In order to find that there was an implied contract for use of a
patent, there must be use with patentee's agent and agreement to
pay something therefor,
United States v. Berdan Fire Arms
Company, 156 U. S. 552, and
these element may be collected from conduct of the parties, even if
there are no explicit declarations.
Where the facts show that the patentee consented that the
government use his invention, and the proper officer of the
department in which it was used have stated that there is a claim
for royalties if the patent is a valid one, the claim is founded on
contract, and the Court of Claim has jurisdiction.
The intention to plainly do a wrongful act by deliberately
taking the property of another without compensation will not be
imputed to officers of the United States without the most
convincing proof.
The excellence of an ordnance invention is testified to by it
use by the government in guns for the national defense.
In this case,
held that the De Bange gas check for
large gun is a device of excellence, that the patents therefor are
valid, and the gas checking device used by the government is an
infringement thereof.
The law secures the patentee against infringement by a use in
other forms and proportions than those specifically described in
the claim.
Page 224 U. S. 310
This Court will not direct the Court of Claims to certify
evidence, and not its conclusions from the evidence. The rule is
that the finding must be of the facts established by the
evidence.
This Court, in appeals from the Court of Claims, can only act
upon the record, and a finding of that court that a definite amount
of compensation is due from the government for use of a patent, to
which no objection is taken or exception reserved, is as finally
determinative of the matter as a special verdict of a jury. The
evidence cannot be certified up so as to make such finding
reviewable by this Court.
United States v. New York
Indians, 173 U. S. 464,
followed, and
Ceballos & Co. v. United States,
214 U. S. 47,
distinguished.
44 Ct.Cl. 610 affirmed.
The facts, which involve the jurisdiction of the Court of Claims
of claims of patentee of the De Bange gas check for use of that
invention by the government, whether there was such use, and what
the proper compensation should be therefor, are stated in the
opinion.
MR. JUSTICE McKENNA delivered the opinion of the Court.
This suit is for royalties alleged to be due for the use by the
government of a certain patented invention known as a "gas check"
or "obturator" -- a device applied to breech-loading cannon to
prevent the escape of gas.
The Court of Claims rendered judgment against the United States
for the sum of $136,000. Both parties appeal, the United States
contending against any judgment, the claimant contending for the
recovery of a larger sum. No further distinction is necessary to be
observed between the appeals. The discussion of the case will
dispose of both.
The first contention of the government is that the facts
Page 224 U. S. 311
set out in the findings did not constitute an implied contract
in fact, as distinguished from a tort, and that therefore the Court
of Claims had no jurisdiction of the case.
Such a contract is necessary to sustain the exercise of
jurisdiction.
Russell v. United States, 182 U.
S. 516, and cases cited. The Court of Claims decided
that such a contract existed and that the jurisdiction of the court
was established, citing
United States v. Berdan Fire Arms Mfg.
Co., 156 U. S. 552. The
court said:
"The findings disclose an invitation to present the details of
the patent to the defendant [the government], its examination by a
board of officers appointed to investigate such inventions, and its
final use without the slightest claim of ownership. Nothing appears
to show an intention to dispute claimant's title to the patent,
hence an implied contract arose to pay for such use."
In discussing the correctness of these conclusions, we
necessarily assume the validity of the patent, its utility and use
by the government, the question being only for the present whether
such use was a trespass upon the rights of the claimant, or in
concession of such rights and of an obligation to pay for them.
The findings lack, and, it may be, necessarily lack,
definiteness. They trace the history and progress of the invention
of gas checks from an early period to the culmination in the patent
to Colonel De Bange, an officer of the French army, in 1884,
granted upon an application made in 1883. It immediately attracted
the notice of American army and naval officers, and received
favorable commendation in ordnance notes.
In 1883, under an act of Congress of that year (March 3, 1883,
22 Stat. 474), a board was constituted, known as the "Gun Foundry
Board," composed of eminent officers of the Army and Navy, headed
by Rear Admiral Simpson of the Navy, whose duty it was, among
others, as it is recited in the findings, to report on the
establishment
Page 224 U. S. 312
of a government foundry,
"or what other method, if any, should be adopted for the
manufacture of heavy ordnance adapted to modern warfare for the use
of the Army any Navy of the United States."
