
    JAMES B. DAVIS v. THE UNITED STATES.
    [No. 14251.
    Decided June 4, 1888.]
    
      On the Proofs.
    
    The foreman of the machine and foundry division of the Ordnance Department of the Navy is ordered to make experiments and get up devices for the improvement of hreech-loading cannon. Subsequently, at the suggestion of his commanding officer, he takes out a patent to protect the Government, and is re-imbursed to the amount of his expenses. He now seeks to recover a royalty.
    The case comes within the rule laid down in Solomons (22 C. Cls. K., 342), and the court reiterates the principle that, every public officer being a suardian of the public welfare, no transaction growing out of his official services or position can be allowed to inure to his personal benefit, and that from such transactions the law will not imply a contract.
    
      The Reporters’ statement of the case:
    The following are the facts as found by the court:
    I. The claimant, James B. Davis, was foreman of the machine and foundry division of the Ordnance Department of the Navy at the Washington navy-yard from 1865 to 1880, and Capt. H. L. Howison, inspector of ordnance, was his immediate superior-officer. At some time in 1879 Captain Howison told the claimant that he had been ordered to direct him (the claimant), as having charge of the ordnance shops, to make experiments anil to get up devices for a gas-check or vent-closing primer, to be used on breech-loading canon. Captain Howison told the claimant what to do, but not how to do it. The subject thereupon became one of constant consultation, discussion, and advisement, and these conferences were accompanied by numerous. experiments, involving considerable cost, carried on by the United States, in tbe course of which the claimant’s devices were changed, modified, revised, and perfected, until the device, described and patented as set forth in the petition, was completed. After the completion of the invention, but before letters patent were applied for, Captain Howison told the claimant that their superior officer, Commodore Jeffers, then Chief of the Ordnance Bureau, advised that patents be taken out for the inventions which the claimant had made, inasmuch as it was rumored that strangers had visited the Government’s shops and appropriated the ideas and devices which they found there. The claimant objected to taking out a patent because of the expense thereof, and he was told by Captain Howison that if he would take out the patent sufficient money to pay his expenses would be paid to him by the Government, or that a royalty sufficient to pay his expenses would be given to him. The claimant, accordingly, proceeded to take out the patent described in the petition and another relating to the same subject-matter, the firing of breech loading canon, and the Navy Department paid to him the sum of $140, which sum was paid without any written agreement, assignment, or license being given by the claimant, but ,on the express and mutual under- ■ standing that it was paid to him “ to re-imburse him for the expense incurred in securing the patents and as a royalty for the right to use the patents.”
    The payment was made upon an account in the following words, having attached thereto a receipt in the form given:
    
      United States Navy Department, to James B. Davis, Dr.
    
    [Appropriation: “Ordnance,” 1881.]
    1880.
    Deo. 4. For use of vent-closing firing attachment and primer.$140
    140
    “Bureau of Ordnance,
    “ Navy Department, December 4,1880.
    “Approved for one hundred and forty-dollars and
    -cents, payable by the paymaster at Washington City,
    “William; N. Jeffers,
    “ Chief of Bureau.
    
    “Beceived-,■ 188-, of —- -, the sum of-dollars and - the above bill. -, paymaster at — cents, in full for
    
      a_n
    
    
      IL The said claimant is the inventor and owner of the improvement in locks for ordnance, and, as such inventor and owner, on the 12th day of October, 1880, a patent was granted to him, and in his name, by the United States, for said improvement in locks for ordnance, which patent is numbered 233142; and claimant is still the owner of said patent.
    III. After the said invention of said claimant the Navy Department of the United States, at the navy-yard in Washington City, with the assent of the said claimant, and under his supervision, commenced the manufacture and use of the said locks for ordnance, and between that time and the 6th day of September; 1887, the date of filing the amended and substituted petition herein, had manufactured and used the number of thirty-seven of said locks for ordnance.
    IV. The said locks for ordnance are valuable and useful, in this: (1) It is simple, and meets all the requirements of such a lock in the discharge of a gun; (2) it acts as a handle for the breech-lock; (3) it explodes the gun; and (4) it holds the primer in place, and extracts the primer after the gun is discharged.
    V. The cost of the manufacture of said locks for ordnance is from $35 to $50.
    VI. A reasonable royaltyfor the right to manufacture and use said locks for ordnance is the sum of $50 for each lock so manufactured or used.
    
