Appendix — Richmond Screw Anchor Co. v. United States

Supreme Court brief1928

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APPENDIX.

Act of June 25, 1910, Chap. 423, 36 Stat., 851.

*4n Act to Provide Additwual Protection for Owners

of Patents of the United States, and for Other Pur-

poses.

**Be it enacted by the Senate and House of Repre-

sentatives 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 of Claims: Provided,

however, that said Court of Claims shall not entertain

a suit er reward (sic) compensation under the provi-

sions of this act where the claim for compensation is

based on the use by the United States of any article

heretofore owned, leased, used by, or in the possession

of the United States: Procided further, that in any

such suit the United States may 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 Tithe 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 emplove during

the time of his employment or service."’

- —

Act of June 25, 1910, c. 423, 36 Stat., 851, Amended

July 1, 1918, c. 114, 40 Stat.

“Whenever an invention described in and covered

by a patent of the United States shall hereafter be

used or manufactured by or for the United States

without license of the owner thereof or lawful right to

use or manufacture the same, such owner’s remedy

shall be by suit against the United States in the Court

of Claims for the recovery of his reasonable and en.

Ure compensation for such ase and manufacture: [ro

ceded, howerer, That said Court of Claims shall not

entertain a suit or award compensation under the pro.

Visions of this act where the claim for compensation is

based on the use or manufacture by or for the United

States of any article heretofore owned, leased, used by,

er in the PONsession of the United States: Proriuded

further, That in any such suit the United States may

avail itself of any and all defenses, general or special,

that might be pleaded by a defendant in an action for

tnfringement, as set forth in Tithe Sixty of the Revised

Statutes, or otherwise: And proceded further, That the

benefits of this act shall net inure to any patentee ¥ ha,

when he makes such clanum, is in the emplowment or

wervice of the Government of the United States or the

assignee of any such patentee; nor shall this act apply

te any des tee discovered or ive ntexl bey sueh employee

during the time of his employment or service.”’

United States Revised Statutes, Section 3477

“All transfers and assignments made of any claim

upon the United States, or of any part or share thereof,

or interest therein, whether abselute or comiditronal,

and whatever may be the consideration therefor, and

all powers of attorney, orders, or other authorities for

—_—

receiving payment of any such claim, or of any part or

share thereof, shall be absolutely null and void, unless

they are freely made and executed in the presence of

at least two attesting Witnesses, after the allowance of

such a claim, the ascertainment of the amount due,

and the issuing of a warrant for the payment thereof.

Such transfers, assignments, and powers of attorney,

must recite the warrant of payment, and must be

acknowledged by the person making them, before an

officer having authority to take acknowledgements of

deeds, and shall be certified by the officer; and it must

appear by the certificate that the officer, at the time of

the acknowledgement, read and fully explained the

transfer, assignment, or warrant of attorney to the

person acknowledging the same."’

(2653)

Paper et $

Pt NS A i cath elg: See ni i

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a ~ SHO

INDEX.

———

The grounds of jurisdiction.......................

i I et as ny eek che beeen

I. That it was error to dismiss the petition

(a) Because of the use by defendant of

S10 infringing beams after March 7,

EE. SES UeKdAUeMaeN Sacdsesusens

(4) Because of the manufacture of 810 in

fringing beams by contractors for,

and delivery to, defendant January

i ME POR eCeserendtacomnés secs

1c) Because the assignment to petitioner

in governed by Sec. 4898 and Rec.

S477 does not apply... ..

Il. That the patent in suit is adjudicated valid

i CLL ca cccchpene dudbieieesees

I1l) That petitioner should recover as damages

ia) Installation saving of $103,480... ...

(6) Interest on that saving from January

Ry Wh Sho se eee hecanverveneecis

Argument SPuares Coulee tauschuKtb die kok bees as

A. Because of infringement by use since

petitioner acquired tithe. ..........

Bo Because the claim against contractors

was assignable and liability for it was

assumed by defendant... ...

(See S477 dees not apply to any part of

Ge A 6-0 eens cbs Cebsaebbvceeces

n-40

Hee |

Point A. Use by the United States after March

7, 1921, supports the Petition... 00... ...,

Court of Claims erred in holding that

infringement terminated with installa.

ANE 6

Act of 1910 construed to show this... .

Act of 1918 identical as to this point. .

Another situation would have arisen had

installation saving been paid or license

ne use since Mareh 7, 1021, is erro

neous -. 2... ceWcikuduis ess kée xc

Pont Bo Claim against contractors was assign

able under US ROS 80S and US ROS

S77 does not apply to liability of United

States for mame et ceeeeean

Argument from Blias Co ov United

States, 267 US 76... hicuaae

Argument from Nperry vo Arma, 271

Ws Wh ce ceecesocees

serves all of the patentee's rights as

against the contractom is clearly Indi

cated , eT hese

Assignability of that claim not lost by

Act of 1918 Analogy of Miller 4

Robertron, HH UR LEN

If lewt agninest United States it «stands

gel against contractors themaelves,

elee Act of 1918 is unconstitutional

ot)

Bae |

Pace

Defendant's theory of legislative intent

of Act of 1918 in connection with U.

cade Fin SPO RETO TT Te na 13

Historical analysis of legislative intent

Oe MP OE Pv dhs <ie6 bidenes cee. 13

Defendant's contention unsound....... 15

It would thwart the policy of the

Act and defeat the intention of

SD Aisha baNeWitive ccoccces 15

For example, multiplicity of

actions against United States

might result .......000.... 16

Constitutional argument) sustains Peti

Hloner's contentions ax to Act of 191s. it

Also the provisos on the face of the Act. 17

Post (. U. 8 ROR. 3477 not applicable to

assigninents of claims for past infringe

ments of patents by the United States, IS-24

Contrary obiter dictum of Brothers vy.

I nited States, OU OR SS, should

Be voromaidered.. ... oe. cece cas 1s

Assignments of patents and the inci

dents thereof are governed by UL 8.

KOS 4808 and not by US. ROR 8477. 19

Acts of 1910 and 1918 are remedial and

so should be liberally construed... .. 19

Patent property peculiar and the crea.

ture of statute law, ax well as rules

for its transfer and the transfer of its

incidents Crovon Lie Oe. Vv. Awe Tool

fo, 2610. 8 24, considernd. |. : “0

Specific rather than general laws gov

are TERA TCT Ter _ 23

Ne public interest jeopantized or in

Velved in limiting UR ROR 44TT

ae het to apply to assignments of pat

ents of of claims for the infringement

Oe Ne Fe ee nacthocccnccdecusks 23

Il. Patent in suit found valid and infringed by

Court of Claims and covers an epoch-mak.

§ EPT TTT TET TET TTT

LIL. Petitioner entitled to recover $1038 480 and

PE ow bon60 Sue Cennneba Kobe de 50% 00

Savings by the infringements total

S103480 and are recoveruble as the

equivalent or substitute for legal dam

ages under authority of this Court.

Petitioner entitled to recover that sum

(1) True, if US ROS. S477 has no

ere eT ere

(2) True even if UL BR RO OS. BATT

limits Petitioner to recovery for

use after March 7, 121.......

Such use was usufruct of installa

tien tert and $103,480 was

saved in that use as compared

with the cost of use of an equal

number of prior art beams... ..

For example, immunity from

injunction saved Respond

ent replacement costs... .

(3) Even if Uo BR BR. OS. S477 relieves

United States from liability to

Petitioner for its own separate

infringements prior to March 7,

1921, that Section hax no effect

to relieve the United States

from liability for the damage

that would have been recover

able from the contractors but

for the Act of 1918...........

rea

nS)

(a) Use by United States after

March 7, 1921, clinches

its liability for the full

saving on installation.. .

ib) $103,480 would have been

recoverable by patentee

from contractors (but

for Act of 1918) either

as saving made by them

or by United States... .

They and the United

States were joint

tort feasors .......

Law of several liability

of joint tort feasors.

Assignability. of that

claim against con-

og eee ee

What is the effect of

the Act of 1918 upon

that assignability in

view of U. BR. BS.

DEEE kc beiucsinesas

IV. An additional compensation should — be

awarded equal to interest on $103,480, from

Jan. 1, 1919, on analogy of “just compen-

sation” cases in this Court under the Sth

Amendment to the Constitution. .........

V. Finding asx to established license fee for

those who took licenmes...............--

a, SE 5 Cu bascnk beans Che eae eee eee

PaGE

37-40

TABLE OF CASES

Pace

Atlantic & Pacific Ry. Co. ev. Laird, 164 U. 8. 393. ... 35

Masues ©. Alemnader, 33 U. B. FIT... cece ccccess 19

Beaconstield, The, 158 U. hago paebep ace 46s6 6460808 uM

Beidler ¢. United States, 258 U.S. 447.000. 1

lias cr. United States, 258 US IST. ok. 1.10

Brooks Seanlon Corp. c. United States, 265 0 8) 106,

DP SU eReGRAhGdeS6G40 605 bOG6S0ccenececcecees 37,29

Brothers ¢ United States, 250 US ss.0000000000. 4, 18,19

GQaweed Patent, O6 U. H. GOB... wc ccc ccc cccsccccss a es

(lay oe. Watera, iG) Ped. SIS... 2.1... cece cee x i}

Congressional Record, 65th Congress, Second Session,

Proceedings June 1S, 1918, p. TO61, 246 Ped 721 Bs

Coupe c. Rover, 155 U. ®. 565................. P aa)

Cramp c. International Curtis Co. 246 US Us...) 618

Crown Die & Tool Co. 6 Nye Machine Works, 261

DL cctegseeee Owe ale 6660 ess 60 a0 i + 4

Crozier ¢ Krupp Abtiongrastior haft, 224 U8. 200... 8

Elizabeth ¢ Pavement Co, 97 US 126, Its, 149. at

Gavier « Wilder, 10 How. 477, 494. ad |

Gierdon ¢ Anthony, 16 Blatehf, 244............ 2

firigeby ¢ Rosell, 222 US 149... i9

Logan ¢ Davis, 2281 S618 ar)

Lovejoy © Murray, 70U 8 ot Walls I uM

Marconi Wireless Tel Co fr Simeon, 2460 SS oi6 "

227 Ped 906 6

Stl Pet 1021 ale "

Mast, Pom & Co or Stover, WTe a ; 19

Mevs © Conover, 125 T SS 148, — note. . wy

Miller «¢ Robertson, 266 1S 24, 12, 26, 37

Mowry ¢ Whitney, SIT SS tw all + 620, 653 “

Pheips ¢ United States, US Adv Ops Jane 1, 1927,

p ow 17, 37, 28

Phoenix Ins (% © The Atlas, O82 1 RS Bee 45

PAGE

Root v. Railway Co., 105 U 8. 189, 202, 208......... 30

Seaboard Air Line Ry. Co. cv. United States, 261 U. 8.

Ph GE sth hi eta Veteeuh wha see ere salaries 37,39

Goto ©, Jonmeen, GS UO. B. BEF vis ccccsvcvvusvececs 34

Sperry ¢. Arma Engineering Co. 271 Ul 8. 282.000... 7,11

Standard Oi Co. er. United States, 267 UL SB. 76.0.2... 10

Starr Piano Co. c. Auto Pheumatic Co., 12 Fed. (2nd)

SD in e006 65-64.056 084654 2bn basa neon eee lee 38

Thomson vr. Wooster, PAUL S18. ee. 30

Tilghman cr. Proctor, 125 UL 8. 136............... 30, 40, 41

Townsend vc. Little, 109 U.S. 504, 512. .............. wa

United States co Benedict, 261 UL BS. 294.000.0000... 37,39

United States ro Brown, 263 U.S. 782.000.000.000... 37

United States c. Corbett, 215 Ul 8. 23a... . 000000008. 19

United States ©. Sargent, 162 Fed. S1,S84............ 3g

Washington rc. Miller, 235 Ul SB. 4e.. 0... ee >

Wood «. Atlantic Co., 296 Fed. 71S, 720, T21........ 14

TENT BOOKS.

Robinson on Patents, Vol 3. po bl, § O87... 000. 4

Robinson on Patents, Vol. 3, p. 528, § 1ID4....000... 41

STATUTES

PSC Tithe 31, See 205) May 27, 1908, © 206,35 Stat,

| 411; 0. § RS. Ree, BATT. UL Comp Stat See.

SUED Sukcorek vibuune deed6 tse ku bed uno 1,44

oS Tithe 35, See 47 «Mar. 3, 1897, « $91, €5, 29

Stat. 602; Feb IS, 1822. 6. SS, £6. 42 Stat, B91;

[ SS ROS See fs0s; Uo oS Comp. Stat. See,

DEEED eebweekes6o%444 045 baeecneueeeE Co 2, 45

| OS © Title 35. See 68 (Act of June 2h, TM1O, ee 428,

| $6 Stat Sol; US Comp. Stat. See $465+....... 2.43

UR © Title a5, Ree. GSC Act of June 25, 1910,

amended July 1, 1918S, « 114, 40 Stat 705: 8

Comp. Stat. Sec. 9465). .

EES BI EAN ONE N ERR ng IR DOORS NER, Ch ty oe: —

Supreme Court of the United States,

OCTOBER TERM, 1927.

No. 9,

RichMOND Screw ANCHOR CO., INC.,

Petitioner Plaintif,

Vs. Ou Writ of Certiorari

to the Court of Claims.

Tuk UNITED STATES,

Respondent: Defendant.

—e J

BRIEF FOR PETITIONER.

The grounds of jurisdiction are these:

1. The date of the judgment to be reviewed was May 3,

1926 (KR. 25).

