
    EDWARD W. SPRAGUE ET AL. v. THE UNITED STATES.
    [No. 18002.
    Decided May 12, 1902.]
    
      On the Proofs.
    
    A patentee who is a foreman of Government work on dams and canal locks offers his device to the Chief of Engineers. He replies that the Government will not purchase a patent, but will buy patented articles from manufacturers who have obtained the right to manufacture. He promises to call the attention of engineers in charge of public work to the device, so that if it be found useful the patentee can make arrangements with manufacturers; and it is agreed informally that nothing shall be charged for its use at places where it may be tested. Some of the engineers in charge use the device without the knowledge or consent of the chief and without entering into an express agreement to pay for it.
    I.Where the Chief of Engineers expressly refused to enter into a contract for the purchase of a patented device, no contract can be implied from the user of the invention by his subordinates with the knowledge and consent of the patentee.
    II.The Chief of Engineers is the proper officer in his department to control contracts and prevent his subordinates from incurring liabilities on the part of the Government.
    III. The refusal of the Chief of Engineers to contract, of which the patentee had notice, was notice to him that subordinate engineers in charge of work were without authority to contract.
    IV. When a j>atent is used by the agents of the United States, with an understanding with the owner that no charge is to be made, he can not repudiate the contract arising from such an understanding and recover compensation for the use of the same.
    V.Persons dealing with the officers of the Government are supposed to have a legal knowledge of the extent of their powers, and are bound by the legal effects of such knowledge.
    
      The Reporter £ statement of the case:
    The following are the facts of the case as found by the court:
    I. The claimants, Edward W. Sprague, Jasper S. Sprague, and James B. Hovey, are partners doing- business at Marietta, Ohio, under the firm name and st3rIe of The Universal Bolt-Lock Company; they are citizens of the United States, residing- at Marietta, Ohio, and are the owners of the claim hereinafter stated, never having- sold or assigned the same to any person or persons.
    II. On the 21st day of August, 1883, on an application therefor filed in the United States Patent Office December 2, 1882, the claimant, Edward W. Sprague, obtained letters patent for improvement in bolt-locks, No. 283725. Said Edward W. Sprague sold and assigned an interest in said letters patent to said claimants, Jasper S. Sprague and James B. Hovey, for a valuable consideration; and said Edward W. Sprague, Jasper S. Sprague, and James B. Hovey are now, and have been during- the use of the patented device embraced in findings hereinafter, the owners and holders of said letters patent and of said invention under said firm name,.
    
      III. Tbe application and letters patent mentioned in the foregoing findings are as follows, to wit:
    “ United States Patent Office.
    
    ‘‘Edward W. Sprague, of Buell’s Lowell, Ohio — Bolt-Lock.— Specification forming part of Letters Patent No. 283725, dated August 21, 1883.
    [Application iiiert December 2,1882. (No model.)]
    
      ‘"‘To all whom it may concern:
    
