Opinion — Crozier v. Krupp AG

CROZIER ». FRIED. KRUPP AKTIENGESELL-

SCHAFT.

CERTIORARI TO THE COURT OF APPEALS OF THE DISTRICT

OF COLUMBIA,

No. 8. Argued April 30, 1911.—Decided April 8, 1912.

Prior to the passage of the act of June 25, 1910, 36 Stat. 851, c. 423,

a patentee, whose patent was infringed by an officer of the United

States, could not sue the United States unless a contract to pay was

implied; and the object of the statute is to afford a remedy under

circumstances where no contract can be implied, but where the

CROZIER v. KRUPP. 291

224 U.S. Argument for Petitioner.

property rights of the inventor have been appropriated by an

officer of the United States for its benefit and the acts of such officer

ratified by the Government by the adoption of such act.

Compensation for property taken under eminent domain need not

necessarily be made in advance of the taking if adequate means be

provided for a reasonably just and prompt ascertainment and

payment thereof.

The duty to provide for payment of compensation for property taken

under eminent domain may be adequately fulfilled by an assump-

tion of such duty by a pledge either express or by necessary im-

plication of the public good faith to that end.

The act of June 25, 1910, having afforded a remedy for a patentee

whose property rights have been appropriated by an officer of the

United States for the benefit of the Government, such patentee is

entitled to maintain an action in the Court of _laims to have his

compensation determined, and the statute makes full and adequate

provisions for the exercise of power of eminent domain.

Since the enactment of the act of June 25, 1910, a patentee cannot

maintain an action for injunction against an officer of the United

States for infringing his patent for the benefit of the Government;

his remedy is to sue in the Court of Claims for compensation.

In this case held that although this action was commenced before

June 25, 1910, as it was confined solely to obtaining an injunction

against future use, which cannot now be allowed, the action must be

dismissed without prejudice to the right of the patentee to proceed

in the Court of Claims for compensation under the act of 1910.

32 App. D. C. 1, reversed.

Tue facts, which involve the right of a patentee to en-

join an officer of the United States from using the patent,

and the construction and effect of the act of June 25, 1910,

conferring jurisdiction on the Court of Ciaims in certain

instances of claims of patentees against the United States,

for use of patents, are stated in the opinion.

Mr. Stuart McNamara, Special Assistant to the Attorney

General, with whom The Attorney General was on the brief,

for petitioner:

The suit is unauthorized, being either against the

United States directly, which is the only person to be

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292 OCTOBER TERM, 1911.

Argument for Petitioner. 224 U.S.

affected by the decree, in which case a necessary party

is wanting; or indirectly against the United States through

the person of its officer and agent, for which proceeding

no authority is vouchsafed by law.

The rule that the Government is immune from suit

except where immunity is waived applies to the United

States. Bracton, de Leg., 168 B; Staunford Prerogative,

72 B; Hale, Analysis of Law, § 9; Doe v. Roe, 8 Mees. and

W. 579. It cannot be subjected to legal proceedings at

law or in equity without its consent, and whoever in-

stitutes such proceedings must bring his case within the

authority of some act of Congress. United States v. Clark,

8 Pet. 444. The same exemption from judicial process

extends to the property of the United States and for the

same reasons. The Siren, 7 Wall. 152, 154.

The United States has consented to be sued through

successive acts of Congress. These suits must be filed in

the Court of Claims or in the Circuit or District Courts of

the United States. The first consent was granted in the act

of February 24, 1855, 10 Stat., ¢. 122, p. 612, followed by

the act of March 3, 1863, 12 Stat., c. 92, p. 765, and the

act of March 3, 1887, 24 Stat., c. 359, p. 509, with amend-

ments, and finally in the recent act (passed since the

decree below) of June 25, 1910, 36 Stat., c. 423, p. 853.