2. The judgment was rendered by the Court of Claims

in a suit brought under U. 8. ©. Title 35, Sec. 68 (Act of

June 25, 1910, amended July 1, 1918, ¢. 114, 40 Stat. 705;

oS Comp. Stat, See $465) for infringement of Letters

Patent and the Petition was dismissed by that court on the

ground of failure of plaintiffs tithe under U. 8. C. Title 31,

Bec, 203 (May 27, 1908, ¢ 206, 35 Stat. 411; U8. RR. Bee.

377; U.S. Comp. Stat. Bec, 6383).

3. The statute under which jurisdiction is invoked is

U.S.C. Tithe 28, Rec, 347 (Act of Feb. 13, 1925, ¢ 229, § 1,

43 Stat. Ws, amending Bec 240(a) of the Judicial Code;

Mar. 3, 1911, © 231, § 240, 36 Stat. 1157; U. 8. Comp. Stat.

Bec 1217+. The Petition for Writ of Certiorari and Hrief in

support thereof were filed and served on July 30, 1926, and

the order granting the Petition was filed October 25, 1926.

4. The cases believed to sustain the jurisdiction are those

arising under the patent laws such as

Keidler v. United States, 253 UB. 447;

Bliss v. United States, 253 U. 8. 187.

Statement of the Case.

This is a suit for infringement by the United States of

Letters Patent No. L2zs,120 to Melchior Lenke, May 29,

1917, for Cargo Beam and is brought under U.S.C. Title 35,

Sec 6S (Act of June 25, 1910, amended July 1, IYIS, © Lis,

40 Stat. 705; UL ©. Comp. Stat. Sec. $465), and the true

intent and meaning of that Act is involved and the meaning

and application of U8. Title 31, See. 203 ( May 27, 1Ys,

ce. 206, 35 Stat. 411; US. ROS. Bee. 34775 UL Comp. Stat.

Sec. 6383), declaring transfers and ussignments of claims

upon the United States absolutely null and void, and alse

the application of USC. Tithe 3S, See 47 (Mar 3, 1S97, &.

$91, $5, [YU Stat. G92; Feb. Is, ez, 6. Ss, 66. 42 Stat 391;

UB. ROS See 4805; 008. Comp. Stat Sec. G44).

In an Appendix at the end of this brief w iL) be found thee

statutes and alse the Act of June 25, 1910, and as it Was

amended by the Aet of July 1, 19is cansre, p. 42).

The patent imued on May 29, 1917 to Melebior Lenke for

a structure constituting a cargo beam and its support. The

Court of Claims found the patent valid and infringed

The inventive idea was to so construct the borizental

cargo beam that when joaded it would sWing about a horizon

tal axis and into the resultant plane of the load stresses

whereby its metal is 100°C efficient in all jeewitions This

saved 2000 pounds of metal per beam. The Court of Claims

found the market price of the metal as 6). cents per pound

This comes to $130 per beam and $105,300 for S10 Lerch tui

but owing to a smaller saving in a few cases SLUG ISO was

found by the Court of Claims to be the total say ing

On January 1, 1919, S10 of the Mttented structans were

manufactured for and deliversd to the United States by con.

tractors and were thereafter and have been since that time

ued by the United States

On September 20) 120, Lenke assigned the Letters

Patent to Thomas E. Chappell, and on March 7, 1921, said

—

Chappell in turn assigned the Letters Patent to the Peti-

tioner, together with the right to recover for all past infringe-

ments.

The Court of Claims held that the only infringement by

the United States occurred at the time of the installation

(January 1, 1919) and not afterward, and that, as Petitioner

was not owner of the patent then but a subsequent assignee,

Petitioner's tithe, under UL S. Ro OS. 3477 and Brothers y.

United States, 250 U.S. S88, failed, and it dismissed the

Petition.

Our contentions are:

1. That it was error to dismiss the Petition—

(a) Beenuse of the use of S10 of the patented structures

by the United Statex after March 7, 1921, when Petitioner

acquired title to the patent: for the Aet of 1918 did not give

the United States a license to use after the manufacture and

delivery of the S10 infringing cargo beams to it by the con-

tractors on danuary 1, 190%) and so that use by the United

States after March 7, 1921, was an infringement of the

patent, and that use, in and of itself and without more, sup:

| perts the Petition and entitles Petitioner to a money re-

covery under the findings of fact made by the Court of

Claims; and further

(hb) Because of the manufacture of S10 of the patented

structures by the contractors for the United States on Jan-

wary 1, 1919; for that manufacture and sale was an infringe.

ment of the patent hy the contractors, the right to recover

for which was assignable under the patent statutes as an

incident of the assignment of the patent, and by the Act of -,

ISIS responsibility for the reasonable and entire compensa.

tion for that infringement hy the contractors was placed upon Y

and assumed by the United States (which presumably would

include the incident of the ussignability of the claim) and was

made recoverable in the Court of Claims from the United

States; and that infringement by the contractors, in and

ee Wa a ne ae oe ee tt ee, ee oe

of itself and without more, supports the Petition and entitles

Petitioner to a money recovery under the findings of fact

made by the Court of Claims; and further |

(ce) Because more generally Ul 8S. Ro OS. 3477 is hot

applicable to any branch of the claim against the United

States for infringement prior to March 7, 1921, either as a

joint tort feasor with the contractors in the manufacture for

it of the 810 infringing carge beams, on January 1, 1919, of

as the user of those S10 cargo beams from January 1, 1919,

to March 7, 1921; for the assignability of those branches of

| |, the claim is determined by the patent statutes, US RO®

4859S, as an incident of the ussignability of the patent itself,

and to that extent and in that respect US. ROS. 3477 jis

inapplicable and without effect on Petitioner's title

If. That under the findings of fact made by the Court of

Claims the Lenke patent in suit No. 1,228,120 for Cargo

Beam, May 29, 1917, ix valid and was infringed by the making

and selling and using of the S10 cargo beams referred to.

Hil. That under the findings of fact made by the Court of

(Claims, the Petitioner is entitled to recover from the United

States:

(a) the capital saving realized by the adoption of the S10

patented cargo beams as compared with the best available

cargo beams of the prior art, namely, $103,480, and

(4) interest on that capital sum vear by vear from Janu

ary 1, 1919, to date of final decree

PM PR ee at 2 et tee ee eee. oe ee

—_

ARGUMENT.

I. It was error for the Court of Claims to dis-

miss the Petition.

A. Because of the use of the patented structure made by

the United States after re etitioner’s ow nership of the patent

began.

B. Because of the axsigna bility vy under the law of the claim

of the then owner of the patent agiinet the contractors for

compensation for the manufacture “of the patented-xtruct ures

by them for the United States on January 1, 1919, and the

substitution of the United States for the contractors by the

Act of 140s in liahilitw for the reasonable and entire com-

pensation for that infringement, and

C. Because of the nonapplicuability of UL oS. Ro 8. 3477

under the cirenmstances of the ease at bar to any part of the

present claim against the United States and the applicability

of US ROS AS8s to every part of that claim.

POINT A.

“Use by” the United States after March 7, 1921. when

Petitioner's ownership of the patent began was in itself an

infringement of the patent and without more supports the

Petition and entitles the Petitioner to recovery under the

findings of fact made by the Court of Claims.

The Court of Claims said in its second opinion, after

analyzing the nature of the invention (R. 23):

“Therefore, when the intended design of the patentee is

accomplished, When use of the patent device occurs, it

nust necessarily be when the beam ix installed.”

This was clear error, unless the Vet of 1978 gare a license to

the United States to use from the date of the installation on

to the end of the term of the patent

—

For it treats the invention and the claims of the patent as

if they were for a method or process of constructing a cargo

beam, whereas they are for the finished cargo beam structure

itself. The sole right of installing (i. ¢, of manufacturing

and selling) finished cargo beam structures is only apart

of the monopoly granted by the patent. That monopoly

includes also the sole right to use the installed cargo beam

structures throughout the term of the patent.

Use of the patented structure by the United States after

Petitioner's ownership of the patent began invaded the

monopoly of the patent and trespassed upon the Petitioner's

rights thereunder and for this trespass suit clearly lies in

the Court of Claims under the Act of 1918, unless something

in that Act licensed that use under the circumstances of the

present case.

Counsel for the United States argued the theory of license

to the Court of Claims and the Court of Claims in dismissing

the Petition apparently must have assumed that theory

But this Court has held that under the similar Act of

1910 there did not arise a license in faver of the United States

to use patent rights This holding was made in Cramp ¥

International Co, 246 US. 28, and was applied in Marconi

Wireless Tel Coy. Simon, 246 UR 46

Prior to those decisions the district courts and cirenit

courts of appeals (¢, g, in Marconi Wireless Tel Coy

Simon, 227 Fed. 906, and 231 Fed 1021, and in other cases)

had considered the Act of 1910 in connection with the deci

sion of this Court in Crosier vo Freed, Arupp, Uktiuongrsell

achaft, 224 US AW and the district court as Was said by

the Supreme Court in the Marconi case had held that from

such consideration “it resulted that there existed in favor of

the United States a general license to use patent rights when

necewary for its governmental purposes,” and thereafter the

Circuit Court of Appeale for the Second Circuit affirmed

this decision “upen the theory of the license resulting from

the Act of 1910 in accordance with the views which had been

expressmd by the trial court.”

‘

But this Court has repudiated this view of the Act of

1910 as stated,

Is the Act of 1918 any different in this regard from the

tet of 1910?) We believe that it is not.

The Act of 1918 differs from the Act of 1910 in the fol-

lowing more important particulars;

1. It extends the scope of the act from inventions “used

by the Unitel States without license of the owner” of the

patent, to inventions “used or manufactured by or for the

United States without license of the owner,”

2 It changes the optional remedy (the “owner may re-

cover”), to an apparently exclusive remedy (the “owner's

remedy shall be).

3. It changes the recovery from “reasonable compensation

for such use,” to “reasonable and entire compensation for

such use and manufacture.”

There is nothing, we submit, in these differences, or

in any of them, to justify the Court of Claims in construing

the Act of 1918 on a theory of license that was rejected by

this Court in construing the Act of 1910.

This Court said in Sperry vo Arma Engineering Co., 271

U.S 282, as to the Act of 1918 that

“The true intent and meaning of the statute is not free

from doubt ;"

but certainly there is nothing in that Act of 1918 which

shows any clear purpose to change the Act of 1910 in the

matter of general license to use patent rights for govern-

mental purposes that is ander discussion.

If in the case at bar the United States had by agreement

obtained a license under the patent from the original owner,

or if the original owner had sued and obtained a judgment

in the Court of Claims for reasonable compensation for the

installation and use of the invention throughout the life of

the patent and the judgment had been satisfied, the peti.

tioner might not have had any claim for the use by the United

States after March 7, 1921. But nothing of this kind having

occurred, each day's use of the invention after March 7, 1921,

was a new and additional tort for which the United Btates

is liable diirectly to the Petitioner for compensation, under

the Act of 1918 and this the Court of Claims should have

recognized and because of it alone should have upheld the

Petition.

Brief fior the United States in opposition to the Peti-

tion for Writ of Certiorari herein said (p. 9) that there is

no use of tthe invention proven by the United States during

the period of Petitioner's ownership of the patent.

This is error.

The Cowrt of Claims (R. 12 and 13) found as a fact

“VIL

“During and since the vear 1918 cargo beams of

the kiind and character illustrated and described in the

drawiings and specifications of the said Lenke letter

patent and claimed in the claims of said letters patent

have theen in use by the United States at its army base

at Brooklyn, N. Y., without * *° ° ete.”

The albove was among the findings of fact that were

entered Jwne 4, 1923. “During and since the year 1918

cargo beams * * * have been in use by the United States

* * ©" means in ose at least up to June 4, 1923, the date

of the finding.

And again (R. 12):

“Since the patenting and introduction of the cargo

beam of the sald Lenke letters patent said cargo beam

has come largely into use, and in new construction and

installation of cargo beams it has largely supplanted

all ether kimis or types of cargo beams.”

And agaim (R. 21):

“The United States installed on or before January

1, 1989, 810 cargo beams covered by the Lenke patent,

as follows:

Army Base, South Brooklyn................. 366

Army Base, Norfolk, Va.... 0.66666 264

Nawy Base, Charleston, 8 C..... eeebeavers.. an

Army Rase, New Orleans, La.......... inne Te

And in (R. 21):

wi “IV.

. . . - . -

“The United States installed the Lenke beams by con-

tract with third parties. The beams were installed for

the exclusive use of the United States, * * * They

were used by the United States for Government pur-

poses. . * °°”

POINT B.

Manufacture of the patented structure by the contractors

for the United States on January 1, 1919, prior to Petitioner's

ownership of the patent, was an infringement of the patent by

the contractors, the right to recover for which was assignable

along with the ownership of the patent under U.S. R. S. 4898,

and the right to recover from the United States the reason-

able and entire compensation for that infringement by the

contractors was given to the then owner of the patent by the

Act of 1918 and this was assignable along with the owner-

ship of the patent and as an incident of that ownership under

U. S. R. S. 4898 and in spite of U. S. R. S. 3477, and without

more supports the Petition and entities Petitioner to a recov-

ery under the findings of fact made by the Court of Claims.

The Court of Claims found (R. 12):

“7a.

“On or about September 29, 1920, the said Lenke

letters patent were assigned by Lenke to one Thomas E.

Chappell who, in turn, on or about March 7, 1921,

assigned them to the plaintiff company.

