District Court. 143 F. 2d 720. Because it is ant that the government's power to engage in projaid of navigation and commerce be clearly defined, anted certiorari, 323 U. S. 698.