The Court of Claims has jurisdiction over claims and demands of
patentees of inventions for the use of their inventions by the
United States with the consent of the patentees.
No opinion is expressed upon the question whether a patentee may
waive an infringement of his patent by the government and sue upon
an implied contract.
This is a case from the Court of Claims. Its nature and object
are fully explained by the following extract from the petition:
"Your petitioner is the inventor, patentee, and owner of the
improvements in infantry equipments, for which were granted letters
patent Nos. 139,731 and 157,537, dated, respectively, June 10,
1873, and December 8, 1874. A board, consisting of Lieutenant
Colonels W. R. Shafter, A. McD. McCook, and Thomas C. English,
Major Alexander Chambers, and Captain M. H. Stacey, was appointed
by order of the Secretary of War June 1, 1874, to meet at Fort
Leavenworth, Kansas, July 1, 1874, or as soon thereafter as
practicable, to consider and report upon the subject of a proper
equipment for the infantry soldier and to recommend the adoption of
an equipment best suited to troops serving as infantry. Said board
met at Fort Leavenworth, Kansas, July 1, 1874. On the 8th and 9th
of July, 1874, the claimant exhibited and explained his said
improvements to said board. On the 22d, 24th, and 31st of August,
and 16th, 18th, and 30th of September, 1874, said board examined,
considered, and experimented with said improvements, and on the
12th of November, 1874, decided to recommend the same for adoption
to the War Department. On the 24th of November, 1874, said board,
in their report to the chief to ordnance, recommended the adoption
of said improvements by the government for the use of
Page 128 U. S. 263
the army of the United States. On the 26th of December, 1874,
the General of the Army recommended the adoption of the same to the
Secretary of War, and on the 4th day of January, 1875, said
improvements were adopted by the Secretary of War as a part of the
equipment of the infantry soldiers of the United States."
* * * *
"Since January 4, 1875, the defendants have manufactured or
purchased for the use of the army large numbers of equipments
embracing a part or all of said improvements. The number of
infantry equipments so manufactured or purchased is about 13,500,
and the defendant, by reason of the premises, became indebted to
your petitioner on an implied contract in the sum of $10,125, being
a fair and reasonable royalty on the number of infantry equipments
embodying your petitioner's inventions so manufactured and used, of
seventyfive cents each. The cost of manufacturing said equipments
is $5.59 each."
In its findings of fact, the Court of Claims sustained the
averments of the petition except as to the extent to which the
claimant's improvements were used in the army and the value of such
use. As to the circumstances under and in pursuance of which those
improvements were adopted and on which the claimant founds the
implied contract set up by him, the court in its second finding
sets out in full the report of the board of officers, made on the
24th of November, 1874, and referred to in the petition in which
are described the various equipments examined by them, and the
reasons are stated why they preferred and recommended the adoption
of the claimant's. The court then sets out the recommendation of
the General of the Army, in which he says:
"The officers composing this board have had a large and wide
experience, and their conclusions are entitled to weight. . . . The
braces, knapsack, haversack, and cartridge box are all approved and
recommended for adoption."
The order of the Secretary of War, directed to the chief of
ordnance, is added, which simply declares that "the report of the
board is approved, as suggested by the General of the Army, with
modifications recommended by him."
Page 128 U. S. 264
The court then finds as follows:
"III. The pattern thus adopted involves the use of the
claimant's invention, as set forth in claims 4 and 5 of letters
patent No. 139,731, and claims 1, 2, 3, and 4 of letters patent No.
157,537."
"IV. This equipment was experimental, and had never been put to
the test of actual use. It failed to give satisfaction to the army,
and has been superseded by a return to the system in vogue during
the war of the Rebellion and anterior thereto, but this has been
done informally, the order adoption the claimant's device never
having been revoked nor any other pattern adopted."
