The United States cannot be sued in their courts without their
consent.
In granting such consent, Congress has an absolute discretion to
specify the cases and contingencies in which the liability of the
government is submitted to the courts for judicial determination,
and courts may not go beyond the letter of such consent.
The Court of Claims has no jurisdiction of a claim against the
government for a mere tort.
The owner of letters patent for an invention, who sets up in the
Court of Claims that a contractor with the United States has made
use of the patented invention in the execution of his contract
without compensation to the claimant, and against his protest,
whereby there was a wrongful appropriation of the patent by the
United States for their sole use and benefit, and that a right has
accrued to him to recover of the United States the damages thus
done to him, to be measured by the saving or profit made by the
United States, thereby sets up a claim sounding in tort, of which
the Court of Claims has no jurisdiction.
When a contractor with the United States, in the execution of
his contract, uses any patented tool, machine, or process, and the
government accepts the work done under such contract,
quaere whether it can be said to have appropriated and be
in possession of any property of the patentee in such a sense that
the patentee may waive tort and sue as on an implied promise.
On July 19, 1870, a patent was issued to John J. Schillinger for
an improvement in concrete pavement. The claim of the patent was in
these words:
"The arrangement of tar paper, or its equivalent, between
adjoining blocks of concrete, substantially as and for the purpose
described."
A reissue was granted May 2, 1871. The claims in the reissue
were thus stated:
"1. A concrete pavement laid in detached blocks or sections,
substantially in the manner shown and described."
"2. The arrangement of tar paper, or its equivalent, between
adjoining blocks of concrete, substantially as and for the purpose
set forth. "
Page 155 U. S. 164
On February 27, 1875, Schillinger filed in the Patent Office a
disclaimer which, after stating the language of the specification
disclaimed, added:
"Your petitioner hereby disclaims the forming of blocks from
plastic material without interposing anything between their joints
while in the process of formation."
Thereafter the Architect of the Capitol invited proposals for a
concrete pavement in the Capitol grounds, and on September 2, 1875,
entered into a contract with G. W. Cook for the laying of such
pavement. It does not appear that in the proposals, specifications,
or contract there was in terms any reference to or description of
the Schillinger patent.
Frederick Law Olmsted was the person who prepared the plans and
specifications, and in the contract it was provided as follows:
"The pavement to be laid with free joints, in the best manner,
the courses running diagonally, and arranged around the curved
parts to the satisfaction of the said Fred.Law Olmsted."
"It is understood and agreed by the party of the second part
that in the event of any legal proceedings' being taken by other
parties against the contractor of the United States for the
infringement of any patent or claimed patent during the execution
of the work, the contractor shall hold the United States harmless,
and if said proceedings tend to create delay in the prosecution of
the work, the United States shall have the right to immediately
employ other parties to complete the same, and the contractor shall
reimburse the United States in any extra amount it may have to pay
for such completion over and above the amount which the contractor
would have been entitled to for the same work."
This is the only language found in the contract which in any
manner suggests the use, or possibility of use, of the Schillinger
patent. The contract price was 28 1/2 cents per square foot.
Certain of the claimants who had acquired by assignment the right
to use the Schillinger patent in the District of Columbia were
bidders for such contract, and proposed to do the work in
accordance with the Schillinger patent at 45 cents per square foot.
Cook proceeded to perform the contract, finished it,
Page 155 U. S. 165
and received payment between October, 1875, and July, 1881.
On March 22, 1887, these claimants filed their petition in the
Court of Claims, asserting full ownership of the Schillinger patent
and seeking to recover from the United States damages for the
wrongful use thereof in the construction of this pavement.
* The Court of
Claims held (24 Ct.Cl. 278)
Page 155 U. S. 166
that there was no contract, either expressed or implied, on the
part of the government for the use of such patent, and on that
ground dismissed the petition as outside of the jurisdiction of the
court.
From that judgment the claimants appealed to this Court.
MR. JUSTICE BREWER, after stating the facts in the foregoing
language, delivered the opinion of the Court.