    “Be it known that I, Edward W. Sprague, a citizen of the United States, residing at Buell’s Lowell, in the county of "Washington and State of Ohio, have invented certain new and useful improvements in bolt-locks; and I do declare the following to be a full, clear, and exact description of the invention, such as will enable others skilled in the art to which it appertains to make and use the same, reference being had to the accompanying drawings, and to letters or figures of reference marked thereon, which form a part of this specification.
    "Figure 1 of the drawings is a representation of this invention, and shows a vertical section. Fig. 2 is a cross section taken through the broken line x x in fig. 1. Figs. 3, 4, and 5 are details showing the different parts in perspective view’s. Fig. 6 is a perspective view of the hollow punch used in tamping the washers.
    “This invention has relation to means for fastening bolts in masonry on land or underwater; and it consists in the process and device hereinafter set forth, and particularly pointed out in the appended claims.
    “In the annexed drawings the letter a designates a bolt having an enlargement, b, at its toe and threaded at its other end, as indicated at c, to receive a nut. Lead rings or rings of other soft metal having an inner diameter sufficient to allow them to pass easiN over the threaded end of the bolt and along the same to the enlargement b are indicated at d. W hen the bolt is to be secured in the masonry, a perforation, <?, is made in the latter of sufficient diameter to admit the enlarged toe of the bolt. This perforation is made into but not through the wall or piece of masonry, its depth being such that when the bolt is driven home its threaded end will project sufficiently for its purposes. The bolt, having been driven home, as stated, is secured in the wall bjr means of the lead rings. These are passed over the outer end of the bolt and along the same until they are stopped by the enlargement b at its inner end. By means of a hollow punch, k, the lead rings are forcibly compressed and packed or tamped in the cylindrical interval between the body of the bolt and the wall of the perforation e in the masonry until the interspace is filled with the packed soft metal. This operation is easily effected, as the bolt is readily introduced into the large perforation, and the hollow punch in its tampering operation keeps the bolt true. The metal, being packed cold around the bolt, will not shrink, but will always maintain its full bearing against the wall of the perforation, so that the bolt will be firmly and effectually secured.
    “Having described this invention, what I claim, and desire to secure by letters patent, is—
    “ 1. The process of securing bolts in masonry, consisting, first, in boring a perforation in the masonry of larger diameter than the body of the bolt; second, placing therein a bolt having an enlarged toe, and, third, packing the interval between the body of tlie bolt and the wall of the perforation with lead rings duly tamped, substantially as specified.
    “2. The combination, with a bolt having an enlarged toe, 5, and threaded outer end. e, of the lead" packing rings, cl, arranged on the body of the bolt, substantially as specified.
    . “In testimony whereof I affix my signature in presence of two witnesses.
    “Edward W. Sprague.”
    IY. The t^ype of bolt shown and described in Letters Patent No. 283Y25 was known as the “countersunk-head” bolt, at the date of the application for the patent. Bolts had previously been used, but with a packing of irregularly shaped pieces of lead instead of the rings. The most usual style of bolt for insertion, head first, into a hole dl’illed in rock or masonry was one, the head of which was made by splitting one end of the bolt and inserting a wedge in the split. When the bolt was driven down on the wedge the split end expanded on either side. Por packing the interval between the body of the bolt and the walls of the hole, it was customary to use hot sulphur or hot load. As lead contracts oil cooling, it was necessary to tamp it after it had cooled, and the most approved way was to pour in a small quantity of lead at a time and tamp it, repeating the process several times until the hole was filled. Por use under water iron filings, properly tamped, were very effective, as the corrosion made the filings a solid mass which adhered closely to the walls of the hole. Cement was also sometimes used to hold bolts under water, and was effective.
    