“Each of said assignments of said letters patent con-

tained a provision that the assignee should have ‘all

rights of action for past infringement of said patent, and

all rights to recoveries for damages, profits and royalties

for said infringements of every kind whatsoever,’ ”

Petitioner thus having such an interest in the patent as,

without the Act of 1918, would have supported an infringe.

ment suit by it against the contractors for manufacturing

the 810 infringing cargo beams for the United States, has

under the Act of 1918, upon the reasoning and implications

of the decision of this Court in F. W. Bliss Co. v. United

States, 253 U.S. 187, under the similar Act of 1910, such an

interest as supports its Petition against the United States

for the reasonable and entire compensation for that infringe.

ment of the contractors.

In FE. W. Bliss Co. v. United States (supra), this Court

held that the title of the plaintiff there was “a mere license,

not sufficient to sustain a suit for infringement”, saying:

“Giving to this statute, as we do, the liberal interpre.

tation placed upon it in Crozier c. Krupp Aktiengesell.

schaft, 224 U.S. 290,56 L. Ed. 771, 32 Sup. Ct. Rep. 4ss,

and in William Cramp & Sons Ship & Engine Bldg. Co.

e. laternational Curtis Marine Turbine Co., 246 U. 8. 28,

62 L. Ed. 560, 38 Sup. Ct. Rep 271, the ‘owner’ who may

maintain an infringement suit against the government

must have at least such an interest in the patent as, with.

out the statute, would support such a suit against a de

fendant other than the United States.”

A natural and reasonable corollary of this would be, that

if the interest in the patent were sufficient, without the stat-

ute in question (the Act of 1910), to support a suit against @

defendant other than the United States, it would under the

statute support a suit in the Court of Claims against the

United States, and by parity of reasoning applied to the cor-

responding Act of 1918 if the interest in the patent was suff-

clent without that Act to support a suit against the

contractors manufacturing for the United States, it will sup

port a suit under that Act of 1918 in the Court of C'aims

against the United States for the reasonable and entire com:

pensation for the infringement of the contractors

Again on the reasoning of this Court in Standard Oil Co

¥. United States, 267 U8. 76, it may apparently be axsumed

that by the Act of 1918 the United States assented to the

assignability of such a claim ax Petitioner here presents for

compensation for the infringing acts» of the contractors as

ap ordinary incident of the ownership of the patent and of its

assignability under U S ROS 4898 In Standard Oil Co. ¥

_——

United States (supra) the United States had under an Act

of September 2, 1914, issued a policy of marine insurance and

some question arising as to the allowance of interest, this

Court said:

“When the United States went into the insurance busi-

ness, issued policies in familiar form, and provided that,

in case of disagreement, it might be sued, it must be as-

sumed to have accepted the ordinary incidents of suits

in such business.”

The Act of 1918 clearly includes compensation, and the

“reasonable and entire compensation”, for the manufacture

of the S10 infringing cargo beams by the contractors for the

United States because that is explicitly included in the terms

of the Act, and the assignability of the claim against the

contractors for that compensation was an incident of that

sort of a claim against an individual and the United States

when it went into the business of protecting contractors man-

ufacturing for it must be assumed to have accepted that sort

of an incident.

Again this Court in Sperry Gyroscope Co. vy. Arma Co.,

271 Ul 8. 232, has held that the district courts have jurisdic:

tion to determine, as a question going to the merits, in a suit

against a contractor, whether he “was relieved of liability

and permitted by the statute [.\00 of 1918] to do what other-

wise would have constitated a vielation” of the rights of the

owner of the patent,

To constfue the Act of 191s as relieving the contractors

from all liability to the then owner of the patent or to his

assignee and substituting therefor a liability of the United

States to the then owner of the patent only and (under U. 8.

R. 8. SATT) not to hix assignee, would appear to be taking

private property for public use without due process of law

or just compensation, and certainly would not give the owner

of the patent an additional remedy as the Act of 1918 par-

ports to do, but a substantially curtailed remedy. It is cer-

tainly net clear that the Aet of 1918 intended this curtail.

ment of remedy A construction of the Act of 1918 in this

regard which preserves all the rights of the owner of the pat-

ent, rather than suletantialls curtails these rights and reme

dies, is clearly indicate! and te entered by familiar canons of

Comst rection

Petitioner's claim, inear as it i+ based apn maneter

tere by contractors for the Unite! Mtates, ix essentially «

Clave ageunet the contractors @ith all the legal tnetdents f

cock « claim, incleding axignaldlits in competion with ac

signmernt of the patent. and 1 eweld wet sewn te hate lewe

the tatentios of Cwngrene be the Act of 191° te change «ord

6 claim ip ite comrntia! character | My that Act of 191" (ve

grees provided that, in the came of infringing “manelertere

for” the U mite Mtates, the “we mer © remeeeds wheal be be oon

ageinet the United Btates te the (wert of Clalee for the

Pewerets of bite frmetatt: sted emlite cotege weatinn fot ood

°° * menelertere ~

it @ee eabd be thie Cert te eeetiew beet emabegeee oe

eerties t2 Biliee ¢ BRetevtese, MAT & DEA OT

Wile the wit, oe edd te Peter Meaiemaee Pe tna

mererie @ leteotrin « Teeeterte Meek, ORT & Sel om

ee eee ee

56), oer egeteet the 1 etter Bretee the «hele om

oo epetee

Re teow, @Rike teeter oe coeewree the ootrerters &

friagieg ete, the oo be be forte of the Act of 190" ce

qgpeteet the 1 atte’ Pretre he «letee fee eet eget Te

+ Retee ee ager (he ate 8 te weed He ote bret of ong

chains @ee eotetieted ts ff Oe be eed be the de

eee of ee tert Geer The fet at PPE* «hee

Oe ee ee ee i ee ey

he eee 68 Che oe eee ke ete

a ee, ee) es ee ee |

tee the 1 etd ewe OOF heres cep «6 etme he Ge

Smmngeees 6 Fee ee tem let wr morn iptehee foe ae

Prag @ he of he meee te tee te tang fe Ww

ek LA ee

1 eet Cheese et geet eee Oe Oe fe ee age ee

Cee ee ee ee ee td

Rete 60 Ferree oe emg fe parearem Ghee fy &

collect from the contractors themeeclves individually all the

gains, savings and prefit- realiasd in their infringing manu

facture for, and infringing sale tu, the United States, and

oll the damage caused te the patenter thereby: and vet this

is the legiea! result, aed the neceoary legal comequence, of

the dewisiom of the Cowart of (laine tn dismissing the Meti

them, elee property has been taken for public ase without due

prrerns cof Law ated © itherat Just eevtpertenat bom

Hiriet for the United States in eqqeeition to the petition

fee writ of certiorari admitted (pp 1) be discussing the claim

agsinet the United States fer the infringement by the com

tractors that the theory of iaplied repeal ef 1 8 OS 2877

by the Act of 19D “ie rather enasael” and Sitherat citing

wethet ities om that question angersd that cork implied regeral

be tether t ttedie atest tet tw ewnars ter mere cout the begtelative

the the comtrers, the bietews of the Act of 191 shows

sheets ee cwlenst the begieletive tetemt ahewdateds te pelieve

her comet ee toe Feeene all leahalets of coeee bied cmd matere ond

tommy wl! epqere termes @ od liabelers wand toe dee thie bee omboots

tating (he Lewtalet: of the FE nutect @emtoe tow the prmemmehte amd

Petre oo mmge treet bet Foe cam hy menmenlan tuew Bee thee owl ee toe

Oe ecw wet ealtee eet od ome buted weed © et Renwt howe omg foe gosmes

ie totem eerkgeewe of the oo eee peed ced valed «hele

agen Re cmt tad Die ewe that © mugiwme wate medbeed ton

Pee Ne mt ee toe ngewe Che thew owawe of the peotont

Se en oe he ee ok ee

Oe So

The bet of PNR® geee cat of Che Geto of thee 6 wart

oko’ Merk 6 PVEe te tee freee & hone Ptep 2

Dagne ibe 6 6 6 ete vaetenmendl 1 rte Geowme Teetnas »

Set & Pe Wie © eeert Reet Reet me het ree het the ee ot

Rg 8 pee ete hee he mete tt od Re emed Bee

Ce ee a) i ee Se

er ee ee

torr of te Beer de rte Weng Gee et © eee Come

i“

tor Tillman (as appears in the case of Weed ¥. Atlantic Co,

296 Peel TIS, 720) that the Department ix

“confronted with a dificult situation as the result of

a rewent dewision by the Sapreme Court affecting the

government's right a» te the manefactare and ase of

pateoted invention=. and it seems necessary that amend

ment be made of the Act of June 25. 1910 ° © © the

decision is, tn effect. = far ae it bk of tmpertance here,

that a contracter fer the mannfactare of « patented

article for the government ix net exempt, anlews he is

only a comtribaters infringer, from injunction and other

interference through litigation by the patentee

“OA price dewtetem of the Mapreme Court, thet in the

ease of Cregter ce Rrwpp. had been tnterpretesd me bev ing

the opposite terening. ated the department eae alte ap

te the time of the later dewteten. om Mareh 6 leet, te pre

cowl eatiefarteriiy eith the preering of ech patented

erticlece as it meestend. beating the matter of cotmpeneating

te patenters for adjectment be direst agreement.

if mewwwenrs. bee freeeet tee the OC somet of OC Vateme weber the

slene mentioned act of 1910) Swe. heveeter, maneter

terete ote et peed fe et pemetee litigation. teveteing the

prmeiidiities of peetiletive imjemetiee parteret of

fort elt tee Pwedertimg of a cecmmte wted past tert of prometive

demagee ond thes are tebe tent te tebe comtrerte thet

i Bk ee

pewter! eevee fieeteeetage te the pally teteorete

oted be wordew thet eetal artis tiie of thee degeert mere! mae

ot be Pretet tend waefele of thee freee ened ales @eth & tee

of emabiemg Aeemet refed peetemtows (tearm poe! emt ote

qeete coegeeestioe te ofl secwe so mfeemeette te the &

efered perpewe of coed eet. To eee the Ree te rere

heat he ert fe eeermeteed be fhe ceeeert ee of @ pergee pee

thetee (heewt-e oe (he poe tiag oer! epee gereren be”

Of @ee te freq fe ee Ger Flee terete of fie Seve

Per oh gent

0 com het ef eteme et -f he teem me $6 he omen tewne &

Whee Get oF FORO ceed fhe cteereetnets etree © 61 he anette @

ee lees he Spee Reet 6f Beh et ee me Oe

OOH he eee 6 Beyer er cee fe Re Hom See beng

eo 0 oe ere ee Bete feet fe Meet TOE cet

—_

Congressional Record, 65th Congress, Becond Session, Pro-

ceedings of Jane 1s, 1918, p. 7961).

It could net be made clearer that the very purpose of the

Act of 1918 wae aleolutely to relieve the contractor from all

liability of every kind and nature for infringement of patents

in manufacturing for the Government and to limit the owner

of the patent and his assignees and all claiming through or

ander bim te “suit against the United States in the Court of

Claims for the recwwers of his reuseable and entire compen

sation for such ase and manufactare” and te utterly and

entirely relieve the contractor from liability te anyleady at

any time of ams Rind for his infringement

Te argue that Congress had 1 S KS 3477 in mind and

intended by the Act of ISIS te pretest the contractor only

frome the them “vm met” of the patent amd met from the assignee

of that owner ae te the claim against the contractor, is not

tran talle

Whether of fet there eae @ contractor ee eabenit thet

the cometrer tit: @ huh the Mewgenmtent sewke te place agen

the Net of 19E* @eehd thewrt the pedis of the Act and defeat

the ntretien of Congress = Mamifrotls

the Tike em mer of the patent hae the right to aestgm it

12) The Act of 190" drew cet cometi=tete the U mited

ee ee

(3) Heeee, the wonee of the patent meat newwee fer on

efringieg wer be the f eited Staten

00) Tike eomtineeed welivwmered war be the T mlteed Staten

ater the ortgine! eoere hee eoctgeed the poteat » -

alrrnge meet of the petens eught few © he ® the f metesd Stetee

ae ed oo lehte ered the geaugeee f the paten!

mae Roveg oust te cant cee ther leehelers

He Fem e thet of Hee aongeae! Sane -eneee conge owt

he patent, the «here fee pet tefetegeewet, ther te of the

Cegeeeret of wer® & oRetee be te be Gee eed ced of the

Pe Wee pre Hho weengemoes bed at Remnghe emer

CBee he | nt Oreree the | ote Gterce oftee the came

ment would be subject to two actions, one by the former

owner for infringement up to the time of the assignment and

another by the assignee for infringement after the assign.

ment.