"V. No express agreement was made between the claimant and
defendants' officers respecting a price to be paid for a license to
manufacture infantry equipments or carrying braces under the
patents, nor was there any agreement or understanding that the
government's manufacture and user should be regarded as
experimental until the device should be tested by general use in
the army. The license under which the government manufactured and
used the claimant's device, and the terms thereof, must be implied
exclusively from the facts set forth in finding 2."
"VI. Since the 4th day of January, 1875, the ordnance department
has manufactured 10,500 complete sets of infantry equipments of the
pattern of 1874, and 2,400 carrying braces, in accordance with the
specifications of the patents, but has issued for use in the army
only 9,027 complete sets of equipments."
"VII. The cost to the government of manufacturing such
equipments was $5.59 per set, and a reasonable royalty for the
right to manufacture and use, amid the circumstances of the case as
hereinbefore described, would be the sum of 25 cents per set,
amounting, on the above quantity of 9,027 sets, to the sum of
$2,256.75."
Judgment was given in favor of the claimant for this sum.
Page 128 U. S. 268
MR. JUSTICE BRADLEY delivered the opinion of the Court.
Page 128 U. S. 269
The principal objections raised on the part of the government
against the judgment are to the jurisdiction of the court and the
form of the action. It is assumed that the ground of complaint on
which the petition is founded is a tort, and not a contract, that
the assertion in the petition of an implied contract is not
warranted by the facts of the case, and that the government cannot
be sued in the Court of Claims for a mere tort.
This assumption of the appellant is erroneous. No tort was
committed, or claimed to have been committed. The government used
the claimant's improvements with his consent, and, certainly with
the expectation on his part of receiving a reasonable compensation
for the license. This is not a claim for an infringement, but a
claim of compensation for an authorized use -- two things totally
distinct in the law, as distinct as trespass on lands is from use
and occupation under a lease. The first sentence in the original
opinion of the court below strikes the keynote of the argument on
this point. It is as follows:
"The claimant in this case invited the government to adopt his
patented infantry equipments, and the government did so. It is
conceded on both sides that there was no infringement of the
claimant's patent, and that whatever the government did was done
with the consent of the patentee and under his implied
license."
We think that an implied contract for compensation fairly arose
under the license to use, and the actual use, little or much, that
ensued thereon. The objection, therefore, that this is an action
for a tort falls to the ground.
It is objected that an action cannot be brought in the Court of
Claims on a patent, the circuit court having exclusive jurisdiction
of this subject. But while that objection may be available as to
actions for infringement of a patent, in which its validity may be
put in issue and in which the peculiar defenses authorized by the
patent laws in Rev.Stat. ยง 4920 may be set up, it is not valid as
against actions founded on contracts for the use of patented
inventions.
United States v.
Burns, 12 Wall. 246;
Wilson v.
Sandford, 10 How. 99;
Hartell v. Tilghman,
99 U. S. 547;
Albright v. Teas, 106 U. S. 613;
Dale Tile Mfg. Co. v. Hyatt, 125 U. S.
46. The case of
United States
Page 128 U. S. 270
v. Burns was an appeal from a decree of the Court of
Claims in favor of Burns for onehalf of the license fee agreed upon
for the use, by the government, of Major Sibley's patent tent,
onehalf of the patent having been assigned to Major Burns. Sibley
joined the Confederates; Burns remained true to his allegiance, and
the Quartermaster General directed that he should be paid his half
of the royalty. This payment being afterwards suspended, Burns
filed a petition in the Court of Claims for the recovery of the
amount due him. The Court sustained the claim, although in a
previous case, in which one Pitcher claimed damages against the
government for the infringement of a patent, it had rejected the
claim. In the case of
Burns, that court said:
"It was also contended on behalf of the United States that this
Court had no jurisdiction of this case, because we cannot entertain
a suit for the infringement of a patent, and
Pitcher's
Case, 1 Ct.Cl. 7, was referred to. But this suit is not
brought for the infringement of a patent, nor for the unauthorized
use of a patented invention, but upon a special contract with a
patentee whereby the use of the invention by the United States was
authorized and agreed to be paid for.