Under the statutes the United States may be sued on

a contract where it or its representatives have used the

inventions under a contract made by the United States

with the owner of the invention. United States v. Palmer,

128 U. S. 262; United States v. Berdan Company, 156

U.S. 552. The United States may also be sued under an

implied contract, where it has appropriated the patented

property of an individual under circumstances imply-

ing an agreement on the part of the Government to

pay reasonable compensation therefor. United States v.

Great Falls Mfg. Co., 112 U. 8. 645; United States v.

Alexander, 148 U. S. 186, 191. But the Government

CROZIER v. KRUPP.

224 U.S. Argument for Petitioner.

cannot be sued in cases of tort. The United States has

not consented to be sued in actions sounding in tort for

wrongs done by their officers, even though in the discharge

of official duties. Gibbons v. United States, 8 Wall. 269;

Langford v. United States, 101 U. 8. 341; Hill v. United

States, 149 U. S. 593; Schillinger v. United States, 155

U. S. 163; Russell v. United States, 182 U. 8. 516; Stanley

v. Schwalby, 147 U.S. 508, 512.

This immunity does not extend to the officers of the

Government. In times of peace they are personally

liable to an individual whose rights of property they

have wrongfully invaded, even by authority of the United

States. Bates v. Clark, 95 U. S. 204. Such officers,

although acting under the orders of the Government,

are personally liable to be sued for their own infringe-

ment of a patent. Cammeyer v. Newton, 94 U. 8. 225, 235.

In the recent act, approved June 25, 1910, the patentee

is given still further authority to sue the United States,

and he may now file suit in the Court of Claims to recover

compensation where his patents have been used without

his consent, though there be no contract with the Gov-

ernment, express or implied. The conceit of suing the

officer in this case does not save the proceeding from its

necessary gravitation into its reality as a suit against the.

United States and its property. The United States can-

not be sued in this indirect manner any more readily

than in a direct proceeding. Belknwp v. Schild, 161 U. 5.

10; International Postal Supply Co. v. Bruce, 194 U.S. 601.

The petitioner has no interest in the suit, has made no

profits, and no damages are asked from him.

The frame of the bill seeking to enjoin the future

making of field guns and carriages does not take the

case out of the rule. The injunction, if granted, neces-

sarily affects only the Government and its property.

Dashiell v. Grosvenor, 162 U.S. 424.

The dominion of the owner of a patent confers no

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294 OCTOBER TERM, 1911.

Argument for Petitioner. 224 U.S.

rights greater than those of the owner of other property.

He may secure compensation from the Government for

the taking of his patented property, but he may not re-

strain the taking. Schillinger v. United States, 155 U.S.

163, 168.

A very important branch of public policy supports

the doctrine of the immunity of the United States from

being sued and enjoined by a patentee under such cir-

cumstances as these. The Government has reserved no

right in the patents conferred superior to that bestowed,

but it must retain its own sovereignty, one incident of

which is the right to be free from being enjoined in its

public works whenever a litigant may conceive an in-

fringement and resort to suit.

Plain, adequate, and complete reraedy may be had by

respondent for the invasion of its patents and no circum-

stances of the case warrant the court’s interference by

injunction, even if jurisdiction to do so otherwise existed.

Bates v. Clark, 95 U. S. 204; Poindexter v. Greenhow, 114

U. 8. 270; Armstrong-Whitworth Co. v. Norton, 15 App.

D. C. 223; United States v. Lee, 106 U. S. 196.

Wholly apart from the considerations which apply to

a case where, as in the case at bar, effort is being made to

enjoin the. United States, there is still no authority for

the injunction even were both parties private litigants,

for under the circumstances the rule of the apportionment

of hardships would be invoked and the injunction accord-

ingly denied. Courts of equity frequently weigh the

relative hardship inuring to the complainant if the in-

junction be denied, and to the defendant, if it be granted.

