
    GEORGE E. KIRK v. THE UNITED STATES.
    [No. 14485.
    Decided January 3, 1893.]
    
      On the Proofs.
    
    
      A contractor agrees to manufacture street letter-boxes “ with such alterations and improvements” as may be suggested by the Postmaster-General. Alterations and improvements are suggested from time to time and incorporated in the boxes manufactured. During the life of this contract the contractor files a caveat in the Patent Office in which he claims to be the inventor of the improved box which he is manufacturing, and subsequently obtains a patent. The Postmaster-General denies that he is the inventor, and notifies the Patent Office accordingly.
    I. A patentee can net maintain an action against the Government for the use of his invention unless he can establish some privity between himself and the defendants from which a court, as a matter of law, can imply a contract.
    II. Where a street letter box is used by the Post-Office Department avowedly as being a thing of its own device, and with no acknowledgment, tacit or expressed, that a patentee is the inventor thereof, and on the contrary with a denial of his claim to be the inventor, no contract can be implied, and the court can not entertain jurisdiction.
    
      The Reporters’ statement of tbe case:
    Tbe following are tbe facts of tbe case as found by tbe court:
    I. That tbe claimant herein, George E. Kirk, is a citizen of tbe United States and tbe assignee of one Samuel Strong in certain interests and rights of action in and to certain letters patent for a cast-iron street letter box as hereinafter more particularly found.
    
      II. That on tbe 30tb of March, 1869, there were granted and issued to said Samuel Strong letters patent No. 88525 for improvement in street letter boxes; and thereafter, to wit, on the 31st day of August, 1869, there were granted and issued to said Strong certain other letters patentNo. 94449; also for improvement in street letter boxes, as set forth in the respective speci- . fications therefor, made part of the petition herein as Exhibits D and E, and that the said Samuel Strong- is the patentee and assignor of said inventions.
    III. That on the 15th of September, 1869, the said Samuel Strong entered into a contract in writing with the defendant, through the Postmaster-Gen eral thereof, which is annexed to the petition herein as Exhibit B.
    . IY. That while said contract was in force, to wit, on the 27th of September, 1869, the said Samuel Strong executed the following instrument in writing:
    “ DEPARTMENT OE THE INTERIOR,
    “United States Patent Oeeioe.
    “To all persons to whom these presents shall come, greeting:
    “This is to certify that the annexed is a true copy from the records of this office of an instrument of writing executed by Samuel Strong, September 27th, 1869, and recorded in Liber A 12, page 333. Said record has been carefully compared with the original and is a correct transcript thereof.
    “In testimony whereof I, M. Y. Montgomery, Commissioner of Patents, have caused the seal of the Patent Office to be affixed this 9th day of April, in the year of our Lord one thousand,eight hundred and eighty-six, and of the Independence of the United States the one hundred and tenth.
    [SEAL.] “M. Y. MONTGOMERY,
    “ Commissioner,
    
