Burke v. United States

• Decision Date: 07 October 1946
• Docket Number: No. 45611.,45611.
• Citation: 107 Ct. Cl. 106,67 F. Supp. 827
• Parties: BURKE et al. v. UNITED STATES.
• Court: U.S. Claims Court

67 F. Supp. 827

107 Ct. Cl. 106

BURKE et al. v. UNITED STATES.

No. 45611.

Court of Claims.

October 7, 1946.

Archie K. Shipe, of Washington, D. C. (Walter M. Bastian, of Washington, D. C., on the brief), for plaintiff.

H. L. Godfrey, of Washington, D. C., John F. Sonnett, Asst. Atty. Gen. (John B. Miller and J. F. Mothershead, both of Washington, D. C., on the brief), for defendant.

Before WHALEY, Chief Justice, and WHITAKER, JONES, LITTLETON, and MADDEN, Judges.

WHITAKER, Judge.

This is a suit by the administrators of the estate of Alexander M. Bunn and William E. Richardson to recover just compensation for the alleged taking of their interests in patents issued on the "M-1 rifle," used by the United States Army and Marine Corps.

Bunn and Richardson were attorneys at law. On August 11, 1919 they entered into a contract with John C. Garand, the inventor of this rifle, under the terms of which Garand contracted to compensate each of the attorneys to the extent of 5 percent of any proceeds up to $100,000 and 33 1/3 percent of any proceeds above $100,000 realized by him from the assignment, sale or license of any patent which he might obtain on any of his inventions pertaining to machine or automatic guns or rifles or other firearms during the life of the contract. The attorneys were to use their best efforts to secure patents on any of his inventions, to protect the same from interference or infringement, and to promote a sale or other disposition thereof to the best advantage of the parties interested in them. It was further agreed "that any of the parties shall arrange for a sale, but none of the parties hereto may sell or dispose of their interest in the said inventions and discoveries except by the concurrence of two of the three parties hereto."

Plaintiffs allege that this contract gave them a vested equitable interest in the patents thereafter obtained by Garand, and that the later acceptance by the defendant of assignments by him of the whole right, title and interest in the patents and the recording of the assignments constituted a taking of their interests, for which the defendant is required to pay them just compensation.

The pertinent facts in connection with the invention, the patenting thereof and the assignment of the patent to the United States, and plaintiffs' dealings with defendant with respect thereto are as follows.

Prior to August 16, 1918 Garand had only partially completed the embodiment of his conception of an automatic rifle. On this day, at the instance of John T. Kewish, with whom he had a working arrangement for the perfection of this rifle, he was employed by the Bureau of Standards to complete its construction. It was completed in December 1918, but failed to function satisfactorily. He continued to work on it as an employee of the Bureau of Standards and by April 5, 1919 had perfected a model which did operate successfully.

Shortly after the perfection of this model, to wit, on April 26, 1919, Garand, at the instance of Captain Kopper, who was the liaison officer between the office of the Chief of Staff of the Army and the Bureau of Standards, filled out a mimeographed form entitled "Record of Military Invention," in which under the heading "Rights of United States Government" it was provided, "to take out the complete patent and to manufacture and use for Government purposes only, all domestic, commercial and foreign rights reserved to inventor." This document was signed by Garand as inventor and by Captain Kopper as "forwarding officer," and was delivered to the Patent Section of the War Department.

Following this, on July 11, 1919, Garand filed a patent application on this invention, but this application was rejected for want of prosecution, and thereafter was abandoned. But on September 5, 1919 Garand filed a second application for patent on this invention. This was forwarded to the Patent Office by Major D. H. Decker of the Ordnance Department of the War Department. This application matured into a patent on October 19, 1926.

In the meantime, Garand had severed his connection with the Bureau of Standards on October 22, 1919, and had entered the employ of the Ordnance Department at the Springfield Armory, Springfield, Massachusetts, on November 4, 1919, for the purpose of continuing work on the development of automatic rifles.

In 1926 the Springfield Armory was directed to undertake to perfect a so-called "gas-actuated" gun. Garand was directed to discontinue his work on his original invention, which was a primer-actuated gun, and to start work on a "gas-actuated" gun. In such a gun the mechanism was operated by trapping at the muzzle a part of the gas in the barrel and applying this gas pressure to a piston. Such a gun was finally perfected, and in 1929, 1930, 1931 and 1932 Garand filed applications for patents on the gun and appurtenances thereto. These applications later matured into patents.

Immediately prior to filing applications for all of the above patents, except one, Garand executed to the United States Government license agreements reading in part as follows: "* * * I hearby grant to the Secretary of War of the United States of America and to his successors in office the right and license (non-exclusive) to make, use and sell and to cause to be made, used and sold, for the Government of the United States of America, the subject matter of said invention * * *, reserving to myself unrestricted possession and enjoyment of all other rights not hereby expressly granted to the Government of the United States of America."

The last patent, one on a cartridge clip, Garand assigned to the United States, but reserved to himself an irrevocable and assignable license.

Subsequently, on January 20, 1936, Garand, without the knowledge or consent of either Bunn or Richardson, executed to the United States the following assignment:

"Whereas, by reason of the character of my employment by the Government of the United States, at Springfield Armory, all right, title and interest in and to said inventions and in and to the patents that have or that hereafter may issue thereon resides in the said Government.

"Now, therefore, I, John C. Garand, by these presents do sell, assign, and transfer unto the said Government of the United States of America, as represented by the Secretary of War, and his successors in office, the whole right, title, and interest in and to the said inventions and in and to the letters patent and applications for letters patent therefor aforesaid; the same to be held and enjoyed by the said Government of the United States of America, to the full end of the terms, for which said letters patent are or letters patent may be granted, as fully and entirely as the same would have been held by me had this assignment not been made."

This assignment was recorded in the Patent Office on July 9, 1936.

After January 20, 1936, Garand, in the years 1938 and 1939, filed applications for patents on other inventions connected with an automatic rifle, and immediately assigned any patents to be issued thereunder to the United States Government.

These assignments, plaintiffs say, were in violation of their rights under the contract of August 11, 1919, and constituted a taking thereof by the Government of the United States.

If the defendant took the assignments from Garand in ignorance of plaintiffs' rights, it incurred no liability to them. Being...