This is net the intent of the Act of 1918 which provides

for recovery by the owner “of his reasonable and entire com-

pensation for such use aml manufacture” lew can one

reconcile the domination of US ROS. S477 over the Net of

1918 with the intention of Congress as made manifest both

by the history and by the termes of that Net” The only wav te

give effet te the polies of the Net of TODS ts te bel thot the

owner at the time of salt against the United States is entitled

te recover the entire compensation for the infringing ae

and mannfacture and that thie right bw force of the -tatates

is incident te the patent right and assignable with the pat

ent

Reaseming along cometitational limes lewde te the some

eveter lam beet

fom Mav 29. 1917 the patent in eait eas grantet te Lenke

and veetes! in him certain rights ameng ehich sere

ste The euchacite right te Gee bie patente! carge loam

fr <—entewn tears

of) The right te ee aed reerser from afl tnfringen

tee teding @ comtrerte buikding fee the U mites) Btates ont

wredew the Act of 1990 the U mitesd Btates tte lf

ty The eught te freets aseotge bie cant fettete pare’

we tee the Petithemes, tegethee @ ith bie right tee e@e ated pee eves

foe all pect telringemernt«

tte Jale t 199% @hile thee petemt eae te fel feere ont

ott the Wet of 191] Gee preeersl fetersing the comin ter

fowm off teetelits foo tefriegreeret bs meenefer tering foo ‘te

1 mitt States ced plerteg epee the | meted Btetee beets ot

fee the cotive oaegeeestoe® fee ee ® tefrtegreeret S te

vomtrertee 1 the ewampete beetetery of the | meted erate

te the comme be of) prepeete oe (het of fhe coetrertee eee

hove towe the Greet be Gee Mepeereet ceed The trometer of

potest wetee fe Re bee) getters ob of rights of

_—_”"~

action for past infringements transfers the right of action

against the United States for the infringement of the con-

tractor and vests it in the new owner, The new owner can-

not object to this as he loses nothing, for while there is a

change of forum for enforcing the right and a change in the

responsible defendant, there is no substantial change in the

right itself or in the incidents of the right. If this liability

of the United States under the Act of 1915 was by operation

of US KOS SA77 reduced te nothing when the assignment

of the patent and of the claims for past infringements was

made, then the property rights of the owner of the Lenke

patent in suit were impaired by the Aet of 11S and private

property was taken for public use without just compensa

ten, contrary te the fifth amendment te the Constitution

of the Unite! States

When this Court can construe an act (as for example the

Act of 1918) in either of two wars, one of which makes it

comtitetional and the other anconstitutional, it will com

true the act or as te make it comstifQational This (sart

sand

“Acts of Congress are te be constraed and applied in

hart) with ated met tee thewet the purge of the Com

stitation

ie hel pe SE meted States UM Nabe C0pee, Dame 1, 1027, page

O96) Whew the Set of 190® te eee cometroed, all the comers

actin ehick @ete veetel in Lewke, lewame, by the assign

teret of Mare 7. 1921, teetesd in Petitioner

Keferring to the language of the Act of 191% there te one

lee of exetgeewe of petentowr= that te eacleded fren the

homrtite of the tatate in eapliett terme

The Act of 191* eave

“8 © ted Mrereded ferther, That the teaetite of

thee ort ohell eet tmere te ont petemicn @hee chee be

teabee cor «hate. be tm the eangelees meet ct comeiew of the

temermeeret af the | miteed Maatee o@ the errgeee of wee

wh pateate * * *

Why ver teks femme the bemedite of the Wt the eentguee af

Oy peteetow Oe ot the thee be meeee the «letee feo peed

infringement by the United States is in the employment or

service of the Government of the United States, if all assign.

ees are excluded by US. ROS. 34777) The explicit exclusion

of a certain class of assignees would seem to imply the in

clusion of all other classes

Again referring to the language of the Net, the defenses

which by its eX press ferins the United States is permitted te

avail itself of are stated and they de net include US ROS

BATT. The language of the Act in that regard ip

“© © © Prycided further, That in any such suit

the United States may avail iteelf ef any and all de

fenses, general of special, that might be pleaded by a

defendant in an action for infringement, as set forth in

Title Mixty of the Revised? Statutes, of otherwise —

POINT ©.

U. & B.S 3477 is not applicable to any branch of the

claim against the United States for infringement prior te

March 7. 1921, either as a joint tort feasor with the contract

ore in the manufacture for the United States and the sake

te it of the 510 infringing carge beams, on Jan. |. 1919. or a

the user of these 510 cargo beams from Jan. |. 1919 to March

7. 1921; for the assignability of that branch of the claim &

determined by the patent statutes. |. 5. B.S t695, ae oe

incident of the amvignability of the patent itself, and to that

extent and ie that reepect 1. 5. B.S 3477 bs inapplicadle

end etthout effect oo any part of Petitioner's tithe.

The (seurt of € Talons tm the teetant came ctteed the chew tes

of thie Cowart tn Brothers « 1 acted States TT BS Se &

the comtrart of the alberto preeqerstt tc mted dietetenesd the pets

them om the teeete of that dew totem «1 D8. So)

The ee called deo tetee th Brothers & | meted States om

on ohetes de tem of Me Jastiee Pitees ced ee reopen they

eobeelt that © @ee error ced © ack feeometteretiee

—_

In Brothers Vv. United States, decided May 19, 1919, the

petition of Brothers was dismissed on the ground that there

had ben no infringement whatever of the patent and there-

fore the question of the extent and amount of the claim and

the period that it could properly cover if there had been in.

fringenent, did net arise, Mr. Justice Pitney merely said in

the course of the statement as to the facts in the case

“Subsequently the letters patent were assigned to claim

wt, under date October 2. 1912, two and one-half

nenths prior to their expiration by limitation on De

ember 17, 1912. His claim to compensation is neces

sarily limited te this brief period, since there could be no

asignment te him of any unliquidated claim against

tie government arising prior to the time he became the

ener of the patent. Rev. Stat. $3477, Comp. Stat

116, § 62N0."

Tle opinion in that case fills several pages of the report

and deals only with the ieeue of infringement

We assume therefore that the Court will regard as an

origin! question the meaning of the statutes [oS KOS

S477 ened O808 and the Net of 191s in the particulars now

raise and controverted, following its well established prac

tiee @ in | nated States vo Corbett, 215 US. 2383: Cirigahy v.

Rueed!, 222 1 BS 14%. Baraca v. Alerander, 232 U. B17;

Mast Pace fd CoS Storer VT UR IS

We solenit that the assignatality of a patent and of a

claim fer profits and damages for past infringements of the

pater. whether tw the United States of by others, ix gov

eronis ft S ROS ts of the Patent Statutes, and that

ther the U nites] States i« «aed in the Court of Claims ander

the Wt ef 191%, the aeeigner of the patenter and of the right

te oe and teeever for poet infringements of the patent, in

cledeg tefringeteent« boy the United States and by contrac

tere eanefactering fer the United States, may sue in the

Cwer of Clete onder that Net of 191% beth for the present

tefrogeteent and fer the past infringeteent=, irtespestive of

| Sh BETT

Ter Acts of 1910 aed 191% are reteectial and should te

Wherlly construct te «cure the reealt> destined by Congress

2»

See Logan V. Davis, 233 U8. 618, where this Court said:

“Further, it must be borne in mind that this is a reme.

dial statute, and is to be construed liberally, and so as

to effectuate the purpose of Congress and secure the

relief which was designed * * °". |

U.S. ROS. 3477 condemning as “absolutely null and void.

all transfers and assignments made of any claim upon the

United States” refers, we submit, to claims in the nature of a

chose in action at common law, and that an assigninent of

Letters Patent together with all claims for profits and dam

ages for past infringements, including past infringements by

the United States and others, is not a transfer or an assign

ment of anything in the nature of a chose in aetion at common

law and se is not within the purview and meaning of

tS KROSS. S477

This Court said in Crown lhe & Tool Cov. Nye Tool &

Machine Works, 261 LU. 8. 36

“It is said that the claim of an owner of a patent for

damages for infringements is only a chose in aetion,

which, in modern days, may be so assigned that the

assignee acquires full tithe and the right to sue at law as

well as in equity, without jeining his assigner This

reew sqnores the peculiar character of patent property

and the recognized cules for the Cranster of ite ownership

and ita inerdents Patent property is the creature of

statute law, and efe uncidents are equally ao, and depend

upen the construction te te given to the statutes « reating

it and them, in view of the poliey of Congress in their

enactment.” «Ttalies ours +

It is to be noted here that the claim of an owner of a

patent for damages for past infringements is referred to as

one of the “mewdent«” of patent property

This Court continue!

“This is shown by the opinion of this court in Waterman

BM, already cited, and in the line of authorities followed

therein Jf se wet sate. therefore, om dealing with a trans

fer of mvghte ander the patent law, te follow umplicitly

the rules governing @ tranater of righta in a choar im

artron at common law” (Italics ours}

—

and then quoted from Chief Justice Taney in Gayler vy.

Wilder, 10 How, 477, 494:

“The monopoly did not exist at common law, and the

rights, therefore, Which may be exercised under it cannot

he regulated by the rules of the common law. * * ©”

and from Robinson on Patents, Vol. 3, p. 122, § 937, as

“clearly and correctly” stating the law as to who should bring

asuitat law for damages for infringement of a patent:

“With a single exception the plaintit? in an action at

law must be the person or persons in whom the legal title

to the patent resided at the time of the infringement.

* 8 * ‘The exception above referred to arises where an

ussigntent of a patent is coupled with an assignment of

aright of action for past infringements, In this case the

present owner of the monopoly tay institute proceedings

for its Vielution during the ownership of his assignor as

well us for infringements committed since the transfer

of the tithe to himself.”

This Court later quoted with manifest approval from the

decision of Mr. Justice Blatehford in Gordon vy. tuthony,

16 Blateh. 234:

“A claim to recover profits or damages for past in.

fringement cannot be severed from the tithe by assign:

went or grant, so as te give a right of action for such

claim, in disregard of the statute. The protits or dam-

ages for infringement cannot be sued for except on the

lasis of tithe as patentee. or as such assignee or grantee,

to the whole or a part of the patent, and not on the basis

merely of the assignment of a right to a claim for profits

and damages, severed from such tithe.”

Later this Court said

“The sele exception to the rule that only he who

is the owner of the patent at the time of the infringe.

ment can sue for damages, to which Professor Robinson

refers, is When such owner assigns the patent, and also

the claim for past infringements, to the same person,

In such a case, as the tithe and ownership of the claims

are united, itis held that the owner may sue Dibble e¢.

Augur, 7 Blatehf 86, Ped) (us Noo 3.879: Hamilton rc.

Rollins, 5 Dill 495, Ped) Cas No 508s: Henry rr.

Francestown Soapstone Stove Co, 2 Bann, & Ard. 22

—

Fed. Cas. No. 6,382; Consolidated Oil Well Packer Co. ¢,

Eaton, C. & Bo Co., 12 Ped. 865, S70; Spring ev, Domestic

Sewing Mach. Co, 13 Ped. 446, 449; Neliis ec. Pennock

Mfg. Co., 38 Fed. 8379. Under this exception, therefore, if

the instrument bere relied on had been effective to make

the plaintiff an assignee or grantee of the patent or ‘of

any interest therein’ within the meaning of § 4805, Rey

Stat. (Comp. Stat. § 9444, 7 Ped. Stat. Anno. 2d ed. p.

249), as amended, then the plaintit? could have main.

tained this action for damages for infringements prior to

the execution of the instrument; but, as we hold, the

instrument did net have this effect,

Bat it is urged that, under Equity Rule 37, every

action must be prosecuted in the name of the real party

in interest; and, therefore, as the plaintitl is the benef

cial owner of the claims for past infringements, it should

be permitted to sue in a court of equity. The equity rule

was not intended to set aside a policy and rule having

its source in the patent statutes, and cannot affeet this

case. * © © Both at law and in equity, either the

owner of the patent at the time of the past infringement, |

or the sulwequent owner of the patent, who is, at Che same |

time, the assignee of the claims for past infringement,

must be a purty te a suit for damages for the past in |

fringement. If the owner of the patent when the infringe |

ments took place has assigned his patent to one, and his |

claims for damages for infringements to another, then |

the latter cannot sue at law at all, but must compel his |

assignor of the claims te sue for him”

On the authority and reasoning of the above decision of

this Court in Crown Dye & Tool Co ovo Nye Tool & Machine

Works (eupra), we submit Chat patent property is peculiur

property not governed by the common law but wholly the

ereature of statute law and that the assignability of patent

property is likewise the creature of statute law and as well

the aasignabilitv of ita incidents and of any interest in the

patent; ind we submit further that a claim of an owner of a

patent Or damages for past infringements including such a

claim fer infringement by the United States is an incident of

the ownership of the patent and is an interest in the patent

that is wsignable under the patent statutes

RGAE iE BAN I ARON ER ETO a

—_

U.S. ROS. PSUS says in part:

“Every patent or any interest therein shall be assign-

able in law by an instrument in writing, * *% #9"

We submit that this expressly includes a claim for past

infringements of the United States when the assignment

thereof is united with an assignment of the ownership of the

patent itself and that this is an explicit exception to US,

RoS. S477 that is grafted on the law by the explicit and

specific provisions of UR. ROS. 4asYs,

Where a specific section of a law is in apparent conflict

with a general section, the two should be considered and the — *

context considered and the probable legislative intent, but

presumably the specitie should prevail over the general,

Townsend V. Little, LOWES. S04, O12;

Washington Vo Miller, 235 US. 422, 428,

US. ROS ASUS is specific in its relation to patents and

interests in patents and incidents of the ownership thereof,

while US. ROS. S477 is entirely general; and Sec. 4898

should therefore govern as to claims for past infringements

by the United States.

It isa fair construction of US. ROS. S477 that it was not

intended to apply and does not apply to patents and to inter:

ests in patents and to incidents of the ownership thereof such

as claims for past infringements by the United States. We

submit that the reasons for the passage by Congress of U.S.

ROS. S477 do not apply to the case of an assignment of a

patent together with all claims for past infringements of it

including a claim for past infringements by the United

States.

There would appear to be no public interests that would

suffer if US ROS S477 were held inapplicable to the title

of Petitioner where as an incident to the axssigninent of the

patent there is an assignment alse of all claims for past in

fringements of the patent and the United States chances to

have been an infringer; nor would there appear to be any

public policy invelved in so construing and limiting U. 8.