The United States cannot be sued in their courts without their
consent, and in granting such consent, Congress has an absolute
discretion to specify the cases and contingencies in which the
liability of the government is submitted to the courts for judicial
determination. Beyond the letter of such consent the courts may not
go, no matter how beneficial they may deem, or in fact might be,
their possession of a larger jurisdiction over the liabilities of
the government.
Until the organization of the Court of Claims by the act of
February 24, 1855, c. 122, 10 Stat. 612, the only recourse of
claimants was in an appeal to Congress. That act defines the claims
which could be submitted to the Court of Claims for adjudication as
follows:
"The said court shall hear and determine all claims founded upon
any law of Congress, or upon any regulation of an executive
department, or upon any contract, express or implied, with the
government of the United States, which may be suggested to it by a
petition filed therein, and also all claims which may referred to
said court by either house of Congress. "
Page 155 U. S. 167
By the Act of March 3, 1863, c. 92, 12 Stat. 765, this
additional jurisdiction was given:
"That the said court . . . shall also have jurisdiction of all
set-offs, counterclaims, claims for damages, whether liquidated or
unliquidated, or other demands whatsoever on the part of the
government against any person making claim against the government
in said court."
On March 3, 1887, c. 359, 24 Stat. 505, a new act was passed in
reference to the jurisdiction of the court, its language being:
"The Court of Claims shall have jurisdiction to hear and
determine the following matters:"
"First. All claims founded upon the Constitution of the United
States or any law of Congress except for pensions, or upon any
regulation of an executive department, or upon any contract,
expressed or implied, with the government of the United States, or
for damages, liquidated or unliquidated, in cases not sounding in
tort, in respect of which claims the party would be entitled to
redress against the United States either in a court of law, equity,
or admiralty if the United States were suable."
"Second. All setoffs, counterclaims, claims for damages, whether
liquidated or unliquidated, or other demands whatsoever on the part
of the government of the United States against any claimant against
the government in said court."
Under neither of these statutes had or has the Court of Claims
any jurisdiction of claims against the government for mere torts.
Some element of contractual liability must lie at the foundation of
every action. In
Gibbons v. United
States, 8 Wall. 269,
75 U. S. 275,
it was said:
"The language of the statutes which confer jurisdiction upon the
Court of Claims excludes by the strongest implication demands
against the government founded on torts. The general principle
which we have already stated as applicable to all governments
forbids, on a policy imposed by necessity, that they should hold
themselves liable for unauthorized wrongs inflicted by their
officers on the citizen, though occurring while engaged in the
discharge of official duties."
And again, in
Morgan v. United
States, 14
Page 155 U. S. 168
Wall. 531,
81 U. S.
534:
"Congress has wisely reserved to itself the right to give or
withhold relief where the claim is founded on the wrongful
proceedings of an officer of the government."
The rule thus laid down has been consistently followed by this
Court in many cases up to and including the recent case of
Hill
v. United States, 149 U. S. 593,
149 U. S.
598.
If there was any error in this interpretation, first announced
in 1868, of the scope of the act, and if it was the intent of
Congress to grant to the court jurisdiction over actions against
the government for torts, an amending statute of but a few words
have corrected the error and removed all doubt. While the language
of the act of 1887 is broader than that of 1855, it is equally
clear in withholding such jurisdiction. It added, "all claims
founded upon the Constitution of the United States," but that does
not include claims founded upon torts, any more than "all claims
founded upon any law of Congress," found in the prior act. The
identity of the descriptive words precludes the thought of any
change.
It is said that the Constitution forbids the taking of private
property for public uses without just compensation; that therefore
every appropriation of private property by any official to the uses
of the government, no matter however wrongfully made, creates a
claim founded upon the Constitution of the United States, and
within the letter of the grant in the act of 1887 of the
jurisdiction to the Court of Claims. If that argument be good, it
is equally good applied to every other provision of the
Constitution as well as to every law of Congress. This prohibition
of the taking of private property for public use without
compensation is no more sacred than that other constitutional
provision that no person shall be deprived of life, liberty, or
property without due process of law. Can it be that Congress
intended that every wrongful arrest and detention of an individual,
or seizure of his property by an officer of the government, should
expose it to an action for damages in the Court of Claims? If any
such breadth of jurisdiction was contemplated, language which had
already been given a restrictive meaning would have been carefully
avoided.