The board visited the claimant's works at Paris on June 29,
1883.
"In the official report of this board, reference is made to a
visit to the claimant's works at Paris, France, on August 29, 1883,
and to the inspection by said board of the De Bange system of
ordinance. In the said report of said board is the following:"
"
Breech fermeture. -- All the French guns are
breech-loading, and are fitted with the interrupted screw system,
as modified by Colonel De Bange to suit his gas check."
"
Gas check. -- The De Bange gas check is universally
employed."
Prior to the visit of the gun foundry board, the De Bange
obturator was brought directly to the attention of the United
States ordinance authorities through Lieutenant Commander Chadwick,
naval attache at London, to whom De Bange explained his invention,
and who gave to Lieutenant Commander Folger of the Bureau of
Ordnance, Navy Department, a detailed description of the gas check,
with a description of the method of making it, furnished by De
Bange, subsequently (July 5, 1883) forwarding to the Department the
device, accompanied by the following letter:
"Sir: I have the honor to forward herewith a De Bange
'obturator,' which was kindly presented on request by the French
minister of war."
"I am, very respectfully, your obedient servant,"
"F. E. CHADWICK"
"
Lt. Comdr., U.S. Navy, Naval Attache"
"Commodore J. E. WALKER"
"U.S. Navy, Chief of Bureau of Navigation"
"Navy Department, Washington "
Page 224 U. S. 313
In 1884, the ordnance officers of the United Stated, after
experimenting with the De Bange device, adopted it for heavy
ordnance (5-inch caliber and upward), and have used no other device
since.
"The United States government [we quote from the findings] has
never disputed the title of claimant's assignor, Colonel De Bange,
as inventor of the said invention, but, on the contrary, the said
invention has, ever since its adoption, been known in the service
of the United States as the 'De Bange gas check,' and is described
by that name in the official reports of the Secretaries of War and
of the Navy."
The findings contain certain correspondence which is relied on
by the government to sustain its contention, and, as it is not
possible to condense it, it is given in full.
"Paris,
June 29, 1891"
"Colonel De Bange to H. E., the Minister Plenipotentiary of
the"
"United States"
"Mr. MINISTER: In order to respond to the desire expressed by
your excellency in the letter which you have done me the honor to
address to me, I add some details to my previous observations."
"One of my patents bears the number 331,618; it relates to gun
carriages; it is not very important, because one can do without it;
but the second, No. 301,220, which is connected with the obturation
of guns and breech mechanism, is of the highest importance. Without
my obturator, the loading of a gun by the breech is difficult, and
the service is rendered ineffectual. The metallic ring used in
Germany is far from having its value, and imparts to the gun a
considerable inferiority. Thus, all the makers of cannon are led to
employ my invention, either openly or in a disguised form, styled
by them improvement. The War and Navy Departments at New York,
which are well acquainted with the question, will certainly not
contest
Page 224 U. S. 314
the truth of my assertions; they have under their eyes, on
trial, guns which speak for themselves."
"This is not the first time that I have had to complain of my
idea's being borrowed, without my knowledge, in France or abroad.
The English government particularly had taken up my system, and,
without my having demanded anything, had offered me twenty thousand
pounds sterling to indemnify me. I refused this offer, it is true,
but, because, as a French officer, I ought not to aid in the arming
of a power which I do not consider as friendly. In part, deprived
of my assistance, England has copied me badly, and possesses but a
moderate artillery."
"In any case, I appeal to the sentiments of equity of the
government of the United States, convinced that it will recognize
easily the justice of my claim."
"Pray accept, etc., etc.,"
"(Sgd.) Colonel DE BAGNE"
"UNITED STATES LEGATION"
"NAVAL ATTACHE"
"
Paris, July 2nd, 1891"
The naval attache at London suggested in a communication to Mr.