KS. S477, but quite the reverse, particularly in view of U.S.

RK. S. 4898, and further in view of the Acts of 1910 and 191s

wherein it is provided that the claim in question can be

asserted only in the Court of Claims and the interests of the

United States and of the public generally are thereby con.

served and safeguarded.

We submit that quite irrespective of continuing infring

ing use by the United States after Petitioner's ownership of

the patent began, and quite irrespective of the putting upon

the United States by the Act of 1918 of all liabilitw for the

infringing acts of the contractors, the tithe of Petitioner

should not be regarded as in any respect subject to US ROS

S477 but should be held gow! and suMicient in all its parts;

and that it was error for the Court of Claims to distiiss the

petition

II. Under the findings of fact made by the

Court of Claims the Lenke Patent in suit No.

1,228,120 for Cargo Beams, May 29. 1917, is

valid, and is infringed by the making and selling

and using of the 810 cargo beams made for and

used by the United States, as described in the

record, and was an epoch-making invention

which largely supplanted all prior art cargo

beams in new construction.

The Court of Claims in its findings of fact entered June 4,

1928, found «+R. 11-13):

“y

“Prior to the granting and issuing of the said Lenke

letters patent No. 1.228.120 the type of cargo beam gen

erally in use was a rigid beam, rigidly supported by and

between two rigid uprights at or near the entrance to

MR SPO Ue eek “ . ss

the sheds or buildings on the piers, for receiving and

storing cargo from or for cargo-carrying vessels.

' “Since the patenting and introduction of the carge

beam of the said Lenke letters patent said cargo beam

: has come largely into use, and in new construction and

installation of cargo beams it has largely supplanted

all other kinds or types of cargo beams.”

| ° . * 7 . 7 7

. “WVITT.

: “During and since the vear 1918 cargo beams of the

“| kind and character illustrated and described in) the

Y drawings and specifications of the said Lenke letters

] patent, and claimed in the claims of said letters patent,

5 have been in use by the United States at its Army base

: at Brooklyn, N. Y., without, so far as appears from the

: record, any authorization by or compensation to the

4 plaintifY or other owner of said letters patent for such

use.”

And as a conclusion of law held (Ro 13):

“CONCLUSION OF Law.

“Upon the foregoing findings of fact the court de-

cides, as a conclusion of law, that the plaintiff is entitled

fo recover.

“The case ix remanded to the general docket with

leave to either party to take testimony in conformits

| with the opinion herein.”

The opinion (CR. 13-19) discusses the issues of validity

(including both novelty and invention) and infringement

and particularly discusses the defendant's contention that

“Lenke's invention is unpatentable because it embodies noth.

ing more than a natural and normal modification of exist

ing ideus” (Rosy

The opinion says:

“The plaintiffs patent is obviously a combination

Mtfent, and in view of the prior art limited to the exact

tertus of the claims, It ix, to sav the most for it, quite

harrow and, as the history of its course through the

Patent Office clearly demonstrates, ix limited to an im

provement of an existing device in the manner and in

connection with conjunctive elements set forth in the

SS fee on

PIED tpn

—

specifications and claims. To this extent, and within

this narrow compass, we blieve the placoit is an inver

tor, Whole cargo beams are old. and their use extended,

nevertheless the plaintiY did contribute in a movel was

a means adaptable to function suecessfully and accom

plish the emd with fess expense and prrolone woth

doubt the life and eMlictenes of the deviee created over

the ol one The plaintif!s swinging beam, the vital

factor of a carge team mechanism. is admittedly an

Moprovement over the old rigad bean and wall wothens

doubt retain ifs eftic lene ys tithe ledger und at a redueed

ON peetine tae the owner

“The defendant imstets Chat ‘lLenkes invention js

unpatentable besecctise if etiiaadios oothitg more thon oa

patural and normal mestifieation of existing ideas Ohne

fay see how. after the fact, how deetdedl) advantages

and how eastiv the most ordinary person could hive

toemdifiesd existing ideas This is patent toe the thnest cas

ual obeerver, for Lenkes cargo team has altooat univer

sails attpereaston! the old one The tlefenidant used a

aned aliicest every pier in the earntrsy has tustalled iy!

If Lenke takes things olf in the art and tay the intre

duction of a subetifute. an eletoent known to funmetion

in a ewrtain was under certain conditions, camps th

obd clevier with the subetitute element te perform a like

service under much taere faverable comdiftions at a mach |

leas ei pense amd fer a mach longer space of time. is he |

tor tee chettewd His claim: te ro vemtion Ieeunee anvate could |

erstis have fespwneen the mewult™ Nee come shied fecrweew if |

age the art tteelf is mot execesding!ys oid Tee theme why

use a cargo heam. oor for Che benefit of thoame who tins

is treeftuul in the aenes that it will euppecrt beaeting tach

tlemi pe fees Olmert cotier Lenke » bew tr eiffe re ia moebtptieen « f the

pevbiem at a minitngm of cost with a maninum of |

eMcienes That it te an improvement over the exiting

deviee is mere than apparent by ite extensive tse

“What did Lenke tnvent™ The defendant comecmios

that Lenke’s patent im mevel tin the sense that there os

nething im the prior art exactly like it © % % and |

What Lenke was ewking to do wae te enppecrt heoieting

tackle He oleerved the old cargo team made up of two

teams, aplies | together permanentit attache} ta the

upright pemt« aplendid!s adapted te vertical «tress Ve

PIERO VIS ENNIO AN NEE EED SER DENT al PARE ORS AIS

a—

thus reinforced, the double beam: would serve as a means

toward the end. Lenke saw the possibility of discarding

the heavy, expensive beam in the old device, and substi.

tuting for ita beam of lighter weight, so fined in place as

a toswing inte the angle of resistance, perform the iden:

teal funetion, and maintain during the operation the

full, maXiniuin tensile strength of the beam itself. It

is true he improved an existing idea, but in so doing he

brought inte being a new, improved idea, never before

suggesting itself to Chose skilled in the art, a swinging

earge beam To this he addresses his claims, and to this

extent we believe his iden possesses novelty. Beonuse

his patent is narrow and his contribution te the art lim

ited is het sufficient to invalidate his claims. The Pat

ent Office so construed his clutms, and he was content

with such a constriction. Lenke devised a combination

of elements cot theretefore in the art, mitde to more pre

tentious elaitms, amd is expressly limited therera & © ¢

The cause will be remanded to the general docket for fur

ther procemdings respecting the issue of damages, © * ©

Further proceedings were thereupon bad in the general

hature of gecounting proceedings, and on Dee 7, 1925. the

Courtoef Claims thed additional findings of fact, conclusion

of law and opinion and judgment CRO 20250. setting aside

the former judginent and dismissing the petition on) the

ground of failure of plaintiff!s tithe under US) ROS. 3477

However, the additional findings of faet (Ro 21, 22) deal

with the aecounting questions and will be considered in our

next chapter

The issue of patentable invention. as we have pointed out,

had been comsidered on the merits and determined in faver

of Petiener in a reamed and persaasive opinion. and it has

suppert in the record and ample sapport and is in accord

anee with the evidence

III. Under the findings of fact made by the

Court of Claims, the Petitioner is entitled to a

substantial money recovery from the United

States which shall cover and include the capital

saving realized by the contractors and the

United States by the adoption for use of the 810

patented cargo beams as compared with the best

available cargo beams of the prior art, namely,

$103,480, and interest on that sum from Jan-

uary 1, 1919.

The Court of Claims in its additional fladings of fact

entered Pree 7, 125 ORO Litt) found

The United States installed on or before dancin

- Vie situ carge bevtatnin curve ried by the Laetike treternit

as follows

Army base, Seuth Hreoklivo ard

Army tame, Norfolk Va ae

Navy base, Charieston, St ws

Ariny base, New Orleans, La Lew

Total sit

*. . . . . . .

“The nee of the Lenke carge beam by the UE nied

States inetead of the carpe beetatyes theeretofere installed

amd teed resultes? in a saving of COMM peotnede of toe

per team The market price per peand of the hind o

treftal emplovwed in the cometruction of carge leuitis was

6). centa per pound, thas enabling ‘he United States &

save in the expense of installation the difference

weight between the old teams need and the Lenke lean

vig, the difference lat wern + MMP pertice ane

ponds, or 2000 pogmds on each eam tietalled. amount

ing in the aggregate to Bit ase °

* Tiss sae ar am ory? ‘ mete fig at ¢ ao "ive

te be OhreS WO is ec: = ee UE nts ‘x 83 Vhs

te the fact that the eat mg is ie athe Vee om 7 1, te reeds eer?

7 uaggtnneemeeen meneame teary

Ee ero

to ae ae

_ ——

“The United States installed the Lenke beams by

contract with third parties. The beams were installed

for the exclusive use of the United States. None were

seld or installed for profit, other than such as accrued

to the United States by reason of the saving in cost of

installation. The single advantage which the United

States gained by the use of the beams was the saving

in cost of the same and the convenience resulting from

their novelty. They were used by the United States

for Government purposes, There is no proof in the ree

ord as to any other saving or advantage to the United

States”

The capital siving of S103 480 realized by the adoption

for use of STG) Lenke patented cargo beams, over the same

number of old cargo beams of the prior art, is a saving

realized by and from aets of infringement of the patent in

suit and is recoverable by the patentee under well-settled

principles of accountings In patent cases established by this

Court

In Mowry \) Whitney, 14 Wall 620, the Whitney patent

for process of making railroad car wheels was held valid and

infringed The lower court awarded plaintiff the entire

profits made by the defendant in the manufacture and sale

ofthe car wheels Thos Court, finding that similar car whoels

could be made by other processes, refused to assent to the

award under such circumstances of the entire profits: and

maid cp Gols:

“The question to be determined in this case is: what

wivantage did the defendant derive from using the com

piainant’s invention over what be bad in using other

processes then open te the public and adequate to enable

hits te obtain an equally beneficial result? The fruits

of that advantage are his profits They are all the bene

Nts he derived from the existence of the Whitney in

vention Tt ts found that there were other processes

by whieh the inherent strain caused ty unequal cooling

could be and was prevented, counteracting which strain

was the sole ohiect of the complainant's invention, and

a car Wheel could be prepared for similar service, valu

able in the market, and salable at a price not less than

Was obtained for those whieh the defendant manufac

tured The inquiry then is what was the advantage in

cost, In skill required, in convenience of operation, or

marketability, in bringing car- wheels by Whitney's proc.

eas from the condition in whieh they are when taken hot

from the molds, to a perfected state, over bringing them

to the same state by these other processes, and thus

rendering them equally fit for the same service? That

advantage is the tueusure of profits ”

In Tilghman Vo Proctor, 125 US. 136, the cases were

elaborately considered and the rule was declared to be estab

lished that in equity the complainant is entitled to recover

such gatos and profits as have been made by the infringer

by the unlawful use of the invention | See Compe Vs Royer,

I US MiSs od iustrating the rule, this Court said in

Tilghman Vo Proctor, supra

“If, for example, the unauthorimsd use by the defendant

of a patented process preaduced a definite saving in the

cost of manufacture, he must account te the puttenlee

for the amount me saved This application or corollary

of the general rule ts as well established as the rule it

self”

This Court then instanced the cause of the Cawood Patent

(MOU SN 605) for an improvement in a machine for repairing

the crushed and exfoliate! ends of rarlroad imeem, where the

lefemdant saved tomes by the aae of the pratenterd machine

ever and aleve any other known tmethead of repairing the

erushed and exfoliated emis of the rails The Court als: ites

Mera va Conover (ZU SS Th, marginal mete, where the prat

ent was for an improve! machine for splitting kindling «cued

amd where the defendant had saves momes by the te of that

machine It ineatanees} ales Piisateth Vo Macement (0 47

Co SM Po8, its, 139) Reet v Raudkeoay Co 10.1 BR ps8) oie,

Qt, amd TAomaerws vo Woofer TEE T S 1048: and then cm

tinted |

“The general rule has been sometimes said to be

based upon the theory that the infringer is converted

inte a trustee for the owner of the patent, as regards

the profite made by the wee of his invention Hut, ae has

been teoentiy dewlared by thie court, apen an elalerate

review of the cases in thie country and in England. it is

more strictly acrurate te eay that a court of exguits

which has acquired, upon some equitable ground, juris

-_ ~~

diction of a suit for the infringement of a patent, will

not send the plaintiff to a court of law to recover dam.

ages, but will itself administer full relief, by awarding,

as an equivalent or a substitute for legal damages, a

compensation computed and measured by the same rule

that courts of equity apply to the case of a trustee who

has wrongfully used the trust property for his own ad

vantage. Root Vv. Railway Co, 105 U. 8. 180, 214, 215

(260075, 84)" (Ttalies ours.)

A saving realized in the cost of manufacture of patented

machines Which have their sole advantage and utility in their

subsequent Use as tiaehines (as with the cargo beams in

issue) is as truly a saving due to the invention as would be

asaving realized in that subsequent use (as in the case of

the Cawood Patent, aupra, and Mere Vo Conover, supra).

Bat with this difference A saving realized in the economy of

use of patented machines varies with the extent of that use,

whereas a saving realized in the economy of manufacture of

patented machines Varies only with the number of such ma

chines manufactared and not at all with the extent or time of

their use Any use at any time in the latter case would be a

utilizing, and a taking advantage of, the entire saving in cost

of manufacture

In the Instant case, the use of the infringing cargo beams

after Petitioner's ownership of the patent began coe, after

March 7, 1021) was a utilizing, and a taking advantage of,

the entire capital saving realized in the reduced cost of those

carge beatos as compared with any cargo beams in the prior

art

The Saving of $103,480 in the Original Cost of the 810

Infringing Cargo Beams.