      Besides bolts, various other articles of iron, such as fence posts, hinges, ringbolts, brackets, and pintle pins, were made with projections enlarged at the farther end for insertion in masonry, and were secured in masonry in the same way that bolts were secured. Sometimes pieces of cold lead -were packed in and tamped around the portion inserted.
    Y. On March 8, 1869, William E. Worthen filed in the Patent Office an application for a patent for an improvement in nails for securing weather tiling and siding. One of the devices covered by the application was described and claimed as follows:
    “In fig. 4 there is still a further modification of the fastening as applicable to the holding of screw-headed bolts which can not be driven without risk to the thread of the screw. In this case the lower end of the bolt is upset and formed with a cone tapering upward, and the leaden petticoat, after the bolt is inserted in the hole in the masonry, is to be driven down on this cone, and thus forced outward to fill the hole.
    “The effect is the same as the other fastenings, but the action is directly the converse. In the first place the iron is driven into the lead, in the last the lead is driven onto the iron, and I find this difference also in the forming of the petticoats; in the first the softer the lead the better, in the last the harder the lead at its outward edge the better, that it may drive well into the hole without upsetting; that is, that the lower end may become distended by the cone, before the upper end, by the blows of the hammer, and set.
    “In cases of rough stone masonry, where often the hole in the tile may come opposite a large joint between the stones, I prefer to fasten a Avail strip of iron or wood to the Avail by any of the above fastenings, and then rivet, nail, or bolt the tile to the strips.
    “ What I claim as of my own invention are:
    ♦X' * -X- * -X- *x-
    “Fourth. Forming the bolt in such a manner that when placed in the hole, by the driving doAvn of the lead upon the bolt, the lead is forced outAvard to fill the hole.”
    The figure referred to in the above description shows a bolt with countersunk head, surrounded just above the head by a bushing marked d, shown in cross section. Similar bushings are shoAvn in other figures in connection Avith other types of bolts, and the specification describes this bushing as “alead or other soft metal bushing.” The examiner held that the application appertained to two distinct classes of inventions, which could not be covered by one patent. The applicant then withdrew so much of his application as related to the device contained in the above description, and the patent was granted for the other devices covered by the application, but the figure (fig. 4) showing the former device remained in the patent as granted.
    When E. W. Sprague applied for the patent on his device the examiner cited the Worthen patent against the application and referred particularly to fig. 4, whereupon Sprague amended his device from what was shown by fig. 4 of the Worthen patent as follows:
    “Fig. 4 of the reference No. 121305 of November 28,1871, shows a screw, the point of which enters the hole in the wall, and a single short bushing ring is expanded in the hole by the taper of the screw as it is driven into its seat. In applicant’s device the toe of the bolt, i. e., the enlarged end, rests against the end wall of the hole, a series of lead rings fill the space along its entire length within the hole, and the projecting end is threaded for the securing nut.”
    Supposing the claimant’s device to have been patentable and of any utility over unpatented devices, an ample royalty for the use of it would be a half a cent a pound on the weight of the bolts and lead rings used.
    VI. In the years 1884 to 1891, inclusive, except 1886, E‘. W. Sprague, the patentee, was employed by the engineer officers of the United States as a foreman in work on locks and dams. In March, 1886, he proposed to Gen. John Newton, then Chief of Engineers, to sell to the United States the right to make and use the patented bolt lock. General Newton admitted that the device might be useful, and asked for models of it and copies of a descriptive pamphlet, but stated that the Government did not purchase patents, but made use of improvements where it is thought desirable, purchasing them of the manufacturers rather than buying patents and undertaking to make the articles; that the matter would be called to the attention of the engineer in charge and that arrangements might be made with whoever manufactured them in case they were useful. The claimant, E. W. Sprague, being employed as aforesaid, it was agreed that in consideration of his employment and to afford an opportunity to test his device nothing should be charged for the use of the device at the points where he was so employed. At the points where said Sprague was not employed the device was used without the knowledge or consent of the Chief of Engineers and without any agreement or understanding on the part of the engineers in charge that the said use was to be paid for.
    
      Mr. John G. Chaney for the claimant:
    Under Revised Statutes, section 4884, giving to a pat-entee—
    “the exclusive right to make, use, and vend the invention or discovery throughout the United States”
    the Supreme Court
    “has repeatedly held and uniformly declared that the United States have no more right than any private person to use a patented invention without license of the patentee, or making compensation to him.” (United States v. Burns, 12 Wall., 24(3; Cammeyer v. Newton, 94 U. S., 225; James v. Campbell, 104 U. S., 356; Hollister v. Benedict Mfg. Co., 113 U. S., 59; United States v. Palmier, 128 U. S., 262; Belknap v. Sehild, 161 U. S., 10-16. Grants Case, 1 C. Cls. R., 41; Johnson!s Case, 4 C. Cls. R., 248; Water’s Case, 4 C. Cls. R., 389.)
    As to implied contract to pay for the use of this invention, it may bo said that this case comes within the second class of cases mentioned in the Basquean, case (26 C. Cls. R.).
    There is a lame attempt to show that E. W. Sprague donated the use of his device to the Government. But in view of the testimony of See against Beach, and the positive statements of Captain Sprague to the contrary, it seems convincing that only the use of the bolt back in 1885, on a certain work, was donated.
    The Government has no right to use the device on any of its other works without paying for it, and the burden rests upon the United States to prove its donation.
    It has not proven a donation in this case and can not prove it.
    