Reid, our Minister there, that Colonel De Bange's letter be
forwarded to the Navy Department. The Minister, however, referred
it to the Secretary of State.
De Bange sent the following letter to the Secretary of the
Navy:
"VERSAILLES, NEAR PARIS, 16/8/91."
"
Colonel De Bange to Monsieur Benjamin F. Tracy,
Secretary"
"
of the Navy at Washington"
"Mr. SECRETARY: Some months ago, I addressed the United States
Minister at Paris, verbally and by writing, several remarks on the
subject of loans which I had made of my invention to the
Departments of War and of the Navy; finally, as I have undertaken
to write to you directly, I now have the honor to lay before you
the following: "
Page 224 U. S. 315
"I had taken out letters patent, which treated of artillery in
the United States, one number, 301,220, relative to l'obturation of
guns, and of principal importance; the other number, 331,618,
relative to the carriage."
"Furthermore, I have seen at Paris many of your officers, to
whom I furnished without reserve all the information which they
have asked of me."
"Under these circumstances, I hope that, if the government has
desired to utilize my inventions, it will inform me; there has been
no defect, and I have learned from a reliable source that my
systems was copied, unknown to me, by the Departments of War and of
the Navy, be it under the disguise of an improvement or be it
openly."
"I regret that this has occurred, but in any case I consider
that an indemnity is due me. If you will have the kindness to
notify the government of my claim, I am confident that it will see
that justice is accorded me in the indemnity to which I believe
myself to be entitled."
"Please accept, Mr. Secretary, the expression of sentiments of
highest consideration, with which I am"
"Your obedient servant"
"DE BANGE"
"Please reply."
This letter seems also to have been sent to the Department of
State, and referred by it to the Secretary of the Navy, as appears
from the following letter of the Chief of the Bureau of
Ordnance:
BUREAU OF ORDINANCE,
August 27, 1891
"Respectfully returned to the honorable Secretary of the
Navy."
"The bureau has not manufactured and is not using any gun
carriages which contain principles which could be held as
infringing any claims secured in United States patent No. 331,618.
The gas check which has been adopted for the naval guns of 6-in.
caliber and upwards
Page 224 U. S. 316
resembles in certain features that described in United States
patent No. 301,220, issued to Col. De Bange. It also differs from
it materially in particulars which are original in this
bureau."
"I am not in position to give an opinion as to the question of
infringement, and have to suggest that the applicant refer the
matter to the Court of Claims."
"The bureau will note for the information of the applicant that
there are no funds appropriated or available for the payment of any
claim that might be allowed by the Court of Claims, and that it
will be necessary for the applicant to go to Congress for relief in
the event of a decision being obtained which will warrant such
action."
"(Sgd.) WM. M. FOLGER"
"
Chief Bureau of Ordnance"
The Navy Department then addressed the Secretary of State as
follows:
"NAVY DEPARTMENT"
"
Washington, September 3, 1891"
"SIR:"
"I have the honor to acknowledge the receipt of your
communication of the 20th ultimo, enclosing copies of
correspondence relating to a claim of Colonel De Bange, a retired
officer of the French army, residing in Paris, France, who alleges
the use by this government of certain inventions patented by him in
guns and gun carriages."
"In reply, I have to state that the Chief of the Bureau of
Ordnance, in this Department, to whom the communication and
accompanying papers were referred, reports as follows:"
"The bureau has not manufactured, and is not using, any gun
carriages which contain principles which could be held as
infringing any claims described in U.S. patent No. 331,618."
"The gas check which has been adopted for the naval guns of
6-inch. caliber and upwards resembles in certain
Page 224 U. S. 317
features that described in U.S. patent 301,220, issued to
Colonel De Bange. It also differs from it materially in particulars
which were original in this bureau."
"In view of the statement made by the Chief of the Bureau of
Ordnance, there appears to be no proper ground for the claim of
Colonel De Bange."