And if it appear that the injury resulting to the defendant

from the granting of the injunction would be harsher

and more oppressive than that falling to the complainant

if it be denied, the courts will remit the complainant to

his other remedy and refuse to enjoin. Gerken v. Hall,

71 N. Y. Suppl. 753; Gray v. Patterson, 45 Atl. Rep.

CROZIER v. KRUPP. 295

224 U.S. Argument for Respondent.

995, N. J., 1900; Lloyd v. Catlin Co., 210 Illinois, 460;

Smith v. Sands, 24 Fed. Rep. 470; Bowers Dredging Co.

vy. N. Y. Dredging Co., 77 Fed Rep. 980; Huntington v.

Alpha Portland Cement Co., 91 Fed. Rep. 534.

Mr. William A. Jenner for respondent:

The right of a patentee to make, use and vend the

patented invention is exclusive of the Government of

the United States as well as of all others, and any use of

such invention unauthorized by the owner of the letters

patent, whether done directly by the United States or

indirectly through one of its officers, is a violation of that

right. - Belknap v. Schild, 161 U. S. 10; Hollister v.

Benedict Mfg. Co., 113 U. S. 59; James v. Campbell, 104

U. S. 356; Cammeyer v. Newton, 94 U.S. 225, 235; United

States v. Burns, 12 Wall. 246.

The fact that the invasion of a plaintiff’s property is

done by a defendant while acting in his official capacity

as an officer of the United States Government or of a

state government does not of itself justify the wrong nor

deprive plaintiff of the relief which otherwise the court

would grant. Davis v. Gray, 16 Wall. 203; Osborn v.

United States Bank, 9 Wheat. 738; Board of Liquidation

vy. McComb, 92 U. S. 531, 541; Allen v. Baltimore &

Ohio R. R., 114 U.S. 311; Pennoyer Vv. McConnaughy, 140

U. S. 1; Howell v. Miller, 91 Fed. Rep. 129; American

School of Healing v. McAnnulty, 187 U. 8. 94; United

States v. Lee, 106 U. 5. 196; Tindal v. Wesley, 167 U. 5.

204; Poindexter Vv. Greenhow, 114 U. 5. 270; Bates v.

Clark, 95 U. S. 204; Teal v. Felton, 12 How. 284; Little

v. Barreme, 2 Cr. 169; Elliott v. Swarthout, 10 Pet. 137.

Belknap v. Schild, 161 U. 8. 10; International Postal

Supply Co. v. Bruce, 194 U. S. 601, do not sustain the

defendant’s contention, and the facts and the prayer for

relief in those cases are materially different from those in

the case at bar.

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296 OCTOBER TERM, 1911.

Argument for Respondent. 224 U.S.

The courts have frequently entertained jurisdiction of

actions brought to enjoin officers of the United States

from infringement of letters patent. Dashiell v. Gros-

venor, 162 U. 8. 425; Cammeyer v. Newton, 94 U. S. 225;

James v. Campbell, 104 U. S. 356; Hollister v. Mfg. Co.,

113 U.S. 59.

The argument that an injunction against the manufac-

ture by defendant of guns and gun carriages infringing

complainant’s patent would ir effect be an injunction

against the free use by the United States of the material

at its arsenals used in the manufacture of guns and gun

carriages, and that the case is within Belknap v. Schild

and International Postal Supply Co. v. Bruce, is untenable.

See Howell v. Miller, 91 Fed. Rep. 129.

The complainant had no remedy at law for the infringe-

ment by defendant of its patents.

It was intimated in James v. Campbell, 104 U. S. 356,

and Hollister v. Manufacturing Co., 113 U. S. 59, that

an action would lie within the jurisdiction of the Court of

Claims to recover from the Government upon an implied

promise to compensate a patentee for the use by the Gov-

ernment, or one of its officers, of his -patented invention,

but it was later settled that such a suit could not be main-

tained either in the Court of Claims, Shillinger v. United

States, 155 U. 8. 163, or in the Circuit Court of the United

States, Hill v. United States, 149 U. S. 593.

