Gill v. United States

• Decision Date: 06 January 1896
• Docket Number: No. 85,85
• Citation: 160 U.S. 426,40 L.Ed. 480,16 S.Ct. 322
• Parties: GILL v. UNITED STATES
• Court: U.S. Supreme Court

160 U.S. 426

16 S.Ct. 322

40 L.Ed. 480

GILL

v UNITED STATES.

No. 85.

January 6, 1896.

Claim by Jabez H. Gill against the United States. From a judgment of the court of claims dismissing the claim, the claimant appeals. Affirmed.

This was a suit by Gill to recover of the United States the sum of $94,693.04 upon an implied contract for the use of certain machines covered by letters patent issued to the claimant.

The petition alleged, in substance, that from March, 1864, to March, 1881, the claimant was employed as machinist, foreman, and draftsman at the Frankford Arsenal, in the state of Pennsylvania, and since March, 1881, as master armorer at such arsenal, receiving during the term of his employment a per diem compensation for his services. His engagement required him to perform manual labor and to exercise his machanical skill in the service of the government, but did not require the exercise of his inventive genius in such service, nor secure to the government the right to use any of his inventions without compensation.

That at sundry times from 1869 to 1882 six patents were granted to him,—for a cartridge-loading machine, a weighing machine, a gauging machine, a cartridge anvil, a heading machine, and a priming tool for reloading; that at different times he assigned to individuals or corporations all these inventions, but reserved to the government the right to use them.

The petition further alleged that the reasonable value of such use by the government amounted to the sum of $94,693.04, no part of which had even been paid; that no action upon the claim had been had in any department of the government beyond repeated acknowledgments, by the ordnance department, of claimant's right to compensation for the use of the inventions.

The government made a general denial of the allegations of the petition, and submitted the case to the court of claims, which made a finding of facts, the material portions of which are printed in the margin,¹ and entered a judgment dismissing the claim upon the ground that, where an employ e of the government takes advantage of his connection with it to introduce an unpatented device into the public service, giving no intimation at the time that he regards it as property, or that he intends to protect it by letters patents, but allows the government to test the invention at its own exclusive cost and risk by constructing machinery and bringing it into practical use before he applies for a patent, the law will not imply a contract; and that a contract will not be implied in favor of an employe who has thus placed a patented divice in the public service as to machines constructed and used after his patent has been obtained.

From this decree the claimant appealed to this court.

H. E. Paine, for appellant.

Asst. Atty. Gen. Dickinson, for the United States.

Mr. Justice BROWN. after stating the facts in the foregoing language, delivered the opinion of the court.

This case raises the question, which has been several times presented to this court, whether an employ e paid by salary or wages, who devises an improved method of doing his work, using the property or labor of his employer to put his invention into practical form, and assenting to the use of such improvements by his employer, may, by taking out a patent upon such invention, recover a royalty or other compensation for such use. In a series of cases, to which fuller reference will be made hereafter, we have held that this could not be done.

The principle is really an application or outgrowth of the law of estoppel in pais, by which a person looking on and assenting to that which he has power to prevent is held to be precluded ever afterwards from maintaining an action for damages. A familiar instance is that of one who stands by while a sale is being made of property in which be has an interest, and makes no claim thereto, in which case he is held to be estopped from setting up such claim. The same principle is applied to an inventor who makes his discovery public, looks on, and permits others to use it without objection or assertion of a claim for a royalty. In such case he is held to abandon his inchoate right to the exclusive use of his invention, to which a patent would have entitled him, had it been applied for before such use. As was said by Mr. Justice Story in Pennock v. Dialogue, 2 Pet. 1, 16: 'This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure, for where gifts are once made to the public in this way they become absolute.' 'It is possible,' said the trial court, in charging the jury, 'that the inventor may not have intended to give the benefit of his discovery to the public, and may have supposed that by giving permission to a particular individual to construct for others the thing patented he could not be presumed to have done so. But it is not a question of intention which is involved in the principle we have laid down, but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say whether the evidence brings this case within the principle which has been stated.' This language was quoted with approval in Grant v. Raymond, 6 Pet. 218. So, also, in Shaw v. Cooper, 7 Pet. 292, 323, it was held directly that, 'whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatsoever, without the immediate assertion of his right, he is not entitled to a patent.'

The application of this principle to a single individual whom the patentee has permitted to make use of his invention without claiming compensation therefor first arose in McClurg v. Kingsland, 1 How. 202. In this case the patentee, Harley, was employed by the defendants at their foundry upon weekly wages. While so employed, he invented the patented improvements, making experiments in the defendants' foundry, and wholly at their expense. The result proving useful, his wages were increased. He continued in their employment, during all of which time he made rollers for them, spoke about procuring a patent, and finally made an application, which was granted. He assigned the patent to the plaintiffs, after the defendants had declined his proposition that they should take out a patent, and purchase his right. He made no demand upon them for compensation for using his improvement, and gave them no notice not to use it, until a misunderstanding had arisen, when he left their employment, and made an agreement with plaintiffs to assign his right to them. The defendants continuing to make the rollers on his plan, the action was brought by the plaintiffs, without any previous notice by them. It was held that the facts above stated justified the presumption of a license to use the invention, and that the charge of the court that the defendants might continue to use it without liability to the plaintiffs was correct.

In the case of Solomons v. U. S., 137 U. S. 342, 11 Sup. Ct. 88, one Clark, who was in the employ of the government as chief of the bureau of engraving and printing, conceived the idea of a self-canceling stamp, and prepared a die or plate therefor, making use of the services of the employees of the bureau and the property of the government. While his application for a patent was pending, he assigned his rights to the appellant, Solomons, in payment of an account between them. On taking out the patent the appellant notified the commissioner of internal revenue that he was the owner of the patent, and demanded compensation for the use of the stamp on whisky barrels. It further appeared that Mr. Clark, as chief of the bureau, had been assigned the duty of devising a stamp for this purpose, and it was not understood or intimated that the stamp which he was to devise should be patented, or become his personal property. Indeed, before the final adoption of the stamp, he said that the design was his own, but he should make no charge to the government therefor, as he was employed on a salary by the government, and had used its machinery and other property in the perfection of the stamp. It was held that, having been employed and paid to devise a new stamp, the invention, when accomplished, became the property of the government, and that the patentee had practically sold in advance whatever he might be able to accomplish in that direction.

A similar case was that of Lane & Bodley Co. v. Locke, 150 U. S. 193, 14 Sup. Ct. 78, in which an engineer and draftsman at a fixed salary, in the employ of the defendants, and using their tools and patterns, invented a stop valve, which the firm used with his knowledge in certain elevators constructed by them until its dissolution, and after that a corporation organized by the firm used it in the same way, and with the like knowledge. It was held that the patentee, having made no claim for remuneration for the use of the patent, saying that he did not desire to disturb his friendly relations with the firm, might be presumed to have recognized an obligation to permit them to use the invention.

In McAleer v. U. S., 150 U. S. 424, 14 Sup. Ct. 160, there was an express license by an employ e in the treasury department to such department and its bureaus of a right to make and use machines containing the improvements of the patentee to the end of the patented term, and it was held that this agreement could not be varied by parol evidence that it was to terminate upon the discharge of the patentee from the employment of the government.

In Keyes v. Mining Co., 158 U. S. 150, 15 Sup. Ct. 772, a person in the employ of a smelting company invented a new method of withdrawing molten metal from a furnace, took out a patent for it, and permitted his employer to use it without charge so long as he remained in its employ, which was about 10 years. It was held that there was at least an implied license to use the improvement without payment of royalties during the continuance...