"Very respectfully,"
"F. M. RAMSAY"
"
Acting Secretary of the Navy"
"THE HONORABLE THE SECRETARY OF STATE"
On January 31, 1894, the claimant, by its attorneys, addressed
substantially similar letters to the Secretary of War and the
Secretary of the Navy, stating its claim for the use of its
patented invention and requesting payment for the use of it. The
letters described and extolled the device, and stated that they
"deemed it expedient to take a low average price and apply it to
all guns." They fixed such price at $200 per gun.
The Secretary of the Navy, on February 10, 1894, in replying,
referred to and quoted from the Department's letter of August 20,
1891, and added:
"As the status of the case has not been changed since the date
of the Department's letter above mentioned, and as the matter has
been previously disposed of by the Department, no further
consideration of the case appears to be required."
The letter of the claimant's attorneys, however, was the subject
of a report and recommendation by the Chief of Bureau of Ordnance,
which resulted in the following letters:
"BUREAU OF ORDINANCE"
"
December 4, 1894"
"Respectfully returned to the Department."
"The gas check applied to guns constructed for the Navy is that
illustrated in United States letters patent No. 318,093, of May 10,
1885, and, so far as this patent
Page 224 U. S. 318
is valid, no royalties should be paid. See Court of Claims
Reports, p. 334, vol. 23, 1887-88. If, however, as the bureau
believes to be the case, the above-mentioned patent is only valid
so far as it covers improvements on the De Bange patent (No.
301,220, of July 1, 1884), then, so far as the latter patent is
valid, the within claim for royalties, in the bureau's opinion, is
a proper one, and would be maintained by the courts."
"It must be noted, however, that, until recently, there has been
no authority of law for the payment of royalties out of the naval
appropriations, and the manufacture of most of the gas checks in
question had been completed prior to the legislation giving such
authority. Moreover, the bureau is of opinion that the Davis patent
(No. 318,093, of May 19, 1885) covers real and important
improvements, without which it is doubtful if the De Bange system
would have been adopted for United States naval guns, and
consequently it will be necessary to decide as to the relative
values of the device in its original and improved forms. The fact
that practically the same gas check is in use in all United States
Army guns of recent construction, and is being applied to guns now
being made by the Bethlehem Iron Company, under contract with the
War Department, should also be considered, since independent action
on the part of the Navy Department might easily be against the
interests of the government."
"It is therefore recommended that an investigation be made in
regard to the De Bange patent, and if this patent is concluded to
be valid, that the War Department be consulted as to whether a
definite sum, to be fixed upon either by a board or in some other
way, should not be offered the claimants for the right on the part
of the government to use the device in question on all its
guns."
"W. T. SAMPSON"
"
Chief of Bureau of Ordnance "
Page 224 U. S. 319
The final action of the Navy Department upon petitioner's claim
was communicated to the petitioner in a letter of the Secretary of
the Navy, dated December 31, 1894, as follows:
"NAVY DEPARTMENT"
"
Washington, December 31, 1894"
"GENTLEMEN:"
"The Department has carefully considered the questions presented
in the brief filed by you, as well as in former correspondence,
relative to the matter of the claim of the Societe Anonyme des
Anciens Etablissements Cail for compensation for the use by the
United States of a gas check invented by Col. Charles T. W. v. De
Bange, of the French army."
"It appears that the matter is now in such a condition that it
will in all probability involve not only questions arising under
the patent issued to Colonel De Bange, but also those growing out
of the claims and affecting the rights of other patentees. Under
these circumstances, the Department is of opinion that the full
consideration and determination of these questions can be more
certainly and equitably reached, and the rights of all the parties
concerned, as well as the government, more definitely ascertained
and assured, through the medium of a court of justice. It is
therefore suggested that the necessary proceedings for the
consideration and adjustment of the matter by the Court of Claims
be instituted."
"Very respectfully,"
"H. A. HERBERT,
Secretary"
"Messrs. POLLOCK & MAURO"
"
Attorneys at Law, Washington, D.C."
