
    THE PACIFIC SUBMARINE AND EARTHQUAKE PROOF WALL COMPANY v. THE UNITED STATES.
    [No. 12345.
    Decided March 3, 1884.]
    
      On the Facts.
    
    The claim in. the patent sued upon is for a ground-frame consisting of longitudinal iron rods and girders (transverse iron bars) in combination with guide rods (vertical iron rods) connected and arranged substantially as set forth, the purpose being to enable walls of masonry to withstand shocks of earthquakes, all being united, and acting in combination, and so joined together as to form within the masonry a skeleton iron frame. The defendants use iron rods inclosed longitudinally in the corners of the building by anchors, with transverse bars over them, but not fastened to them.
    I. Where a patent is for a combination of three things, viz, longitudinal iron rods, transverse iron bars, and vertical iron rods connected and arranged so as to form a skeleton iron frame within masonry, and the defendants use longitudinal iron rods anchored at the corners of the building by means of vertical rods three feet in length, and likewise use transverse bars but not fastened to the rods at the crossing, though one end is bent and mortised into the outside granite, and the other is bent so as to clasp the inside of the wall, the purpose of the transverse bar beiDg to hold the outside shell of granite firmly to the inside brick-work, it must be held that the combination was not used.
    II. It is well settled that when one ingredient of a combination is omitted the patent is not infringed.
    
      The Reporters’ statement of the case:
    This case the claimant brought by the voluntary filing of his petition. The following are the facts as found by the court so far as they relate to the points decided.
    I. The claimant is a corporation, organized under the laws of California May 13, 1870.
    II. June 29,1869, the letters patent were granted to William H. Foye, the claimant, subsequently assigned to the claimant, of which the following are the specifications thereof:
    “The nature of this invention consists in facilitating the construction of submarine walls, such as dry-docks, foundations of light-houses, piers for bridging purposes, wharves, breakwaters, bulk-heads, and in fact all operations where diving bells or submarine armor have been used, and where the work to be performed is desired to be done in a substantial manner. It also relates to the erection of walls for buildings and other structures, which are built upon the ground in countries subject to earthquakes, where a solid and substantial wall is necessary to prevent injury consequent upon the shocks or undulations of the ground.
    “In my mode of construction I employ granite, concrete, or any other substance or material suitable for resisting tbe action of the water. I prefer concrete in sacks or blocks, green or solid, as it can be more easily worked and moulded into the necessary or desired shapes suitable.for my purposes.
    “To describe my invention more fully, so that any person skilled in the art or science to which it most nearly appertains can understand and perform the same, reference is had to the accompanying drawings, forming part of this specification, of which—
    “Figure 1 is a plan showing the stone-work beneath.
    “ Figure 2 is an end view, showing the filling of concrete.
    “Figure 3, sheet 2, is a bottom view of the stone-work, showing the position of the rods.
    “Figure 4, sheet 2, is a front sectional view of the wall and the floating frame, showing the position of the guide-rods.
    “Similar letters of reference in each of the figures indicate like parts.
    “In constructing a sea-wall or other submarine structure, the nature of the foundation or bottom upon which the masonry is to be built should be first accurately ascertained. If it should be found to be solid and level, then the labor is simple and the workmen are ready to proceed to lay the wall, .but as the generality of the beds of bogs and standing bodies of water are composed of mud and are of uneven surface, I will describe first my mode of proceeding to produce the solid foundation for the wall by leveling and filling in the uneven places and removing the mud from the bottom of the foundation of the wall.
    “After the nature of the bed or bottom upon which the wall is to be built has been accurately ascertained I begin by building or constructing a fac-simile of the bottom of suitable material on a scale of one inch to the foot or lfoot in ten, according to the magnitude of the proposed wall. I then fill in all holes which may be in the line of my operations by sending down sacks of green concrete and beating it down with a long-handled maul, l, until it is level or even with the general surface of the bottom. I then moor directly over the line of the proposed wall a frame composed of two timbers, A and B, extending longitudinally along the line of the wall, one on each side, and placed about two feet wider apart than the width of the wall.
    