If the officers of the United States have since the act

approved June 25, 1910, used or shall hereafter use com-

plainant’s patented design, it is possible or probable that

complainant may receive reasonable compensation under

that act in the Court of Claims, but that possibility does

not operate to defeat complainant's right to the equitable

relief sought when the bill was filed.

The general rule is that where jurisdiction in equity

has become established, a subsequent statute creating

a remedy at law or removing the obstacles at law upon

CROZIER v. KRUPP. 297

224 U.S. Opinion of the Court.

the existence of which the equity jurisdiction was origi-

nally founded does not oust equity of that jurisdiction,

unless the statute affirmatively discloses the legislative

intent to make the legal remedy exclusive. 16 Cye. 34,

and cases cited, and see White v. Meday, 2 Edw. Ch.

(N. ¥.) 486; New York Ins. Co. v. Roulet, 24 Wend. 504-

514; Mayne v. Griswold, 2 Sandf. (Sup. Ct. N. Y.) 463;

Saitly v. Elmore, 2 Paige, 497; Labadie v. Hewitt, 85 Illi-

nois, 341; McNab v. Heald, 41 Illinois, 326; Crass v. R. R.,

96 Alabama, 447; Hardeman v. Batterlea, 53 Georgia, 36.

The act of June 25, 1910, does not evidence any intent

to oust equity when its jurisdiction had attached because

there is no expression, and the act is not retroactive.

Mr. Cuter Justice Wuire delivered the opinion of the

court.

The defendant, a corporation organized under the laws

of the German Empire, commenced this suit on June §,

1907, in the Supreme Court of the District of Columbia.

Relief was sought because of alleged infringements of

three described letters patent of the United States, origi-

nally issued in the name of Fried. Krupp and assigned to

the corporation. Two of the patents, numbered 722,724

and 722,725, were granted in 1903, and the third, issued

in 1905, was numbered 791,347. The patents related to

improvements in guns and gun carriages. The petitioner

here, William Crozier, was named as sole defendant in the

bill.

After full averments as to the issue of the patents and

the assignments by which the plaintiff had become the

owner thereof, it was charged that the defendant Crozier

well knowing of the existence of the patents “in violation

and infringement of said letters patent and of the ex-

clusive rights granted and secured under said letters

patent . . . since the seventeenth day of March,

298 OCTOBER TERM, 1911.

Opinion of the Court. m8.

1903, and within the period of six (6) years prior to the

filing of this bill of complaint, in the city of Bridgeport.

State of Connecticut, and in the Watervliet Arsenal im

the State of New York, and in the Rock Island Arsene!

in the State of Illinois, . . . and elsewhere in the

United States,’ has ‘“‘made and used, or caused to be

made and used, is now making and causing to be made

and used and threatens and intends to continue to make

or cause to be made and to use and cause to be used,”

guns and recoil-brake apparatus and guns and gun car-

riages embodying the inventions owned by the complain

ant, in violation of the rights secured by the patents.

The prayer was for a preliminary and a permanent

writ enjoining the defendant “his agents and employes.

from making or using or causing to be made or used any

guns or gun carriages or other devices which shall contain

or employ the inventions or any of the inventions covered

and secured by said letters patent or any of said letters

patent.” There was also a prayer that the defendant

“‘may be compelled to account for and pay over to your

orator all the profits which the defendant has or had

derived from any making or using of any gun or any

specimen or device covered and secured by said letters

patent or any of said letters patent, and that also the

defendant be decreed to pay all damages which your

orator has inéurred or shall incur upon account of defend-

ant’s infringement of any of said letters patent, with such

increase thereof as shall be meet. ao

A stipulation was filed in the cause, in which, while

expressly reserving the right of the defendant “‘to demur

or otherwise plead to the bill of complaint, because of lack

of jurisdiction on any ground, it was agreed as follows:

“The complainant stipulates that no pecuniary benefit

has accrued to the defendant, William Crozier, by reason

of the acts set forth in the bill, and complainant waives

any claim against said defendant for an accounting of the

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OCTOBER TERM, 1911.

