Richmond Screw Anchor Co v. United States, 99

• Decision Date: 03 January 1928
• Docket Number: No. 99,99
• Citation: 72 L.Ed. 303,275 U.S. 331,48 S.Ct. 194
• Parties: RICHMOND SCREW ANCHOR CO., Inc., v. UNITED STATES
• Court: U.S. Supreme Court

275 U.S. 331

48 S.Ct. 194

72 L.Ed. 303

RICHMOND SCREW ANCHOR CO., Inc.,

v UNITED STATES.

No. 99.

Argued Dec. 1, 1927.

Decided Jan. 3, 1928.

Messrs. Charles E. Hughes, Wm. Houston Kenyon, Archibald Cox, O. Ellery Edwards, and Douglas H. Kenyon, all of New York City, and Joseph W. Cox, of Washington, D. C., for petitioner.

[Argument of Counsel from pages 332-334 intentionally omitted] The Attorney General and Mr. Herman J. Galloway, Asst. Atty. Gen., for the United States.

[Argument of Counsel from pages 335-337 intentionally omitted] Mr. Chief Justice TAFT delivered the opinion of the Court.

This is a suit by the Anchor Company, brought under the Act of June 25, 1910 (chapter 423, 36 Stat. 851 (35 USCA § 68; Comp. St. § 9465)), as amended July 1, 1918 (chapter 114, 40 Stat. 704, 705), to recover for the infringement of letters patent No. 1,228,120 for a cargo beam, granted May 29, 1917, to Melchior Lenke, and assigned by Lenke to Thomas E. Chappell, and by Chappell to the Anchor Company.

The Court of Claims first decided that the plaintiff was entitled to recover from the United States. Thereafter the court made a second decision, on December 7, 1925, in which it found as an additional fact that, through the contractors who manufactured for the United States, the United States had installed, on or before January 1, 1919, 810 cargo beams covered by the Lenke patent, and that it did not thereafter install any more; that the use of the Lenke cargo beams by the United States resulted in a saving in the expense of installation of cargo beams used by it, amounting in the case of each beam to 2,000 pounds of metal, with a value of 6 1/2 cents per pound; 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.

Upon the additional findings of fact, the government contended that the former judgment should be set aside and a new one entered dismissing the plaintiff's petition, for the reason that the assignment of the claims for infringement to the plaintiff was void and of no effect under section 3477 of the Revised Statutes (31 USCA § 203). The Court of Claims on the second hearing yielded to this contention and dismissed the petition.

A cargo beam is a beam employed in combination with other elements to carry the weight of cargo to be removed from the hold of vessels alongside a pier or wharf and deposited on the pier or in the warehouses fronting on the same. Such beams are old and have been used for years. The method existing prior to this invention was the use of two channel beams, spaced several inches apart, firmly riveted together at the top and bottom by means of angle irons or plates, and rigidly affixed at either end to two uprights extending upward through the roof of the warehouse in brackets designed for the purpose. The record showed that a beam adaptable for the purpose weighed 3,300 pounds, and must possess the full strength of withstanding the pull of cargo weights from both a vertical and diagonal angle.

Lenke conceived the idea of substituting for the fixed beam a single I-beam of about 1,300 pounds in weight. At each end of the I-beam he attached laterally a strong bar, by means of rivets and angle irons, providing holes near its upper and, through which holes he introduced pivots, thereby enabling the cargo beam to swing into any angle from which the load was applied. Lenke fastened U-bolts into the center or neutral zone of the beam to receive the hoisting tackle. The real worth of the invention lay in the lightness of the cargo beam he used, because the operator could present it so as to make the strain on the beam to be vertical, even when force was applied from an angle.

The patent was a combination patent, and in view of the prior art was limited to the exact terms of the claims, which made it quite narrow, as its course through the Pattent Office clearly demonstrated.

