US SUPREME COURT DECISIONS

Even if there were findings sufficient to show that the United States had in any manner infringed letters patent No. 52,925, granted February 27, 1866, to Hiram Berdan for an improvement in breech-loading firearms, in the absence of anything disclosing a contract, the use would be a tort, creating no cause of action cognizable in the Court of Claims.

Where several elements, no one of which is novel, are united in a combination which is the subject of a patent, and these several elements are thereafter united with another element into a new combination, and this new combination performs a work which the patented combination could not perform, there is no infringement.

As to letters patent No. 88,436, granted to Hiram Berdan March 30, 1869, for an improvement in breech-loading firearms, it appears that the use of that invention was with the consent and in accordance with the wish of the inventor and the Berdan Company, and with the thought of compensation therefor, which facts, taken in connection with other facts referred to in the opinion, establish a contractual relation between the parties sufficient to give the Court of Claims jurisdiction.

The contract was not a contract to pay at the expiration of the patent, but the right to recover accrued with each use, and the statute of limitations is applicable to all uses of the invention prior to six years before the commencement of the action.

The Court of Claims did not err in fixing the amount of the royalty.

These are crossappeals from a judgment of the court of claims entered December 8, 1890, in favor of the petitioner against the United States, for the sum of $95,004.36. The case as it was presented in the Court of Claims contained two distinct causes of action, each founded upon a patent issued to Hiram Berdan and by him assigned to petitioner. The first patent was dated February 27, 1866, being No. 52,925, and entitled "Improvement in BreechLoading Firearms." The chanrobles.com-red

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second was dated March 30, 1869, being No. 88,436, and entitled in the same way. The court found against the petitioner in respect to the first cause of action, and in its favor on the second. The findings of facts made by that court are quite voluminous, and it would needlessly encumber this statement to quote them all at length.

In reference to the first of these causes of action, it will be sufficient to note these facts, taken from the findings, and which present all that is necessary for a determination of the questions involved: in January, 1866, the Secretary of War convened a board of officers of the army, of which General Hancock was named as president. This board, known as the "Hancock Board," was

"ordered to examine thoroughly the following questions, and make recommendations thereon:"

"(1) What form and caliber of breechloading arm should be adopted as a model for future construction of muskets for infantry?"

"(2) What form and caliber should be adopted as a model for future construction of carbines for cavalry?"

"(3) What form of breechloading arm should be adopted as a model for changes of muskets, already constructed, to breechloading muskets?"

"Each person who submits an arm to the above board will be required to state in writing the lowest price at which it will be furnished in the event of its being adopted by the government."

It met at Washington on March 10, 1866. In the same month, it issued a circular to the public, with the following blank form of proposal, to be signed by those presenting arms for trials:

"_____, of _____, being the proprietor of the patent right to manufacture a breechloading arm, known as _____, do hereby bind _____ heirs, executors, and assigns to grant to the United States government, if called on within three years from this date to make such grant, the right to manufacture the aforesaid breechloading arm on the following terms, viz:"

"For payment to _____ of _____ dollar per arm for the

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privilege of manufacturing fifty thousand; of _____ dollar per arm for the privilege of manufacturing one hundred thousand; of _____ dollar per arm for the privilege of manufacturing two hundred thousand; and of _____ dollar per arm for the privilege of manufacturing any additional number of arms; provided, that when the government shall have paid the total amount, _____ dollars, counting each and every payment, then it shall have the full and entire privilege of manufacturing _____ patented arms, for its own use, without further payment to _____ on account of _____ patent right. Each payment, as above specified, to be made for not less than five thousand arms. Or by the payment of _____ dollars within three years from this date, the privilege of manufacturing as many arms as may be desired shall be granted to the United States."