Opinion of the Court. 224 U.S.

devices which shall contain or employ the inventions

or any of the inventions covered and secured by said

letters patent or any of said letters patent.’

“Paragraph XXXIII of said bill of complaint shall

be amended so as to eliminate and expunge from said

paragraph the following words:

“by a decree of this court may be compelled to account

for and pay over to your orator all the profits which the

defendant has or had derived from any making or using of

any gun or any specimen or device covered and secured by

said letters patent or any of said letters patent, and that

also the defendant be decreed to pay all damages which

your orator has incurred or shail incur upon account of

defendant’s infringement of any of such letters patent,

with such increase thereof as shall seem meet, and that

also the defendant’

‘“‘so that the paragraph marked XXXIII when so

amended shall read as follows:

‘“**And your orator further prays that the defendant

be decreed to pay the costs of this suit and that your

orator may have such other and further relief as the

equity of the cause or the statutes of the United States

may require and to this court may seem just.’”’

The defendant demurred to the amended bill on various

grounds, all of which, in substance, challenged the juris-

diction of the court over the cause on the ground that

the suit was really against the United States.

The demurrer was sustained and the bill dismissed.

The Court of Appeals reversed and remanded the cause for

further proceedings not inconsistent with its opinion.

32 App. D. C. 1.

The court held that there was a broad distinction be-

tween interfering by injunction with the use by the United

States of its property and the granting of a writ of in-

junction for the purpose of preventing the wrongful

taking of private property, even although the individual

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CROZIER v. KRUPP. 301

2% U.S. Opinion of the Court.

who was enjoined from such taking was an officer of the

Government, and although the purpose of the proposed

taking was to appropriate the private property when

taken to a governmental purpose. The cases of Belknap

y. Schild, 161 U. S. 10, and International Postal Supply

Company v. Bruce, 194 U. S. 601, were analyzed and

held to be apposite solely to the first proposition, that is

the want of authority to interfere with the property of the

United States used for a governmental purpose. The

court said:

“It will thus be seen that in the Belknap and Bruce

Cases the subject-matter involved was property of the

United States, and that, therefore, the United States was

necessarily a party. In the present case it is not sought

to disturb the United States in the possession and use

of the guns already manufactured. The court is not

asked to deal with property of the United States. The

plaintiff simply asks that an officer of the United States

be restrained from invading rights granted by the Govern-

ment itself. The acts complained of are not only not

sanctioned by any law, but are inconsistent with the

patent laws of the United States.”

A writ of certiorari was thereupon allowed.

The arguments at bar ultimately considered but affirm

on the one hand and deny on the other the ground of

distinction upon which the court below placed its ruling

and by which the decisions in Belknap v. Schild and

International Postal Supply Company Vv. Bruce were held

to be distinguishable from the case in hand, and therefore

not to be controlling. Thus the Government insists that

although under the stipulation and the bill as amended,

it resulted that no damages were sought in respect to use

by the Government of the patented inventions, and no

interference of any kind was asked with property belonging

to the Government, nevertheless the suit was against the

United States, because the defendant was conceded to be

302 OCTOBER TERM, 1911.

Opinion of the Court. 224 U.S.

an officer of the Army of the United States, engaged in the

duty of making or causing to be made guns or gun carriages

for the Army of the United States. This, it is contended,

is demonstrated to be the case by considering that the

right to enjoin the officer of the United States, which the

court below upheld, virtually asserts the existence of a

judicial power to close every arsenal of the United States.

