67 Ct. Cl. 1 | Ct. Cl. | 1928
delivered the opinion of the court:
This is a patent case. The findings are quite voluminous and the case, notwithstanding the abnormal size of the record, not especially involved from the standpoint of facts.
The plaintiff is a skilled machinist; for over sixteen years he occupied a responsible position with the Bethlehem Steel Company in its gunshop department and had personal charge of tool making, sights, rifle heads, etc. In June, 1911, plaintiff became superintendent of the gun-finishing department of the Symington-Anderson Company, of Boch-ester, New York. This company was at the time engaged in manufacturing guns for the Government. Time was an essential factor in completing manufacture. The plaintiff conceived the idea of inventing a tool which would facilitate the performance of the “ rifling operation,” one which would not only improve upon the process then in vogue by way of accuracy but accomplish the purpose in much less time at decreased expense. The plaintiff disclosed his drawings
On February 23, 1918, the plaintiff filed his application for a patent for the tool and process of use. This was done at the instance and request of Mr. Anderson, who positively disavowed any claim upon or right to use the invention. As a matter of fact, the Symington-Anderson Company preferred no claim of license to use the tool or process.
At the time of filing the application for patent the applicant accompanied the same with a request to the commissioner to make it special. This request was predicated upon existing war conditions and the value of the tool and process. The commissioner refused to accede to the request. On June 29, 1918, the commissioner rejected all the submitted claims of the patentee, and followed his action on July 2, 1918, with a written injunction of secrecy upon the applicant. The commissioner’s secrecy order was promulgated under the act of October 6, 1917, and recited, among other things, “that your application as above identified has been found to contain subject matter which might be detrimental to public safety or assist the enemy in this present war, and you are hereby ordered to in no wise publish the invention or disclose the subject matter of said application, except that the invention may be disclosed to officials of the War and Navy Departments, but to keep the same secret during the period of the present war.”
The secrecy order of the commissioner was followed by a similar one from the Federal Trade Commission on July 2, 1918.
On August, 17^1918, the plaintiff, through his attorney, tendered the invention to the Government. (See Finding XI.)
It is conceded by the defendant that the invention was used by the Symington-Anderson Company, the Wisconsin Gun Company, the Bullard Engineering Works, and the Bethlehem Steel Company. We think the concession is manifest; if not so, the proof establishes the facts indisputably.
We have recited in chronological order the facts covering the conception of the patent, its development, and the relationship of the patentee to the Government during the period involved, assuming for the instant the validity of the patent and its use by the Government. This has been done as a matter of first importance, made so by a defense advanced that under the present record the plaintiff has not established his eompl,iance with the provisions of the act of
Act To prevent the publication of inventions by the grant of patents that might be detrimental to the public safety or convey useful information to the enemy, to stimulate invention, and provide adequate protection to owners of patents, and for other purposes
“ Be it enacted by the Senate of the United States of America in Congress assembled, That whenever during a time when the United States is at war the publication of an invention by the granting of a patent might, in the opinion of the Commissioner of Patents, be detrimental to the public safety or defense or might assist the enemy or endanger the successful prosecution of the war, he may order that the invention be kept secret and withhold the grant of a patent until the termination of the war: Provided, That the invention disclosed in the application for said patent may be held abandoned upon it being established before or by the commissioner that in violation of said order said invention has been published or that an application for a patent therefor has been filed in a foreign country by the inventor or his assigns or legal representatives, without the consent or approval of the Commissioner of Patents, or under a license of the Secretary of Commerce as provided by law.
“ When an applicant provided and who faithfully obeys the order of the Commissioner of Patents above referred to shall tender his invention to the Government of the United States for its use, he shall, if and when he ultimately received a patent, have the right to sue for compensation in the Court of Claims, .such right to compensation to begin from the date of the use of tiie invention by the Government.”
While the applicable portions of the trading with the enemy act are not essentially different from the foregoing statute, we think it necessary to quote section 10 (i) (40 Stat. 422), providing as follows:
“ Whenever the publication of an invention by the granting of a patent may, in the opinion of the President, be detrimental to the public safety or defense, or may- assist the enemy or endanger the successful prosecution of the war, he may order that the invention be kept secret and withhold the grant of a patent until the end of the war: Provided, That the invention disclosed in the application for said patent may be held abandoned upon it being established*33 before or by the Commissioner of Patents that, in violation of said order, said invention has been published or that an application for a patent therefor has been filed in any other country, by the inventor or his assigns or legal representatives, without the consent or approval of. the commissioner or under a license of the President.
