
    THE BERDAN FIRE-ARMS MANUFACTURING COMPANY v. THE UNITED STATES.
    [No. 15726.
    Decided December 8, 1890.]
    
      On the Proofs.
    
    The present decision is a continuation of that rendered at the last term, and relates to the novelty of the claimants’ device for a cartridge ejector, to the question of jurisdiction, and to the question of damages.
    I.The court reiterates the decision previously made (25 C. Cls. R., 355) that the particular method for attaining the desired result in ejecting the shell of a cartridge which is covered by the Berdan patent was not anticipated by the broad and general specifications of the Smoot patent.
    II.The differences between the various devices for ejecting a cartridge produced in the years just succeeding the war were minute; but the number of patents issued indicate that the successful result attained by the Berdan and Adams inventions was due to inventive genius.
    III. The policy of the War Department of late years toward inventors
    has been one of neutrality, neither denying nor admitting legal rights, but taking inventions to perfect the Government’s arms, leaving inventors free to seek redress without prejudice before other tribunals than an executive department.
    IV. Where an inventor is in constant communication with the ordnance
    officers, exhibiting his inventions and urging their adoption, and they, without accepting or rejecting his propositions, use a device covered by his patent, a contract will be implied, and an action thereon will be within the jurisdiction of this court.
    Y. The value of an invention taken and used by the Government in the absence of an express contract must be determined as of the time when it was taken, and in view of all the legal and practical uncertainties which then environed it.
    VI. Where there is no actual market value by which the court can determine the amount of royalty which an inventor should recover, it will deduce a result from all the elements of value which the case presents. Ex. gr., in the present case the royalty is fixed at 5 per cent, of the minimum cost of the gun to which the device was applied.
    
      
      The Reporters' statement of the case:
    The following are the facts of the case as found by the court:
    I. January 30, 1866, the Secretary of War issued an order for the meeting and organization of a board of officers of the Army, of which Maj. Gen. W. S. Hancock was named as president. This board, known as the Hancock Board, was “ ordered to examine thoroughly the following questions and make recommendations thereon:
    “ (1) What form and caliber of breech-loading arm should be adopted as a model for future construction of muskets for infantry ?
    “ (2) What form and caliber should be adopted as a model for future construction of carbines for cavalry ?
    “ (3) What form of breech-loading arm should be adopted as a model for changes of muskets, already constructed, to breech-loading muskets ?
    “ Bach person who submits an arm to the above board will be required to state in writing the lowest price at which it will be furnished in the event of its being adopted by the Government.”
    II. This board met at Washington, March 10, 1866; in the same month the board issued a circular to the public, with the following blank form of proposal, to be signed by those presenting arms for trials:
    “-, of'-, oí-, being the proprietor of the patent right to manufacture a'breech-loading arm, known as-, do hereby bind-heirs, executors, and assigns, do grant to the United States Government, if called within three years from this date to make such grant, the right to manufacture the aforesaid breech-loading arm on the following terms, viz:
    “ For payment to-of-dollar per arm for the privilege of manufacturing fifty thousand; of-- dollar per arm for the privilege of manufacturing one hundred thousand ; of -dollar per arm for the privilege of manufacturing two hundred thousand ; and of- dollar per arm for the privilege of manufacturing any additional number of arms; provided, that when the Government shall have paid the total amount-dollars, counting each and every payment, then it shall have the full and entire privilege of manufacturing-patented arms, for its own use, without further payment to-on account of-patent right. Each payment, as above specified, to be made for not less than five thousand arms, or, by the payment of-dollars within three years from this date, the privilege of manufacturing as many arms as may be desired shall be granted to the United States.”
    
      At this time the Government was using the “Allin device,” sometimes called model of 1865, described in the schedule upon which were issued letters patent No. 49959.
    III. The Berdan Fire-Arms Manufacturing Company, of New York, was then the owner of a certain patent granted by the United States for an improvement in fire-arms made by Hiram Berdan, namely, a patent issued February 27, 1866, and numbered 52925.
    IV. March 27, 1866, the Berdan Fire-Arms Manufacturing Company delivered to the said board of officers the following communication:
    “The Berdan Fire-Arms Co. of New York, New York, being the proprieter of the patent; right to manufacture a breech-loading arm known as the Berdan breech-loader, do hereby bind ourselves, heirs, executors, and assigns, to grant to the United States Government, if called on within three years from this date to make such grant, the right to manufacture the aforesaid breech-loading arms on the following terms, viz:
    “ For payment to us ot two dollars per arm for the privilege of manufacturing fifty thousand; of one and three-quarters dollars per arm for the privilege of manufacturing one hundred thousand; of one and one-half dollars per arm for privilege of manufacturing two hundred thousand ; and of one and one-quarter dollars per arm for the privilege of manufacturing any additional number of arms; provided, that when the Government shall have paid to us the total amount of one million dollars, counting each and every payment, then it shall have the full and entire privilege of manufacturing patented arms for its own use without any further payment to us on account of our patent right. Each payment, as above specified, to be made for not less than 5,000 arms, or, by the payment of eight hundred thousand dollars within three years from this date, the privilege of manufacturing as many arms as may be desired shall be granted to the United States. We have endeavored to name a price the payment of which, while giving the best gun, would also leave the United States Government much the gainer by the saving in the cost of alteration of the Springfield musket, or of the manufacture of a new gun on our plan over any other known to us; but if the price we have named is considered too high, we do not wish it to be understood that we will not consent to a reasonable reduction. Our offer embraces both or either gun presented by us.
    “O. L. Perkins, “President Berdan Fire-Arms Go.
    