The final action of the War Department was communicated to
claimant's attorneys in a letter dated January 14, 1895, in which
the language and suggestion of the Secretary of the Navy were
adopted substantially verbatim.
Page 224 U. S. 320
It is not possible to review the arguments by which the claimant
asserts and the government denies the sufficiency of the facts as
we have related them to constitute an implied contract between the
claimant and the government. The ultimate contention of the
government is that the mere use of the patentee's invention with
his knowledge does not create an implied contract in fact to pay
for such use, but
"there must be (1) a use of it with the patentee's assent, and
there must
also be (2) an
agreement or
meeting of minds on the part of the patentee and on the
part of the user
as to compensation for the use, even
though the amount of the compensation be not fixed."
These elements, it is insisted, were present in the
Berdan case, which we have seen was relied on by the Court
of Claims; they are, it is further insisted, absent in the case at
bar.
But these elements do not have to appear by the explicit
declaration of the parties. They may be collected from their
conduct. The alternative of a contract is important to be kept in
mind. The officers of the government knew of the De Bange
invention, and were aware of its great importance, and the purpose
to deliberately take property of another without the intention that
he should be compensated -- in other words, to do plainly a
wrongful act -- cannot be imputed to them without the most
convincing proof. Such proof does not exist in the present case. On
the contrary, the record shows that compensation was contemplated.
There was doubt as to the extent of it, because there was doubt as
to how far the devices used were attributable to or belonged to De
Bange, or whether they constituted an infringement of his patent,
and therefore there was hesitancy and doubt, not as to
compensation, but as to the amount and extent of it.
We agree with the Court of Claims that there is resemblance
between this case and the
Berdan case. In that case, the
Court had no difficulty in adducing the assent of Berdan to the use
of his invention. The Court
Page 224 U. S. 321
found more difficulty in inferring the assent of the government.
The court said, by Mr. Justice Brewer:
"While the findings are not so specific and emphatic as to the
assent of the government to the terms of any contract, yet we think
they are sufficient. There was certainly no denial of the
patentee's rights to the invention, no assertion on the part of the
government that the patent was wrongfully issued, no claim of a
right to use the invention regardless of the patent, no disregard
of all claims of the patentee, and no use in spite of protest or
remonstrance. Negatively at least, the findings are clear. The
government used the invention with the consent and express
permission of the owner, and it did not, while so using it,
repudiate the title of such owner."
Like comment may be made of the facts in the case at bar. It is
true that the letter of William F. Folger, Chief of the Bureau of
Ordnance, stated that, while the gas check used by the government
resembled in certain features De Bange's gas check, it differed
from it materially in particulars which were original in the
bureau. But this was not a denial of the use or the utility of De
Bange's invention. Whether there was infringement, the officer did
not decide, but suggested that the "applicant refer the matter to
the Court of Claims." Subsequently the Acting Secretary of the Navy
did deny infringement. But that position was abandoned, and the
Secretaries of War and the Navy "suggested that the necessary
proceedings for the consideration of the adjustment of the matter
by the Court of Claims be instituted." There were parallel
circumstances in the
Berdan case.
The invention of Berdan was an "extractor-ejector" for use in
breech-loading rifles, and that which was used by the government
was devised by one of its employees. There was a difference between
it and Berdan's device, but the officers of the government doubted
if the difference was material, and concluded that it was a
matter
Page 224 U. S. 322
for the courts to decide. It is true there was no assertion of
right against the Berdan device in consequence of the difference
between it and the device used by the government as, it may be said
there was in the case at bar by the letter of Admiral Ramsey of
September 3, 1891. But the position taken in that letter was, as we
have seen, abandoned, and it was declared that, so far as the De
Bange patent was valid, its claim for royalties was, in the opinion
of the Bureau of Ordnance, a proper one, and would be sustained by
the courts. This was in 1894. Prior to that time and afterwards,
the government continued to use the device. We think the Court of
Claims had jurisdiction.