It is true also that to jurisdiction over claims founded
"upon
Page 155 U. S. 169
any contract, express or implied, with the government of the
United States" is added jurisdiction over claims "for damages,
liquidated or unliquidated," but this grant is limited by the
provision "in cases not sounding in tort." This limitation, even if
qualifying only the clause immediately preceding, and not extending
to the entire grant of jurisdiction found in the section, is a
clear endorsement of the frequent ruling of this Court that cases
sounding in tort are not cognizable in the Court of Claims.
That this action is one sounding in tort is clear. It is in form
one to recover damages. The petition charges a wrongful
appropriation by the government, against the protest of the
claimants, and prays to recover the damages done by such wrong. The
successive allegations place the parties in continued antagonism to
each other, and there is no statement tending to show a coming
together of minds in respect to anything. It is plainly and solely
an action for an infringement, and in this connection reference may
be made to the statutory provision (Rev.Stat. ยง 4919) of an action
on the case as the legal remedy for the recovery of damages for the
infringement of a patent. If it be said that a party may sometimes
waive a tort and sue in assumpsit, as on an implied promise, it is
technically a sufficient reply to say that these claimants have not
done so. They have not counted on any promise, either express or
implied.
But we do not care to rest our decision upon the mere form of
action. The transaction, as stated in the petition and as disclosed
by the findings of the court, was a tort, pure and simple. The case
was, within the language of the statute, one "sounding in tort." It
is in this respect essentially different from
United States v.
Palmer, 128 U. S. 262,
128 U. S. 269.
That was an action to recover for the authorized use of a patent by
the government, and these observations in the opinion are
pertinent:
"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
Page 155 U. S. 170
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."
Here the claimants never authorized the use of the patent right
by the government; never consented to, but always protested against
it, threatening to interfere by injunction or other proceedings to
restrain such use. There was no act of Congress in terms directing
or even by implication suggesting the use of the patent. No officer
of the government directed its use, and the contract which was
executed by Cook did not name or describe it. There was no
recognition by the government or any of its officers of the fact
that in the construction of the pavement there was any use of the
patent, or that any appropriation was being made of claimants'
property. The government proceeded as though it were acting only in
the management of its own property and the exercise of its own
rights, and without any trespass upon the rights of the claimants.
There was no point in the whole transaction from its commencement
to its close where the minds of the parties met or where there was
anything in the semblance of an agreement. So not only does the
petition count upon a tort, but also the findings show a tort. That
is the essential fact underlying the transaction, and upon which
rests every pretense of a right to recover. There was no suggestion
of a waiver of the tort, or a pretense of any implied contract,
until after the decision of the Court of Claims that it had no
jurisdiction over an action to recover for the tort.
It may be well to notice some of the cases in which the
jurisdiction of the Court of Claims over implied contracted has
been sustained. In the case of
United States v.
Russell, 13 Wall. 623, which was an action to
recover for the use of
Page 155 U. S. 171
certain steamers, the property of the claimant, it was found as
a fact --
"That in the case of each of these steamers, at the times when
the same were respectively taken into the service of the United
States, the officers acting for the United States
did not
intend to 'appropriate' these steamers to the United States, nor
even their services, but they did intend to compel the captains and
crews with such steamers to perform the services needed, and to pay
a reasonable compensation for such services, and such was the
understanding of the claimant, and that each of said steamers,
so soon as the services for which they were respectively required
had been performed, were returned to the exclusive possession and
control of the claimant."
Thus it appears that the minds of the claimant and the officers
acting for the government met -- both intended a contract -- and,
the power of the officers to act for the government in the premises
not being disputed, it was obviously just to treat the case as one
of contract, and not of tort. So also in the case of
United
States v. Great Falls Manufacturing Company, 112 U.
