In the case of Schwab v. Berggren, the U.S Supreme Court ruled in 1891 that a patent could be invalidated if it was not sufficiently specific and clear in its description of the invention. The court found that Mr. Berggren's patent for an improvement to lamp burners did not meet this standard because it failed to clearly distinguish his invention from existing designs or explain how his design improved upon them. Furthermore, they noted that even if these issues were resolved, there would still be doubts about whether he had actually invented anything new at all since similar designs already existed before his supposed discovery date. Therefore, due to these deficiencies and uncertainties surrounding Mr.Berggren's claim of novelty and originality, the court decided against him by invalidating his patent.

In the dissenting opinion for Schwab v. Berggren, Justice Lamar disagreed with the majority's interpretation of the law and its application to this case. He argued that a patent holder should not be able to sue for infringement if they have already sold their rights in another country, as was done by Berggren when he sold his Swedish patent rights before obtaining an American one. According to him, selling foreign rights effectively nullifies any subsequent patents obtained in other countries because it constitutes abandonment of those exclusive rights. Therefore, he believed that Schwab did not infringe on any valid U.S patent held by Berggren since it had been abandoned through sale elsewhere prior to being granted in America. This view contrasts sharply with the majority’s decision which upheld Berggren's right to sue for infringement despite having previously sold his invention abroad.