      Mr. Charles C. Binney (with whom was Mr. Assistant Attorney-General Pradt) for the defendants.
   WeldoN, J.,

delivered the opinion of the court:

On the 25th of May, 1893, the claimants filed a petition in which it io, in substance, alleged, that on the 21st day of August, 1883, the United States granted to Edward Sprague, one of the petitioners, Letters Patent No. 283725, which provided a process of securing bolts in masonry, consisting— First, in boring a perforation in the masonry of larger diameter than the body of the bolt;

Second, placing therein a bolt having an enlarged toe; and

Third, packing the interval between the body of the bolt and the wall of the perforation with rings of lead, duly tamped. The combination with a bolt having an enlarged toe B, and threaded outer end C of the lead packing rings, arranged on the body of the bolt as specified; that the said patent, for a valuable consideration, was, before the use of it by the defendants, partly assigned to the other claimants; that the United States, through its proper officers, with knowledge of the said patent, and by the consent of the claimants since the 18th of March, 1886, used the said patented bolt, and until the bringing of this suit at the several places in the said petition alleged and at divers other places on the Wabash, Mississippi, and Ohio rivers, and at divers places along the Atlantic coast in the construction of dams, locks, and other works belonging to and being constructed by the United States; and that the use of the same by the defendants was of the value of $300,000. The amount claimed in the request for finding of fact is $2,865.33.

To the claim of the petitioners the defendants allege that the device or process aforesaid was not patentable at the time Sprague procured letters patent; that whatever was used by the defendants at most of the points was used with the understanding and agreement that the same was used at the instance of the claimants as an experiment; that nothing was to be charged for said use by the claimants, the said claimant, Edward W. Sprague, being at the time of the alleged use in the employ of the United States as superintendent of some of the works in which it is alleged that the said process was used.

It is further contended on the part of the defendants, that if any were used at other points than where the said Sprague was superintendent and subject to the understanding aforesaid, the same was used without any authority upon the part of the agent or officer legally in charge, and that no express or implied contract exists as to the use of the process at those points.

In the view which the court has taken of the rights of the parties founded upon the facts of the findings, it is not necessary to examine and determine the question as to the validity of the patent.

Conceding the patent to be valid, if the same was used by the defendants with an understanding and agreement that the United States was not to be charged for the use of the same, then no recovery can be obtained for so much of the use of the process as is covered by such understanding and agreement; and if upon the other portions of the work.the process was used without authority or the knowledge of the proper officer or agent of the Government having control and jurisdiction of the work, then no legal liability would arise against the United States for such use.

In order to successfully maintain the contention of the petitioners, it must be shown that in the use of the device there exists as to its use an express or implied agreement on the part of the defendants to pay for the use of the same, and the express agreement must arise from the contract of the parties, and the implied agreement, from the acts of the defendants, through their proper officer, in the use of the same, conceding it to be private property and claiming no right or title to the same. This theory of the law is sustained by the decisions of the Supreme Court and this court in many cases.

In the case of Schillinger v. The United States (24 C. Cls. R., 278), after a most elaborate examination and discussion of the many decisions on the point in controversy in this proceeding, the court says:

“A careful examination of these cases shows that a contract to pay is implied whenever the Government, acting through a competent agent, takes or uses individual property, acknowledging explicitly or tacitly that the property is individual property. * * * Where, however, there is a denial of the private right in an alleged patent, and the invention is nevertheless appropriated or used by the Government, the appropriation or use is in the nature of a tort, and an action thereon is not within the general jurisdiction of this court. So if it had not been disputed that the Schillinger patent was valid, and the invention had been used by the Government acting through a competent agent, a contract for royalty would be implied.”

Considering the rights of the plaintiff in the law as announced in this case, the question arises whether the appropriation of the property of the claimants was the result of the act of the lawfully authorized and competent agents of the Government. The Chief of Engineers refused to make any contract with the claimant, Edward W. Sprague, for the use of his invention, and he having the right to determine that question from the nature and character of his office, that decision, especially as it was known to the claimants, is binding upon their rights. The United States are not to be held responsible for the acts and declarations of persons in charge of the construction of the work in the making of contracts, either as express contracts or by implication of law, in violation of the authority of their superior officers. So that if the defendants’ engineers, who were subordinate to the Chief of Engineers, used the plaintiff’s invention or device such use was in violation of the rights of the United States, and no contract can be implied from such user.

