Strategical Demolition Torpedo Co. v. United States, 444-52.

• Decision Date: 03 March 1953
• Docket Number: No. 444-52.,444-52.
• Citation: 124 Ct. Cl. 492,110 F. Supp. 264
• Parties: STRATEGICAL DEMOLITION TORPEDO CO., Inc. v. UNITED STATES.
• Court: U.S. Claims Court

110 F. Supp. 264

124 Ct. Cl. 492

STRATEGICAL DEMOLITION TORPEDO CO., Inc. v. UNITED STATES.

No. 444-52.

United States Court of Claims.

Decided March 3, 1953.

Frank E. Scrivener, Washington, D. C. (Charles K. Davies, Jr., Gaithersburg, Md., on the briefs), for the plaintiff.

G. M. Paddack, Washington, D. C., and Holmes Baldridge, Asst. Atty. Gen., for the defendant.

Before JONES, Chief Judge, and LITTLETON, WHITAKER, MADDEN and HOWELL, Judges.

MADDEN, Judge.

The plaintiff corporation sues to recover just compensation for the use by the Government of a type of demolition torpedo on which the plaintiff had a patent. The Government moves to dismiss the petition on the ground that the statute giving persons, situated as the plaintiff is, a right to sue, did not become effective until July 17, 1952, and that the plaintiff's patent had expired before that time. The Government says that the statute had no retroactive effect, and that, therefore, the plaintiff never acquired a right of action.

The plaintiff urges that Congress intended to give the statute a retroactive effect, to make it apply to situations such as that of the plaintiff where, within the period not barred by the Statute of Limitations, the Government had made use of an invention covered by a patent which was still valid at the time of the Government's use, though both the use, and the expiration of the patent, antedated the enactment of the statute on which the claim is founded. To resolve this question of legislative intent, we recall some pertinent facts.

In a suit by this plaintiff against the Government, reported in 96 F.Supp. 315, 119 Ct.Cl. 291, the plaintiff alleged in its petition that the invention which led up to its patent had been made by four persons, one of whom, at the time of the invention, was an employee of the Government; that the four inventors had assigned their patent to the plaintiff, and that the Government had used the patented device. The Government moved to dismiss the petition on the ground that it disclosed on its face that there was no right to recover since the pertinent statute, 28 U.S.C. § 1498, said that there should be no right to sue the Government for the use of an invention discovered or invented by an employee of the United States during the time of such an employment or service. This court sustained the Government's motion and dismissed the plaintiff's petition. We held that an invention made by four persons, one of whom was, at the time, an employee of the United States, was an invention of an employee of the United States; that it was impossible to dissect out the part which the employee-inventor may have had in the invention and, by apportioning the compensation or otherwise, permit, in the face of the statute, a recovery for use of an invention so made. The Supreme Court denied certiorari. 342 U.S. 825, 72 S.Ct. 46, 96 L.Ed. 624.

At the plaintiff's instigation, there was introduced in the House of Representatives H.R. 3975, which, if enacted in the form in which it was introduced, would have changed the law as laid down by this court in our decision adverse to the plaintiff, and would have permitted those joint patentees who were not employees of the Government at the time of an invention, or their assignee, to sue, although one or more of their co-patentees were such employees. The Committee on the Judiciary, to which H.R. 3975 was referred, completely rewrote the bill. The only pertinent Committee Report is House Report No. 1726, April 7, 1952, to accompany H.R. 3975, reprinted in United States Code Congressional and Administrative News, 1952, No. 14, page 4280. As enacted July 17, 1952, it amended the fourth paragraph of 28 U.S.C. § 1498 by substituting the following language:

"A Government employee shall have the right to bring suit against the Government under this section except where he was in a position to order, influence, or induce use of the invention by the Government. This section shall not confer a right of action on any patentee of any assignee of such patentee with respect to any invention discovered or invented by a person while in the employment or service of the United States, where the invention was related to the official functions of the employee, in cases in which such functions included research and development, or in the making of which Government time, materials or facilities were used."

The 1952 enactment, then, did not affect at all the law as we applied it in our former decision. Instead, it provided that a Government employee, whether a joint inventor or a sole inventor, could recover from the Government for the use of his invention unless, at the time of its use, he was in a position to induce its use, or unless he was employed by the Government to make the invention or used Government time, materials or facilities in making it. The plaintiff alleges in its petition that none of the co-inventors of its device were covered by the disqualifying language of the new statute, and, for the purposes of this motion, we take this allegation to be true.

The Government urges that the 1952 enactment, like most legislation, simply made new law, and hence took effect only from the date of its enactment. Legislation is, of course, usually so construed. See Hassett v. Welch, 303 U.S. 303, 58 S.Ct. 559, 82 L.Ed. 858; Shwab v. Doyle, 258 U.S. 529, 42 S.Ct. 391, 66 L.Ed. 747. In the case of Winfree v. Northern Pacific Railway Co., 227 U.S. 296, 33 S.Ct. 273, 57 L.Ed. 518, the Court quoted with approval language of the Court of Appeals which said that statutes which had been given retroactive application had been:

"* * * such as were `intended to remedy a mischief, to promote public justice, to correct innocent mistakes, to cure irregularities in judicial proceedings, or to give effect to the acts and contracts of individuals according to the intent thereof.'"

The statute in question here, to be sure, remedies what Congress must have regarded as a mischief, and must...