      “These timbers are secured together by cross pieces, C C, framed into their ends, thus keeping them equidistant apart. I then lay an iron rod about one inch in diameter, the outer end of which is anchored at the extreme point of the wall to be laid, and the opposite end set taut at the shore with a purchase to malee it lie straight; then, with a measuring rod, I measure the distance every foot of the way along the line of the wall, from the rod to the bottom, in order to get the inequalities of the bottom. Should the bottom present a smooth and level surface the work is ready to be proceeded with; if not, I take a rod or transient guide, o', and set it up on end vertically in the water over the depressions and inequalities, beginning at the end of the wall, and mark upon it by means of a file the height at which the water stands, and by thus moving it along and marking at each step, the inequalities of the bottom can be transferred to the lac-simile or model already prepared. Should bowlders present themselves the use of blasting powder will level them to a smooth surface; but should holes or fissures appear, they can be filled up in the following manner: Find the dimensions of the hole or fissure, seam, crevice, or other impediment, by means of a rod, then set the rod or guide perpendicularly over it and send down a sufficient number of sacks of green concrete to fill up level by stringing the sacks on the guide and allowing them to descend to the bottom. The concrete thus sent down is then churned down by the use of the long-handled maul l. In this way I level up the bottom, always keeping the model a fac-simile of the main foundation.
    “The foundation or bottom having thus been brought to a level I next lay on the bottom, parallel to each other, two iron rods, F F, running lengthwise of the wall and of the proper length, welding or joining by a link where necessary; and should the wall be six feet wide 1 put in cross girders, a a a, at equal distances apart, say every ten feet. Should prominent inequalities still appear, cut the ground-rods .F F and put in links just the height of the impediment, which will bring the ground rod to its place. Should depressions appear use the transient guides and green concrete as before directed.
    “ Suppose the water to be thirty-five feet deep at one end of the proposed wall, fifteen feet in the middle, and five feet at the shore end, I take iron rods, goo, of sufficient diameter to insure strength, and cut them five feet longer than the depth of water in which they are to be placed, and secure their lower ends to the parallel ground-rods F F by any suitable means. These rods stand perpendicularly and serve as permanent guides, and are as many in number and placed as far apart as the number and size of the blocks employed necessitate. The distance between any two of these rods in any direction should be equal, the distance and number being governed by the size of the blocks, which must be of a uniform size.
    
      “ Across the top of the floating frame formed by the timbers A and B I place at equal distances apart .cross-pieces, 11, secured temporarily to the frame by means of staples and keys g g, so that they may be removed when desired. The guide-rods c g pass up from the water and through staples, i i i, in the sides of the cross-pieces III, which keep them steady.
    “ The blocks K, which .1 use for constructing the wall, may be, as above stated, of any suitable material capable of resisting the action of the water. I prefer the manufactured stone called ‘ concrete stone,’ on account of the ease -with which it can be molded to the proper or desired form. These stones I mold into blocks of equal size, with two holes in them, one at each end, corresponding* with the distance between the perpendicular guides g c g. The blocks are hoisted over the guides g g, which are then entered into their respective holes, and the cross-pieces I, beneath it, removed, when théy are lowered to the proper place, following down the guides.
    “ The first course is thus laid, remembering to place on the model the duplicate of each block as it is lowered, so that the engineer may at all times be able to see at a glance how the work is progressing. If the model is wrong the main wall will also be wrong. The second course of blocks is sent down with a layer of cement on the under side, and on the next pair of guides, so as to break joints in the manner usual in masonry. If the blocks are properly dovetailed and bonded there is no use for cement, unless a water-proof wall be desired. Should an inclined wall be required, a proper slant'can be given to the guides c c, backed by a counter wall and filled in with concrete.
    “ Between every course or every second course of blocks I send down upon the upper face of the blocks iron binders,//, provided with a hole at each end and sent down the guides c c, so as to lay crosswise of the wall. After a few courses have been laid the floating frame can be removed, unless it be needed for convenience in lowering the blocks.
    “After the first course of blocks have been laid, if all the necessary preparations have been made, the wall can be laid with great rapidity. Blocks of any size that can be hoisted to the top of the upright guides can be used. If of concrete they can be cast in two or three different molds.
    “ Wharves made of this material and in this manner can be. constructed with gates at their outer ends, which can be easily framed in with green concrete in sacks and thus be made watertight and every dock a dry-dock.
    “ Coffer-dams constructed of green concrete can be made water-tight and laid with great rapidity by sharpening the ends of the upright guides c c to a fine point, raising the sacks above the guides, piercing the sack and sending it to its bed, using the long-handled maul l for beating it down. Should the bed or bottom be of mud, dredging may be necessary, or sacks of green concrete on sectional frames may be sunk through the mud to a solid foundation and a square wall started upon them with perfect safety. In building single courses only one ground-rod is used and one-half the number of upright guides that is used in a double wall, but in using concrete in sacks the same number is used as in double walls.
    “ Walls for earthquake-proof houses can be built in this manner of concrete or artificial stone, binding tbem together with the guides and girders, making them proof against the most violent convulsions; and would be especially useful where earthquakes are common, as they cannot be thrown down unless bodily; and although the stones or blocks may be broken or thrown out of their proper line they cannot fall and endanger the lives of persons who may be passing.
    “Having thus described my invention, what I claim and desire to secure by letfers-patent is—
    “ 1. The ground frame, consisting of the rods F and girders a, in combination with the guide rods e, connected and arranged substantially as herein set forth.
    “2. In combination with the rods o, the blocks K, provided with holes to receive said rods, substantially as described.
    “3. In combination with the above-claimed frame and rods, the top frame, consisting of the timbers A and B, and the cross-pieces I, provided with the staples i i, substantially as described.
    “4. In combination with the rod c, the binders /, substantially as and for the purpose specified.”
    III. Some time in 1869 the construction of the branch mint at San Francisco was commenced, andin January, 1870, the excavation was completed and the concrete was iri place. By the 15tli of February, 1873, the exterior and main partition walls were built, all the roof-frame and two-thirds of the roof were on, but thebuilding was not completed until November 4,1874. Prior to the assignment of the patent, the following correspondence took place between the assignor and the Secretary of the Treasury:
    “ San Francisco, Cal., March 17,1870.
    “ Hon. G. S. Boutwell,
    