It is argued, on behalf of the United States, that Lenke's invention was unpatentable, because it embodied nothing more than a natural and normal modification of existing ideas. Such modifications and their advantage were all very clear after the fact; but the old beams had been in use for a number of years, and a heavy weight of metal had been used, when, by Lenke's device, it was cut down two-thirds. Lenke's cargo beam almost universally superseded the old one. The United States used it, and it was installed in nearly every pier in the country. No one else had foreseen its advantage. Lenke offered it as a solution of the problem at a minimum cost with a maximum efficiency. The United States conceded in the Court of Claims that Lenke's patent was novel, in the sense that there was nothing in the prior art exactly like it, and that it was useful. While thus, in a way, he improved an existing idea, he developed a new idea. The question of its patentability was worked out in the Court of Claims, and all the judges concurred in upholding its validity, and did not change their conclusion in the second judgment. We see no reason for differing from that conclusion.

The Court of Claims based its second judgment against the plaintiff on the strength of section 3477 of the United States Revised Statutes, as construed by this court in Brothers v. United States, 250 U. S. 88, 89, 39 S. Ct. 426, 63 L. Ed. 859. The section reads 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 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 attest- ing 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 for payment, and must be acknowledged by the person making them, before an officer having authority to take acknowledgments of deed, and shall be certified by the officer; and it must appear by the certificate that the officer, at the time of the acknowledgment, read and fully explained the transfer, assignment, or warrant of attorney to the person acknowledging the same.'

In the Brothers Case, Mr. Justice Pitney said the claim of Brothers for compensation for a patent he had secured by assignment could not apply to an 'unliquidated claim against the government arising prior to the time he became the owner of the patent. Rev. St. § 3477.'

Counsel for the petitioner here insist that this statement was not necessary to the decision because the conclusion in that case was clearly made to depend on the noninfringement of the patent and that the reference to section 3477 could only be regarded as obiter dictum. It does not make a reason given for a conclusion in a case obiter dictum, because it is only one of two reasons for the same conclusion. It is true that in this case the other reason was more dwelt upon and perhaps it was more fully argued and considered than section 3477, but we cannot hold that the use of the section in the opinion is not to be regarded as authority, except by directly reversing the decision in that case on that point, which we do not wish to do.

An elaborate argument has been made to show that the section should not apply to the assignment of claims for infringements of a patent, for the reason that a claim for infringements is not a common-law chose in action, but grows out of rights created by the statutes covering patents; the provisions for their assignment and for suits by the assignee are to be found in sections 4898, 4919, 4921 (35 USCA § 47, 67, 70; Comp. St. §§ 9444, 9464, 9467), and other related sections. Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U. S. 24, 42, 43, 43 S. Ct. 254, 67 L. Ed. 516. But there is no conflict between the patent sections and section 3477. The latter section was passed to protect the government and prevent frauds upon the Treasury. Western Pac. R. Co. v. United States, 268 U. S. 271, 275, 45 S. Ct. 503, 69 L. Ed. 951; Seaboard Air Line R. Co. v. United States, 256 U. S. 655, 657, 41 S. Ct. 611, 65 L. Ed. 1149; Goodman v. Niblack, 102 U. S. 556, 559, 560, 26 L. Ed. 229. And it would seem that the danger of exploiting and harrassing the government with the use of assignments of claims for patent infringement was within the general purpose of that section.

We come, then, to the question whether section 3477 and the Brothers Case apply to the case before us, and that requires an interpretation of the amending act of 1918, and its operation upon the rights of the assignee and owner of the patent and its claims for infringement. Exceptions to the general language of section 3477 have been recognized by this court, because not within the evil at which the statute aimed. Seaboard Air Line R. Co. v. United States, supra; Western Pac. R. Co. v. United States, supra; Goodman v. Niblack, supra; Price v. Forrest, 173 U. S. 410, 421-423, 19 S. Ct. 434, 43 L. Ed. 749; Parrington v. Davis (D. C.) 285 F. 741, 742. We think that the situation created by the provisions of the amending act of 1918 is such that section 3477 does not apply to all of the assigned claims of the petitioners for infringement under that act. The Act of June 25, 1910 (chapter 423, 36 Stat. 851), provided that, whenever an invention described in and covered by a patent of the United States should hereafter be used by the United States without license of the owner thereof or lawful right to use the same, such owner might recover reasonable compensation for such use by suit in the Court of Claims. The act contained a number of provisos, only one of which is important here, namely, that in...