
    GEORGE H. PALMER v. THE UNITED STATES.
    [No. 12487.
    Decided June 1, 1885.]
    
      On the Proofs.
    
    An officer exhibits his patented knapsack and infantry equipments to a hoard ajipointed to select and recommend an equipment for infantry. The hoard recommends them, the Secretary of War approves, and the Ordnance Department, with no express license, proceeds to manufacture. The device fails to give satisfaction in the Army, and is superseded by that previously in use, but informally, with no order of revocation.
    I. Where the validity of a patent is conceded, he who uses the invention must judge for himself of its utility. He cannot use it under an implied license and then allege that it is valueless.
    II.The government, when it manufactures military equipments after a patented device, hut under an implied license, is as responsible as an individual.
    III. The Ordnance Department has no more right to manufacture a patented article for experiment than for use.
    IV. In estimating damages where the action is to recover an implied royalty for articles “ manufactured and used," a return from the Ordnance Department showing that of 10,500 infantry equipments manufactured 9,000 have been “ issued for use" is evidence of use.
    
      The Reporters’ statement of the case:
    The case was argued and submitted at the last term of the court, but there being no proof of the defendauts having used the manufactured articles, it was remanded for further evidence on that point. (See 19 O. Ols. B., 669.)
    The following are the facts now found by the court, so far as they are involved in the decision of the case:
    II. A board of Army officers was appointed, by order of the Secretary of War, June 1, 1874, to meet at Fort Leavenworth, Kans., July 1, 1874, or as soon thereafter as practicable, to consider and report upon the subject of a proper equipment for the infantry soldier, and to recommend the adoption of an equipment best suited to troops serving as infantry. The board met at Fort Leavenworth, Kans., July 1,1874. On the 8th of July the claimant exhibited and explained his said improvements to said board. On the 22d, 24th, and 31st of August, and 16th, 18th, and 30th of September, 1874, the board examined, considered, and experimented with the improvements, and on the 12th of November, 1874, decided to recommend the same for adoption to the War Department.
    On the 24th of November, 1874, the board made the following report to the Chief of Ordnance, which, after being referred to and recommended by the General of the Army, was approved by the Secretary of War, as hereinafter set forth:
    “ Watervliet Arsenal,
    “West Trot, N. Y.,
    “ November 24,1874.
    “ Sir : The Board on Infantry Equipments, convened by paragraph 14, Special Orders No. 120, dated Adjutant-General’s Office, Washington, June 1,1874, have the honor to state that they have carefully examined the various subjects submitted for their consideration, and respectfully transmit their report.
    “ Many different samples of knapsacks, haversacks, cartridge-boxes, belts, &c., have been presented for our inspection, and out of the number we have selected those which, in our judgment, seem best adapted for the use of troops serving as infantry.
    “ In our decisions we have been governed by the result of our own experience with troops in a great variety of service, by the reports from officers of the Army submitted by the Chief of Ordnance, and the very able and comprehensive report on this subject by a board of officers of the British army, of which Major-General Eyre was the president.
    “ The first object the board had in view was to lessen the weight of the pack heretofore carried by our soldiers, without impairing their efficiency or interfering with their comfort and ^health; and we are of the opinion that in the brace system and appendages invented by First Lieutenant George H. Palmer, of the Sixteenth Infantry, most, if not all, of the requirements of the service are met.
    “ The equipment consists of carrying-braces, blanket-straps, clothing-bag, and haversack, the whole weighing about three and one-half pounds.
    *4¿, 41, 41; 41- 41, «V, *7r Vv W %v Tv
    “ The following are some of the merits of the Palmer brace system:
    “ The baek-pad gives additional bearing surface for the weight carried. Its shape enables the shoulder-straps to be riveted in such a manner as to separate them on the back and shoulders. The manner of connecting the front ends of the shoulder-straps secures a bearing on each.
    