S. 645. The appropriation of the claimant's property was
under direct legislative enactment by Congress. The property thus
appropriated was confessedly the property of the claimant, to which
the government made no pretense of title. The claimants assented to
such appropriation, entered into arbitration proceedings to
determine the amount due them therefor. Hence, all the elements of
contract were found in the transaction.
But there is still another aspect in which this case may be
considered. The patent of Schillinger runs to the mode of
constructing concrete pavements. The mere form of a pavement with
free joints -- that is, in separate blocks -- is not, since the
filing of his disclaimer, within the scope of his patent. It may be
that the process or mode by which Cook, the contractor, constructed
the pavement in the Capitol grounds was that described in and
covered by the Schillinger patent. He may therefore have been an
infringer by using that process or mode in the construction of the
pavement, and liable to the
Page 155 U. S. 172
claimants for the damages they have sustained in consequence
thereof. It may be conceded also that the government, as having at
least consented to the use by Cook of such process or method in the
construction of the pavement, is also liable for damages as a joint
tortfeasor. But what property of the claimants has the government
appropriated? It has and uses the pavement as completed in the
Capitol grounds, but there is no pretense of a patent on the
pavement as a completed structure. When a contractor, in the
execution of his contract, uses any patented tool, machine, or
process, and the government accepts the work done under such
contract, can it be said to have appropriated and be in possession
of any property of the patentee in such a sense that the patentee
may waive the tort, and sue as on an implied promise? The
contractor may have profited by the use of the tool, machine, or
process, but the work, as completed and enjoyed by the government,
is the same as though done by a different and unpatented process,
tool, or machine. Take, for illustration, a patented hammer or
trowel. If a contractor, in driving nails or laying bricks, use
such patented tools, does any patent right pass into the building,
and become a part of it, so that he who takes the building can be
said to be in the possession and enjoyment of such patent right?
Even if it be conceded that Cook, in the doing of this work, used
tar paper, or its equivalent, to separate the blocks of concrete,
and thus finally completed a concrete pavement in detached blocks
or sections, was such completed pavement any different from what it
would have been if the separation between the blocks had been
accomplished in some other way, and is the government now in
possession or enjoyment of anything embraced within the patent? Do
the facts, as stated in the petition or as found by the court, show
anything more than a wrong done, and can this be adjudged other
than a case "sounding in tort"?
We think not, and therefore the judgment of the Court of Claims
is
Affirmed.
*
The material allegations in the petition respecting the claims
for damage were these: (Reporter.)
"Your petitioners aver that during the year 1875, the aforesaid
Architect Clark advertised for proposals to do this artificial
stone work in the Capitol grounds, and your petitioners, in
pursuance of said advertisement, put in a bid to do the work under
the Schillinger patent aforesaid. The contract was awarded by said
Architect Clark to one George W. Cook, who was a lower bidder, and
the Architect of the Capitol entered into a contract with the said
George W. Cook to do the work aforesaid, which contract is made
part hereof and marked Exhibit 'C,' and the said contract embraced
the use of the said Schillinger patent, to the great damage and
injury of your petitioners' business."
"Your petitioners aver that they protested against the use of
their patent without compensation, and, notwithstanding said
protest and notice, the said Architect Clark caused the said
artificial stone sidewalk to be laid under the said Schillinger
patent, and it has all been laid under said Schillinger patent
without any compensation to your petitioners and contrary to the
laws of the United States."
"Your petitioners also aver that the said Schillinger patent had
at the time of the making of the said contract with the said Cook
by the Architect of the Capitol gone into general and public use,
and was acquiesced in by the public as valuable and useful; that
this wrongful appropriation of the patent by the United States
government for its sole use and benefit encouraged others to
infringe, and your petitioners were greatly damaged thereby."
"Your petitioners claim the right to recover the damages clone
to them by this wrong, and the saving or profit made by the United
States as the basis of this suit is upon their patent rights, which
are founded upon the patent laws of the United States."
"Your petitioners further aver that the said Architect of the
Capitol has laid or has directed and caused to be laid for the sole
use and benefit of the United States about 249,361 feet of this
sidewalk in the Capitol grounds, in all of which the Schillinger
patent has been used and is embodied in it."