In response to the circular, the petitioner, among others, on March 27, 1866, forwarded a communication, a part of which is as follows:

"The Berdan Firearms Co., of New York, New York, being the proprietor of the patent right to manufacture a breechloading arm known as the 'Berdan Breech Loader,' do hereby bind ourselves, heirs, executors, and assigns to grant to the United States government, if called on within three years from this date to make such grant, the right to manufacture the aforesaid breechloading arms on the following terms, viz.:"

"For payment to us of two dollars per arm for the privilege of manufacturing fifty thousand; of one and threequarters dollars per arm for the privilege of manufacturing one hundred thousand; of one and onehalf dollars per arm for privilege of manufacturing two hundred thousand; and of one and onequarter dollars per arm for the privilege of manufacturing any additional number of arms."

Later, and on May 21, 1866, it presented a gun, called "No. 4," which, while similar in many respects to the one described in the specifications and drawings of the patent No. 52,925, differed in others. One of such differences is thus described in the latter part of the fifth finding: chanrobles.com-red

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"A friction plunger (which did not exist in the patented gun) was placed in the gun (No. 4) shown the Hancock board; this plunger appeared in the middle of the bottom of the breech receiver, close to the barrel's mouth, and was so placed that when the gun was loaded, the spring was held up against the cartridge head and in contact with it by a flat spring placed underneath the barrel. The friction plunger was introduced for the reason stated in finding XIII."

Finding No. 8 is as follows:

"June 4, 1866, the said board of officers concluded its labors and made a final report to the Secretary of War which contained this recommendation and statement, namely:"

"Fourth. This board recommends the plan of alteration submitted by H. Berdan. This gives the stable breech pin, secures the piece against premature discharge, and involves only a slight change of our present pattern of arms."

In finding No. 9 is this statement:

"No gun has been bought by the government from defendants [petitioner?] and no gun has been manufactured by the government which is a copy of the gun recommended by the Hancock board."

Findings 11, 12, and 13 disclose these facts:

"11. Several models of Springfield arms have been placed in evidence, and as to them we find: the model of 1865 was the Allin gun. The model of 1866 (finding XII) was a tightjointed mechanism, and except for the ejector device, elsewhere described in these findings, the Berdan model has no bearing upon this case. The loosejointed mechanism appeared in 1868, with the new ejector device elsewhere in these findings described. For the purposes of this action, the model of 1868 and those subsequent are alike, and for these purposes the description given in these findings of the Springfield gun applies to all models subsequent to that of 1866."

"12. The Berdan gun (patent 52,925) was not loosejointed; when the breech block was down, there was no play, for then the block abutted against the barrel at one end and the brace against the breech screw at the other; Berdan, by joining his block (making thus a block and brace) procured a square recoil

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shoulder against the end of the breech pin; but he did not procure any play in the parts; there were elongated holes in the plate fastening of his breech block, as shown in the Patent Office model, a device replaced in the gun shown the Hancock board (No. 4) by a band which has a minute slip upon the barrel under strong pressure; but neither the holes nor the band are claimed to give, nor do they give, looseness of construction; they merely take up slight wear of the parts. It is admitted that no single element in patent 52,925 is new. The combinations shown in claims 1, 2, 4, and 5 were novel and useful."

"13. The Berdan extractor (patent 52,925) was intended for rimfire cartridges; with those cartridges, it was successful. It was not successful when used with centerfire cartridges, for this reason: the flange of the rimfire cartridges expanded somewhat at the time of explosion, and the shell thus took a firm seat in the barrel. This expansion did not occur in the centerfire cartridges, and therefore the shell was pressed back by the ejector spring in proportion to the speed with which the breech block was raised; the movement thus communicated to the cartridge was therefore not sufficiently fast to throw the cartridge out of the receiver. To counteract this difficulty, Berdan introduced the friction plunger into the receiver just behind the cartridge head, thus counteracting the backward pressure of the spring until the breech block was open sufficiently to allow the shell to clear the face of the breech block when ejected, so that the motion backward should not be impeded by the intervening breech block. This friction plunger, singly or in combination, was not patented by Berdan."