    “[Liber A 12, 333. 5 — 5. Sep. 27, ’69. S. S. 5 — 5.]
    “In consideration of the sum of thirty thousand dollars, lawful money of the United States, to me in hand paid by G-ideon L. "Walker, of the city of Washington, District of Columbia, the receipt whereof is hereby acknowledged, I do hereby sell, assign, and transfer unto him, the said Gideon L. Walker, all my right, title, and interest in and to the letters patent of the United States, described as follows, to wit: No. 88528, for an ‘improvement in street letter boxes,’ issued and granted to me March 30th, 1869; also No. 94449, for ‘improvement in letter boxes,’ issued and granted to me August 31st, 1869.
    “ The said letters patent and each of them as above described to be held, used, and enjoyed by him, the said Gideon L. Walker, or Ms assigns, to tbe full end of tbe term for wbicb each of said letters patent are granted, as fully and entirely as tbe same would have been beld and enjoyed by me if tbis assignment and sale bad not been made.
    “And I do hereby also sell, assign, and transfer unto him, tbe said Gideon L. Walker, all my right, title, and interest in and to a certain invention in street letter boxes, as fully set forth and described in tbe specifications which I have prepared and filed preparatory to obtaining letters patent from the United States therefor.
    “And I do hereby authorize and request the Commissioner of Patents to issue the said letters patent to the said Gideon L.Walker, as my assignee, for the sole use and behoof of the said Gideon L. Walker, and his legal representatives.
    “ In witness whereof I hereunto set my hand and seal this 27th day of September, A. D. 1869. *
    “Saatuel Strong-, [seal.]
    “In the presence of—
    “John I. Weed.
    “ (Recorded Oct. 18,1869. Ex’d A. C. W., E. L. L.) ”
    Which instrument in writing was duly entered of record in the Patent Office October 18,1869, as provided by law, but whether letters patent were ever issued to said Walker/or anyone else, for the invention in street letter boxes, for which, said Strong says in said assignment, he had prepared and filed specifications, or what such specifications were does not appear.
    V. That the cast-iron street letter boxes so contracted to be furnished by said Strong for the use of the Post-Office Department were so furnished by him, and were the street letter boxes for which said Strong had secured letters patent for the box known as the “Flat Top” letter box, but complaints were made to the Postmaster-General by postmasters and others, in cities where said boxes were in use, to the effect that said street letter boxes were too wide, unsightly in appearance, and unsatisfactory, and in consequence of such complaints, the Postmaster-General convened, atthecity of Washington, D.O., a convention of postmasters and other postal officials “to consult in regard to .the general good to the postal service;” and said postmasters and other postal officials met in conven tion in said city in the month of January, 1870, and had before them for inspection several models for and of street letter boxes, including the one then in use being furnished by said Strong .under his contract aforesaid, but said convention rejected all sucb models, and, endeavoring to avoid conflict with any existing patent, devised a street letter box, based on tlieir “own experience” and reported to tbe Postmaster-General January 15,1870, recommending tbe adoption of sucb box in these words:
    “Washing-ton, January 15,1870.
    
    “Hon. J. A. J. Cbeswell,
    
      1 1 Postmaster- General:
    
    “Tbe undersigned, postmasters and special agents, having met at Washington by your invitation for consultation in regard to the-general good to tbe postal service, respectfully submit tbe following recommendations and'suggestions:
    “That we condemn tbe street letter box now furnished tbe Department under tbe contract known as tbe “ Strong patent,” and we would respectfully recommend tbe adoption of a street letter box about one and a half feet in length, about six inches in depth, and twelve inches in width, -with an opening at tbe top sufficiently large to receive newspapers and magazines, tbe opening or receptacles specially protected from the weather witb a curved top to carry off the water, and a door in tbe side or front, witb side flanges, to také tbe matter from, and that tbe hours for collection be distinctly shown upon the outside of tbe box. Upon tbe request of tbe postmaster at any office tbe aforesaid described box should be furnished witb an aperture for tbe receival of letters only.”
    "VT. That pursuant to tbe recommendations so made to tbe Postmaster-General as aforesaid, and in accordance therewith, a street letter box was devised and adopted by the Postmaster-General, known as tbe “Pound Top;” and tbe said Samuel Strong was engaged to model, manufacture, and furnish to tbe Post-Office Department sucb boxes, witb “ sucb alterations and improvements therein” as tbe Postmaster-General might suggest, as provided in a written contract therefor, entered into by and between tbe said Samuel Strong and tbe defendant, through tbe Postmaster-General, on tbe 18th of February, 3870, for tbe period of four years therefrom, which contract is made a part of tbe petition herein as Exhibit C, and which contract, in terms, superseded and annulled tbe contract heretofore made between the same parties on "the 15th of September, 18G9.
    That under said contract of February 18,1870, and during tbe existence thereof, tbe said Samuel Strong did model and manufacture boxes with sucb “alterations and improvements therein” as were suggested by the Postmaster-General, until boxes giving satisfaction to the Postinaster-G-eneral had been made; and that boxes so modeled and manufactured by said Strong as aforesaid, were the boxes furnished by him to and for the use of the Post-Office Department, under and during the existence of his said contract and none other, for which he was paid $5.50 for each of the small size and $7.50 for each of the large size of said box,
    VII. That a few days prior to the expiration of said contract, to wit, on the 11th of February, 1874, the said Strong filed in the Patent Office a caveat, and thereafter, to wit, March 9, 1874, his application and specifications, which latter are made a part of the petition herein as Exhibit G, claiming to be the inventor of the cast-iron street letter box so devised and adopted by the Postmaster-General as aforesaid; and thereafter, to wit, on the 18th of March, 1890, said Strong filed amended specifications, under his said application for a patent on said street letter box so devised by the Postmaster-General as aforesaid, which specifications are made part of the petition herein as Exhibit H; and which letter box so devised and adopted by the Postmaster-General was modeled and manufactured by said Strong under the instructions of the Postmaster-General as provided should be so done in his said contract, and that the said boxes so modeled, manufactured, and furnished by said Strong were in public use in the letter-carrier cities of the United States for more than two years prior to the 9th day of March, 1874, the date when said Strong filed his application for a patent thereon as aforesaid.
    VIII. That pending the.application of said Strong for letters patent on the said street letter box so devised as aforesaid, to wit, on the 29th of July, 1874, the Postmaster-General addressed a letter, put in evidence by the claimant, to the honorable M. D. Leggett, Commissioner of Patents, which letter is as follows:
    