“When an applicant whose patent is withheld as herein provided and who faithfully obeys the order of the President above referred to shall tender his invention to the Government of the United States for its use, he shall, if he ultimately receives a patent, have the right to sue for compensation in the Court of Claims, such right to compensation to begin from the date of the use of the invention by the Government.”
The defendant’s analysis and construction of the statutes •are confined to the strict meaning of the language employed. The court is advised that jurisdiction is a subject of strict construction, and under the provisions of the jurisdictional acts it is clear that Congress did not extend relief to anyone save a patentee, and that the clause “when 'atí applicant whose patent is withheld” clearly means the suspension of an allowed application for a patent, the claim being made and insisted upon that the plaintiff herein had no more than a pending application for a patent which had not and did not reach the point of allowance, was in no condition to be allowed, until subsequent to the lifting of the commissioner’^ secrecy order, and hence it was impossible for, and the commissioner did not, withhold a patent. We need but mention that the statutes are intended as remedial ones in so far as the present cause of action is concerned. Congress under existing conditions was invading temporarily an established property right, and withholding from a class of inventors a statutory privilege of value, and unless it may be concluded from the ■enactments as a whole, together with the circumstances under which they were passed, that no inventor, save one who was entitled to a grant of a patent during the emergency, came within the laws the contention is unsound. The title •of the act of October 6,1917, discloses an intent to stimulate invention and afford protection to owners of patents. The provisions of the acts are in keeping with that purpose, and
The legislation accomplished a radical change in patent procedure, and substituting for the established practice a different course in procedure gave to the commissioner the right to suspend, to hold in abeyance, the granting of a patent until the emergency ceased to exist. This, we think, is demonstrated by the provision in the act of October 6, 1917, which says: “If and when he ultimately receives a patent,” language repeated almost in lime verba in the trading with the enemy act. This, we think, is a clear recognition of the right of an inventor subjected to the provisions of the act when his application is filed, to have a cause of action against the United States, if after tender of the invention the United States uses it, prior to the grant of a patent, when the samé-is 'ultimately granted. By force of the acts the inventor parts with an immediate right to apply for a foreign patent, loses the privilege of selling a trade secret, and gains the right to sue the United States for the use of an invention, if the application therefor ripens into a patent, a right the inventor would not have without the enabling provisions of this war legisiation. To hold otherwise would be equivalent to ascribing to Congress an intent to discourage rather than
It is next contended that the plaintiff did not observe the secrecy order, but on the contrary made his invention public. If this fact is established it is fatal to a recovery; at least this court has so held in the Zeidler case, 61 C. Cls. 537. The secrecy order was issued July 2, 1918; prior to this date, as the findings show, the invention, with the knowledge and acquiescence of plaintiff, was used in the Symington-Ander-son plant where the plaintiff was employed, and was known to the persons who were present on Thanksgiving Day, 1917, and to the workmen in the plant engaged in rifling guns, as well as to the Army inspectors stationed at the plant to inspect the finished guns. As a matter of fact, the invention was continuously used at the above plant, both before and after the permission to so use it was granted by the commissioner. The above use, we think, is covered by the commissioner’s permission to so use issued August 18, 1918. (See Finding VIII.) Permission was also granted for the use of the invention by the Wisconsin Gun Company on the same day and the plaintiff was authorized to disclose the invention to officers of the Army and Navy. The plaintiff himself, as the record establishes, did not disclose the invention pub
Knowledge of the patent did obtain prior to the secrecy order. The Wisconsin Gun Company, the Bullard Engineering Works, and the Bethlehem Steel Company obtained it and used the device, but nowhere does it appear that the plaintiff was responsible for the use. When the existing situation is taken into account it is not difficult to ascertain the source of knowledge as to the invention, entirely aside from the inventor revealing anything about it. The invention was a valuable acquisition for gunmakers, and its use, both permissive and otherwise in the Symington-Anderson plant, necessarily opened an opportunity for knowledge concerning it. Government inspectors, Army and Navy officers, were, under the contracts to manufacture guns, constantly present in the gunmakers’ plants; workmen were, of course, familiar with the invention, and it- is obvious that under the
The patent in suit is described in detail in Finding IX. The novelty of the tool as abstracted from the claims resides in its ability to simultaneously cut the rifling grooves in the bairel of a gun by forcing through it one at a time a series of circular disks having their periphery arranged in tooth-like formation, and of such proportions as to correspond to the desired rifling grooves. This is accomplished by utilizing first a disk so constructed as to make a slight cut and following this operation by a series of additional disks, each one of which in order makes a slightly deeper cut, until the desired rifling is completed. It is a graduated process, each disk so constructed as to penetrate deeper into the barrel of the gun until the desired grooving or rifling of the same is attained. The various disks are constructed for interchangeable yet precise mounting on a tool holder, easily removable after they have been forced one at a time through the gun barrel by the rifling bar. By thus utilizing them one at a time, cooling of the interior of the gun barrel between cuts is permitted, which would not be the case in certain of the prior art structures in which the use of a tool having an integral series of cutting disks of increasing diameter is suggested. There is a pilot or guard member mounted in front of the disk, which cooperates with a guide
The plaintiff’s rifling head is an ingenious device; it combines the essential functioning elements in a way that has not been done before, and as to method of operation introduces for the first time successfully the accomplishment of rifling a gun barrel by forcing through one at a time the cutting disks. The importance and value of the result are not to be minimized. By the use of plaintiff’s device and method unskilled labor was made available; time was conserved and expense greatly reduced. What, however, is of still greater importance was the attainment of accuracy in producing rifling grooves.