"The actual profit of which your petitioners have been deprived
in this work is ($69,820.68) sixty-nine thousand eight hundred and
twenty dollars and sixty-eight cents, and the actual saving to the
Government by the use of said Schillinger patent in this work is
about two hundred and fifty thousand dollars, for which last amount
your petitioners claim judgment."
MR. JUSTICE HARLAN, with whom concurred MR. JUSTICE SHIRAS,
dissenting.
Page 155 U. S. 173
I am constrained to withhold my assent to the opinion and
judgment in this case.
The United States granted to Schillinger in 1870 a patent for an
alleged new and useful improvement in concrete pavements. That
patent was surrendered, and a new one issued in 1871, based on
amended specifications. The present suit against the United States
proceeds upon the ground that in a pavement constructed in the
Capitol grounds, under the supervision of the architect of the
Capitol, the United States knowingly obtained, and still enjoys,
the benefit of the improvement covered by the Schillinger
patent.
Can a suit be maintained against the United States in the Court
of Claims, as upon contract, for the reasonable value of such use
of the patentee's improvement?
In
James v. Campbell, 104 U. S. 357,
this Court said:
"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 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 their discoveries and
experiments."
United States v. Great Falls Manufacturing Co.,
112 U. S. 645,
112 U. S. 656,
was a suit in the Court of Claims to obtain compensation for all
past and future use and occupation by the United States of certain
lands, water rights, and privileges claimed by
Page 155 U. S. 174
the plaintiff and taken for public use by the agents of the
government. This Court said:
"The making of the improvements necessarily involves the taking
of the property, and if, for the want of formal proceedings for its
condemnation to public use, the claimant was entitled at the
beginning of the work to have the agents of the government enjoined
from prosecuting it until provision was made for securing in some
way payment of the compensation required by the Constitution --
upon which question we express no opinion -- there is no sound
reason why the claimant might not waive that right, and, electing
to regard the action of the government as a taking under its
sovereign right of eminent domain, demand just compensation.
Kohl v. United States, 91 U. S. 367,
91 U. S.
374. In that view, we are are of opinion that the the
United States, having by its agents, proceeding under the authority
of Congress, taken the property of the claimant for public use, are
under an obligation imposed by the Constitution to make
compensation. The law will imply a promise to make the required
compensation where property to which the government asserts no
title is taken pursuant to an act of Congress as private property
to be applied for public uses. 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, express or implied, with the government of the
United States."
In
Great Falls Manufacturing Co. v. Attorney General,
124 U. S. 581,
124 U. S.
597-598, it appeared that the Secretary of War was
authorized by an act of Congress to take possession of premises
that might be covered by a survey and map direct to be made. He
took possession of property and water rights that were alleged not
to be embraced in such survey and map, and it was contended that in
so doing he was guilty of trespass. This Court said:
"If the Secretary of War, who was invested with large discretion
in determining what land was actually required to accomplish in the
best manner the object Congress had in view, found it necessary to
take, and has
Page 155 U. S. 175
taken and used, and still holds, lands of the plaintiff for the
proposed dam which happened not to be covered by the survey and
map, the United States are as much bound to make just compensation
therefor as if such lands had been actually embraced in that survey
and map."
After observing that it must not be understood as holding that
the secretary could bind the United States to pay for lands taken
by him which manifestly had no substantial connection with the
improvement under his charge, the Court said:
"It is sufficient to say that the record discloses nothing
showing that he has taken more land than was reasonably necessary
for the purposes described in the act of Congress, or that he did
not honestly and reasonably exercise the discretion with which he
was invested, and consequently the government is under a
constitutional obligation to make compensation for any property or
property right taken, used, and held by him for the purposes
indicated in the act of Congress, whether it is embraced or
described in said survey or map or not.