      “ DEPARTMENT OE THE INTERIOR,
    “ Washington, March 22,1892.
    
    “The Chiee Cleric oe the Court oe Claims:
    “ Sir-. In compliance with your request of the 18th instant I inclose herewith properly certified copy of the protest of the Post-Office Department, filed July 29,1874, against the issue of a patent to one Samuel Strong for improvement in letter boxes, for use in tbe ease of George E. Kirk v. United States, Ño. 14485, pending in tbe Court of Claims.
    “Very respectfully,
    “John W. Noble,
    “ Secretary. ”
    “ POST-OFFICE DEPARTMENT,
    “ Washington, D. C., July 29,1874.
    
    “Sir: Mr. Samuel Strong, of this city, bas informed this Department that be bas taken out two caveats to protect bis alleged rights to a certain street letter box now in use in tbe several letter-carrier cities by. authority of this Department.
    “Lest tbe said Strong should apply for a patent for said box, I desire to submit for your consideration tbe following statement, with tbe request that it be placed on tbe files of your office.
    “Tbe box in question bas now been in use for four years, and was furnished by tbe said Strong under a contract with this Department dated Feb. 18th, 1870, running four years from that date. Tbe box in use in the several letter-carrier cities prior to 1870 was also furnished by said Strong’, and was condemned by a convention of postmasters and special agents convened in this city in Jan’ry 1870, by invitation of tbe Hon. John A. J. Ores well, then P. M. General, for consultation in regard to tbe general good of tbe postal service.
    “Said convention, among other things, state ‘That we condemn tbe street letter box now furnished the Department under tbe contract known as tbe “Strong patent,” and we would respectfully recommend tbe adoption of a street letter box about 1-J feet in length, about 6 inches in depth, and 12 inches in width, with an opening at tbe top sufficiently large to receive newspapers and magazines; tbe openings or receptacles specially protected from tbe weather, with a curved top to carry off tbe water, and a door in tbe side or front with side flanges to take the matter from, and that tbe hours for collection distinctly shown upon tbe outside of tbe box. Upon tbe request of tbe postmaster at any office tbe aforesaid described box should be furnished with an aperture for tbe receival of letters only.’
    “Tbe box above recommended by said convention was reduced to shape and form by said Strong substantially as described above, and can in no just sense be considered as tbe invention of tbe said Strong, be having simply carried out tbe views of tbe convention in this respect.
    “I have, therefore, to request that a patent be not granted to tbe said Strong for tbe letter box now in use and above substantially described.
    “Yery respectfully,
    “ J. W. Marshall,
    ■ “Hon. M. D. Leggett, “Postmaster-General.
    
