150 U.S. 424
December 4, 1893
Statement by Mr. Chief Justice FULLER:
This is an appeal from a judgment of the court of claims rendered March 31, 1890, dismissing the petition of one Philip [150 U.S. 424, 425] McAleer, whose administratrix was substituted in this court. The petition was filed November 27, 1888, 'to recover from the United States compensation for the use by the United States of certain inventions made by the petitioner, and protected by letters patent of the United States issued to him, such use being under licenses to the United States executed by petitioner.' The several inventions and improvements for which letters patent were issued to petitioner were set out, and it was averred that 'knowing that the said inventions and improvements so as aforesaid secured to the petitioner by letters patent were mainly, and almost exclusively, useful to the United States, in the said bureau of engraving and printing, the petitioner, at the request and by the advice of George B. McCartee, Esq., then superintendent of said bureau, for the United States, executed and delivered to the said McCartee a license to the United States to use the petitioner's inventions aforesaid mentioned in letters patent No. 170, 183, which was accepted by said McCartee for the United States, and under said license the United States continued thereafter to use said inventions.' The license was then set out, and similar licenses were alleged to have been executed and delivered for the use by the United States of other inventions and improvements. The petition also averred that the United States advanced about the sum of $200 to be expended in procuring the issue of letters patent, 'the officers of said bureau having urged the petitioner to have his aforesaid inventions and improvements protected by letters patent, with the view of securing to the United States, in the said bureau of engraving and printing, by licenses as aforesaid, the exclusive use of the said inventions and improvements;' that at the time of the issue of the letters patent, and of the execution of the licenses, it was agreed between petitioner and the superintendent of the bureau, in behalf of the United States, that petitioner should be retained and employed in the bureau as machinist as long as the bureau continued to use said inventions or improvements, or any of them, under the licenses; and that he was subsequently discharged. The petition further stated 'that under the aforesaid licenses there was an [150 U.S. 424, 426] implied agreement between the United States and the petitioner that the United States should pay to the petitioner, for the use of said improvements and inventions, whatever the said use was reasonably worth, and the petitioner, upon information and belief, says that the said use was reasonably worth the sum of thirty-one thousand dollars, ($31,000.)'
The defendant pleaded the statute of limitations, the assignment for valuable consideration of the patented improvements, and want of novelty.
The case having been heard, the court of claims, upon the evidence, filed the following findings of fact and conclusion of law:
(Here followed an assignment made by McAleer to one Schneider.)
(Here followed plaintiff's letters patent No. 170,873, dated December 7, 1875, application filed September 14, 1875, for 'improvement in paper- perforating machines;' also, letters patent No. 164,920, dated June 29, 1875, application filed June 9, 1875, for 'improvement in rotary paper cutters,' to Agur Judson, of Newark, N. J.; also, letters patent to Merriam & Norton for 'improved cutting machine,' No. 55,336, dated June 5, 1886; also, letters patent to Alva Worden, of Michigan, for 'machine for cutting leather fly nets,' No. 41,459, dated February 2, 1864.)
The opinion, by Davis, J., is reported in 25 Ct. Cl. 238.
T. A. Lambert, for appellant.
Asst. Atty. Gen. Conrad, for appellee.
Mr. Chief Justice FULLER, after stating the facts in the foregoing language, delivered the opinion of the court.
The court of claims held that this case fell within the rulings made by that court in Solomons v. U. S., 22 Ct. Cl. 342, and Davis v. U. S., 23 Ct. Cl. 329. In the first of these cases, Clark, Solomons' assignor, chief of the bureau of engraving and printing, was assigned the duty of devising a stamp, and did so. There was no agreement or understanding between the officers of the government and Clark concerning the right of the government to use the invention, or the remuneration, if any, which should be paid for it; and no express license to use the invention was given by him to the government, nor any notice prohibiting its use, by intimating that he would demand a royalty. The court of claims held 'that while the government did not obtain a specific interest in the patent, nor a monopoly of the invention, nor a right to share [150 U.S. 424, 430] in the profits thereof, nor to exclude other persons from the use of it, nevertheless it acquired the right to manufacture and use the stamp in its revenue service without liability to the inventor.'
