The United States have no right to use a patented invention
without license of the patentee or making compensation to him.
No suit can be maintained, or injunction granted, against the
United States, unless expressly permitted by act of Congress.
Page 161 U. S. 11
Officers or agents of the United States, although acting under
order of the United States, are personally liable to be sued for
their own infringement of a patent.
No injunction can be issued by the courts of the United States
against officers of a state, to restrain or control the use of
property already in the possession of the state, or money in its
treasury when the suit is commenced, or to compel the state to
perform its obligations, or where the state has otherwise such an
interest in the object of the suit as to be a necessary party. And
the same rule applies to officers of the United States.
A patentee has no title in things made by others in violation of
his patent. In a suit in equity for infringement of a patent, the
defendants are liable to account for such profits only as have
accrued to themselves from the use of the invention.
In a suit in equity for infringement of a patent, if no ground
is shown for equitable relief by injunction, by account of profits,
or otherwise, the plaintiff should be left to his action at law for
Upon a suit in equity by the patentee of an improvement in
caisson gates against officers of the United States, using in their
official capacity a caisson gate made and used by the United States
in infringement of his patent at a dry dock in a navy yard, the
plaintiff is not entitled to an injunction. Nor can he recover
profits if the only profit proved is a saving to the United States
in the cost of the gate.
This was a bill in equity, filed January 20, 1887, in the
Circuit Court of the United States for the Northern District of
California, by George Schild against George E. Belknap, Joseph
Feaster, Christopher C. Wolcott, and Jesse Diamond for an
infringement of letters patent granted by the United States to the
plaintiff on October 23, 1883, for an improvement in caisson
The bill alleged that the defendants, with full knowledge and in
violation of the plaintiff's exclusive right, manufactured and
used, and intended to continue to use, such caisson gates in the
State of California, and that he had brought an action in the same
court against the Union Iron Works of San Francisco, and on the
trial of that action, and, after he had waived other than nominal
damages, recovered a verdict in the sum of one dollar in August,
1886, and the validity of his patent and the fact of infringement
were thereby established.
The bill prayed that the defendants be decreed to account for
and pay over to the plaintiff all such gains and profits as
Page 161 U. S. 12
had or might have accrued to them from purchasing or making or
using such improved caisson gates, that any further damages
sustained by the plaintiff by reason of the defendants'
infringement be assessed and ordered to be paid, that the
defendants be restrained by injunction from making or using caisson
gates containing the patented improvement, that the caisson gates,
containing that improvement, and so manufactured or purchased or in
any manner obtained by the defendants and now in their possession
be destroyed or delivered up to the plaintiff, and for further
The defendants filed a plea to the whole bill (called in the
record a "plea in abatement") alleging that the court "ought not to
take cognizance of or sustain the aforesaid action" for that the
defendant Belknap was a commodore in the United States navy, and
commandant of the United States Navy yard at Mare Island,
California; that the defendants Wolcott, Feaster, and Diamond were,
respectively, a civil engineer in the navy, an assistant naval
constructor in the navy, and an employee of the United States at
Mare Island; that the only caisson gate which either of the
defendants had any relation with, control over, or use of within
the State of California was one constructed, manufactured, and used
by the government of the United States and for their use and
benefit at the navy yard at Mare Island, and was there built by the
Union Iron Works, in pursuance of plans and specifications
furnished by the bureau of yards and docks, a board in the naval
service of the United States, and was delivered by the Union Iron
Works to the United States, and used by the United States in the
dry dock of that navy yard, and that neither the defendants nor
either of them made or constructed the caisson gate in question, or
used it for their own use and benefit, or ever had or pretended to
have any interest in or claim upon it; but that they only operated
and used it as the officers, servants, and employees of the United
States, as a part of the navy yard, and for public uses of the
United States, in the exercise of their sovereign and
The Attorney General of the United States, appearing for this
purpose only, filed a suggestion (called in the record a
Page 161 U. S. 13
"plea to the jurisdiction") in which he stated that the caisson
gate in question was planned and constructed by the United States,
and ever since its construction had been in the possession,
control, and use of the United States at the navy yard at Mare
Island, and was operated at the dry dock in the navy yard for naval