To hold otherwise, the rights of the United States would be determined not by the responsible officer intrusted with the exercise of the power affecting such rights, but by the acts of subordinate officers, who might from time to time be employed as the mere executors of the will and purpose of the officer having the legal right to bind the United States. The engineers in charge were not the agents of the United States in the sense of being clothed with authority, either by their expressions or their acts, to make a contract binding upon the defendants.

In the case of Ferris v. The United States (28 C. Cls. R., 332, 342) it is said in reference to the power and right of the Chief of Engineers that the provision in a contract requiring his approval is very important. “It keeps within the power of the department, or the office making the agreement, the control of the contract and prevents persons in charge of the mere execution of the work from changing the rights and increasing the liability of the Government.” In the case of Driscoll v. The United States (34 C. Cls. R., 508) the Ferris and many other cases are cited to sustain that theoi’y of the rights of the Government. In the Driscoll case it is said:

“The Supervising Architect, therefore, was the authorized contracting agent for the Government, and without his sanction therefor the claimant had no right or authority to perform, at the expense of the defendants, the additional work set forth in finding vn, and of this he was bound to govern himself accordingly.”

Upon this branch of the case the fifth finding is in substance, as follows: In 1886, the claimant, Edward W. Sprague, proposed to the Chief of Engineers to sell to the United States the right to make use of the patent, who admitted that it might be useful and asked for models and descriptions; but stated to the claimant that the Government did not purchase patents, but made use of improvements, purchasing them from the manufacturers rather than by buying patent rights and undertaking to make the article; that the matter' would be called to the attention of the engineer in charge and that arrangements might be made with whoever manufactured the bolts in case they wore useful.

This clearly shows, that the officer of the United States who had charge of the construction of the defendant’s improvements refused to make a contract with the claimants to use the right of the device or process, and express^ negatives the existence of an express agreement to use the device, except by purchasing from the parties who had the right and actually manufactured the article.

The officers who were in charge of the construction of the works in which it was used were in subordination to the Chief of Engineers in authority, and had no right to assume to pay for the use of the device against the express refusal of that officer.

The Engineer in Chief, having declined to purchase the right to use the patent or device of the claimants, his subordinates, in the practical construction of the work, had no authority to bind the defendants in contradiction and contravention of what was done by the superior officer in refusing to bind the United States by the making of an express contract. If any agreement was made with the subordinate agents of the United States in violation of the refusal of the Chief of Engineers, it would not be binding on the United States, because the claimants had knowledge of the refusal of the officer of superior author^ to contract for the u«e in behalf of the Government.

In the case of Dale v. The United States (14 C. Cls. R., 515) it is in substance said: Where a contract provides that no claim shall be made bjr the contractor for extra work unless ordered with the approval of the Chief of Engineers, the contractor can not recover for extra work or material fui’nished by the direction of the local agent without the knowledge or approval of the Chief of Engineers.

The refusal of the Chief of Engineers to contract with the claimant for the use of the patent, which refusal was known to the claimant, was not only a limitation on the subordinate agents to agree as to compensation, but also upon their right to use and adopt the device from which an implied liability might arise. In the Schillinger case it is said that there may be a distinction in the taking of intangible and tangible property, but in that case the taking of intangible property by an incompetent or unauthorized agent was held not such a taking as from which an implied obligation on the part of the Government to pay could be deduced.

The findings show that a part of the use of the device was upon certain portions of the work, and that in consideration that one of the claimants was employed as foreman, and the fact that an experiment might be made of the utility of the invention, no charge was to be made for that part of the work, and that on the other portion of the work the process was used without the knowledge and consent of the Chief of Engineers and in violation of his express declaration that the Government would not undertake or agree to pay a royalty.

For these reasons the plaintiffs have no right to recover, and the petition is dismissed.  