      Mr. B. P. Butler and Mr. W. Penn Clarice for the claimant.
    The Government of the United States when it grants letters patent for a new invention or discovery in the arts confers upon the patentee an exclusive property in the patented invention, which can not be appropriated or used by the Government itself withoutjust compensation, anymore than it can appropriate or use without compensation land which has been patented to a private purchaser. (Jones v. Campbell, 104 U. ■S. R., 356-358; Burns v. United States, 12 Wall., 246.)
    The Government, when it manufactures military equipments after a patented device, but under am implied license, is as responsible as an individual. (Palmer v. The United States, 20 O. Ols. Ii., 432.)
    And the Ordnance Department has no more right to manufacture a patented article for experiment than for use. (Palmer v. The United States, 20 C. Gis. R., 432.)
    Where the validity of a patent is conceded, he who uses the patented invention must judge for himself of its value. He can not use it under an implied license, and then allege that it is valueless. {Palmer v. The United States, 20 O. Gis. R., 432; Simpson v. Mad River R. R. Go., 6 McLean, 003; McKeever v. The United States, 14 O. Cls. R., 390; McGlung v. Kingsland, 1 How., 202.)
    In Palmer v. The United States (19 O. Gis. R., 099) it was decided that “ where the Government, on the invitation of an inventor, manufactures a patented military device, having no market value, the implication is that the Government should paj>- for the valuable right to use, and not for the valuless right tO' manufacture.” (McKeeverv. The United States, 140. Cls.R., 309.)
    The Supreme Court has established a rule by which to determine the value of a royalty for a patented device, in cases-where there are no established license fee. (Suffollc Go. vs.. Hayden, 3 Wallace, 315.)
    And in JDalghren v. The United States (10 O. Ols. R., 30) this court adopted and followed the rule laid down in Suffollc Co. v. Hayden, in cases where the Government has used and manufactured patented articles, but has not dealt in them, nor gained, a profit in them in the ordinary commercial sense.
    The devices for which the claimant was granted his patents-were designed for the use of the Navy, and it may be conceded that they possess no marketable value. No license has ever been granted for the right to manufacture them, nor has there been established any manufacturer’s price, by which the value of the royalty can be determined. We are compelled, therefore, to fall back upon the rule laid down in Suffollc Go. v. Hayden, and determine the value of the royalty from the utility of the devices, and their advantage over prior modes or devices for producing similar results.
    That inventions by a party, while in the employ of another, made of the employer’s materials, and during the regular hours of labor do not inure to the employer, was determined by the Supreme Court in McGlung v. Kingsland, above cited; and that the doctrine applies equally to the United States, was determined later by the same court in The United States v. Burns-(12 Wall., 246).
    
      These decisions would seem to be conclusive, and finally determines the question. In these cases, while the claimant was in the service of the Government he was not “ specially employed to malre experiments, with a view to suggest improvements. ; his wages were not “ increased in consequence of the useful result of his experiments,” as was the case in Me Clung v. Kingsland; and the Government recognized his right to compensation, by the payment of $70 as royalty for each invention after the patents were issued.
    
      Mr. F. P. Dewees (with whom was Mr. Assistant Attorney-General Howard) for the defendants.
    The facts of the case do not warrant even the idea of license for use on the part of the Government. The device belonged to the Government, and the Government had the right to manufacture and use, independent of any license from Mr." Davis, who was nominally, but not actually, the inventor. He holds the legal title to the patents from the fact that they were issued to him, but the equitable title is in the Government.
    But assuming claimant to have been the sole inventor of the patented devices under the facts of this case, no action to recover a royalty for the use of the inventions by the Government can be maintained.
    The devising, preparing, and aiding in the experiments to ■perfect were part of his service, for which he was paid. There was no contract, express or implied, that he should be paid. He not only did not demand compensation .; he refused to apply for the patents ac his own cost, and only did so when furnished with the money to pay for the same by the Government. He fully recognized the right of the Government to use the •patents without compensation.
    If this court should hold that claimant is the owner of the patents, then the manufacture of the devices under the facts in this case is under an implied license. (McGlurg v, Kings-land, 1 How., 202; ChabotY. American Button-Hole Company, 6 Fisher, 71; Hapgood v. Hewitt, 119 U. S. B., 226.)
    The facts in the Dahlgren Case (16 C. Ols. B., 50) are substantially similar to those in the case at bar. The court say, “ if not waived, a complete defense.” (Solomons v. The United States, 22 O. Ols. B., 342).
    
      It is submitted that claimant is without any ownership whatever in the patents; that they were applied for and issued to him for the purpose of preventing fraudulent claims against the Government; that they have been abandoned to public use. It is submitted, further, that for all service rendered by claimant he has been fully paid.
   Nott, J.,

delivered the opinion of the.court:

The court is of the opinion that this case comes within the rule laid down in Solomon’s Case (22 C. Cls. R., 342), that where an officer of the Government is properly assigned to the task of devising, preparing, or making an instrument, implement, or other subject of manufacture for the public service, and he does so, the Government bearing the expense of the experiments incidental to the invention, and the cost of completing, perfecting, and testing the device, the officer receiving his salary for his services, a presumption oí' implied contract does not arise, and no action to recover a royalty for the use of the invention can be maintained.

The necessity of such a rule was demonstrated in Solomon’s Oase by the fact that the officer took advantage of his position to recommend and procure the adoption of a device of which he was the inventor with the intent of ultimately holding the Government liable for its user. It is again demonstrated in the present case by the fact that the claimant allowed the Government to refund to him the expenses of taking out his patents, pursuant toan arrangement existing between himself and his superior officers, the purpose of which was to protect the Government from the claims of alleged inventors, and the consideration of which was mutually intended, in the claimant’s own language, “ to re-imburse him for the expense incurred in securing the patents, and as a royalty for the right to use the patents.”

The court reiterates the principle enunciated in the former case, that every public officer being in some measure or degree a guardian of the public welfare, no transaction growing out of his official services or position nan be allowed to inure to his personal benefit, and that from such transactions, as in the cases of guardian and ward, or trustee and cestui que trust, the law will not imply a contract.

The judgment of the court is that the petition be dismissed.  