      “ The double shoulder-straps have more bearing surface and press into the shoulders less than single straps, and are readily moved from place to place on the shoulders, to give ease to the wearer. They cannot slip off the shoulders, being retained by their connection with the back-pad.
    “ The braces adjust themselves to fit any size or form of shoulders, and enable a load to be carried without compressure of the waist or chest, or bearing down on the hips, or pulling backward of the shoulders, leaving the body, arms, and shoulders free in their movements. In other words, the weight is brought to bear vertically upon the shoulders, without deranging the equilibrium of the body, with its attending discomfort and ultimate permanent injury to vital organs.
    ##*#*#.#
    “ In this equipment the means are provided for carrying the following articles:
    “ A woolen blanket, rubber poncho (an overcoat for winter), one pair of extra shoes and stockings, an extra shirt, extra drawers, towel, soap, comb and brush, three (or six) days’ rations, and from twenty to eighty rounds of cartridges; the maximum weight of which, including rifle, bayonet, and scabbard, forty rounds of ammunition, and three days’ rations, is thirty-eight pounds; ordinarily it would be reduced to twenty or twenty-five pounds.
    “ It is not intended that the entire equipment should be always worn, or'that all the articles should of necessity be in the clothing-bag; on the contrary, it is proposed to carry only one cartridge-box on ordinary occasions in garrison, and when in the field only such things as the nature of the duty may require.
    #4, JJt Jf, .«■ Jfc JJ, IT w w *Jr w w
    “ Headquarters oe the Army,
    
      “Saint Louis, Mo., Bee. 26, 1874.
    “ Bespectfully returned. . The officers composing this board have had a large and wide experience, and their conclusions are entitled to full weight.
    ###***#
    “ The braces, knapsack, haversack, and cartridge-box are all approved and recommended for adoption.
    “ W. T. Sherman,
    
      “ General.
    
    “Chief op Ordnance:
    “ The report of the board is approved, as suggested by the General of the Army, with modifications recommended by him.
    “ Wm. W. Belknap,
    
      “ Secretary of War.
    
    “ January 4,1875.”
    
      IV. This equipment was experimental, and had never been put to the test of actual use. It failed to give satisfaction to the Army, and has been superseded by a return to the system in vogue during the war of the rebellion and anterior thereto. But this has been done informally, the order adopting the claimant’s device never having been revoked, nor any other pattern adopted.
    V. No express agreement was made between the claimant and defendants’ officers respecting a price to be paid for a license to manufacture infantry equipments or carrying-braces under the patents. Nor was there any agreement or understanding that the government’s manufacture and user should be regarded as experimental until the device should be tested by general use in the Army. The license under which the government manufactured and used the claimant’s device, and the terms thereof, must be implied exclusively from the facts set .forth in finding ii.
    VI. Since the 4th day of January, 1875, the Ordnance Department has manufactured 10,500 complete sets of infantry equipments of the pattern of 1874, and 2,400 carrying-braces, in accordance with the specifications of the patents, but has issued for use in the Army only 9,027 complete sets of equipments.
    VII. The cost to the government of manufacturing such equipments was $5.59 per setj and a reasonable royalty for the right to manufacture and use, amid the circumstances of the case as hereinbefore described, would be the sum of 25 cents per set, amounting on the above quantity of 9,027 sets to the sum of $2,256.75.
    
      Mr. II. I. Paine for the claimant:
    1. The protection secured by letters patent of the United States is not the gift of royal prerogative, but is a constitutional right secured by Congress. The ground of prerogative which underlies the English decision is wholly wanting in the United States. The English rule of construction which reserves for the crown the free use of the patented invention has no place in the United States. (Gammeyer v. Newton, 94 U. S. B., 225; United, States v. Burns, 12 Wall., 246; James v. Campbell, 104 U. S. B., 356.)
    
      2. When a new thing, never before used or sold, is sold on an implied contract, the price not being fixed, but being due at once, there is no possibility of fixing that price otherwise than by the opinion of experts. And the man whose knowledge :and experience enable him to compare the new thing with analogous things already known is a competent expert to testify asJ:o the value of the new thing. Otherwise the vendor of a •new thing could [recover no compensation for it, although it might be plain to the judgment of every man that it was of ..great value. The testimony of experts in like cases is held to be admissible by all the authorities. (Butler v. Mehrling, 15 Ill., ■488; B. B. Co. v. Van Horn, 18 Ill., 257; B. B. Co. v. Irving, 27 Ill., 18; B. B. Go. v. Ball, 5 Ohio St.,'568: B. B. Go. v. Goehr ran,\ 10 Ind., 560; Grouse v. Holman, 19 Ind., 30; Dalmel v. Davenport, 12 Iowa, 437; Doane v. Garretson, 24 Iowa, 351; Dwight v. County Commissioners, 11 Oush. (Mass.), 201; Bus-sell v. B. B. Go., 4 Gray (Mass.), 607; West Neiplmry v. Chase, 5 Gray (Mass.), 421; Haskins v. Ins. Go., 5 Gray (Mass.), 432; Beecher v. Denniston, 13 Gray (Mass.), 354; Fowler v. Middlesex, 6’Allen (Mass.), 926; Whitman v. B. B. Go., 6 Allen (Mass.), 313; Clark v. Baird, 9 N. Y. (5 Seld.), 183; Smith v. Hill, 22 Barb. (N. Y.), 656; Laurent v. Vaughn, 40 Vt., 90; Whitback v. B. B. Go., 36 Barb. (N. Y.), 644; Bead v. Barker, 30 hi. J. L., 378; Ins. Go. v. Stephens, 51 Ala., 121; Shattuek v. Train, 116 Mass., 296; Allis v. Day, 14 Minn., 516; Gantling v. B. B. Go., 54 Mass., 385; Greenleaf’s Evidence, vol. 1, sec. 440»; Alfonzo v. The United States, 2 Story O. Gt., 421.)
    3. The use of the claimant’s invention by the defendants was neither a tortious use nor a use under a gratuitous license.
    
