United States v. Dubilier Condenser Corporation 8212 318 13 8212 16, 1933

Decision Date10 April 1933
Docket NumberNos. 316,s. 316
PartiesUNITED STATES v. DUBILIER CONDENSER CORPORATION. —318. Argued Jan. 13—16, 1933
CourtU.S. Supreme Court

The Attorney General and Mr.Thomas D. Thacher, Sol. Gen., of Washington, D.C., for the United States.

[Argument of Counsel from pages 179-181 intentionally omitted] Mr. James H. Hughes, Jr., of Wilmington, Del., for respondent.

Mr. Justice ROBERTS delivered the opinion of the Court.

Three suits were brought in the District Court for Delaware against the respondent as exclusive license under three separate patents issued to Francis W. Dunmore and Percival D. Lowell. The bills recite that the inventions were made while the patentees were employed in the radio laboratories of the Bureau of Standards, and are therefore, in equity, the property of the United States. The prayers are for a declaration that the respondent is a trustee for the government, and, as such, required to assign to the United States all its right, title, and interest in the patents, for an accounting of all moneys received as licensee, and for general relief. The District Court consolidated the cases for trial, and after a hearing dismissed the bills.1 The Court of Appeals for the Third Circuit affirmed the decree.2

The courts below concurred in findings which are not challenged and, in summary, are:

The Bureau of Standards is a subdivision of the Department of Commerce.3 Its functions consist in the custody of standards; the comparison of standards used in scientific investigations, engineering, manufacturing, commerce, and educational institutions with those adopted or recognized by the government; the construction of standards, their multiples or subdivisions; the testing and calibration of standard measuring apparatus; the solution of problems which arise in connection with standards; and the physical properties of materials. In 1915 the Bureau was also charged by Congress with the duty of investigation and standardization of methods and instruments employed in radio communication, for which special appropriations were made.4 In recent years it has been engaged in research and testing work of various kinds for the benefit of private industries, other departments of the government, and the general public.5

The Bureau is composed of divisions, each charged with a specified field of activity, one of which is the electrical division. These are further subdivided into sections. One section of the electrical division is the radio section. In 1921 and 1922 the employees in the laboratory of this section numbered approximately twenty men doing technical work and some draftsmen and mechanics. The twenty were engaged in testing radio apparatus and methods and in radio research work. They were subdivided into ten groups, each group having a chief. The work of each group was defined in outlines by the chief or alternate chief of the section.

Dunmore and Lowell were employed in the radio section and engaged in research and testing in the laboratory. In the outlines of laboratory work the subject of 'airplane radio' was assigned to the group of which Dunmore was chief and Lowell a member. The subject of 'radio receiving sets' was assigned to a group of which J. L. Preston was chief, but to which neither Lowell nor Dunmore belonged.

In May, 1921, the Air Corps of the Army and the Bureau of Standards entered into an arrangement whereby the latter undertook the prosecution of forty-four research projects for the benefit of the Air Corps. To pay the cost of such work, the Corps transferred and allocated to the Bureau the sum of $267,500. Projects Nos. 37 to 42, inclusive, relating to the use of radio in connection with aircraft, were assigned to the radio section and $25,000 was allocated to pay the cost of the work. Project No. 38 was styled 'visual indicator for radio signals,' and suggested the construction of a modification of what was known as an 'Eckhart recorder.' Project No. 42 was styled 'airship bomb control and marine torpedo control.' Both were problems of design merely.

In the summer of 1921 Dunmore, as chief of the group to which 'airplane radio' problems had been assigned, without further instructions from his superiors, picked out for himself one of these navy problems, that of operating a relay for remote control of bombs on airships and torpedoes in the sea, 'as one of particular interest and having perhaps a rather easy solution, and worked on it.' In September he solved it.