In the second case, Davis was foreman of the machine and foundry division of the ordnance department of the Washington navy yard, and invented and received a patent for a vent-closing firing attachment. The cost of experiments was paid by the United States, and the patents were taken out under the advice of the chief of the ordnance bureau; and after they were issued the navy department paid him a sum of money to reimburse him for the expense incurred in securing them, and as a royalty for the right to their use. The court of claims held that he could not recover, and reiterated, as the principle announced in Solomons' Case, 'that, every public officer being in some measure of degree a guardian of the public welfare, no transaction growing out of his official services or position can be allowed to inure to his personal benefit, and that from such transactions, as in the cases of guardian and ward, or trustee and cestui que trust, the law will not imply a contract.'
It is argued that the devising of the stamp by Clark came within the scope of his official employment, and, similarly, that Davis was employed for the specific purpose of doing what in fact he accomplished in making his invention, while McAleer was not employed to invent, and did not accept a royalty in satisfaction of his claims.
The case of Solomons subsequently came before this court, (Solomons v. U. S., 137 U.S. 342, 346 , 11 S. Sup. Ct. 88,) and the judgment of the court of claims was affirmed. Mr. Justice Brewer, delivering the opinion of the court, said: 'If one is employed to devise or perfect an instrument, or a means for accomplishing a prescribed result, he cannot, after successfully accomplishing the work for which he was employed, plead title thereto, as against his employer. That which he has been employed and paid to accomplish becomes, when accomplished, the property of his employer. Whatever rights, as an individual, he may have had in and to his [150 U.S. 424, 431] inventive powers, and that which they are able to accomplish, he has sold in advance to his employer. So, also, when one is in the employ of another in a certain line of work, and devises an improved method or instrument for doing that work, and uses the property of his employer and the services of other employes to develop and put in practicable form his invention, and explicitly assents to the use by his employer of such invention, a jury or a court trying the facts is warranted in finding that he has so far recognized the obligations of his service flowing fram his employment, and the benefits resulting from his use of the property, and the assistance of the coemployes, of his employer, as to have given to such employer an irrevocable license to use such invention.' And McClurg v. Kingsland, 1 How. 202, was cited as decisive.
In the case at bar, as clearly summarized by the court of claims, the invention was made while petitioner was in the employment of the government as a skilled mechanic, whose duty it was to secure the most efficient service from the machines in his care, to keep them in repair, and to apply such improvements as experience might suggest. While so employed, he devised the improvements in question, to be applied to the machines then under his charge as a machinist, doing the work largely in office hours, and entirely with government tools and machinery; and he took out the patent at the solicitation of the bureau officers, and at the expense of the government. This was in 1875. He was discharged in 1877. The device was not used until 1879, and, before it worked efficiently, required certain mechanical changes, which were perfected and applied by government machinists, using government tools and material. Three days after the issue of the patent, he executed the assignment set forth in the findings, whereby he covenanted, 'for the sum of one dollar, and other valuable consideration, to me [him] paid' by the United States treasury department, that that department and its bureaus should have 'the right to make and use machines containing the improvements claimed in said letters patent, to the full end of the term for which said letters [150 U.S. 424, 432] patent are granted.' But it is said that there is a distinction between the right to use and the use of an invention, and that in this instance, while the right to use was absolute, the actual use was to be compensated for by the continuous employment of McAleer in accordance with a contemporaneous agreement to that effect between him and the superintendent of the bureau. We do not regard this position as tenable. The instrument constituted a contract fully executed on both sides, which gave the right to the treasury department, without liability for remuneration thereafter, to make and use the machines containing the patented improvement to the end of the term for which the letters were granted. It was a complete legal obligation in itself, with no uncertainty as to the object or extent of the engagement, and could not be defeated, contradicted, or varied by proof of any collateral parol agreement inconsistent with its terms. Seitz v. Machine Co., 141 U.S. 510 , 12 Sup. Ct. 46.
The agreement that McAleer's 'assignment should hold good only during plaintiff's employment in said bureau of engraving and printing, and not longer,' was thus inconsistent, and must be regarded as in defeasance, and not as imposing a condition precedent to the use, the right to which had been completely granted for good and valuable consideration.
Moreover, the petition does not seek recovery for breach of any such collateral agreement, but proceeds upon an implied agreement under the licenses. We think the court of claims properly held that the case came within their previous rulings, which, as we have seen, were in accordance with the decisions of this court, and that the instrument executed by McAleer secured by covenant the right to use the device in the treasury department, which right would, under the circumstances, have otherwise been implied.