    “ Commissioner of Patents.n
    
    
      IX. That on tbe 26 th day of January, 1881, the said Strong executed an instrument in writing made a part of the petition herein as Exhibit A, whereby he assigned all his right and interest in said letters patent and invention to the claimant; but it does hot appear that the said Gideon L. Walker, to whom said Strong had theretofore executed an assignment in writings as heretofore found, consented to said assignment so made to the claimant, or that letters patent were ever issued to claimant or anyone else on the application of September 4,1869, referred to in said written assignment.
    X. That thereafter, to wit, April 1, 1881, the said Strong filed his certain other application in the Patent Office, claiming to be the inventor of certain improvements to a street letter box, as- set forth in his specifications therefor, made part of the petition herein as Exhibit F, and on the 7th of February, 1882, Letters Patent No. 253236 appear to have been issued therefor to said Strong, but it does not appear that the claimant has any interest therein.
    XI. That after the filing of the original petition in this case, to wit, on the 27th of October, 1891, there were issued to the claimant, George E. Kirk, assignee of said Samuel Strong, Letters Patent No. 462224, which letters patent are made a part of the petition herein as-Exhibit M, and which said letters patent cover the same and identical street letter box adopted by the Postmaster-General, known as the “round top,” and which was modeled and manufactured by said Strong as here-inbefore set forth.
    XII. That subsequent to the 18th of February, 1874, the date when the said contract with said Strong expired, the Postmaster-General contracted with the Union Foundry and Manufacturing Company, of Reading, Pa., and others, at divers times, to manufacture and furnish to and for the use of the Post-Office Department the same and identical kind of street letter boxes theretofore modeled, manufactured, and furnished by said Strong under his contract aforesaid; and it does not appear that the contracts for the boxes to be furnished were with the knowledge or consent of said Strong or the claimant.
    That from the 27th of October, 1878, being six years prior to the time of filing the original petition herein, up to the date of filing the last amended petition herein, January 15,1892, tbere were purchased by the Postmaster-General for use by the Post-Office Department about 35,000 of said letter boxes, but wbat number of sucb boxes, if any, were purchased and used by the Post-Office Department subsequent to the 27th of October, 1891, the date when said letters patent were issued to claimant’s assignee, does not appear, nor does it appear what number of different size boxes were so purchased and used as aforesaid.
    NHI. That a reasonable royalty for the use of such letter boxes, as a valid patented device or invention, would be about §1 per box, or $35,000, and it does not appear that claimant was ever paid anything for such boxes.
    
      Mr. R. II. Steele and Mr. Robert 0. Howard for the claimant.
    
      Mr. John O. Chaney (with whom was Mr. Assistant, Attorney Cotton) for the defendants.
   Peelle, J.,

delivered the opinion of the court:

The claimant, assignee of one Samuel Strong, seeks to recover on an implied contract, royalties for the use of a certain cast iron street letter box, purchased and used by the Post-Office Department, for which the claimant as such assignee claims to hold a patent in the right of Strong, patentee.

The facts show that Letters Patent Nos. 88525 and 94449, which had theretofore been issued to Strong, were assigned to Walker, September 27, 1869, who still appears to own the same.

The patent granted to Strong, covered by Letters Patent No. 253236, dated February 7,1882, for which application was made April 1, 1881, appear to be owned by him, so that the only invention or letters patent in which the claimant appears to have any interest in letter boxes is covered by Letters Patent No. 462224, for what is known as the “round-top” box, which claimant holds by virtue of an assignment from Strong, the alleged inventor, under date of January 26,1881, which letters patent were not issued to claimant until October 27, 1891. The claimant can therefore only recover, if at all, for the use of the box covered by the letters patent so issued to him; and as to this box, it appears that Strong, under his contract of February 18, 1870, for four years, in part tberefor, w'as to model and manufacture boxes “with, sucb alterations and improvements therein as the Postmaster-General may suggest,” until boxes giving entire satisfaction to the Postmaster-General should be made. It appears that under that contract Strong did model and manufacture boxes, with such alterations and improvements therein” as were suggested by the Postmaster-General, until a box identical with the one covered by Letters Patent No. 462224, so held by claimant, had been made; and the boxes so modeled and manufactured by him, and none other, were furnished to and for the use of the Post-Office Department under and during the existence of his said contract, for which he was paid $5.50 for each of the small size and $7.50 for each of the large size boxes, as provided in said contract. This contract in terms superseded and annulled the former contract with Strong to furnish letter boxes, as such boxes had been condemned by a convention of postmasters.

After the expiration of Strong’s contract the Postmaster-General contracted with other persons to furnish the same identical kind of boxes theretofore modeled and furnished by Strong, but it does not appear that any of said boxes were purchased and used by the Department subsequent to the date of issuing said letters patent to the claimant.