The government contends that it has not infringed the De Bange
patent. Infringement is a question of fact, and, as an aid to its
solution, courts are furnished usually with an expert comparison of
the contending devices, their identity or difference of
construction, and modes of operation. This record is destitute of
such testimony. The government contends for the very narrow
construction of the patent based on its claims and the prior art.
The only proof of the prior art, however, is a reference to
thirteen or fourteen patents by number and patentee, some of which
are English, some French, and some American. The only explanation
of them is in the argument of counsel and an exhibition of the
patents. It is very doubtful if we may take notice of even the
American patents, more doubtful if we may of the foreign ones. We,
however, have considered counsel's explanation of them. They reveal
nothing material to be considered that the findings of the Court of
Claims do not show of the prior art and the progress, from its
failure to the success of the De Bange invention -- a success, it
may be conceded, that availed itself of all that the prior art
demonstrated, but went beyond it to the fulfillment that it had not
achieved.
The necessity of a gas check to the success of
breach-loading
Page 224 U. S. 323
guns all could see, and what a device, to be successful, must
do, but the world struggled a long time with the problem, and that
problem was to find something which would stand the intense heat
generated and the great force caused by the explosion of the powder
in a high-power gun, and the backward escape of the resultant gas
under the enormous pressure exerted, and this not in one service of
the gun, but in many services. The experiments are detailed in the
findings. Metallic cups were tried, and paper cuts. As early as
1858, India rubber was suggested. Its elasticity, it was thought,
would afford all that was necessary for a complete automatic
obturation, the gas by its expansion "to seal its own escape."
Rubber had some success when constructed in rings of varying
degrees of suppleness and hardness, and seemed to have settled the
problem. But defects subsequently developed, and experiments
continued for something better, and which would fulfill all the
conditions. Then soap obturators were tried, and finally Colonel De
Bange's invention of tallow and asbestos. If our purpose was
speculative, not practical, we might pause to wonder how such
substances could produce such results under the conditions to which
they are subjected, and, by wondering, we express in a way the
quality of the invention. We are told by the findings of the Court
of Claims that a gas check
"is subject to a pressure of from 30,000 to 40,000 pounds per
square inch, to very high temperatures, to the effects of corrosive
gases, and the effects of rapid and violent shocks."
We need not, however, dwell longer on the excellence of the
invention. The government has testified to its excellence by using
it in the guns intended for the national defense.
But it is contended that the claim of the patent is for a
specific combination of elements, and that that combination of
elements is not used by the government.
Page 224 U. S. 324
This contention is based upon what is considered to be the
proper construction of Claim 1 of the patent, a strict construction
being urged of it -- indeed, as we understand the argument, the
claim must be confined to the specific forms of its elements,
giving the widest latitude to imitation.
The patentee answers the contention. Describing his invention,
De Bange calls it "certain new and useful improvements in
breech-loading guns." Specifying the improvements, he says that
they "apply to breach-loading guns which employ a screw plug having
its threads interrupted." Further specifying, he adds:
"I have devised a system of packing placed in advance of the
plug, and which is expanded by the force of the explosion of the
powder to make a tight joint to prevent the leakage age of
gas."
He declares the drawings form a part of the specification, and
represent what he considers the best means of carrying out the
invention. It is only necessary to give Figures 1, 2, 6, and 7.
image:a
They are described in the patent as follows:
"Figure 1 is a central longitudinal section. The strong lines
show the parts ready for firing. The dotted lines show the
transverse lever in a position for conveniently operating to turn
the screw plug. Fig. 2 is a rear view showing the parts locked.
Fig. 3 is a corresponding view showing
Page 224 U. S. 325
the parts unlocked. . . . Figs. 6 and 7 represent the packing
ring detached. Fig. 6 is a face view, and Fig. 7 a section in the
plane of the axis."
