1. A contract of the United States to pay for its use of a
patented invention is to be implied, rather than a tortious
appropriation by the officers acting for the government. P.
258 U. S.
2. When the government uses a patented invention with the
permission of the owner and does not repudiate his title, an
implied contract to pay reasonable compensation for the use arises.
P. 258 U. S.
53 Ct.Clms. 348 affirmed.
Appeal by the United States from a judgment sustaining a claim
Page 258 U. S. 323
MR. JUSTICE McKENNA delivered the opinion of the Court.
Suit by the Steel Company to recover royalties for the use by
the United States of a patented invention owned by the company.
On November 7, 1891, the United States, by and through the
Ordnance Bureau of the War Department, contracted with the
Bethlehem Iron Company for the manufacture of 100 guns of 8-inch,
10-inch, and 12-inch caliber, which were to be equipped with the
usual breech mechanism then known as "Model 1888 M 2."
On November 21, 1893, and pending the execution of the contract,
Owen F. Leibert, an employee of the Bethlehem Iron Company, made
application for an improvement in breech mechanism for ordnance.
The company notified the Bureau of the invention and of an
application for a patent. It suggested that the Bureau have the
application made special. This the Bureau did, and a patent was
issued to Leibert on March 20, 1894.
In February, 1894, the Bureau requested full information as to
the patent, and that it be permitted to use the same at the
Watervliet Arsenal in an experimental test on a 12-inch gun. The
request was granted, and the Bureau prepared drawings for the
On December 23, 1895, while the Leibert mechanism was in course
of construction, the Chief of Ordnance forwarded to the commanding
officer of the Arsenal a communication
Page 258 U. S. 324
showing a form of mechanism saying that it seemed to possess
marked merit and that it was a modification of the Leibert design,
from which it differed "mainly in the mode of operating the
withdrawal block, and in the pitch of the segmental rack to give
increased power for rotation."
The commanding officer reported that the design was deemed
superior to the other designs, and that he had ordered its
manufacture, as suggested by the Chief of Ordnance he should do in
such case. It was thereafter manufactured and used by the United
States on a number of guns.
The design that was used was prepared by John W. Stockett, a
draftsman in the Ordnance Bureau, and was known and referred to as
the "Stockett design," and the "Department design," but more
generally as "Model 1895." Stockett applied for and received a
patent for the design.
From time to time during 1894 to 1896, the Ordnance Bureau
considered different forms of mechanism, and the company notified
the Bureau that work under the contract had reached a point that it
was necessary to know the mechanism to be used, and requested that,
if any change was to be made, the company be notified. The Bureau
replied that it had no objection to the use of the "Model 1895."
The company answered that it had no objection to conforming to that
design, provided no modification be made in the price to be paid
for the guns named in the contract on account of change in the
breech mechanism. March 3, 1898, the Ordnance Bureau indicated its
assent to that proposition.
On August 16, 1901, the Bethlehem Iron Company assigned all of
its rights and franchises to the Bethlehem Steel Company, and the
latter company asked that it be recognized as the successor to the
Page 258 U. S. 325
This was refused, and the Bureau entered into an independent
contract with the Steel Company, and Congress subsequently (June 6,
1902) authorized the Steel Company to be the successor to the Iron
On November 5, 1902, the Steel Company reported that it was
proceeding with its contracts using the compound gear wheel shown
in its prints 7374 and 7381, copies of which it enclosed, also a
copy of the Leibert patent, and said:
"We believe that the wheel we are now putting on the guns, as
stated and which we understand the department is also using on its
guns built elsewhere, of several calibers, is the same as that
described in Claim 1 et seq.
of the said patent. We should
be glad if the department at its convenience, would give us an
opportunity to lay before it more fully our views in this
In reply to the above-quoted letter, the Chief of Ordnance, on
February 25, 1903, wrote the Steel Company as follows:
"Referring to your communication of November 5, 1902, upon the
subject of breech mechanism for guns of 1895 model, I have the
honor to state that the claims in the patent of Owen F. Leibert,
owned by you, are so much involved with the original designs of
Farcot and the patents of F. F. Fletcher and John W. Stockett that
this department does not feel that it is in a position to pass on
the legal aspects of the case. If the Bethlehem Steel Company will
bring suit to establish the points involved, this office will lend
its assistance in bringing before the court all documents on hand
pertaining to the subject."
On February 27, 1903, the Steel Company responded to the above
letter of the Ordnance Bureau as follows: "In accordance with your
suggestion, we have instructed our attorney to bring suit against
the department, to establish the points involved."
Page 258 U. S. 326
The findings contain a detail of the mechanisms of the Leibert
patent and the Stockett patent with copies of the letters
The findings also give a list of patents constituting the prior
art at the time of Leibert's application, in which was included the
patent of F. F. Fletcher mentioned in the last letter (February 25,
1903) of the Chief of Ordnance to the Steel Company. And it was
found that none of the patents of the prior art anticipated the
Leibert design, and that it was a patentable advance upon them, and
it was further found that the combination of Claims 1, 2 and 3 of
it were found in "Model 1895."
From its findings, the court deduced the ultimate facts: (1)
that the breech mechanisms of the Leibert patent possessed
patentable novelty, utility and invention, and (2) that those
mechanisms were used by the United States "in and as a part of the
said Model 1895.'" And it ordered and adjudged that the Steel
Company have and recover from the United States the sum of
There is but one question in the case, and that is the attitude
of the Ordnance Bureau, representing the United States, toward the
Leibert patent, whether, in recognition of it, as contended by the
Steel Company, or in opposition to, or, it may be said, in tortious
use of, it, as contended by the United States.
We have in other cases expressed our aversion to the latter
conclusion except upon explicit declaration or upon a course of
proceedings tantamount to it. A contract, express or implied in
fact must, it is true, be established, but one to pay for a
mechanism used will be implied, rather than a tortious
appropriation of it -- rather than the exercise by the United
States of its sovereignty in aggression upon the rights of its
The Court of Claims so construed our cases. Mr. Justice Booth,
speaking for the court, said the difficulty was
Page 258 U. S. 327
more in the application of the determining rule than in its
ascertainment. And further:
"from cases heretofore adjudicated upon similar principles, it
may be safely asserted that where the government uses a patented
invention 'with the consent and express permission of the owner'
and does not 'repudiate the title of such owner,' an implied
contract to pay a reasonable compensation for such usage
United States v. Berdan Firearms Co., 156 U.
, and United States v. Societe Anonyme,
etc., 224 U. S. 320
We think the cases sustain the principle announced, and we
concur in it. And the findings demonstrate that it is sustained in
the present case. There can be no doubt that the Ordnance Bureau
knew that the Stockett design could only be used with the Leibert
mechanism, and though declining, as it said, to pass "on the legal
aspect" of such use, it would "lend its assistance in bringing
before the court all documents on hand pertaining to the subject."
This necessarily means that it would accept the decision as a
determination of the right of the company and the obligation of the
United States. In other words, its attitude was not that of
repudiation, not that even of antagonism, but that of submission to
and acceptance of the right as it should be declared, and certainly
consideration for the rights of inventors, instead of aggression
upon them, is a policy of wisdom regarding the purpose of the War
Department and, it may be, its necessities. It gives incentive to
the inventive genius of the country by assuring recognition and
reward to its work, if its work have merit. It is to be remembered
that the government is the only user of heavy ordnance, and must
encourage, not deter, its improvement if it, the government, would
keep ready for whatever emergency may come to it.
We think therefore that the judgment of the Court of Claims
should be, and it is,