On the other hand, the plaintiff insists that the act of the

officer in wrongfully attempting to take its property

cannot be assumed to be a governmental act, but must

be treated as an individual wrong which the courts have

the authority to prevent. The exertion of the power to

enjoin a wrong of that nature in order to prevent the il-

legal conversion of private property is, it is urged, a mani-

festly different thing from using the process of injunction

to interfere with property in the possession of the Gov-

ernment and which is being used for a public purpose.

But we do not think, under the conditions which presently

exist, we are called upon to consider the correctness of

the theory upon which the Court of Appeals placed its

decision or the soundness of the contentions at bar by

which that theory is supported on the one hand or assailed

on the other. We reach this conclusion because since

October 7, 1908, when the decision of the Court of Appeals

was rendered, the subject to which the controversy

relates was dealt with by Congress by a law enacted on

June 25, 1910, 36 Stat., c. 423, p. 851, as follows:

“‘An Act To provide additional protection for owners of

patents of the United States, and for other purposes.

** Be tt enacted by the Senate and House of Representatives

of the United States of America in Congress assembled,

That whenever an invention described in and covered by

a patent of the United States shall hereafter be used by

the United States without license of the owner thereof

or lawful right to use the same, such owner may recover

reasonable compensation for such use by suit in the Court

CROZIER v. KRUPP. 303

224 U.S. Opinion of the Court.

of Claims: Provided, however, That said Court of Claims

shall not entertain a suit or reward [sic] compensation

under the provisions of this Act where the claim for com-

pensation is based on the use by the United States of any

article heretofore owned, leased, used by, or in the posses-

sion of the United States: Provided further, That in any

such suit the United States mey avail itself of any and all

defenses, general or special, which might be pleaded by a

defendant in an action for infringement, as set forth in

Title Sixty of the Revised Statutes, or otherwise: And

provided further, That the benefits of this Act shall not

inure to any patentee, who, when he makes such claim

is in the employment or service of the Government of the

United States; or the assignee of any such patentee; nor

shall this Act apply to any device discovered or invented

by such employé during the time of his employment or

service.”

The text of this statute leaves no room to doubt that

it was adopted in contemplation of the contingency of the

assertion by a patentee that rights secured to him by a

patent had been invaded for the benefit of the United

States by one of its officers, that is, that such officer under

the conditions stated had infringed a patent.

The enactment of the statute, we think, grew out of

the operation of the prior statute law concerning the right

to sue the United States for the act of an officer in in-

fringing a patent as interpreted by repeated decisions of

this court. United States v. Palmer, 128 U. 8. 62; Schil-

linger v. United States, 155 U. S. 163; United States v.

Berdan Fire-Arms Mfg. Co., 156 U. S. 552; Russell v.

United States, 182 U. S. 516; Harley v. United States, 198

U.S. 229. The effect of the statute was thus pointed out

in the last cited case. (198 U. S. p. 234.)

“We held in Russell v. United States, 182 U. S. 516,

530, that in order to give the Court of Claims jurisdiction,

under the act of March 3, 1887, 24 Stat. 505, c. 359,

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304 OCTOBER TERM, 1911.

Opinion of the Court. 224 U.S.

defining claims of which the Court of Claims had juris-

diction, the demand sued on must be founded on ‘a con-

vention between the parties—a coming together of minds.’

And we excluded, as not meeting this condition, those

contracts or obligations that the law is said to imply from

a tort. Schillinger v. United States, 155 U. 8. 163; United

States v. Berdan Fire-Arms Mfg. Co., 156 U. S. 552.”