      uSec. of the Treasury of the U. S., Washington, D. O.
    
    “Sir : I have the honor to solicit your distinguished consideration of the following statement of facts in connection with the construction of the new U. S. branch mint in this city, and the use and application of iron in its construction, on a plan for which I have secured a patent right for the United States.
    “ Presuming that the plans of the building are before you, I beg to invite your examination of the papers attached to and a part of letters patent Nos. 92033 on file in the U. S. Patent Office at Washington, and am satisfied that a comparison of my claim with the plan thus far followed in the construction of the mint building will convince you that my patent right has been used.
    “Esteeming my letters patent as valuable property, and not believing that the Government of the United States would infringe upon a right it has granted an inventor, I respectfully submit for your action my claim against the government for the use of my patent right in the sum of fifty thousand dollars, an amount which cannot be objected to in view of the greatly enhanced value and security of the structure in an earthquake country.
    “With the highest respect, I have the honor to be, Mr. Secretary, your most obedient,
    “ William H. Foye, Patentee.”
    
    “Treasury Department,
    “ Washington, IJ. <7., April 20th, 1870.
    “ Sir : I have to acknowledge receipt of your letter of the 17th ultimo, submitting for the consideration of this department a statement in connection with the construction of the United States branch mint at San Francisco, Gal., and the alleged use and application of iron in its construction on a plan for which you have secured a patent right for the United States, and in which you also submit for the action of the department a claim for the use of your patent right in the sum of fifty thousand dollars.
    “In reply I have to state that your letters patent No. 92033 and the drawings accompanying it have been examined in connection with the plans and specifications of the building above specified, and it is found therefrom that the use of iron in the construction of that work does not in any way appear to infringe upon your patent right for improved submarine foundations. Your claim for fifty thousand dollars ($50,000) hereinbefore referred to is rejected.
    “Yery respectfully,
    “George S. Boutwell,
    “ Secretary of the Treasury.
    
    “William H. Foye, Esq.,
    “ Patentee, San Francisco, Gal.”
    
    IY. On the concrete and between it and the foot of the walls of the branch mint parallel longitudinal rods were laid, following the exterior walls of the building. These rods were an inch and seven-eighths in diameter, and were screwed up on the outside with heavy cast-iron plates with nuts. Transverse iron bars, with one end turned down and the other turned up, were laid over these rods. On top of the rods came the brick work and masonry. When the walls reached the first floor a similar set of longitudinal rods and transverse bars were laid in the wall, but instead of nuts on the end each rod terminated with an eye. Through each eye a rod 3 feet long, of two-inch iron, was inserted. Again, at the second floor the same system was used. At the third floor, which is the top story, a double set of longitudinal rods was used, hlo vertical rods connected the longitudinal rods and transverse bars, nor were they connected together by any means whatever. Each inside pier was built around a vertical rod placed in position before the pier commenced. These pier-rods had a nut on each end, with boiler-iron plates 16 inches square; the rods were 9 feet in length, but did not continue by means of connections with other vertical rods, as the piers went no higher than the first floor. Above the first floor no vertical rods were used excepting anchors and the finish in the cornice.
    Y. The royalty for the use of said letters patent, as fixed in contracts with the United States relative to other buildings, and in all cases where the question of such royalty has come before the courts of the United States, is 1£ per cent, on the gross cost of the construction of the building in which the same is used.
    The gross cost of the construction of said branch mint building was $1,564,667.57, per cent, of which is $23,470.
    Where the patent has been used by the United States the royalty has been computed and paid at the end of each month, upon the gross expenditure for. that month.
    