The defendant does not seriously dispute the value of plaintiff’s tool and method. That it was generally adopted and used is indisputable. Prior use of a similar device is relied upon as anticipatory of the plaintiff’s invention. The difficulty with the citations of prior use offered is that, apart
Ten prior-art patents are cited as anticipatory; from them the defendant deduces a defense that the construction of the tool and the conception of the method for its use did not involve invention and was no more than the employment of mechanical skill. The art as demonstrated by its history involved certain fundamental necessities to meet which required the employment, in combination, of elements whose functioning capacity was well known and firmly ■established. It, of course, did not require the exercise of
We have said the foregoing for the reason that the prior art cited as anticipatory is “spotty”; no single citation
The Supreme Court in the case of the Richmond Screw Anchor Co. v. United States, 275 U. S. 331, had before it a patent case similar to the one in suit. In disposing of a contention made by the defendant that what the patentee did was merely the exercising of mechanical skill and not invention, the Chief Justice said:
“ It is argued, on behalf of the United States, that Lenke’s invention was unpatentable because it embodied nothing more than a natural and normal modification of existing ideas. Such modifications and their advantage were all very clear after the fact; but the old beams had been in use for a number of years and a heavy weight of metal had been used when, by Lenke’s device, it was cut down two-thirds. Lenke’s cargo beam almost universally superseded the old one. The United States used it and it was installed in nearly every pier in the country. No one else had foreseen its advantage. Lenke offered it as a solution of the problem at a minimum cost with a maximum efficiency. The United States conceded in the Court of Claims that Lenke’s patent was novel in the sense that there was nothing in the prior art exactly like it, and that it was useful. While thus, in a way, he improved an existing idea, he developed a new idea.”
We think this quotation is applicable not alone upon this one subject but that the opinion from which’ it is quoted applies generally to the question of invention in this case.
“It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention. It was certainly- a new and useful result to make a loom produce fifty yards a day when it never before had produced more than forty; and we think that the combination of elements by which this was effected, even if those elements were separately known before, was invention sufficient to form the basis of a patent.”
August 17, 1918, the plaintiff’s attorney addressed to the Secretary of the Navy the letter appearing in Finding XL The defendant, construing the act of October 6, 1917, literally asserts that this communication is valueless as a tender for use, first, because it is not in accord with the terms of the act; and, secondly, the record does not disclose that the use which followed was the direct result of the tender or a use by the United States. As to the first contention the second paragraph of the statute does use the words, “ When an applicant whose patent is withheld as herein provided.” This sentence standing alone would support the argument advanced. The plaintiff’s application had not then been granted; nevertheless, as we have previously observed, we think this is too narrow a construction of the statute. Congress was not primarily concerned in affording protection to an inventor whose application had passed to issue; the context of the statute as a whole negatives this intent. The act afforded relief to inventors whose right to a grant of patent was suspended and had no intention to restrict the right to sue for compensation to those who had procured a grant of a patent. To so hold would limit the benefits of the act to that class of applicants who had been fortunate enough to have their applications, filed during the period, immediately considered and passed to issue, and leave without relief tho
As a matter of proven fact the plaintiff’s patent in the common acceptation of patent practice was withheld, for on November 2, 1918, the commissioner advised him that claims 1, 4, 10 to 14, and 17 to 18 were allowable in substance, and these claims with some additional amendments finally passed to patent June 21, 1919. The purpose of a fender for use by the Government is obvious. Notice of the inventor’s application and claims afforded the Government opportunity to use the invention or refuse its use, but, says the defendant, the use in this case was not by the United States, nor did it follow as a consequence of the tender. Its use, it is said, was but the continuation of the use of an unpatented suggestion already known and in use by Government contractors. The terms of the act of October 6, 1917, providing for compensation for use, are comprehensive, “ such right to compensation to begin from the date of the use of the invention by the Government.” Let us take the record in this case in this respect. Secrecy is enjoined upon the patentee. We have found the secrecy order to have been observed. The patentee discovers that his invention has become known to and is in use by Government contractors other than those who have permission to use it; he at once notifies the Government of this use and at the same time tenders his invention for use. The Government contractors thereafter continued the use of the invention.