Pitcher's Case
therefore is not like this. In
Pitcher's Case, there was
nothing but an unauthorized use by an officer of the United States,
and where an officer of the United States, without authority from
them, uses in their service a patented invention, the act, being
unlawful, is his, and not theirs, and he, and not they, are
responsible for it."
Burns' Case, 4 Ct.Cl. 113. The point of jurisdiction
does not seem to have been taken in this Court, but the
jurisdiction of the Court of Claims was assumed.
It was at one time somewhat doubted whether the government might
not be entitled to the use and benefit of every patented invention,
by analogy to the English law, which reserves this right to the
Crown. But that notion no longer exists. It was ignored in the case
of
Burns. The subject was afterwards adverted to in
James v. Campbell, 104 U. S. 356, and
the following observations in the opinion of the Court in that case
are so pertinent to the one in hand that we deem it proper to
reproduce them. We there said:
Page 128 U. S. 271
"That the government of the United States, when it grants
letters patent for a new invention or discovery in the arts,
confers upon the patentee an exclusive property in the patented
invention which cannot be appropriated or used by the government
itself, without just compensation, any more than it can appropriate
or use without compensation land which has been patented to a
private purchaser, we have no doubt. The Constitution gives to
congress power"
"to promote the progress of science and useful arts by securing
for limited times to authors and inventors the exclusive right to
their respective writings and discoveries,"
"which could not be effected if the government had a reserved
right to publish such writings or to use such inventions without
the consent of the owner. Many inventions relate to subjects which
can only be properly used by the government, such as explosive
shells, rams, and submarine batteries to be attached to armed
vessels. If it could use such inventions without compensation, the
inventors could get no return at all for then discoveries and
experiments. It has been the general practice, when inventions have
been made which are desirable for government use, either for the
government to purchase them from the inventors and use them as
secrets of the proper department or, if a patent is granted, to pay
the patentee a fair compensation for their use. The United States
has no such prerogative as that which is claimed by the sovereigns
of England, by which it can reserve to itself, either expressly or
by implication, a superior dominion and use in that which it grants
by letters patent to those who entitle themselves to such grants.
The government of the United States, as well as the citizen, is
subject to the Constitution, and when it grants a patent, the
grantee is entitled to it as a matter of right, and does not
receive it, as was originally supposed to be the case in England,
as a matter of grace and favor."
"But the mode of obtaining compensation from the United States
for the use of an invention, where such use has not been by the
consent of the patentee, has never been specifically provided for
by any statute. The most proper forum for such a claim is the Court
of Claims, if that court has the
Page 128 U. S. 272
requisite jurisdiction. As its jurisdiction does not extend to
torts, there might be some difficulty, as the law now stands, in
prosecuting in that court a claim for the unauthorized use of a
patented invention, although where the tort is waived and the claim
is placed upon the footing of an implied contract, we understand
that the court has in several recent instances entertained the
jurisdiction. It is true it overruled such a claim on the original
patent in this case, presented in 1867, but, according to more
recent holdings, it would properly now take cognizance of the case.
The question of its jurisdiction has never been presented for the
consideration of this Court, and it would be premature for us to
determine it now. If the jurisdiction of the Court of Claims should
not be finally sustained, the only remedy against the United
States, until Congress enlarges the jurisdiction of that court,
would be to apply to Congress itself."
We have quoted these observations because, so far as they
express an opinion on the subject, either of the right or the
remedy, they are in general accord with our present views, and we
add now that in our judgment, the Court of Claims has jurisdiction
to entertain claims and demands of the character presented in the
present suit. Whether a patentee may waive an infringement of his
patent by the government and sue upon an implied contract is a
question on which we do not express an opinion.
As to the questions relating to the character and amount of use
which the government had of the claimant's invention and of the
proper compensation due therefor, we do not see anything in the
findings of the court below or in its conclusions deduced therefrom
to call for serious observation. What evidence the court may have
had on these points is not disclosed by the record, and should not
be, and the facts found are sufficient to sustain the judgment.
Judgment affirmed.