In other words, the situation prior to the passage of the

act of 1910 was this. Where it was asserted that an officer

of the Government had infringed a patent right belonging

to another—in other words, had taken his property for the

benefit of the Government—the power to sue the United

States for redress did not obtain unless from the proof

it was established that a contract to pay could be im-

plied—that is to say, that no right of action existed

against the United States for a mere act of wrongdoing

by its officers. Evidently inspired by the injustice of this

rule as applied to rights of the character of those embraced

by patents, because of the frequent possibility of their

infringement by the acts of officers under circumstances

which would not justify the implication of a contract,

the intention of the statute to create a remedy for this

condition is illustrated by the declaration in the title

that the statute was enacted “to provide additional

protection for owners of patents.” To secure this end,

in comprehensive terms the statute provides that whenever

an invention described in and covered by a patent of the

United States “‘shall hereafter be used by the United

States without license of the owner thereof or lawful

right to use the same, such owner may recover reasonable

compensation for such use by suit in the Court of Claims.”

That is to say, it adds to the right to sue the United

States in the Court of Claims already conferred when con-

tract relations exist the right to sue even although no ele-

ment of contract is present. And to render the power

thus conferred efficacious the statute endows any owner of

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CROZIER v. KRUPP. 305

224 U.S. Opinion of the Court.

a patent with the right to establish contradictorily with

the United States the truth of his belief that his rights

have been in whole or in part appropriated by an officer of

the United States, and if he does so establish such ap-

propriation that the United States shall be considered

as having ratified the act of the officer and be treated

as responsible pecuniarily for the consequences. These

results of the statute are the obvious consequences of the

power which it confers upon the patentee to seek redress

in the Court of Claims for any injury which he asserts

may have been inflicted upon him by the unwarranted

use of his patented invention and the nature and character

of the defences which the statute prescribes may be made

by the United States to such an action when brought.

The adoption by the United States of the wrongful act

of an officer is of course an adoption of the act when and as

committed, and causes such act of the officer to be, in

virtue of the statute, a rightful appropriation by the

Government, for which compensation is provided. In

substance, therefore, in this case, in view of the public

nature of the subjects with which the patents in question

are concerned and the undoubted authority of te United

States as to such subjects to exert the power of eminent

domain, the statute, looking at the substance of things,

provides for the appropriation of a license to use the

inventions, the appropriation thus made being sanctioned

by the means of compensation for which the statute

provides.

This being the substantial result of the statute, it

remains only to determine whether its provisions are

adequate to sustain and justify giving effect to its plain

and beneficent purpose to furnish additional protection

to owners of patents when their rights are infringed by

the officers of the Government in the discharge of their

public duties. This inquiry may be solved, under the

conditions here involved, by taking the most exacting

VOL. CCXxIv—20

et ae

306 OCTOBER TERM, 1911.

Opinion of the Court. 224 U.S.

aspect of the well established and indeed elementary

requirements in favor of property rights essential to be

afforded in order to justify the taking by government of

private property for public use.!' Ladisputably the duty

to make compensation does not inflexibly, in the absence

of constitutional provisions requiring it, exact, first, that

compensation should be made previous to the taking—

that is, that the amount should be ascertained and paid

in advance of the appropriation—it being sufficient, hav-

ing relation to the nature and character of the property

taken, that adequate means be provided for a reasonably

just and prompt ascertainment and payment of the com-

pensation; second, that, again always having reference

to the nature and character of the property taken, its

value and the surrounding circumstances, the duty to

provide for payment of compensation may be adequately

fulfilled by an assumption on the part of government

of the duty to make prompt payment of the ascertained

compensation—that is, by the pledge, either expressly

or by necessary implication, of the public good faith to

that end.

Coming to apply these principles and confining ourselves

in their application, as we have done in their statement,

strictly to the conditions here before us, that is, the in-

tangible nature—patent rights—of the property taken,

the great possibilities in the essential operations of govern-

ment that such rights may be invaded by incorporating

them into property of a public character, of the vital

public interest involved in the subject-matter of the

patents in question and the grave detriment to the very

existence of government which might result from inter-

ference with the right of the Government to make and use

' United States v. Russell, 13 Wall. 623; Cherokee Nation v. Southern

Kan. Ry. Co., 135 U.S. 641; Sweet v. Rechel, 159 U. S. 380; see Lewis’