purposes and the public defense in the building and repairing of
ships for the navy of the United States; that the United States,
through their officers and agents, charged with the possession,
control, and operation of that navy yard, had at all times been in
possession, control, and operation of the caisson gate as public
property of the United States, for public uses, in the exercise of
their sovereign and constitutional powers, and that the defendants,
and each of them, never had anything to do with the construction,
use, or operation of the gate, or made any claim of right, title,
possession, control, or use of it, other than as officers and
agents of the United States, and in obedience to orders of the
naval department of the government, and therefore,
"without submitting the rights of the United States to the
jurisdiction of the court, but insisting that the court has no
jurisdiction of the controversy, for that the said caisson gate and
its use now is and at all times has been the property of the United
moved that the bill be dismissed, and all proceedings stayed and
The case having been submitted to the court upon the plea of the
defendants and the suggestion of the Attorney General, both were
The defendants, Belknap, Feaster, Wolcott, and Diamond, then
filed an answer, admitting the grant of the letters patent, denying
the infringement, setting forth affirmatively the matters stated in
their former plea, and alleging that neither these defendants nor
the United States were parties to the action brought by the
plaintiff against the Union Iron Works, or estopped by the judgment
A general replication was filed, and evidence was taken by which
it appeared that the validity of the plaintiff's patent, and its
infringement by the defendants, were subjects of conflicting
testimony; that Mare Island, and the works and dock
Page 161 U. S. 14
thereon, including the caisson gate, belonged to the United
States, and were held and occupied for them by their officers and
employees; that the defendants, respectively, held the positions
states in their former plea, and had no interest in the caisson
gate, and nothing to do with it beyond operating it under the
direction of the United States; that the gate was built in 1884,
without any agreement or license of the plaintiff, by the Union
Iron Works under its contract with the United States, and according
to plans and specifications furnished by the bureau of yards and
docks, and Wolcott simply inspected the materials and workmanship
as the work progressed to see if they were according to the
contract, and that the gate had since been used by the United
States, as part of the dock in the navy yard aforesaid.
After a hearing upon pleadings and proofs, the court made an
interlocutory decree adjudging that the patent was valid, and had
been infringed by the defendants, referring the case to a master to
take an account of the number of caisson gates made or used by the
defendants, or either of them in violation of the patent, and also
of the gains, profits, and advantages arising or accruing to the
defendants, or either of them, and of the damages sustained by the
plaintiff, and ordering a perpetual injunction against the
defendants, and each of them, "and their and each of their agents,
servants, clerks, and workmen, and all persons claiming or holding
under or through them, or either of them."
The master reported that one caisson gate to the dock in the
navy yard at Mare Island, for the making and using of which the
defendants had been adjudged to have infringed the plaintiff's
patent, had been made upon plans furnished by the plaintiff, and
modified by the government officials, and put in use in 1884; that
the cost of this gate was $60,000, and the cost of the cheapest
practicable gate, constructed on any other plan known to the
defendants, would be at least $100,000, and therefore the gains,
profits, and advantages which had arisen and accrued to the
defendants from infringing the plaintiff's patent amounted to
$40,000, and that no damages, in addition to such gains, profits,
and advantages, had been proved.
Page 161 U. S. 15
The court overruled exceptions taken by the defendants to the
master's report, confirmed his report, and entered a final decree
for the plaintiff for the sum of $40,000, with interest and costs.
The defendants appealed to this Court.
MR. JUSTICE GRAY, after stating the case, delivered the opinion
of the Court.
A recapitulation of the principles heretofore affirmed by this
Court touching the liability of the United States and of their
officers and agents to suit in the judicial tribunals, will go far
towards disposing of this case.
It should be premised that our law differs from that of England
as to the right of the government to use without compensation an
invention for which it has granted letters patent.
In England, the grant of a patent for an invention is considered
as simply an exercise of the royal prerogative, and not to be
construed as precluding the crown from using the invention at its
pleasure, and therefore a petition of right cannot be maintained
against the crown for using a patented invention, although a
private person or corporation that has contracted to supply the
government with articles embodying the invention may be sued for
infringement of the patent. Feather v. The Queen,
& S. 257; Dixon v. London Small Arms Co.,
L.R. 10 Q.B.