      Mr. George A. King for the claimant:
    The question in this case is, whether there was an implied contract for payment of reasonable royalty to the claimant.
    On this point the views of this court in the case of McKeever v. United States, 14 O. Cls. It., 396, 422, are very applicable.
    If the government desired to use the patent, it must be considered as taken under an implied contract, and the government is answerable accordingly. (James v. Oempbell, 104 U. S. 356.)
    
      
      Mr. John 8. Blair (with whom was the Assistant Attorney-General) for the claimant:
    If we have omitted any one of the ingredients which go to make up the whole combination, we have not used this patent. [Dunbar v.’ Myers, 94 U. S., 187; Gill v. Wells, 22 Wall., 28; Vance v. Campbell, 1 Black; 427; Gould v. Bees, 15 Wall., 194; Prouty v. Buggies, 16 Pet., 341.)
   Scoeield, J.,

delivered the opinion of the court:

The claimant, a corporation under the laws of California, and owner of the Foye patent, sues the United States to recover, upon an alleged implied contract, the sum of $23,470, as royalty for the use of the patent in the construction of the branch mint in San Francisco.

The patent covers a system of iron bonding, designed to so strengthen walls of masonry as to enable them to withstand the shocks of earthquakes. It consists, first, of parallel iron rods inclosed longitudinally in the walls; second, of transverse iron bars lying upon and fastened at the crossing to the longitudinal rods; and, third, iron rods extending from the base to the top of the walls and connected by rivets or loops both to the longitudinal rods and transverse bars so as to form a complete union in bond throughout the walls of the building.

The defendants used iron rods inclosed in much the same manner longitudinally in the walls. They were fastened at the corners of the building by anchors, consisting of vertical rods 3 feet in length. Over these longitudinal rods transverse bars were laid as in the patent, but not, as in the patent, fastened to them at the crossings. One end of the cross-bars was bent down and morticed into the outside granite, and the other bent up to clasp the wall on the inside, so as to hold firmly together the inside brick work and the outside shell of granite. Except for anchors, as stated, no vertical rods were used in connection therewith.

While each system of bonding was designed to accomplish the same result, and the same material was employed in each, they were quite unlike in theory and in action.' In the government plan the rods and cross-bars acted directly upon the walls, while in the patent plan they were all united, and acted in combination. ,The longitudinal, transverse, and vertical rods were so joined together as to form within the walls of 'masonry a skeleton iron frame. This combination was the chief if not the only feature in the patent. The patentee, in his specifications, says:

“What I claim and desire to secure by letters patent is-: The ground frame, consisting of rods F [longitudinal iron rods] and girders a [transverse iron bars] in combination with the guide rods e [vertical iron rods], connected and arranged substantially as herein set forth.”

Nothing except the combination appears to be included in this specification. If more had been included it is not certain that a patent would protect it. The use of iron rods for bonding masonry walls, inserted either lengthwise, crosswise, or vertically, was known and practiced in some form long anterior to the date of the patent.

The defendants did not use the combination. They used longitudinal rods and transverse bars without joining the two together, but vertical rods were not used at all.

In Prouty & Means v. Ruggles (16 Peters, 341) Chief Justice Taney says:

“The patent is for a combination, and the improvement consists in arranging different portions of the plow and combining them together in the manner stated in the specifications for the purpose of producing a certain effect. None of the parts referred to are new, and none are claimed as new; nor is any portion of the combination less than the whole claimed as new or stated to produce any given result. ■ The end in view is proposed to be accomplished by the union of all, arranged and combined together in the manner described. * * * The use of any two of these parts only, or of two combined with a third, which is substantially different in the form or in the manner of its arrangement and connection with the others, is therefore not the thing patented. It is not the same combination if it substantially differs from it in any of its parts.”

In Gould v. Rees (15 Wall., 187) it is held that—

“ When three elements are claimed in a patent in combination, the use of two of the elements only does not infringe the patent.”

In Dunbar v. Myers (94 U. S. R., 201) the court says:

“All must agree that the claimed combination includes the clamps, and the infringement is not proved unless it appears that the respondents use the entire combination. Having already decided that the respondents do not use the clamps of the complainants it is unnecessary to pursue tbe inquiry, except to say it is settled law that when the respondent in constructing his machine omits one of the ingredients of the complainant’s combination, he does not infringe thé complainant’s patent.”

By applying the rule of law laid down, by these authorities to the facts of the case as found by the court and above stated, it appears that the defendants have not used the patented invention of the claimant, and the petition must be dismissed.  