The specification then proceeds as follows:
"A liberal hole in the line of the axis of the screw plug B
carries a stout sliding pin, N at the extreme front of which is a
stout head, N'. The portion of the body adjacent to the head N' is
slightly enlarged. The head N' is adapted to receive the force of
the powder at the discharge. At the moment of the discharge, this
head moves backward, compressing a relatively soft and expansible
packing ring, M, behind it. Certain portions of this ring will be
distinguished, when necessary, by additional marks, as M' M2. The
body M' of this packing is of asbestos saturated with tallow, and
affords a sufficiently yielding mass with the required capacity for
enduring heat and for withstanding the very strong compressive
force to which it is subjected by the discharge. It is enclosed
between two thin shells, M2 M2, of copper, one fitting the body M'
on the inner and the other on the outer side, and nearly incasing
the entire packing. Both the body M' and the copper M2 are then
enclosed between two strong shells of brass, M3 M3. The entire
packing thus made is adapted to maintain its form, but to allow a
small amount of radial expansion sufficient to pack the joint
tightly against the escape of gas. This expansion is due to two
causes -- the tapering form of the front end of the pin N, which
acts on the interior of the packing, and the powerful compression
received from the head N'. The expansion from one or both causes is
sufficient to press the exterior of the copper M2 tightly against
the interior of the gun, thus effectually preventing any leakage of
gas."
Claim 1 is the important one, and is as follows:
"1. The partially threaded plug B, headed pin N N', extending
through said plug, and the yielding packing M,
Page 224 U. S. 326
arranged between the head N' and the inner end of the plug, in
combination with each other and with the gun A, arranged as shown,
to allow the pin to be driven rearward and compress the packing, as
herein specified."
It will be observed, therefore, that De Bange declared that what
he devised was a "system of packing" which, by the force of the
explosion of the powder, is expanded to make a tight joint to
prevent the leakage of gas. The mechanical parts are but aids to
this result, securing in place the packing and enabling its
qualities to operate, enabling it to maintain its form, but to
allow radial expansion sufficient "to pack the joint tightly
against the escape of gas." This expansion has also the effect of
pressing "the copper (M2)" against the interior of the gun, and
cooperates to prevent the leakage of gas.
That this packing constitutes the very essence of the invention
is declared in all of the literature on the subject and recognized
in all of the government publications. The government now contends
for a limitation of it, and insists that it consists of "a yielding
packing M," exactly as described, although the description is
declared by De Bange to represent "the best means of carrying out
his invention," and he declares also that "modifications could be
used in the forms and proportions."
We cannot, therefore, assent to the contention of the
government, and, in rejecting it, we do not render "the claim
elastic and indefinite where it should be certain." We preserve
that which was declared to be and which has always been recognized
to be the invention, and by those competent to declare, whose duty
it was to comprehend and estimate, not only the result achieved,
but by what achieved.
In the description furnished by De Bange to Commander Chadwick,
a covering of cloth is described. The description in the Ordnance
Notes of April 20, 1883, mentions "plates of tin, strengthened at
the edges by thin brass
Page 224 U. S. 327
rings." Another description speaks of "a metallic split ring."
These are but details. As said by the Court of Claims, through
Booth, J., "The invention described by the language of the claim
was the yielding pad of asbestos and tallow." And this, the learned
judge also said, predominates as the one "central idea" in every
description of the patent in either the specifications or
claim.
We learn from the court that it heard much expert testimony, and
in its opinion it considers two subsequent patents expressed to be
improvements on the De Bange patent. One of these was issued to
James B. Davis and the other to Gregory Gerdom. The difference
between them and the De Bange patent was commented on, and it was
said that the record disclosed that, in all inventions subsequent
to De Bange's, "the pad of asbestos and tallow is the functioning
element of the device, without which its utility is as nothing,"
and that a pad of that composition supplied
"the necessary expansion, indispensable to forward the operation
of both the Davis and Gerdom patents. The United States used the
Gerdom patent and paid him substantial royalties for its use."
It would seem, therefore, that the contention of the government
turns upon a question of fact found against it by the court below
-- that is, it was found that the particular envelop of the tallow
and asbestos pad were not essential features of De Bange's
invention, and that the substitution of steel rings for brass rings
could be an infringement of the invention. As said by counsel for
claimant, Claim 1
"does not recite among its elements the materials whereof the
envelop [of the pad] and rings are made. . . . It is, on the
contrary, obvious that any suitable material may be used for these
subsidiary parts."