130, 1 App.Cas. 632.
But in this country, letters patent for inventions are not
granted in the exercise of prerogative or as a matter of favor, but
under Article I, Section 8, of the Constitution of the United
States, which gives Congress power
"to promote the progress of science and useful arts, by securing
for limited terms to authors and inventors the exclusive right to
their respective writings and discoveries."
The patent act provides that
Page 161 U. S. 16
every patent shall contain a grant to the patentee, his heirs
and assigns, for a certain term of years, of "the exclusive right
to make, use and vend the invention or discovery throughout the
United States." Rev.Stat. § 4884. And this Court has repeatedly and
uniformly declared that the United States have no more right than
any private person to use a patented invention without license of
the patentee or making compensation to him. United
States v. Burns,
12 Wall. 246, 79 U. S. 252
Cammeyer v. Newton, 94 U. S. 225
94 U. S. 235
James v. Campbell, 104 U. S. 356
104 U. S. 358
Hollister v. Benedict Manufacturing Co., 113 U. S.
, 113 U. S. 67
United States v. Palmer, 128 U. S. 262
128 U. S.
The United States, however, like all sovereigns, cannot be
impleaded in judicial tribunal, except so far as they have
consented to be sued. This doctrine has been affirmed by this Court
in cases too numerous to be cited, and was clearly stated by MR.
JUSTICE FIELD, delivering judgment in the case of The
"It is a familiar doctrine of the common law that the sovereign
cannot be sued in his own courts without his consent. The doctrine
rests upon reasons of public policy -- the inconvenience and danger
which would follow from any different rule. It is obvious that the
public service would be hindered, and the public safety endangered,
if the supreme authority could be subjected to suit at the instance
of every citizen, and consequently controlled in the use and
disposition of the means required for the proper administration of
the government. The exemption from direct suit is therefore without
exception. This doctrine of the common law is equally applicable to
the supreme authority of the nation, the United States. They cannot
be subjected to legal proceedings at law or in equity without their
consent, and whoever institutes such proceedings must bring his
case within the authority of some act of Congress. Such is the
language of this Court in United States v. Clarke,
8 Pet. 444. The same exemption from judicial process extends to the
property of the United States, and for the same reasons. As justly
observed by the learned judge who tried this case, there is no
distinction between suits against the government directly and
Page 161 U. S. 17
against its property."
7 Wall. 74 U. S. 152
So much of this statement as regards suits against the United
States or against their property was repeated by the present Chief
Justice in the recent case of Stanley v. Schwalby,
147 U. S. 508
147 U. S.
It necessarily follows that unless expressly permitted by act of
Congress, no injunction can be granted against the United States.
United States v.
4 How. 286; Hill v.
9 How. 386; Case v.
The United States, by successive acts of Congress, have
consented to be sued upon their contracts either in the Court of
Claims or in a circuit or district court of the United States. Acts
February 24, 1855, c. 122, § 1, 10 Stat. 612; March 3, 1863, c. 92,
§ 2, 12 Stat. 765; Rev.Stat. § 1059; Act March 3, 1887, c. 359, §§
1, 2, 24 Stat. 505; United States v. Jones, 131 U. S.
, 131 U. S. 15
The United States may accordingly be sued by a patentee for their
use of his invention under a contract made with him by the United
States or by their authorized officers. United
States v. Burns,
12 Wall. 246; United States v.
Palmer, 128 U. S. 262
United States v. Berdan Co., 156 U.
But the United States have not consented to be liable to suits,
founded in tort, for wrongs done by their officers, though in the
discharge of their official duties. Gibbons v.
8 Wall. 269; Morgan v.
14 Wall. 531, 81 U. S. 534
Langford v. United States, 101 U.
; United States v. Jones, 131 U. S.
, 131 U. S. 16
German Bank v. United States, 148 U.
, 148 U. S.
-580; Hill v. United States, 149 U.
. The United States therefore are not liable to a
suit for an infringement of a patent, that being an action sounding
in tort. Schillinger v. United States, 155 U.