"It appears that the ejector in patent 52,925 would only operate when a rimfire cartridge was used. The government uses centerfire cartridges."

Patent No. 88,436 was for what is called an "extractor ejector." In reference to the cause of action under this patent, findings 16, 17, and 19 are as follows:

"16. Extraction and ejection of cartridges was thus performed in all Springfield guns, beginning with the model of 1868, and continuing since. "

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"Extraction: by an extractor plate swinging on the hinge pin, and struck above its center of motion by the forward end of the breech block, near the completion of its movement in opening."

"Ejection: by accelerating the movement of the extractor by means of a spiral ejector spring which surrounds the stem of the ejector spindle, and bears against the bottom of its hole in the receiver at one end, and against the head of the spindle at the other end. When the extractor is revolved by the opening of the block, the ejector spring is compressed by the ejector spindle, the point of which rests in a cavity in the back of the extractor above its axis of motion. The continued revolution of the extractor finally brings the prolongation of the ejector spindle below the axis of motion; as soon as the center is passed, the sudden release of the ejector spring causes the extractor to rapidly rotate about its axis and to carry the empty cartridge shell against the beveled surface of the ejector stud, by which it is deflected upward and thrown clear of the gun."

"This specific device was perfected by Benjamin F. Adams, an employe in the Springfield armory. He invented it in the autumn of 1868."

"17. The extraction and ejection of cartridges was thus performed in the RussianBerdan gun, patent No. 88,436."

"Extraction: by an extractor swinging on the joint screw, and struck above its center of motion by the forward end of the breech block, nearer the completion of its movement in opening."

"Ejection: by accelerating the movement of the extractor by the ejector spring, one end of which has a solid bearing on the hingestrap slide, and the other, resting on the extractor, above the center of motion, causes the spring to be compressed by the movement of the latter until the direction of the resistance passes below the center of motion; the sudden release of the spring then throws out the extractor, carrying with it the shell, which in passing out is deflected by the beveled surface of the ejector stud, and is thus thrown clear of the place."

"The only difference between the Berdan and Adams devices is that Berdan used a flat spring, while the government

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used a spiral spring with a spindle or plunger; both perform the same office and attain the same result in the same way; the use of the flat spring or of the spiral spring is matter of choice, and is in no way material to the result."

"Adams, when he made his invention, was ignorant of Berdan's prior invention."

"19. The War Department is early and regularly informed of all improvements and inventions in firearms and ammunition. It is aware of the state of the art at all times, and generally knows of all patents upon firearms as soon as issued."

"The attitude of the War Department towards inventors in ordinance has been one of neutrality; it has neither denied nor admitted the legal rights, if any there were, of inventors. In an endeavor to perfect the government arm, that department has taken advantage of all knowledge within its reach, and of all inventions; it does not deny the claims of inventors, but has proceeded upon the policy that executive officers should not decide upon such claims against the government, or upon conflicting claims, but that the claim should be presented without prejudice before some other tribunal than an executive department. Berdan, as an officer of plaintiffs herein, assignees of his inventions during the period covered by this action, was in constant communication with the ordinance officers, requesting the use of his devices by the government; they knew him as an inventor, and knew his inventions as soon as they were patented. In 1867, it was known that Berdan was at work upon an ejector, and in August, 1868, that he had applied for patents for improvements in firearms; but it does not appear that, prior to issue of patent, the ordnance officers knew of the specific devices protected by letters patent No. 88,436, issued March 10, 1869, upon application filed July 21, 1868, except as hereinafter appears."

Finding 23 contains these statements:

"In 1867, during the autumn, Berdan showed to Colonel Benton, commandant of the Springfield armory, at the armory, a transformed musket, containing the extractor ejector subsequently described in the specifications and claims of patent number 88,436. Colonel Benton then and there examined and

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tested the device. He neither approved or disapproved it; his attitude was neutral."