In the midst of aircraft investigations and numerous routine problems of the section, Dunmore was wrestling in his own mind, impelled thereto solely by his own scientific curiosity, with the subject of substituting house-lighting alternating current for direct battery current in radio apparatus. He obtained a relay for operating a telegraph instrument which was in no way related to the remote control relay devised for aircraft use. The conception of the application of alternating current concerned particularly broadcast reception. This idea was conceived by Dunmore August 3, 1921, and he reduced the invention to practice December 16, 1921. Early in 1922 he advise his superior of his invention and spent addi- tional time in perfecting the details. February 27, 1922, he filed an application for a patent.

In the fall of 1921 both Dunmore and Lowell were considering the problem of applying alternating current to broadcast receiving sets. This project was not involved in or suggested by the problems with which the radio section was then dealing and was not assigned by any superior as a task to be solved by either of these employees. It was independent of their work and voluntarily assumed.

While performing their regular tasks they experimented at the laboratory in devising apparatus for operating a radio receiving set by alternating current with the hum incident thereto eliminated. The invention was completed on December 10, 1921. Before its completion no instructions were received from and no conversations relative to the invention were held by these employees with the head of the radio section, or with any superior.

They also conceived the idea of energizing a dynamic type of loud speaker from an alternating current house-lighting circuit and reduced the invention to practice on January 25, 1922. March 21, 1922, they filed an application for a 'power amplifier.' The conception embodied in this patent was devised by the patentees without suggestion, instruction, or assignment from any superior.

Dunmore and Lowell were permitted by their chief, after the discoveries had been brought to his attention, to pursue their work in the laboratory and to perfect the devices embodying their inventions. No one advised them prior to the filing of applications for patents that they would be expected to assign the patents to the United States or to grant the government exclusive rights thereunder.

The respondent concedes that the United States may practice the inventions without payment of royalty, but asserts that all others are excluded, during the life of the patents, from using them without the respondent's consent. The petitioner insists that the circumstances require a declaration either that the government has sole and exclusive property in the inventions or that they have been dedicated to the public so that anyone may use them.

First. By article 1, section 8, clause 8, of the Constitution, Congress is given power to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their respective discoveries. Rev. St. § 4886, as amended (U.S. Code, title 35, § 31 (35 USCA § 31)$, is the last of a series of statutes which since 1793 have implemented the constitutional provision.

Though often so characterized a patent is not, accurately speaking, a monopoly, for it is not created by the executive authority at the expense and to the prejudice of all the community except the grantee of the patent. Seymour v. Osborne, 11 Wall. 516, 533, 20 L.Ed. 33. The term 'monopoly' connotes the giving of an exclusive privilege for buying, selling, working, or using a thing which the public freely enjoyed prior to the grant.6 Thus a monopoly takes something from the people. An inventor deprives the public of nothing which it enjoyed before his discovery, but gives something of value to the community by adding to the sum of human knowledge. United States v. American Bell Telephone Co., 167 U.S. 224, 239, 17 S.Ct. 809, 42 L.Ed. 144; Paper Bag Patent Case, 210 U.S. 405, 424, 28 S.Ct. 748, 52 L.Ed. 1122; Brooks v. Jenkins, 3 McLean, 432, 437, Fed. Cas. No. 1,953; Parker v. Haworth, 4 McLean, 370, 372, Fed. Cas. No. 10,738; Allen v. Hunter, 6 McLean, 303, 305, 306, Fed. Cas. No. 225; Attorney General v. Rumford Chemical Works, 2 Bann. & Ard. 298, 302. He may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but, upon the expiration of that period, the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it and profit by its use. Kendall v. Sinsor, 21 How. 322, 327, 16 L.Ed. 165; United States v. American Bell Telephone Co., supra, page 239 of 167 U.S., 17 S.Ct. 809. To this end the law requires such disclosure to be made in the application for patent that others skilled in the art may understand the invention and how to put it to use.7

A patent is property, and title to it can pass only by assignment. If not yet issued, an agreement to assign when issued, if valid as a contract, will be specifically enforced. The respective rights and obligations of employer and employee, touching an invention conceived by the latter, spring from the contract of employment.

One employed to make an invention, who succeeds, during his term of service, in accomplishing...

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