; United States v. Berdan Co.,
156 U. S. 552
A public officer is not personally liable on a contract,
although under his own hand and seal, made by him in the line of
his duty, by legal authority, and on account of the government, and
inuring to its benefit, and not to his own. Hodgson v.
1 Cranch 345. See also Macbeath v.
1 T.R. 172; Unwin v. Wolseley,
1 T.R. 674;
Palmer v. Hutchinson,
6 App.Cas. 619.
Page 161 U. S. 18
But the exemption of the United States from judicial process
does not protect their officers and agents, civil or military, in
time of peace, from being personally liable to an action of tort by
a private person whose rights of property they have wrongfully
invaded or injured, even by authority of the United States.
2 Cranch 170; Bates v. Clark,
95 U. S. 204
officers or agents, although acting under order of the United
States, are therefore personally liable to be sued for their own
infringement of a patent. Cammeyer v. Newton, 94 U. S.
, 94 U. S. 235
See also Feather v. The Queen,
6 B. & S. 257, 297;
Vavasseur v. Krupp,
9 Ch.D. 351, 355, 358.
The extent to which officers or agents of the government may be
restrained by injunction from doing unlawful acts to the prejudice
of private rights is illustrated by the decisions of this Court
regarding injunctions from the courts of the United States to
officers and agents of a state, which, by the Constitution of the
United States, is as exempt as the United States are from private
suit. Hans v. Louisiana, 134 U. S. 1
In a suit to which the state is neither formally nor really a
party, its officers, although acting by its order and for its
benefit, may be restrained by injunction, when the remedy at law is
inadequate, from doing positive acts for which they are personally
and individually liable, taking or injuring the plaintiff's
property contrary to a plain official duty requiring no exercise of
discretion, and in violation of the Constitution or laws of the
United States. Osborn v.
9 Wheat. 738, 22 U. S. 868
22 U. S. 871
Board of Liquidation v. McComb, 92 U. S.
, 92 U. S. 541
Allen v. Baltimore & Ohio Railroad Co., 114 U.
; Pennoyer v. McConnaughy, 140 U. S.
But no injunction can be issued against officers of a state to
restrain or control the use of property already in the possession
of the state, or money in its Treasury when the suit is commenced,
or to compel the state to perform its obligations, or where the
state has otherwise such an interest in the object of the suit as
to be a necessary party. Louisiana v. Junel, 107 U.
, and Elliott v. Wiltz, 107
U. S. 720
, 107 U. S. 728
Cunningham v. Macon & Brunswick Railroad, 109 U.
, 109 U. S.
-457; Hagood v.
Page 161 U. S. 19
Southern, 117 U. S. 52
117 U. S. 70
In re Ayers, 123 U. S. 443
North Carolina v. Temple, 134 U. S.
; McGahey v. Virginia, 135 U.
, 135 U. S.
In support of the decree below, much reliance was placed upon
United States v. Lee, 106 U. S. 196
Stanley v. Schwalby, 147 U. S. 508
Virginia Coupon Cases, 114 U. S. 269
In United States v. Lee,
the decision of the Court,
speaking by Mr. Justice Miller, was that the owner of land held and
occupied by the United States for public uses, but under a
defective title, might maintain, against the officers in possession
of the land under authority of the United States, an action of
ejectment, notwithstanding the interposition of the Attorney
General in behalf of the United States.
A year afterwards, Mr. Justice Miller, again delivering the
opinion of the Court, after mentioning a different class of cases,
"Another class of cases is where an individual is sued in tort
for some act injurious to another in regard to person or property,
to which his defense is that he has acted under the orders of the
government. In these cases, he is not sued as, or because he is,
the officer of the government, but as an individual, and the court
is not ousted of jurisdiction because he asserts authority as such
officer. To make out his defense, he must show that his authority
was sufficient in law to protect him."