"August 3 or 4, 1889, Berdan had a conversation with General Dyer, then Chief of Ordnance, in the Ordnance Office, upon the subject of his devices. During this conversation, the Chief of Ordnance said in substance that he had recommended that some steps should be taken, or some court constituted, for the purpose of determining the value of the various claims for devices used in the Springfield gun, the army officers (in his opinion, he said) being powerless to settle the question."

"Berdan's application for patent No. 88,436 was then pending in the Patent Office, and Berdan explained generally its features. The chief of ordinance said, in substance, that if any of the features should be used by defendants in the Springfield gun, the ordnance officers expected to pay for them when the claimant had gone through the proper channels and settled the claim."

"While this application for patent 88,436 was pending in the Patent Office, the following letters were written: "

" Washington, August 3, 1868"

" General: I hold some patents on the system of converting muzzleloading muskets into breech loaders, recently adopted by the United States. I am also the inventor of other points in the same system not yet patented, but applications for which have been made some time since, and I am now informed that the business of this branch of the Patent Office is some five months behindhand, and that my application would be acted upon at once on a receipt of a note from the department that it is desirable that these applications should be disposed of, to enable me to present my claim to the government for the use of said patent."

" Trusting that you will grant me this favor,"

" I am, very respectfully, your obedient servant,"

" H. Berdan"

"Bvt. Maj. Gen. A. B. Dyer,"

" Chief of Ordnance"

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" War Department, Washington City"

" August 12, 1868"

" Sir: I have the honor to transmit herewith a communication, dated the 3d instant, from H. Berdan, asking that his application for patents for various improvements in firearms be acted upon immediately by the Patent Office in order that he may present his claims against this department for its use of said inventions, and to state that, so far as this department is concerned, the early consideration of the aforesaid claims is regarded as being desirable."

" Very respectfully, your obedient servant,"

" J. M. Schofield,"

" Secretary of War"

"* * * *"

"The Berdan extractor and ejector device (patent 88,436) was exhibited, in competition with other guns, to a board of officers detailed to test guns, and called the 'Terry Board,' in the year 1873. In the report of that board, the device was fully described. General Benet became Chief of Ordnance in June, 1874, and has since held this position; he understood the Springfield device for extracting and ejecting the shell, as described in the 'Terry' report, as 'seemingly identical, certainly the mechanical equivalent,' of Berdan's device for the same subject, covered by patent 88,436. After the decision of the case of McKeever v. The United States in this court (December term, 1878, 14 Ct.Cl. 396), General Benet has been of this 'decided opinion': "

" First, that the Supreme Court having given the opinion in the case of Seymour v. Osborne, 11 Wall. 533, that 'inventions secured by letters patent are property in the holder of the patent, and are as much entitled to protection as any other property, consisting of a franchise during the terms for which the franchise or the exclusive right is granted,' that patent rights are private property, and cannot be taken by the United States without due compensation; and, "

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" Second, that a use of an invention protected by a patent is the use of private property that must be paid for, and therefore an implied contract, that has a place in court, and that if the validity of the patent is sustained, and its use by the government is proved to the satisfaction of the court, the inventor must be paid."

"General Benet, 'with this understanding,' continued the manufacture of the Springfield gun, containing the disputed ejector and extractor device, after adjournment of the 'Terry Board,' with the expectation that if the court sustained a claim by Berdan against the government upon his patent No. 88,436, then the government must pay him for the use of his invention. Plaintiffs have desired that the government should use their patented devices, and have also desired and requested compensation for such use."

"Upon the foregoing facts, the court find that since 1874, the Berdan extractor ejector device (described in patent No. 88,436) has been used by defendant's ordnance officers knowingly and without claim of adverse right, believing the device in the Springfield gun to be the device, or the mechanical equivalent of the device, covered by said letters patent, and with the anticipation that, should the understanding of the said ordnance officers as to plaintiffs' rights be judicially decided to be correct, the defendant would compensate plaintiffs for such use. "

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