United States v. Great
Falls Manufacturing Co., 112 U. S. 645,
112 U. S.
646. Even if the secretary's survey and map and the
publication of the Attorney General's notice did not in strict law
justify the former in taking possession of the land and water
rights in question, it was competent for the company to waive the
tort, and proceed against the United States, as upon an implied
contract, it appearing, as it does here, that the government
recognizes and retains the possession taken in its behalf for the
public purposes indicated in the act under which its officers have
proceeded."
In
Hollister v. Benedict Manufacturing Co.,
113 U. S. 59,
113 U. S. 67,
the principles laid down in
James v. Campbell and in
United States v. Great Falls Manufacturing Co., above
cited, were recognized and approved. And in
United States v.
Palmer, 128 U. S. 262,
128 U. S. 269,
the decision was that the United States was liable to suit in the
Court of Claims, as upon implied contract, for the value of the use
of an invention which was used with the consent of the
patentee.
It may therefore be regarded as settled that the government may
be sued in the Court of Claims, as upon implied
Page 155 U. S. 176
contract, not only for the value of specific property taken for
public use by an officer acting under the authority of the
government, even if the taking was originally without the consent
of the owner and without legal proceedings for condemnation, but
for the value of the use of a patented invention, when such use was
with the consent of the patentee.
It seems to me, looking at the case from the standpoint of mere
contract, that these principles control the present inquiry, and
sustain the right of the claimant to sue the government for the
value of the use of his alleged invention. Congress made an
appropriation of $200,000
"for improvement of Capitol grounds according to the plans and
under the general direction of Frederick Law Olmsted, to be
expended by the Architect of the Capitol."
Act of June 23, 1874, c. 455, 18 Stat. 214. The Architect
invited proposals for laying concrete pavement required for the
proposed improvement according to those plans and specifications,
and one Cook was the lowest bidder. His bid was accepted.
Schillinger protested against the contract's being awarded to Cook,
the latter having no right to use the Schillinger patent. He gave
notice to the Architect of his patented rights. It was found by the
Court of Claims that
"at the time the bids were opened, plaintiff protested to the
architect against the award's being made to anyone but his
associate, Roberts [who was entitled to use the Schillinger
invention], but the Architect and his advising engineers decided
they would award the contract to the lowest bidder on the ground
that, as the validity of the Schillinger patent had not been tested
at law or in equity, they could not decide whether it was valid or
not, and that the interest of the government, in their judgment,
would be best subserved by giving the contract to the lowest
bidder, taking a bond to protect the government from the suit
threatened by claimant."
In the contract between the government, represented by the
Architect of the Capitol, and Cook, for a concrete pavement
according to the Olmsted plans and specifications, it was
provided
"that in the event of any legal proceedings' being taken by
other parties against the contractor of the United States for
Page 155 U. S. 177
the infringement of any patent or claimed patent during
execution of the work, the contractor shall hold the United States
harmless."
All this shows that the Architect of the Capitol was aware of
the existence of the Schillinger patent. He did not dispute
Schillinger's rights under the patent, nor did he, as the
representative of the government, claim that the patent was
invalid, nor, if valid, that the government could get the benefit
of it in the contemplated improvement without compensating the
patentee. On the contrary, he in effect recognized a right to such
compensation if the patent was valid, and took a bond from the
contractor for the protection of the government in the event of a
suit against the contractor that would interfere with the use of
the Schillinger invention in the pavement in the public grounds.
But no such suit appears to have been brought. The patentee had the
right to waive any suit against the contractor or the Architect
that would interfere with the prosecution of the work and look to
the obligation of the government to make him just compensation for
the use of his invention. It was so ruled in the
Great
Falls case. The authority of that case is not here disputed.
As the government had granted the patent, the purpose to commit a
tort cannot be imputed to the Architect as the agent of the United
States. His action meant no more than that he would leave the
question of the obligation of the United States to make
compensation for the use of the Schillinger patent to depend upon a
decision by the courts as to its validity.