After citing several cases to this point, he added:
"To this class belongs also the recent case of United States
v. Lee, 106 U. S. 196
, for the action of
ejectment in that case is, in its essential character, an action of
trespass, with the power in the court to restore the possession to
the plaintiff as part of the judgment. And the defendants Strong
and Kaufman, being sued individually as trespassers, set up their
authority as officers of the United States, which this Court held
to he unlawful, and therefore insufficient as a defense. The
judgment in that case did not conclude the United States, as the
opinion carefully stated, but held the officers liable as
unauthorized trespassers, and turned them out of their unlawful
Cunningham v. Macon & Brunswick Railroad,
109 U. S. 446
109 U. S.
This statement of the decision in United States v. Lee
Page 161 U. S. 20
repeated in Stanley v. Schwalby,
in which the point
decided was that the statute of limitations, or adverse possession,
might be pleaded in defense of an action of trespass to try title
against officers of the United States. 147 U. S. 147
508, 147 U. S.
In Cunningham v. Macon & Brunswick Railroad,
cited, a bill in equity to foreclose a second mortgage of a
railroad and to set aside as invalid a sale and conveyance of the
road to the State of Georgia under a foreclosure of the first
mortgage, was filed by holders of bonds secured by the second
mortgage against the governor and the treasurer of the state, as
well as against the railroad company and its directors, and was
ordered to be dismissed for want of jurisdiction because, as was
said in the opinion,
"it may be accepted as a point of departure unquestioned that
neither a state nor the United States can be sued as defendant in
any court in this country without their consent, except in the
limited class of cases in which a state may be made a party in the
Supreme Court of the United States by virtue of the original
jurisdiction conferred on this Court by the Constitution. This
principle is conceded in all the cases, and whenever it can be
clearly seen that the state is an indispensable party to enable the
court, according to the rules which govern its procedure, to grant
the relief sought, it will refuse to take jurisdiction. . . . In
the case now under consideration, the State of Georgia is an
indispensable party. It is in fact the only proper defendant in the
case. No one sued has any personal interest in the matter, or any
official authority to grant the relief asked. No foreclosure suit
can be sustained without the state, because she has the legal title
to the property, and the purchaser under a foreclosure decree would
get no title in the absence of the state. The state is in the
actual possession of the property, and the court can deliver no
possession to the purchaser. The entire interest adverse to
plaintiff in this suit is the interest of the State of Georgia in
the property, of which she has both the title and possession."
109 U. S. 109
U.S. 451, 109 U. S.
In the cases cited by the appellee, reported under the head of
The Virginia Coupon Cases, 114 U.
, where a collector of taxes due to the State of
Virginia refused to receive
Page 161 U. S. 21
coupons of the state tendered in payment of such a tax because
forbidden to do so by a statute of the state, which was
unconstitutional and void as impairing the obligation of the
contract made by the state with the holders of such coupons in the
statute under which they were issued, the Court, speaking by Mr.
Justice Matthews, held that the collector was liable to an action
of detinue or of trespass for distraining personal property for
nonpayment of the tax, or, where the remedy at law was inadequate,
might be restrained by injunction from making the distraint.
Poindexter v. Greenhow, 114 U. S. 270
Chaffin v. Taylor, 114 U. S. 309
Allen v. Baltimore & Ohio Railroad, 114 U.
But where the circuit court of the United States, at the suit of
one who had tendered such coupons in payment of his taxes, issued
an injunction against the Attorney General and other attorneys of
the State of Virginia to restrain them from bringing any action in
behalf of the state to recover such taxes, and, upon their bringing
such actions, committed them for contempt in disobeying the
injunction, they were discharged by this Court on writs of habeas
corpus. Mr. Justice Matthews, again delivering its opinion, and
fully reviewing the previous cases, said that from the decision in
Cunningham v. Brunswick & Macon Railroad,
"the inference is that where it is manifest upon the face of the
record that the defendants have no individual interest in the
controversy, and that the relief sought against them is only in
their official capacity as representatives of the state, which
alone is to be affected by the judgment or decree, the question
then arising, whether the suit is not substantially a suit against
the state, is one of jurisdiction,"
and added that actions had been sustained against officers
acting in behalf of a state
"only in those instances where the act complained of, considered
apart from the official authority alleged as to its justification,
and as the personal act of the individual defendant, constituted a
violation of right for which the plaintiff was entitled to a remedy
at law or in equity against the wrongdoer, in his individual
and that the Eleventh Amendment of the Constitution, declaring
"the judicial power of the United
Page 161 U. S. 22
States shall not be construed to extend to any suit in law or
equity, commenced or prosecuted against one of the United States by
citizens of another state or by citizens or subjects of any foreign
must be held
"to cover, not only suits brought against a state by name, but
those also against its officers, agents and representatives, where
the state, though not named as such, is, nevertheless, the only
real party against which alone in fact the relief is asked, and
against which the judgment or decree effectively operates,"