A tew days before the expiration of this contract, to wit, February 11,1874, Strong filed a caveat, and thereafter, March 9, 1874, his application in the Patent Office, claiming to be the inventor of the letter box which he had modeled, manufactured, and furnished under his contract, but the attention of the Postmaster-General being called to the matter, he addressed a letter to the Commissioner of Patents (put in evidence by the claimant), as follows:

“ POST-OEEICE DEPARTMENT,
“ Washington, D. 0., July 29,1874.
“ Sir. : Mr. Samuel Strong, of this city, has informed this Department that he has taken out two caveats to protect his alleged rights to a certain street letter box now in use in the several letter-carrier cities by authority of this Department.
“Lest the said Strong should apply for a patent for said box, I desire to submit for juiur consideration the following statement, with the request that it be placed on the files of your office.
“ Tlie box in question bas now been in use for four years, and was furnished by the said Strong under a contract with this Department dated February 18,1870, running four years from that date. The box in use in the several letter-carrier cities prior to 1870 was also furnished by said Strong, and was condemned by a convention of postmasters and special agents convened in this city in January, 1870, by invitation of the Hon. John A. J. Oreswell, then Postmaster-General, for consultation in regard to the general good of the postal service.
“Said convention, among other things, states ‘That we condemn the street letter box now furnished the Department under the contract known as the “ Strong patent,” and we would respectfully recommend the adoption of a .street letter box about 1£ feet in length, about 6 inches in depth, and 12 inches in width, with an opening at the top sufficiently large to receive newspapers and magazines; the openings or receptacles specially protected from the weather, with a curved top to carry off the water, and a door in the side or front with side flanges to take the matter from, and that the hours for collection be distinctly shown upon the outside of the box. Upon the request of the postmaster at any office the aforesaid described box should be furnished with an aperture for the receival of letters only.’
“The box above recommended by said convention was reduced to shape and form by said Strong substantially as described above, and-can in no just sense be considered as the invention of said Strong, he having simply carried out the views of the convention in this respect.
“I have, therefore, to request that a patent be not granted to the said Strong for the letter-box now in use and above substantially described.
“Very respectfully,
“J. W. Marshall,
Postmaster- General.
“Hon. M. D. Legg-ett,
Commissioner of Patents.”

It is averred in the petition, among other things, in substance, that a Board of Postmasters (Postal Convention), convened by order of the Postmaster-General, had recommended for adoption to the Postmaster-General, January 15,1870, the boxes filed with said board and known as the Strong boxes or inventions, and that it was the intention and understanding of the Postmaster-General and the inventor that the invention so selected and adopted should be used by the defendants and reasonable and just compensation made therefor.

•To entitle the claimant to recover he must show some privity between tbe defendants, through, the Postmaster-General who was authorized to contract in respect thereto, and the claimant or his assignor, from which the court can conclude as matter of law that an implied contract exists. And in this connection we remark.that the averments in the petition stated, looking to that end, are not supported by the facts found. . On the contrary it appears that the only knowledge the Postmaster-General had as to Strong’s claim on the box used is disclosed in his letter to the Commissioner of Patents, set out above, and it was because of the knowledge he then had of Strong’s claim, by the caveats, that he objected to the granting of a patent to him, giving as his reason that Strong was not the inventor of the box, but that the same was the creation of the Post-Office Department, brought about by reason of the recommendation of the postal convention recited in said letter-; that Strong had reduced the box to shape and form as recommended, carrying out the suggestions of the Postmaster-General as provided in his contract; and that the box so shaped and formed had then been in use in the Department for four years. The facts show that the box used was under claim of ownership by the Department, there being no acknowledgment by the Postmaster-General, even tacitly, that Strong was the inventor, but on the contrary his claim of ownership was denied. The use of such box, thereafter, by the Department, would not imply a contract to pay therefor, and without a contract, under existing authorities, there can be no recovery. Shillinger’s Case (24 C. Cls. R., 278).

Having reached this conclusion on the main question, we will not pass upon the validity of the patent, nor the right of an inventor to recover for the use of his invention during the intermediate period between the application for and the granting of a patent.

Our reason for finding the number of boxes purchased and used since October 27, 1878, instead of February 18,1874, as claimed, is that the statute of limitations applies to all boxes purchased and used more than six years prior to the filing of the original petition herein, as held in Butler’s Case (23 C. Cls. R., 335).

For the reasons given the petition is dismissed.  