We submit that if Petitioner is entitled to any recovery

whatever it is entitled to the entire S103 480 saved in the cost

of manufacture of the S10 infringing cargo beams and se in

the end saved in the handling of cargoes by the use of those

cargo bret tris

1 Uf this Court holds that ( S ROS 3477 does not apply

fo any partiof the case at bar, then Petitioner's right to re

cover the entire capital saving of $103,450 is clear under the

rule of the above authorities.

2. If this Court belds that US. ROS S477 applies to,

and bars, all branches of the case excepting only the infring

ing use of the patented cargo beams by the United States

after March 7, 1021, we still submit that Petitioner is entitied

to recover the entire capital saving of $103,480 and for the

reamtin given briefly below

The United States through the contractor installed op

January 1, 1919, 810 of the patented carge beams, not for the

sake of the installation as such, but for the sake of the subse

quent use of those patented devices as cargo beams im the

handling of cargo The saving of $103,450 was realized by the

contractors as a saving in the cost of the metal in manufac

turing those S10 cargo beams and was realized by the United

States (if we are to assume that the contractors puseed the

saving on to it) as @ aaceng in the subsequent handling of

cargo by the use of those S10 cargo beams So far a» the

United States is concerned, that sum measures a part of the

advantage gained by the United States in the handling of

cargoes after March 7, 1921, by the infringing cargo beama,

as contrasted with the hypothetical handling of the same

cargoes after March 7, 1021, by the use of old prior art cargo

beams That handling of cargues by the infringing use of the

patented cargo beams after March 7, 1921, was the usufract

of the entire tort, and a part of that usufruct was the saving

that had teen realized in the original cost of the carge beam

over an equal number of prior art carge beams

The length of time of use of the 510 infringing cargo

beams in carge handling is net a factor in the situation

because S10 of the old prior art cargo beams could not have

been used at all for the handling of carge for any length of

time long or short without the expenditure of SLOS 480 more

than the same handling of carge by the S10 infringing cargo

beams required Any cee at all of the S10 infringing arge

beame require! and presuppeesd and evidenres the enjoy

———

—

ment, and the utilization of, the entire original capital

saving in question.

The handling of cargo by the S10 patented cargo beams

after March 7, 1821, could not heve existed or proceeded for

asingle day without an in- pocket saving of cash to the con-

tractors, or an in Treasury saving of cash to the United

States, of S103 480.

Moreover, Respondent's immunity, as sovereign, from

injunction, makes it not unfair or unjust that it should be

myuired to pay Petitioner, as part of the reasonable and

entire compensation for its continuing infringement, by use

after Mareh 7, D921, what that immunity was reasonably

worth Tf the Petitioner had the same right of injunction

against the Cnited States, as against any ordinary infringer,

the Tnited States would have been compelled to replace in

fringing beams with non infringing ones at a cost greater

than SIGS ASO) Tt seems reasonable, therefore, that the

Petitioner should recover this amount, as the value of the

immuntt, from injunetion

3. If this Court helds that 8 ROS 3477 applies to the

hability of the Cotted States for its own infringements prior

to Mareh 7. 1821, but does not apply te its liability ander the

Act of I9TS for what the contractors’ liability would have

heen but for the passage of that Act, then and in that case

ealso suluit that the entire saving on the original installa

ben of SIS os reeoverble by Petitioner here for the

following reasons

(a) The infringing use made by the United States after

March 7. 1021, meant a $103,480 in Treasury saving to United

States. as heretofore pointed out

(hy The saving of $103 480 made in the purchase of metal

by the contractors for the original installation would, but for

the Act of I91S. have been recoverable from the contractors

both (1) as a saving directly made by them in manufactur

ing for the United States or (2) as a saving ultimately en.

joyed by the United States, the latter on the theory of the

several liability of joint tort feasors The contractors and the

United States were joint tort feasors in the infringements

constituted by the original installations

The Court of Claims flaods (RO 21)

“The United States installed the Lenke beats by con

tract with thind parties”

This was dene with full Know ledge of, and in detiance of

the patent in sait, Sew Coartef Claims Finding VIE CR 12)

The Unite! States thereby tndueed and procured, and

contributed to. the contractors infringing acts of installation

of the S10 Lenke carge beams With respect to those acts of

infringement by the contractors by manufacturing for the

United States under contracts, the United States was & joint

tort feaser with the contractors

The law of several liability of joint tort feasors for the

entire damage done by the tort and for the entire Conn peta

then reewoverable from either or beth yetnt tort feasors for the

tert, is clear

Said Mr Justice Hrown for thts Court in The Rracons

field 15s lS 3ag

“A person whe has suffered injury by the joint action

of twooor more wrongdoers, toay have his remedy against

all or either, subject, however, te the comdition that athe

faction once obtained is a har te any further proceeding

Phoemzs Ina Co v The Athes, Oh UO BR fee aL

(23) SA SG) Leremy ) Murrey, 700 SS 8 Wall l

(38: 123).”

This was a titel in admiralty for damages for injuries

resulting from the collision of two veasels. as was alee

Phoeniwe Ina Co we The Athes eupra

Lowe poy v Murray oupre’, Was an action at law for the

conversion of property

Sew ale Sragone Vv Johneon, 5 US AAT. which was an

action to recover prewsts given defendant for releasing mort

gage of a bankrupt, and thie Court amid

“Where the injury ix tertions, the remedy may be

joint of several, but the rule in thie country is that a

| a

judgment against one without satisfaction is no bar to

an action against any one of the other wrong-doers.”

[Citing cases, |

See also itlantec & Pacific Ry. Co. v. Laird, 164 U. 8. 393,

which Was an teflon agaiust the railway company for dam-

ages for personal injuries due to train wreck, and where Mr.

Justice White, speaking for this Court, said that the trial

court

“was manifestly justified in holding that the right to

recover Was Het founded upon the breach of a contract,

but upon the neglect of a commondaw duty. The action

therefore was er dele to, and the defendants, being joint

tort feasers, might have been sued either separately or

jointly at the cleetion of the injured party, and, if, upon

the trial, the proof warranted, a recovery might have been

had against a single defendant) Necastons vo Johnaon, 9

US 847 [2a See)”

Ree also Clay) Waters, 161 Ped S15, which was an action

to recover procesds of a gift made to defraud creditors, and

Where the Cirewit Court of Appeals for the Eighth Cireuit

said

“Tn these cireutustances he [Clay | was properly held

liable with Priscilla Boutright for the money which he

dided her to secure and wrongfully appropriate to her

ewnuse The aecepted rule on this subject is that ‘when

several persons unite inanaet which constitutes a wrong

to another, intending at the time to commit it, or doing

ito under cireumstanees which fairly charge them with

intending the consequences whieh follow, they are all

jointly hable for the wrong dene, without regard to their

individual participation in its accomplishment or their

Individual gain or profit resulting therefrom. They are

joint tort feasors, and as such jointly and severally liable

for the consequences of their wrongful act 1 Cooley on

Torts (Sd Bd) 223. and cases cited.”

In the instant case if we for the moment disregard the Act

Of 1910S, and assume the Net of 191008 in fall force and effect,

there would be a liability of the contractors for $103,480.

This liability would be assignable under US ROS. 48@s

and an assignment of it (like the assignments at bar) would

not be void under Uo OS ROS 4477

What is the effeet of the Act of 1918 on the assignments

at bar in so far as they relate to this liability of the con.

tractors”

Does that Act change the nature of that liability of the

contractors so that it is ne longer assignable ander

U_ 8. ROS 480s”

The fair answer to these two questions would seem to be

that the Act does not change the nature or the incidents of

the contractors’ liability, or impair the remedies of the owner

of the claim and the incidents thereof ander US. ROR. asus,

but the United States assumes the full liability, with all its

incidents entirely unimpainre!, to the end that those manufac:

turing for the United States may be free from all embarrass

ment of patent suits This purpose is clear, as we have here

tofore pointed out, beth in the histery of the origin of the

Act and on the face of the Act iteelf, and in neither is there

evidence or indication of any porpese to impair or curtail the

right» of patent owners including the right of assignment

under T S KOS dst.

It may be said bere. as it was said in Miller v Reberteon,

“46 US DAR. a case arising under the Trading with the

Enemy Act

“While the suit ° ° © is one against the United

States, the claim ®as net one agatmet it”

We submit that thie ix the true meaning and effect of the

Act of 18s, and if we are correst in this, it follows that the

Petitrener = claim against the lL inoteel States for BIL ISO as

the liability of the contractors assaneed by the United States

is ged and valid

The Court of Claims found that the contractors saved

$103,450 by the infringement That sam weuld have been

recoverable from them by Petitioner bat for the Aet of 1918

Under that Act it te recoverable byw Petitieoer we sulemit,

from the Unite? States

- oo or ee oe eet OSE

IV. An additional sum, equal to interest on

the capital saving of $103,480 from January 1,

1919, should be included in the award to Peti-

tioner.

In connection With any award to Petitioner of the capital

saving of $103 4800 in the lessened cost of the original instal.

lation as compared with cargo beams of the prior art as the

equivalent of or a substitute for legal damages, an additional

sum should be awarded equal te interest at the legal rate at

each of the respective places of infringement on that capital

saving from the date of installation when the saving was

made, January 1, 191% te the date of entry of final decree

herein

That such an additional sum should be awarded seems

supported by the analogy of the “just compensation” cases

in this Court ander the Fifth Amendment to the Constitution,

See Phelpe vo limited States, UR Adv. Ops. June 1,

127, p GY4: Miller vo Robertson, 266 US. 243, 2OS: Brooks

Scanlon Corp V. United States, 265 UU) RB. 106, 123: United

States Vo Brown, 263 UB TS: Seaboard Ai Line Ry. Co. v.

Umted States, 261 US 200. 1 nited States vo Benedict, 261

U 8 246

As said in Miller vo Robertson, supra, after a review of

TM Cases

“Compensation is a fumlamental principle of dam

ages, Whether the action is in contract or in tort, Wicker

fails to perform his contract is justly bound to

make good all damages that accrue naturally from the

breach, and the other party is entitled to be put in as

gexd a position pecuniarily as he would have been by

performance of the contract. Curtix r Innerarity, 6

How 146,134.12 Lo ed. 380,283) One who has had the

use of money owing to another justly may be required

te pay interest from the time the payment should have

heen made Both in law and in equity, interest is al

lowed on money due Spalding v. Mason, 161 U. 8.

375, 306, 40 Lo ed Ts, 746, 16 Sap. Ct. Rep. 592. Gen.

erally, interest is net allowed upon unliquidated dam.

ages. Mowry ¢ Whitney, Tf Wall 620, 653. 20 Led.

S60, 86600 But when necessary, in order to arrive at fair

compensation, the court, in the exercise of a sound dis

eretion, may inelude interest or its equivalent as an ele 5

ment of damages See Bernhard co Rochester German

Ins Co TY Comm S88. 397,65 Ath isa Ann Cas Dos.

Prager 6 Bigelow Carpet Co D4 Mass T2684 NE 620.

Faber ¢ New York, 222 N. Yo 255, 262, LIS NE. 609.

Dela Kamae Dela Rama, Zab US) 14d, 159) 16a, 60 LE ,

Habana Ise tS aot 467 AT Led Wot god oo Sup

(t Rep S08. Eddy oe Lafayette, 168 US 456, 467, 41

Lewd SES LE Sap Or Rep TON: Demette re W hy

brow, 68 Ped S06. 6s"

See alse Starr Piane Co Vo late Preamatic Oo. 12 F

(lod) S86 and cases there cited

As was sandin Phelps vo United States, supra

“Sewtion ITT [ef the Judicial Code provides that no

interest shall be allowed on any claim up te the tine of

the rendition of judgment unless upon a contract ex

pressiv stipulating for its payment Under the Sth

Amendment plaintiffs were entitled to just) compensa

tien, amd, within the meaning of £145. fof the Judicial

Comte the claim i one founded on the Constitution

es 8 9° Planta. property was taken before its vale

wus ascertained of pard Judgment in 020 for the

value of the ase of the property in TYTS and PG) with

out mere. is net sufletent te comstitute Jost compensa

them Sewtion ETT dees met geresbrbat the imeluston of the

whiitienal ameunt for whieh petitioner contends — It

is net a clatm for interest within the PPurpeese oF totention

ef that se tien Nets of Congress are te he constroed

and applied in barmeny with and net te thwart the pur

pewe of the Constitution The gevernment’s obligation

is te pat the owners in as goed position pecuniarily as

if the use of their property had net been taken They are

entitle! te have the full equivalent of the value of sach

use at the time of the taking paid contemporanenusty

with the taking As such payment has net been made,

{

——

petitioner is entitled to the additional amount claimed.

Seabourd Air Line Ro Co. cr. United States, supra, 304

(67 Lo ed. 669, 43 Sup. Ct. Rep. 354), Brooks-Scanlon

Corp. Vv. United States, 265 U8. 106, 123, 68 L. ed. 934,

O41. 44 Sup. Ct Repo Thy Liggett & M. Tobacco Co. ce.

United States, Co . ante, 656, 47 Sup.

Ct. Rep. -,

“Judginent reversed.”