Kminent Domain, 3d ed., vol. 2, §§ 675, 679, and Cooley Cons. Lim.,

7th ed., p. 813.

sens

CROZIER v. KRUPP. 307

224 U.S. Opinion of the Court.

instrumentelities of the character of those with which the

patents in question are concerned, of the purpose which

the statute manifests to add additional protection and

sanction to private rights, and the pledge of the good

faith of the Government which the statute plainly implies

to appropriate for and pay the compensation when as-

certained as provided in the statute, we think there is no

room for doubt that the statute makes full and adequate

provision for the exercise of the power of eminent domain

for which considered in its final analysis it was the purpose

of the statute to provide. Indeed, the desire to confine

ourselves to the particular case before us has led us to

state and limit the doctrine which we here apply, when it

was possibly unnecessary to do so. We say this because

no contention was made in argument by counsel for the

corporation that the statute of 1910 does not provide

methods of compensation adequate to the exercise of the

power of taking for which the statute provides. Thus,

in the argument, it is said: “If the officers of the United

States have since the act . - - used or shall hereafter

use complainant’s patented design, it is possible or probable

that complainant may receive reasonable compensation

under the act in the Court of Claims,’’—this statement be-

ing followed by an insistence that even although this be the

case the statute is not controlling because it was enacted

after the bill was filed and did not therefore retroactively

deprive the court below of the power to afford relief under

the conditions existing when the suit was. commenced.

The conclusion of the arguinent on this subject was thus

stated:

“The general rule is that where jurisdiction in equity

has been established a subsequent statute creating &

remedy at law or removing the obstacle at law upon

which the existence of the equity jurisdiction was origi-

nally founded does not oust equity of that jurisdiction

unless the statute affirmatively discloses the legislative

308 OCTOBER TERM, 1911.

Opinion of the Court. 224 U.S.

intent to make the legal remedy exclusive . . . We

cannot discover in the act of June 25, 1910, any evidence

of an intent to oust equity when its jurisdiction had at-

tached, because there is no expression and the act is not

retroactive.”

But this contention is either an afterthought or is

occasioned by overlooking the amendment to the pleadings

operated by the stipulation to which we have hitherto

referred. By that stipulation every conceivable claim

based on the prior use of infringing devices was withdrawn.

The prayer for a preliminary restraint was waived and

ail right to an accounting was likewise withdrawn. As

a result the case was confined solely to obtaining at the

end of the suit a permanent injunction forbidding the

making of, or causing to be made by the defendant,

guns or gun carriages embodying the inventions owned

by complainant.

Upon the hypothesis that the decree of the court below

remanding the case for further proceedings not incon-

sistent with its opinion was correct under the conditions

existing when it was rendered, clearly under the circum-

stances now existing, that is, the acquiring by the Gov-

ernment under the right of eminent domain, as the result

of the statute of 1910, of a license to use the patented

inventions in question, there could be no possible right

to award at the end of a trial the permanent injunction

to which the issue in the case was confined. Moreover,

taking a broader view and supposing that a final decree

granting a permanent injunction had been entered beiow,

in view of the subject-matter of the controversy and the

right of the United States to exert the power of eminent

domain as to that subject, at most and in any event the

injunction could rightfully only have been made to operate

until the United States had appropriated the right to use

the patented inventions, and as that event has happened

the injunction, if granted, would no longer have operative

Daa Con SELECT OSE ee ae eee peNta ke . SSA TE geyyess Sl gg ee

UNITED STATES v. ANCIENS ETABLISSEMENTS. 309

224 U.S. Syliabus.

force. It follows that the decree of the Court of Appeals.

must be reversed with directions to that court to affirm the

decree of the Supreme Court of the District of Columbia

dismissing the bill, without prejudice however to the right

of the defendant here, who was the complainant below,

to proceed in the Court of Claims in accordance with the

provisions of the act of 1910.

Reversed and remanded.