The final defense upon the issue of user is, indeed, more troublesome. The defendant contends that the use of an invention or, as we may say in this case, an incomplete patent by an independent contractor, of his own volition, without any requirement upon the part of the Government to use the invention, entails no liability upon the Government to pay for such use. In the contracts involved in this case there are no provisions requiring the contractors to use this or any other patented device. The contractor was at liberty to choose his method of rifling the guns, and beyond peradventure there was available another method by which rifling could be successfully accomplished. So that in its final analysis the defense is made to rest upon the proposition that the use in this case was for and not by. the "United States, as the act contemplated, and that the use was not required of the contractors by the United States. An independent contractor under no contractual obligations | to use a specific patented device may not in his agreement j with the United States relieve himself from liability as an infringer of a patent because of this contractual relationship.
In so far as the contractor and the Government are concerned, two stipulations in the contracts absolved the Government from any liability for the unauthorized use of a patent by the contractor. The plaintiff, however, in addition to the above contention, insists that, as a proposition of law, compensation for use follows from the use by the contractor of the patent in suit, with the knowledge and acquiescence of the Government, and fortifies this contention with a statement that the record shows that the authorized Government officers in charge of the contract knew of the use made of the invention, not only acquiesced therein but encouraged its use, recommended to all the contractors
porting the plaintiff’s contention. The nearest approach to
“ The unsoundness of the remaining contention becomes apparent from its mere statement. The proposition is that even although the armor plate made for the United States by the Midvale Steel Company was hardened by the Harvey process, the obligation to pay royalty as to such armor does not exist because the United States had not by its contracts with the Midvale Company specifically required that company to use the Harvey process. But under the terms of two of the contracts with the Midvale Company that company was permitted to use the Harvey process if desired, while under the other contracts the process used was required to be satisfactory to the Navy Department, and under all the contracts the United States had the right to inspect the process used.”
In Wood v. Atlantic Gulf & Pacific Co., 296 Fed. 718, 722, 723, the district court, in refusing to modify an injunction at the request of an infringer, a motion so to do being predicated upon a partial use by the Government under the acts of June 5, 1910, and July 1, 1918, said:
“ When the Government knows and obliges the contractor to use the patented article, of course the Government should be willing to pay; but it will be going entirely too far to say that, because any independent contractor for his own convenience saw fit to use the patented article in doing Government work, the Government should pay for such use by him, when they did not know he was using it.
* * * * * * *
“ The same analysis of this language shows with the same conclusiveness that it does not indicate the use by an independent contractor in doing the work for the United States, where such use was not with the knowledge or by the requirements of the United States. I am therefore of the opinion that, if the facts before the commissioner show that this defendant had a contract which required certain dredging operations to be done by it for the United States, without further showing that the United States either required the use by the contractor of the Wood runner, or had knowledge that the Wood runner was to be used or was being used by defendant in doing this dredging operation, the act does not affect such use, and the commissioner will proceed just the same as if the act had never been passed.”
The use of the plaintiff’s invention was indeed beneficial to the Government. It not only saved a most considerable sum of money on a cost-plus contract, but expedited the manufacture of guns, and accomplished what had never been accomplished before in a concededly efficient and perfect manner. For tools or mechanism to do this thing was in fact exactly what the War Department wanted, and the record sustains the fact that when it was found, the department, fully aware of its use, not only acquiesced in the same but encouraged it and in the end profited to a most considerable extent thereby. It is inconceivable that any other course would or could have been pursued.
The plaintiff may not recover for the use of his invention by the Symington-Anderson Company. This, we think, is apparent from the record and the decision of the Supreme Court in Gill v. United States, 160 U. S. 426, as well as numerous other precedents to the same effect, too many in fact to warrant citation.
There is no proof in the record upon which a judgment can be predicated for damages. The case will therefore be remanded in accordance with the stipulation of the parties for proof on damages. It is so ordered.