It is conceded that the pliable copper envelop (M2) may be
properly regarded as a part of the "yielding packing." The patentee
so states, but he does not say that the "strong shells of brass M3
M3 are parts" of it.
Page 224 U. S. 328
It would indeed be arbitrary, as said by claimant, to read into
the claim the specific metal of which those shells are composed
"for no other purpose than to render it [the claim] worthless."
We have seen De Bange describe what he conceived to be the best
form of his invention, and contemplated that it could be
represented in other forms and proportions. This, however, was
unnecessary, for the law would secure him against imitation by
other forms and proportions.
Winans v.
Denmead, 15 How. 330;
Hotchkiss
v. Greenwood, 11 How. 248,
52 U. S. 265;
Western Electric Co. v. La Rue, 139 U.
S. 601,
139 U. S. 608.
We think, therefore, that the Court of Claims rightfully decided
the question of infringement against the government.
The cross-appeal of claimant is directed to the question of
damages.
In the original petition filed by it on January 31, 1895,
damages were laid at $140,000. There was no traverse filed until
October, 1907. An amended petition was filed April 12, 1909, and
judgment was prayed for $1,447,667.98. In this petition it was
alleged that the invention was used upon 1,518 guns of various
calibers within the six years next preceding the filing of the
original petition, the number which was used by the Army and that
used by the Navy being given. The total cost of the guns was stated
to be $18,226,263. There is no finding responding to these
allegations. The opinion of the court was filed December 2, 1907 --
that is, before the filing of the amended position. The opinion
contains the following statement:
"There is no testimony in the record upon which the quantum of
damages can be predicated. The measure of damages would be the
value of the device to the defendants. Following the precedents
heretofore established, the case will stand upon the docket, with
leave to furnish testimony upon this point. "
Page 224 U. S. 329
On the 20th of May, 1909, judgment was rendered for claimant in
the sum of $136,000. Each party moved for an amendment to the
findings, which were overruled in part and allowed in part. The
former findings were withdrawn and amended findings of fact filed.
No exception appears to have been taken to this action. Indeed, the
record does not furnish us with a comparison between the findings
which were withdrawn and those filed. There is nothing to show upon
what the court's ruling was invoked.
A motion was presented to this Court April 25, 1910, to remand
the case to the Court of Claims, and that that court be instructed
to find and certify as matters of fact, in addition to the facts
found, in regard to the cost of the guns in which the De Bange
obturators were used, the amount the government paid or contracted
to pay for patented improvements in breech-loading mechanism for
ordnance, and whether there appears in the record the testimony of
experts as to the value of the De Bange device, or what would be a
reasonable compensation for its use, and, if so, to state the
amounts of such estimates.
It was further moved that the Court of Claims be instructed to
strike out certain matters in the findings which were described to
be evidentiary. The motion was postponed to the hearing, and is now
to be considered. The motion is, in effect, for a direction to the
Court of Claims to certify the evidence to this Court, and not its
conclusions from the evidence. This is clearly in contravention of
the rule of this Court which requires the record on appeal from the
Court of Claims to contain a finding by the court "of the facts in
the case established by the evidence in the nature of a special
verdict, but not the evidence establishing it."
Besides, as we have seen, the record does not disclose what
ruling was invoked. We can only act upon the
Page 224 U. S. 330
record, and that shows a finding of the court upon the question
of compensation, to which finding there was no objection taken nor
exception reserved. The finding determines the matter, being in the
nature of a special verdict of a jury.
United States v. New
York Indians, 173 U. S. 464.
Ceballos v. United States, 214 U. S.
47, is not applicable. There was a contract of which
there could be no dispute, and therefore a motion to embrace it in
the record from the Court of Claims was granted and the case
reviewed in the light thereof.
The motion to remand the case is therefore denied.
Judgment affirmed.