In Brooks Scanlon Corp. Vv. United States, supra, this

Court said:

“Ttis settled by the decisions of this court that just com:

pensation is the value of the property taken at the time

of the taking L. Vogelstein & Co. rc. United States, 262

POS oS87, 40067 Loed. 1On2, 1014, 48 Sup. Ot. Rep. 564;

United States ec New River Collieries Co. 262 US. 341,

M44,67 Lo Bd 101d, DOET. AS Sup Ct, Rep. O65: Seubourd

Air Line Ro Co. c. United States, 261 Ul S. 290) 306, 67

Loed. 664, 669 45 Sup Ct Repo S54: Monongahela Nav.

Co. re. United States, Hs Ul SS. sil, 341, 387 L. ed. 465,

478,15 Sup Ct Rep G22. And. if the taking precedes the

payment of compensation, the owner is entitled to such

addition to the value at the time of the taking as will

produce the full equivalent of such value paid con-

temporaneously, Interest at a proper rate is a good

measure of the amount to be added. Seabourd Air Line

Ro Coie. United States, JO) US. 249) 306, 67 Lo ed. 664,

OOo ES Sup Ct Rep Sod; United States ¢) Renedict, 261

POS UY us 67 Lo ed 662, 664, 45 Sup. Ct Rep. 857;

United States co Brown, decided November 12, 1928, 2638

ToS Ts. ante, 171, 44 Sup Ct Rep. gw"

LS RS HRS Ep LORRI BC HGS 2 te ARTY EASY POR OO RAI

Sag

In United States Vo Benedict, supra, this Court said:

“The United States object te the judgment because

interest was allowed from date of taking. This point has

been discussed and determined in Seabourd Air Line R.

Coo or United States, decided today [261 U.S. 299, infra,

poe de Sup Or Rep ood) and needs me further elabo

ration.”

In Seaboard Air lane Ryo Co. v. lnited States, 261 US

200 this Court had said:

The aeleditionm of interest allowed hen the District

Court is necessary in order that the owner shall not

suffer loss and shall have ‘just compensation” to which

he is entitled.”

See also | nated Ntates Vv. Sargent, 162 Fed. 81, 54.

The savings of the contractors and of the United States

(in the cost of metal in the original installations) of $103 489

made and realized by them January 1, 1919, being recoverable

as an equivalent or a substitute for legal damages under the

rule of Tilghman vo Proctor (supra, pp. 30,31), an additional

sum equal to interest on $103,480 at the proper legal rates

from that date would seem, under the analogy of Che “just

com pensation” Cases cited above, to be alse recoverable under

the rale of Tilghman Vv. Proctor being

“the same rule that courts of equity apply to the case of

a trustee who has wrongfully used the trust property for

his own advantage.”

This additional sum equal to interest from danuary 1,

1919, is, we submit, a part of the

“reasonable and entire compensation”

recoverable by the Petitioner from the United States ander

the Act of 1918, for the manufacture of the infringing carge

teams by the contractors for the United States and the use

of those beams by the United States.

SANE ALOR STOLEN EIOEN “SDAA pe PE AMOS

V. Finding of established license fee for those

who tovuk a license to use under the patent.

The Court of Claims found (R. 21, IID):

“The fair license value on a royalty basis is the sum

of twenty ($20) dollars a cargo heam, amounting in this

case to the sum of sixteen thousand two hundred

($16,200) dollars.”

Under familiar law this sum is recoverable by the owner

of the patent as damage suffered by him by reason of the

infringement, so that Petitioner is entitled to recover at least

this sum here, quite irrespective of UB ROS. S477, seeing

that the United States has used the infringing carge beams

since March 7, 1921.

itut where the defendant's gains, savings and advantages

made by the infringements are also proved and are found by

the court below, as they are here, and they are the larger sum

of the two, as they are here, the plaintiff may elect the larger

sum and the Petitioner se elects here.

Tilghman V. Proctor, V25 UB 186;

Robinson on Patents, Vol &, po S28, § LIS.

The United States had an opportunity to take a license

under the patent in suit but elected to defy the patent and in

that election it took the risk of the patent being held valid

and infringed and it itself held responsible for all its gains,

savings and advantages accruing to it) by reason of its

infringements

As we have shown, the gains, savings and advantages for

which the United States ix Hable amount to 103480) plus

asum equal to interest as above set out,

VI. Conclusion.

We believe this case far transcends the interests of the

immediate parties, It is important for patent owners to

know what law governs the assignability of their property

where the United States has been or may be an infringer = [t

is important for thease manufacturing or using patentel

property for the United States to know what the extent of

their immunity from liability and from suit is and what law

geverns it, It is important for the United States to know

what liability the Aet of LOTS really imposes upen it with

respeet to these whe manufactare or use patented property

for it, Et is impertant to the proper functioning of govern

ment departments, especially in the event of war, te Know

what the Act of 1918 really means and whether it actualls

achieves the ends sought by it.

In conclusion it is submitted that the decrees of the ‘Sour

of (Tati he peverses] and that the court be directed to enter

a decree for Petithtomer helding the Melehior Lenke Letter

Patent Ne Loos.120, for Carge Beams, valid amd infringed

amd awarding judgment against the United States for

S150 plus an additional sum « cal to interest on S1Q3 486

Respectfully,

(wamios bo Pais.

Wat Heoteresx Renyes

AwcHIBALD Cox,

) bitasay bow ane

Jomrrit Wo otCoN,

Detetas Ho Resyvos,

Counsel for Petitioner

Appendix.

U.S. C. Title 35, See. 68, (Act of June 25, 1910, ¢. 423, 36

Stat. 851; U.S. Comp. Stat. Sec. 9465).

“tn Net to Provide Additional Protection for Owners

of Patents of the United States, and for Other Purposes,

“Be it enacted by the Senate and House of Representa.

tives of the United States of America in Congress assem:

bled that whenever an invention described in and covered by

a yattent of the United States shall hereafter be used by the

United States without license of tht ow ner thereof or TawTul

right to use the same, such owner may recover reasonable

compensation for such use by suit in the Court of Claims:

Provided, however, that said Court of Claims shall not enter

lain a suitor reward (sie) compensation under the provi:

sons of this act where the claim for compensation is based

on the use by the United States of any article heretofore

owned, leased, used by. or in the possession of the United

States: Provided further, that in any such suit the United

States may 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 Tithe Sixty of the Revised

Statutes, or otherwise And provided further, that the bene

fits 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 Hn

such patentee; nor shall this act apply to any device dis:

covered or invented by such employe during the time of his

employment or service.”

U.S. C. Title 35, See. 68, (Act of June 25, 1910, ¢. 423,

36 Stat. 851, amended July 1, 1918, ¢. 114, 40 Stat. 705;

U.S. Comp. Stat. Sec. 9465).

“Whenever an invention deseritesd in and covers) by a

patent of the United States shall hereafter be used or manu

facture by of for the United States without leense of the

owner thereof or lawful right to use or manufacture the

same, such owner's remedy shall be by suit against the United

States in the Court of CTalms for the recovery of his rea

sonable and entire compensation for such ase and manufac

ture Procided, however, That said Court of Claims shall not

entertain a suit of award compensation under Che provisions

of this act where the claim for compensation is based on

the use or manufacture by or for the United States of any

article heretofore owned, leased, used by. oor in the posses

sion of the United States Prociuded further, That in any suck

suit the United States may avail iteclf of any and all defenses,

general or special, that might be pleaded bv a defendant in

an action for infringement, as set forth in Tithe Sixty of

the Revised Statutes, or otherwise And procided further,

That the benefits of thie act shall net inure to any patentee

who. when he makes sach claim, is in the employment or serv.

ice of the Gowernment of the United States or the assignee

ef any such patentee, por shall this act apply to any devioe

discovered or invented by such emplovee during the time of

his employment or service —

U.S. C. Tithe 31, See. 203, (May 27, 1908, ¢, 206, 35 Stat.

411; U.S. RLS. See. 3477; UL S. Comp. Stat. See. 6355).

“All transfers and assignments made of any claim upoo

the United States, or of any part of share thereof, or inter

eat thervin, whether absolate of conditional, and whatever

may be the consideration therefor, and all powers of attor

ney, onmfers, of other authorities for receiving payment al

any such claim, or of any part or share thereof, shall

Sa ne a ea eet al ener nnn etn gt st) Ts NG

———_

absolutely null and void, unless they are freely made and

executed in the presence of at least (wo attesting witnesses,

after the allowance of such a claim, the ascertainment of the

amount due, and the issuing of a warrant for the payment

thereof Such transfers, assignments, and powers of attor-

nev, laust recite the warrant of payment, and must be

acknow ledge by the person making them, before an officer

having autherity to take acknowledgments of deeds, and shall

be certified by the officer; and it must appear by the cer

tifleate that the officer, at the time of the acknowledgment,

read and fully explained the transfer, assignment, or war-

rant of atterney to the person acknowledging the same.”

U.S. C. Tithe 35, See. 47, (Mar. 3, 1897, ¢. 391, ¢ 5, 29

Stat. 692; Feb. 18, 1922, ¢. 58, $ 6, 42 Stat. 391; UL S. ROS.

ings; U.S. Comp. Stat. Sec. 9444).

“Every patent or any interest therein shall be axsignable

in law by an instrument in writing, and the patentee or his

assigns or legal representatives may in like manner grant

and convey an exclusive right under his patent to the whole

orany specified part of the United States, An assignment,

grant, or conveyance shall be void as against any subsequent

purchaser or mortgagee for a valuable consideration, with

out notice unless it bs recorded in the Patent Office within

thaw months from the date thereof or prior to such subse

quent purchase or mortgage.

“Tf any such assignment, grant, or convevance of any

patent shall be acknowledged before anv notary public of

the several States or Territories or the District of Colum.

bia. or any commissioner of any court of the United States

forany Ietriet or Territory, or before any secretary of lega

fon or consular officer authorizad to administer oaths or

perform notarial acts under section 1750 of the Revised

Statutes, the certificate of such acknowledgment, under the

hand and official seal of such notary or other officer, shall

be prima fame evidence of the execution of such assignment,

grant, or conveyance.”

INDEPEN

Page

Opinion below 1

Jurisdiction ”

Statement. 2

The statutes 4

Argumen’ 6

Conetus on iz

AL THORITIES CIThip

Canes

Brothers v lLaited Btates Bt oR s 1!

Btatules

Act of Pebruary 1 102% (Chap Zaye 45 Stat ae, 2

Act of June BD 110 (Chap 423 36 Stat SOT) 24.10

Act of July 1. 1018 (Chap 134 40 Stat 704 Tus, 2510011

Bertion S477) Mevied Statutes 4&5 9101112

10382 36 '

Inthe Supreme Gourt of the Wnited States

Octoser Term, 1926

No. 540

RicuMonp Screw Ancuor Co., INc., PETITIONER

Tae Unrrep Strares

ON PETITION FOR A WRIT OF CERTIORARI TO THE COURT

OF CLAIMS

BRIEF FOR THE UNITED STATES IN OPPOSITION

An opinion (R. 13) by the Court of Claims, hold-

ing that the patent involved was valid and that

the invention covered thereby had been used by

the United States, was rendered on June 4, 1923,

and is reported in 58 Ct. CIs. 433. It was there-

upon ordered that the case be remanded to the gen-

eral docket for further proceedings to determine

the damages. (R. 19.) On December 7, 1925. ad-

ditional findings of fact were made (R. 20) and an-

other opinion entered (R. 22), which has not yet

been reported, in which the former judgment of

the Court of Claims as expressed in its conclusion

of law was set aside and a new judgment entered

dismissing the petition. (R. 24, 25.)

(1)

JURISDICTION

The judgment of the Court of Claims dismiss-

ing the petition to review which this writ of cer-

tierari is requested was entered on December 7,

1925. (R. 25.) A motion for additional findings

of fact was entertained and overruled on May 3,

1926. (R.25.) The petition for writ of certiorari

was filed July 30, 1926. (R. 26.) Jurisdiction to

issue the writ is conferred by Section 3 (b) of the

Act of February 13, 1925. (Chap. 229, 45 Stat.

936.)

STATEMENT

This is a suit under the Act of June 25, 1910

(Chap. 425, 56 Stat. 851), as amended by the Act

of July 1, 1918 (Chap. 114, 40 Stat. 704, 705), to re-

cover compensation from the United States for the

alleged unauthorized and illegal manufacture and

use of cargo beams of a type covered by United

States Letters Patent No. 1,228,120, granted May

29, 1917, to Melchior Lenke.

The Court of Claims in the fludings of fact en-

tered on June 4, 1925, found said letters patent

were isued to Lenke on May 29, 1917. (R. 10, 11.)

On December 31, 1918, attorneys representing

Lenke wrote to officers of the Quariermaster (Corps

of the Army, stating that Lenke's patent was being

used by the Govermment at the Brooklyn Army

Supply Base without permission of the patentee.

The officers of the Army replied, neither admitting

ner denving such alleged use. (R. 12.) The eourt

further found that * during and since the year

1918 cargo beams of the kind and character "’ eoy-

ered by said letters patent ‘* have been in use by the

United States at its Army base at Brooklyn, N.

Y.,”’ without any authorization by or compensation

to the petitioner or other owner of said letters pat-

ent. (R. 12,13.) The Court of Claims thereupon

rendered an opinion holding that the beams in-

stalled by the Government were covered by said let-

ters patent, and remanded the case to the general

docket for the purpose of further proceedings to

ascertain the amount of the damages, if any. (R.

13, 19. )

The conclusion of law upon such findings of fact

was that the petitioner was entitled to recover,

the amount thereof to be later determined. (R.

13.) On December 7, 1925, the Court of Claims

set aside its former conclusion of law and judg-

ment and ordered that the petition in this case be

dismissed. (R. 20.) Additional findings of fact

were rendered. These findings show that the

United States installed on or before January 1,

1919, 810 cargo beams covered by the Lenke patent,

(R. 21.)