Under the authority given by Congress to expend the money
appropriated in improving the Capitol grounds according to
specified plans, the Architect of the Capitol had a large
discretion, and was authorized, so far as the government was
concerned, to use in such improvement any patented invention that
those plans would require or that would best subserve the public
interests, subject, of course, to the constitutional obligation to
make just compensation to the inventor. The Constitution imposing
that obligation is a covenant between the government and every
citizen whose property is appropriated by it for public use. If
Schillinger's patent was valid,
Page 155 U. S. 178
then the government is bound by an obligation of the highest
character to compensate him for the use of his invention, and its
use by the government cannot be said to arise out of mere tort, at
least when its representative did not himself dispute, nor assume
to decide, the validity of the patent. If the act of Congress under
which the Architect proceeded had, in express terms, directed him
to use Schillinger's invention in any pavement laid down in the
public grounds, then such use, according to the decision in
United States v. Great Falls Manufacturing Co., would have
made a case of implied contract based on the constitutional
obligation to make just compensation for private property taken for
public use. But such a case is not distinguishable in principle
from the present one, where the Architect, proceeding under a
general authority to expend the public money according to specified
plans, uses, or knowingly permits to be used, a particular patented
invention, not disputing the rights of the patentee, but leaving
the question of the validity of the patent, and the consequent
liability of the government for its use, to judicial
determination.
I do not stop to discuss the question whether Schillinger's
patent was valid, nor whether it was infringed by the mode in which
the pavement in question was constructed. Those questions would
have been here for determination if the court below had assumed
jurisdiction and decided the case upon its merits. That court
dismissed the petition for want of jurisdiction on the ground
simply that there was no contract, express or implied between the
owner of the patent and the government. It held that the
appropriation or use of the Schillinger invention was in the nature
of a tort, and this conclusion rested upon the ground that the
Architect of the Capitol denied that any private right existed
under the alleged patent. But this was an error. There is no
finding by the court showing a denial of that character, even if it
be assumed that such a denial could be deemed of any consequence in
view of the constitutional obligation to make just compensation for
private property taken for public use.
I am of opinion that when the government, by its agent,
knowingly uses or permits to be used for its benefit a valid
Page 155 U. S. 179
patented invention, it is liable to suit in the Court of Claims
for the value of such use, and that its liability arises out of
contract based upon the constitutional requirement that private
property shall not be taken for public use without just
compensation.
It is proper to say that the claimant in his petition does not
place the claim for compensation as distinctly upon the basis of
contract as he might have done. But as the opinion of the Court may
be interpreted as proceeding upon the broad ground that the
government could not be sued as upon contract, express or implied,
unless its agent at the time the invention was used for its benefit
recognized or admitted the validity of the patent, I have thought
it appropriate to state my view of that question.
2. There is another view of the case which is independent of
mere contract. The Act of March 3, 1887, for the first time gives
the Court of Claims jurisdiction, to hear and determine "all claims
founded upon the Constitution of the United States." If the
Schillinger patent be valid, and if the invention described in it
has been used or appropriated by the government through its agent
charged with the improvement of the Capitol grounds, then the
patentee, or those entitled to enjoy the exclusive rights granted
by it, are entitled to be compensated by the government. And the
claim to have just compensation for such an appropriation of
private property to the public use is "founded upon the
Constitution of the United States." It is nonetheless a claim of
that character even if the appropriation had its origin in tort.
The constitutional obligation cannot be evaded by showing that the
original appropriation was without the express direction of the
government, nor by simply interposing a denial of the title of the
claimant to the property or property rights alleged to have been
appropriated. The questions of title and appropriation are for
judicial determination. Those being decided in favor of the
claimant, the Constitution requires a judgment in his favor. If the
claim here made to be compensated for the use of a patented
invention is not founded upon the Constitution of the United
States, it would be difficult to imagine one that would be of that
character.
Page 155 U. S. 180
[180]
As the agent of the government was moved to use the Schillinger
invention because the patent had not then been established by the
decision of any court, it may be stated that it was subsequently
sustained, as the findings below show, in numerous cases, the
earliest being
California Artificial Stone Paving Co. v.
Perine, 8 F. 821 (1881, Sawyer, J.), and the latest being
Hurlbut v. Schillinger, 130 U. S. 456.
I am authorized by MR. JUSTICE SHIRAS to say that he concurs in
this opinion.