and therefore concluded that the suit in which the injunction
was granted was, in substance and in law, a suit against the State
of Virginia, and consequently the circuit court was without
jurisdiction to entertain it, the order of injunction and the
commitments for contempt were null and void, and the imprisonment
of the officers was without authority of law. In re Ayers,
123 U. S. 443
123 U. S. 489
123 U. S. 502
123 U. S.
When the matter of the Virginia coupons was last brought before
this Court, Mr. Justice Bradley, delivering its unanimous opinion,
summed up, as the result of the previous decisions so far as
concerns the subject now under consideration,
"that no proceedings can be instituted by any holder of said
bonds or coupons against the Commonwealth of Virginia, either
directly by suit against the commonwealth by name or indirectly
against her executive officers, to control them in the exercise of
their official functions as agents of the state,"
but that any holder
"who tenders such coupons in payment of taxes, debts, dues, and
demands due from him to the state and continues to hold himself
ready to tender the same in payment thereof, is entitled to be free
from molestation in person or goods on account of such taxes,
debts, dues, or demands, and may vindicate such right in all lawful
modes of redress -- by suit to recover his property, by suit
against the officer to recover damages for taking it, by injunction
to prevent such taking where it would be attended with irremediable
injury, or by a defense to a suit brought against him for his taxes
or the other claims standing against him."
McGahey v. Virginia, 135 U. S. 662
135 U. S. 684
And this summary was repeated and approved in Pennoyer v.
McConnaughy, 140 U. S. 1
140 U. S. 15
Page 161 U. S. 23
It only remains to apply the principles established by the
former decisions to this suit under the Patent Act of the United
That act not only provides that "damages for the infringement of
any patent may be recovered by action on the case," but also
"the several courts vested with jurisdiction of cases arising
under the patent laws shall have power to grant injunctions,
according to the course and principles of courts of equity, to
prevent the violation of any right secured by patent, on such terms
as the court may deem reasonable, and, upon a decree's being
rendered in any such case for an infringement, the complainant
shall be entitled to recover, in addition to the profits to be
accounted for by the defendant, the damages the complainant has
sustained thereby, and the court shall assess the same, or cause
the same to be assessed, under its direction."
Rev.Stat. §§ 4919, 4921.
This bill in equity was filed by the owner of letters patent for
an improvement in caisson gates, and alleged that the defendants
infringed the patent by manufacturing and using such gates. The
defendants filed a plea to the whole bill, and the Attorney
General, in behalf of the United States, filed a suggestion, the
single ground of each of which was that the only caisson gate that
the defendants had any relation with was not made by them, and was
not used by them for their own benefit, but was made and used by
the United States in a dry dock at a navy yard, and the defendants
only operated and used it as officers, servants, and employees of
the United States. The fact so pleaded and suggested could not,
consistently with the previous decisions above cited, prevent the
defendants from being held liable to the patentee for their own
infringement of his patent. There was no error, therefore, in
overruling the plea of the defendants and the suggestion of the
But the circuit court erred in awarding an injunction against
As this Court, when deciding that things manufactured under
letters patent of the United States were subject to be taxed by a
state like other property, said, "the right of property
Page 161 U. S. 24
in the physical substance, which is the fruit of the discovery,
is altogether distinct from the right in the discovery itself."
Patterson v. Kentucky, 97 U. S. 501
97 U. S. 506
Title in the thing manufactured does not give the right to use the
patented invention; no more does the patent right in the invention
give title in the thing made in violation of the patent.