Since January 1, 1919, the evidence estab-

lishes that no additional beams of the Lenke

type have been installed or used by the

United States. (R. 21.)

The court found the fair license value on a roy-

alty basis was $20 per cargo beam, or a total of

—

#16200. (CR. 21.) The installation of the beam

covered by the patent resulted in a saving of 2,000

ibs. of metal per beam, which, at 6%2 cents per

pound, the market value for such metal, amounted

to a saving of 8103480, (R. 21.)

The single advantage which the United

States gained by the use of the beams was

the saving in cost of the same and the con-

venience resulting from their novelty. CR.

22.)

‘The beams were used for Governinent: purposes

only, and were net sold for a profit. (R. 21, 22.)

There is ne proof in the record as to any

other MaVili oof advantage to the United

States. (R. 22.)

The original findings show that letters patent

were granted to Lenke on May 29, 1917. CR. 10.)

They Were assigned by Lenke to “Theos k.

Chappell on September 29, 1920, and on Mareh 7,

121, were assigned by Chappell te petitioner,

(R12) Bach of said assignments contained a

provision that the assignee sheuld have

all rights of action for past infringements

of said patent, and all rights te recoverntes

for damages, profits, and royalties for said

infringements of every kind whatsoever.

(R. 12.)

The Court of Claims held that as all of the beams

had been installed on or before January 1, 1919,

long before petitioner owned any interest in the

patent, petitioner had ne right to maintain this

—

suit, and that any attempt to assign the claim re-

sulting against the United States because of such

alleged wrongful installation of these beams was

absolutely null and void under the provisions of

Section 3477 of the Revised Statutes of the United

States.

THE STATUTES

The pertinent portions of the Act of June 25,

1910 (Chap, 428, 36 Stat. 851), are as follows:

That whenever an invention deseribed in

and covered by a patent of the United States

shall hereafter be used by the United States

without leense of the owner thereof or law-

ful right to use the same, such owner may

recover reasonable compensation for such

use by suit in the Court of Claims: * * *

Provided further, That in any such suit the

United States may 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 Tithe Sixty of

the Revised Statutes, or otherwise * * *.

The pertinent portions of the Act of July 1, 1918

(Chap. 114, 40 Stat. 704, 705), amending the Act

of June 25, 1910, are as follows ;

‘That whenever an invention described in

and covered by a patent of the United States

shall hereafter be used or manufactured by

or for the United States without license of

the owner thereof or lawful right to use or

manufacture the same, such owner's remedy

shall be by suit against the United States

—

in the Court of Claims for the recovery of

his reasonable and entire compensation for

such use and manufacture: * * * Pro-

vided further, That in any such suit the

United States may avail itself of any and

all defenses, general or special, that might

be pleaded by a defendant in an action for

infringement as set forth in Tithe Sixty of

the Revised Statutes, or otherwise * * °,

The pertinent portions of See. S477, Revised

Statutes, are as follows:

All transfers and assignments made of

any claim upon the United States, or of any

part or share thereof, or interest therein,

whether absolute or conditional, and what-

ever TnaAyv be the consideration therefor, and

all powers of attorney, orders, or other au.

theories for receiving payment of any such

elaim, or of any part or share thereof, shall

he absolutely null and void, unless they are

freely made and executed in the presence of

at jenst two attesting witnesses, after the

allowance of such a claim, the ascertainment

of the amount due, and the issuing of a war-

rant for the payment thereof. * ° °

ARGUMENT

As heretofore stated, the Court of Claims held

that while 810 beams installed by or for the United

States were covered by the Lenke puitent, all of the

installations of such beams were made pror to

January 1, 1919. The court found that ‘ the

single advantage which the United States gained

by the use of the beams was the saving in cost of

—

the same and the convenience resulting from their

novelty *’ (R. 22), and that ** there is no proof in

the record as to any other saving or advantage to

the United States’? (R. 22).

Finding LV of the amended findings by the Court

(R. 21) shows the saving to the United States as

the result of the use of this invention, and shows

that such saving was limited to the cost of the con-

struction thereof. The saving resulted in a lighter-

weight beam than that required without the use

of the invention covered by the patent. (R. 21.)

Therefore, if there is any liability upon the part

of the Government for the use of this invention

shown by the findings of fact in this case, that

liability was to the owner of the patent prior to

January 1, 1919, the date before which the court

finds S10 beams were installed by and for the

Giovernment,

The findings clearly show that Lenke was the

owner of the patent at that time. It was net until

on September 29, 1920, that he assigned the patent

to Chappell, and the petitioner never gained any

interest in the patent until March 7, 1921 (R. 12),

and this suit was brought on May 23, 1921 (R. 6),

only a little over two months after the petitioner

obtained any interest in this patent. The assign-

ments of the patent attempted to transfer the right

to the assignee to sue in his own name for past

infringements, ete. (R. 12.) Any claims which

either Lenke or Chappell had in that respect were

SOE IE IIE BS

certainly unliquidated claims against the Govern-

ment, and See, 3477, Rev. Stat., specifically declares

all such assignments to be null and void. There.

fore any attempts to make such an assignment of

any right which Lenke or Chappell may have had

were wholly futile, and vested no rights whatsvever

in the petitioner.

The facts as found by the Court of Claims, to-

gether with the special provisions of See. 3477,

would seem to be all that is necessary upon this

point. However, this Court, in the case of

Brothers v. lUutted States, 20) U.S. RS, RY has

expressly applied Sec. S477 to a claim under the

Act of June 25, 1910, and held there that there

eould be no assignment of such an unliquidated

claim against the Governinent.

Petitioner herein contends, however, that the

use of these beams during the time it was the

owner of the patent in question gave to petitioner

a right of action because of such use. The original

findings of fact in this case state that during and

since the vear 1918 beams of the kind and charae

ter covered by the Lenke patent have been in use

by the Government. (RR. 12,13.) The additional

findings of fact show that all of these beams were

installed on or before January 1, 1919, and that

*“siner January 1, 1919, the evidence establishes

that no additional beams of the Lenke type have

been installed or used by the United States.’ (R.

21.) The findings also show that the only advan-

—

tage that the United States gained in the use of

this beam was in the saving at the time of its in-

stallation. The fair license value on a royalty

basis is found at #20 per beam, but this is shown

to be because of the saving at the time of the in-

stalluation. (R. 21.)

There is no proof in the record as to any

other saving or advantage to the United

States. (R. 22.

The number of beams, if any, used during the

period of ownership by petitioner is not shown.

The value of the use, if any, of such beams by the

United States during the period of ownership by

petitioner of said patent is not shown, and, on the

contrary, the findings show that the sole saving to

the United States and the sole value of the use of

this patent resulted in the saving of cost at the time

of the installation. Therefore for the period of

time during which petitioner owned this patent

there is no use proven by the United States of such

invention, nor is there value of such use, if any,

proven. On the contrary, it is shown that such use

would have been of po value, as the value of the use

of the invention occurred when the beams were in-

stalled.

As te the use prier to petitioner's ownership, as

heretofore pointed out, petitioner did not then own

the patent, and because of See. 3477 could not gain

a right to such an alleged claim against the United

States by assignment. Therefore petitioner should

net and did not recover.

Petitioner, however, further contends that be-

cause the amendment of the Act of June 25, 1910,

by the Act of July 1, 1918, makes the United States

liable for claims for the use of an invention by a

manufacturer for the United States, and that as

the claim for infringement against the manufae-

turer could be assigned, therefore Sec. 3477, pro-

hibiting the assignment of claims against the

United States, has no application to claims against

the United States under the Act of June 25, 1910,

as amended by the Act of July 1, 1918. This the-

ory is rather unusual, and if it amounts to any-

thing, it is merely an argument that by implication

See, S477 of the Revised Statutes, in se far as ap-

pheable to patent claims, was repealed by the Act

of June 25, 1910, as amended by the Act of July 1,

1918. The Court of Claims did find that

the United States installed the Lenke beams

by contract with third parties. (R. 21.)

Lat us assume that this, therefore, means, as pro-

vided in the Act of July 1, 1918, that the invention

of this patent was used or manufactured for the

United States by contractors, and that under such

statute the United States was lable for the value

of such use, thus bringing the case squarely within

the hypethesis which petitioner assumes, Stl,

we submit that that does not justify the assertion

that Sec. S477 of the Revised Statutes has no apph-

cation to such a claim. The mere fact that had the

claim been against a private party the same

—

could have been assigned does not bring about such

aresult. There is nothing in these Acts indicating

any intention upon the part of Congress to permit

the assignment of such claims against the Govern-

ment. The owner of the claim is not deprived

of any remedy by these statutes, and it is a long

well-settled rule that repeals by implication are not

favored and will not result unless clearly indicated

and necessary to carry out the legislative intent.

Sueh a repeal is neither indicated nor necessary.

On the contrary, the Act of July 1, 1918, provides

that whenever an invention is used or manufac-

tured by or for the United States ** without license

* * * such owner's

of the owner thereof

remedy shall be by suit against the United States

in the Court of Claims."" (Italies ours.) This

dees not indicate any intention to permit a suit by

an assignee in Vielation of Sec, 3477 of the Revised

Statutes, And it is only reasonable to say that by

the use of the word ** owner "in this Act Congress

meant the owner at the time the alleged use oc-

curred. Sec. $477 has been upon the statute books

for many years, and has been an unbroken rule in

Government transactions during such time. Con-

gress may be presumed to have used the word

“owner” in the Acts of 1910 and 1918 with this

statutory rule concerning Government transactions

clearly in mind.

This Court in the case of Brothers v. United

States, 290 U.S. 88, held that because of Sec. 3477

—

no assignment of claims under the Act of 1910 could

be made. There is no such difference between the

Acts of 1918 and 1910 as to justify a different rule.

Petitioner urges, among other matters which it

is felt need not be discuased, as they almost answer

themselves, that since the assignments of the patent

expressly included the right to sue for past in-

fringement, Sec, 3477 of the Revised Statutes had

no application. It would be unusual if third

parties by a written agreement could avoid the

express prohibition of a statute made for the

protection of the Government.

For the reasons above stated, it is respectfully

submitted that the conclusions and decision by the

Court of Claims were correct and that this case

presents no question which should be reviewed by

this Court under its power to grant a writ of

certiorari.

Respectfully submitted.

WuiiaM D. Mrrenei.,

Solicitor General.

Hramas J. Gattoway,

Asmstant Attorney General.

Joun 8S. Brapier,

Altorney.

Serremaenr, 1926.

Office Supreme Court, U. S.

FILED

OCT 2 1926

We. &. ST-NSBURY

Clink

IN THE

Supreme Court of the United States,

Ocroner Teum, 1926.

<o(@ 99

Ric Mon, Screw ANcHoR Co., INc., Petitioner,

Vv.

Tur UNIrep STATES

Ox Perrnon por a War or CERTIOKAR! TO THE COURT OF

(LAIMS

REPLY TO BRIEF FOR THE UNITED

STATES IN OPPOSITION.

Irief for the United States in discussing the use of in-

fringing beams by the United States during the time peti:

tioner was owner of the patent, that is to say, after March

7, 1921 (Ro 12) save cp. Sh:

“The findings also show that the only advantage that

the United States gained in the use of this beam was

in the saving at the time of its installation.”

On the contrary the finding in question was (R. 22):

“The single advantage which the United States gained

by the use of the beams was the saving in cost of the same

and the convenience resulting from their novelty.”

iTtalics ours)

—

This “convenience” in use resulting from the novelty of

the structure is set out in the first opinion of the Court of

Claims (BR. 14-16) and in the Lenke patent, Exhibit A.

The advantage resulting from this convenience in use

was enjoyed by the United States during the entire period of

the petitioner's ownership of the patent and for this compen.

sation should be made as provided in the statute.

Moreover, as the United States saved $103,480. in the in.

stallation of the infringing beams there was an additional

saving to the United States during each year of the peti-

tioner'’s ownership of the patent of interest on that amount,

to wit, several thousand dollars per vear and for this also

compensation should be made.

Irief for the United States says ip. Or:

“The fair license value on a rovalty basis is found at

$20 per beam, but this ts shown to be because of the

saving at the time of the installation (R. 21).”

( Italics ours.)

The italicized part of the statement is not correct. There

is nothing in the findings or in the record to justify it

Brief for the United States says «p. 9) that there ix no

proof of use by the United States during the period of peti

tioner’s ownership of the patent or proof of the value of any

such use.

This is error.

The Court of Claims (BR. 12 and 15) in its Gndings of fact

entered June 4, 1923, found:

“Vill

“During and since the year 1918 cargo beams of the

kind and character illustrated and described in the draw.

ings and specifications of the said Lenke letters patent,

and claimed in the claims of said letters patent, hare

been in use by the United States at ite Army base at

Brooklyn, N. Y., without”, ete. (Italics ours.)

As indicated above the Court of Claims found convenience

and advantage and value in that use.

—

As to petitioner's right to compensation from the United

States for the damage done to the petitioner and the profits

realized by the contractor by his installation of the infring-

ing beams for the United States without license, and the

effect of Section 3477 U. 8. R. 8. and of the Act of July 1,

1918, upon that right, Brief for the United States admits that

the question so raised is “rather unusual” (p. 10) and cites

no authority pro or con,

Respectfully submitted,

WILLIAM H. Kenyon,

ARCHIBALD Cox,

Josern W. Cox,

Doveias H. Kenyon,

Counsel for Petitioner.

Dated New York, Sept. 30th, 1926.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.