US SUPREME COURT DECISIONS

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

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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." chanrobles.com-red

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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. chanrobles.com-red

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