In an English case, quite analogous to the case at bar, where
shells, bought and owned by a foreign sovereign, were brought to
England to be put on board his ships of war, the Court of Appeal
held that his agents, if they used the shells in England in
infringement of an English patent, might be liable in damages to
the patentee, but that the court could not restrain the delivery of
the shells to the sovereign to whom they belonged. Lord Justice
Brett said: "The patent law has nothing to do with property." And
Lord Justice Cotton expressed the same idea more fully, as
"The property in articles which are made in violation of a
patent is, notwithstanding the privilege of the patentee, in the
infringer if he would otherwise have the property in them. The
court, in a suit to restrain the infringement of a patent, does not
proceed on the footing that the defendant proved to have infringed
has no property in the articles, but, assuming the property to be
in him, it prevents the use of those articles either by removing
that which constitutes the infringement or by ordering, if
necessary, a destruction of the articles so as to prevent them from
being used in derogation of the plaintiff's rights, and does this
as the most effectual mode of protecting the plaintiff's rights,
not on the footing that there is no property in the defendant. The
court cannot proceed to give that relief and interfere with the
articles unless it has before it the person entitled to the
articles in question, and has, as against this person, power to
adjudicate that the articles are made or used in infringement of
the plaintiff's rights."
Vavasseur v. Krupp,
9 Ch.Div. 351, 358-360.
In the present case, the caisson gate was a part of the dry dock
in a navy yard of the United States, was constructed and put in
place by the United States, and was the property of the
Page 161 U. S. 25
United States, and held and used by the United States for the
public benefit. If the gate was made in infringement of plaintiff's
patent, that did not prevent the title in the gate from vesting in
the United States. The United States, then, had both the title and
the possession of the property. The United States could not hold or
use it except through officers and agents. Although this suit was
not brought against the United States by name, but against their
officers and agents only, nevertheless, so far as the bill prayed
for an injunction and for the destruction of the gate in question,
the defendants had no individual interest in the controversy. The
entire interest adverse to the plaintiff was the interest of the
United States in property of which the United States had both the
title and the possession. The United States were the only real
party against whom alone in fact the relief was asked and against
whom the decree would effectively operate. The plaintiff sought to
control the defendants in their official capacity and in the
exercise of their official functions as representatives and agents
of the United States, and thereby to defeat the use by the United
States of property owned and used by the United States for the
common defense and general welfare, and therefore the United States
were an indispensable party to enable the court, according to the
rules which govern its procedure, to grant the relief sought, and
the suit could not be maintained without violating the principles
affirmed in the long series of decisions of this Court above
There was also error in the final decree awarding profits to the
plaintiff as against the defendants.
In a suit in equity for the infringement of a patent, the ground
upon which profits are recovered is that they are the benefits
which have accrued to the defendants from their wrongful use of the
plaintiff's invention, and for which they are liable, ex aequo
to the like extent as a trustee would be who had used
the trust property for his own advantage. The defendants in any
such suit are therefore liable to account for such profits only as
have accrued to themselves from the use of the invention, and not
Page 161 U. S. 26
which have accrued to another and in which they have no
participation. Elizabeth v. Pavement Co., 97 U. S.
, 97 U. S.
-140; Root v. Railway Co., 105 U.
; Tilghman v. Proctor, 125 U.
, 125 U. S.
-148; Keystone Co. v. Adams, 151 U.
, 151 U. S. 147
Coupe v. Royer, 155 U. S. 565
155 U. S.
In the leading case of Elizabeth v. Pavement Co.,
suit in equity for the infringement of a patent for an improvement
in wooden pavements was brought against a city, as well as against
the contractor who had laid down the pavements. It being shown that
the city had made no profits from the use of the invention, but
that the contractor had, this Court held that profits could be
recovered against the contractor only, and not against the city.
Mr. Justice Bradley, in delivering judgment, said:
"One thing may be affirmed with reasonable confidence -- that if
an infringer of a patent has realized no profit from the use of the
invention, he cannot be called upon to respond for profits. The
patentee in such case is left to his remedy for damages."