      Mr. John 8. Blair (with whom was the Assistant Attorney-•General) for the defendants:
    At the outset the question presents itself, What is the implied contract ? Did the United .States implicitly agree to pay him a lump sum for his permission or license to use his inventions during the term of his patents, or to pay, from time to time,for the use of equipments embodying his inventions, what the same were reasonably worth? If the former, his case is barred by the statute of limitations; if the latter, his suit is fork9,027 sets of equipments manufactured and issued for use, which are not shown to have been used, and, if used, proved of no practical value.
    On this subject we have the adoption of the equipment in 1874 and its abandonment in 1879 — an abandonment not caused by the discovery of some improvement, but resulting in a return to the equipment of 1862. The adoption was not the result of actual test, but of tentative experiments by a board of officers, and the abandonment was the consequence of attempts to make actual use of the device in the field. The United States may safely rest their case upon these official acts, as absolute demonstration that a fair and reasonable value of the use, if there was any use, of plaintiff’s invention in nihil.
    
    The United States may also rest their case on the remarkable fact that claimant has failed to produce a single witness who ever saw the device in actual use, or a single soldier or officer who has a good word to say for it.
    The court has not been informed whether the devices involved in the patent were used; if used, that they were valuable; and, if used and useful, what was the value of their use.
    I am aware of the difficulty of proving the value of an invention when the article involving it is used only by the government, when no contracts have been made for royalty, and when there is no resulting decrease of cost of production; but I do insist that the court should be satisfied that there has been an actual benefit, and then accept as to quantum of value no testimony, from witnesses, however learned in patent law, who have never seen the articles in use or in operation.
   Nott, J.,

delivered the opinion of the court:

If the validity of the claimant’s patent were in question, the court might have to pass upon the abstract usefulness of his invention; for it is not the policy of the law that a patent be granted to protect a useless thing. But where the validity of a patent is conceded, he who uses the invention must judge for himself of its utility, and the government stands upon no more irresponsible ground than the farmer who buys a right to make and use a “ patent hive ” or pays for a license to sink a “ drive-well.”

The manufacture by the Ordnance Office of 10,500 sets of equipments may have been “ a huge experiment,” and still, in the absence of an express license, the Ordnance Office had no more right to take for these experimental knapsacks the claimant’s invention than to take another man’s leather.

But when we pass to the question of. compensation the usefulness of the invention becomes an element of value. Inventions whose usefulness is both established and well known will have one value; inventions whose usefulness is probable, but whose reputation is not established, will have another; inventions which are still in the stage of trial and experiment, and which are as likely to involve the purchaser in loss as to bring him gain, have a third value. The claimant’s invention belonged to the last class. We recognize his legal right to recover, but we are of the opinion that if the user had been the subject of express contract, the right to manufacture and use the first 10,000 would have been granted for a very moderate royalty.

On the former trial of the case the court held that the claimant could not recover in this action for equipments manufactured, but that his recovery must be for equipments manufactured and used. A year has now elapsed since the case was remanded, and the only evidence of user produced by either party is a return from the Ordnance Office showing that of the 10,500 equipments manufactured 9,027 have been issued for use. The claimant’s recovery must be restricted to that number.

The judgment of the court is that the claimant recover of the defendants a royalty of 25 cents per set on 9,027 complete infantry equipments, amounting in the aggregate to the sum •of $2,256.75.  