97 U.S. 97 U. S.
In the case at bar, there was no evidence that the defendants
themselves had made any profits whatever from the use of the
plaintiff's invention, but the only gains, profits, and advantages
upon which the report of the master and the decree of the court
were based were those which had accrued to the United States from
the saving in the cost of the gate, and the master found that no
damages in addition to such gains, profits, and advantages had been
The necessary result is that even if the validity of the patent
and its infringement by the defendants are assumed, the plaintiff,
upon this record, is not entitled to an injunction, to profits, or
The finding of the master that no damages in addition to profits
had been proved does not, indeed, necessarily imply that the
plaintiff had not sustained damages independent of any profits, but
no ground for equitable relief, by injunction, by account of
profits, or otherwise, being shown, the proper remedy of the
plaintiff against the defendants for such damages is by action at
law. Elizabeth v. Pavement Co.
and Root v. Railway
Page 161 U. S. 27
The question whether the United States might be liable, in a
suit against them in the Court of Claims or other court of
concurrent jurisdiction, as upon a contract, for their use of the
caisson gate, if an infringement of the plaintiff's patent, does
not arise, and cannot be decided, in this case.
In order that the rights of all parties interested in the
controversy may be preserved, the entry in this case will be
Decree of the circuit court reversed and case remanded to
that court with directions to dismiss the bill without prejudice to
an action at law against the defendants or to a suit against the
MR. JUSTICE HARLAN, dissenting.
I am unable to concur in the disposition which has been made of
As stated in the opinion of the majority, this Court has
frequently held that the United States has no more right than any
private person to use a patented invention without license of the
patentee, or without making or securing compensation to him. It is
not claimed that the defendants used the plaintiff's patent under a
license from him, or that compensation or provision for
compensation has been made. T he government is therefore under an
implied obligation to compensate the plaintiff. That obligation
arises from the Constitution, which declares that private property
shall not be taken for public use without just compensation. Upon
this point, the Court, in Great Falls Mfg. Co. v. Attorney
General, 112 U. S. 645
112 U. S. 657
"Such an implication being consistent with the constitutional
duty of the government, as well as with common justice, the
claimant's cause of action is one that arises out of implied
contract within the meaning of the statute which confers
jurisdiction upon the Court of Claims of actions founded 'upon any
contract, expressed or implied, with the government of the United
The same principle was recognized in Great Falls Mfg. Co. v.
Attorney General, 124 U. S. 581
124 U. S. 597
United States v. Alexander, 148 U.
, 148 U. S. 191
Page 161 U. S. 28
Schillinger v. United States, 155 U.
, 155 U. S.
-175. In this view (the defendants being public
officers, who derive no personal advantage from the use by the
government of the plaintiff's invention), the prayer for an
injunction might well have been denied upon the ground that there
was an adequate and complete remedy by a suit against the United
States as upon implied contract. But the Court does not proceed
distinctly on that ground.
If the plaintiff cannot sue the United States to recover
compensation for the use of his invention, actually appropriated by
the government for public use, then the only adequate remedy for
him would be an injunction against the individual officers, who are
proceeding without his license and without any provision's having
been made for his being compensated. This must be so unless the
court is prepared to hold that there is no remedy, under the
Constitution, for the protection of private rights against illegal
invasion by officers of the government. In United States v.
Lee, 106 U. S. 196
this Court said that when the citizen,
"in one of the courts of competent jurisdiction, has established
his right of property, there is no reason why deference to any
person, natural or artificial, not even the United States, should
prevent him from using the means which the law gives him for the
protection and enforcement of that right;"
"no man in this country is so high that he is above the law. No
officer of the law may set that law at defiance with impunity. All
the officers of the government, from the highest to the lowest, are
creatures of the law, and are bound to obey it."
If the United States may appropriate to public use the invention
of a patentee without his consent and without liability to suit, as
upon implied contract, for the value of the use of such invention;
if, as the Court holds, a public officer, acting only in the
interest of the public, is not individually liable for gains,
profits, and advantages that may accrue to the United States from
such use, and if the officer who thus violates the rights of the
patentee cannot be restrained by injunction, then the government
may well be regarded as organized robbery, so far as the rights of
patentees are concerned.
Page 161 U. S. 29
Instead of leaving open the question whether the United States
was liable to suit, as upon implied contract, the prayer for
injunction, if denied, should have been denied upon the ground, and
only upon the ground, that the plaintiff had a complete and
adequate remedy by a suit against the government.