    “.Washington, Mcvrch 27, ’66.”
    
      V. About March 27, 1866, the said company presented to/the said board of officers, for their examination, breech loading guns, and later presented a gun called No. 4, which was similar to the one described in the specifications and drawing of said letters patent No. 52925, except in the following particulars: In the patent schedule the breech-block is shown as fastened to the barrel by a plate screwed to the top of the barrel; in the gun (No. 4) shown the board the plate was abandoned and the breech-block was fastened by a band around the barrel. As this fastening was more secure than the plate, held by screws screwed into the barrel, plaintiffs found it unnecessary, in the gun shown the board, to retain the locking device upon the forward end of the breech-block, by which a “ boss ” entered the rear of the barrel and held the forward end of the breech down during recoil. Plaintiffs also added in this gun, under the firing-pin, a lip, which falls beneath the hammer when the breech is closed and the hammer is down, for the purpose of preventing the rear end of the brace from lifting during recoil; the device for that purpose shown in the patented gun was not efficient. In the gun shown the Hancock Board the following change from the patented'gun appeared in the ejector device: The spur at the top was retained; the hook was transferred from the bottom of the receiver to the left side and was a slight projection from the top of a U spring; this replaced a spiral spring shown in the patent as under the bottom of the receiver. The (J spring was on the side of and outside the receiver, the hook operating through a slot in the side of the receiver parallel to the axis of the bore. In its normal condition (with the spring released) the hook was at the rear end of its slot. A friction plunger (which did not exist in the patented gun) was placed in the gún (No. 4) shown the Hancock Board; this plunger appeared in the middle of the bottom of the breech receiver, close to the barrePs mouth, and was so placed that when the gun was loaded the spring was held up against the cartridge-head and in contact with it by a flat spring placed underneath the barrel. The friction plunger was introduced for the reason stated in finding xm.
    VI. In February, 1866, the following instrument was executed :
    “ Whereas I, Benjamin S. Boberts, of the United States Army, did obtain letters patentof the United States for certain improvements in breecli-loading firearms, which letters patent bears date the twenty-third day of September, 1862, and are numbered 36531, which letters patent were issued in two divisions September 5, 1865, and numbered respectively 2067 and 2068;
    “ And whereas Hiram Berdan, of the city of New York, is desirous of obtaining from me a license to use the retraction hook described in said reissue patent No. 2067, in any arm he may manufacture, with the right to vend to others the privilege of making, using, and vending said hook as hereinafter stated:
    “Now, this indenture witnesseth, that for and in consideration of the sum of one hundred dollars to me, the said Benjamin S. Roberts, in hand paid, the receipt of which is hereby acknowledged, I have assigned, sold, and set over, and do hereby assign, sell, and set over, unto the said Hiram Berdan the right to make, use. and vend the said retraction hook, and to authorize others to do the same in connection with any arm invented or patented by the said Berdan, or that may hereafter be invented or patented by him, the same to be held and enjoyed by the said Hiram Berdan, for his own use and behoof, and for the use and behoof of his legal representatives, to the full end of the term for which said letters patent are granted, as fully and entirely as the same would have been held, enjoyed by me if this assignment and sale had not been made.
    “In testimony whereof I hereunto set my hand and affix my seal this 15th day of February, 1366.
    “ | seal.] “ Benj. S. Roberts, U. S. A.
    
    “ Sealed and delivered in presence of—
    
      “Laura Sperry.
    “Received and recorded Feb’y 19th, 18667 — J. H. S.”
    VII. The following letter from the inventor accompanied the gun (No. 4) presented to the Hancock Board:
    Ebbitt House, Washington, D. G,, May 21, ’66.
    “ COLONEL: I have the honor to submit for the consideration of the Board gun No. 4, as a plan for altering the muskets into breechloaders; also a plan for making new muskets and carbines. This gun is substantially the same as gun No. 1 and 2, submitted by us some time since. The principal improvements consist in the projection to the brace under the face of the hammer for the purpose of preventing the hammer from coming in contact with the firing-pin until the breech-piece is entirely locked, and from allowing the breech-piece to be accidentally knocked open when the sear is in the safety notch. Also in attaching the breech-piece to the bbl. by a baud,in placeof screws and straps. We rnakeno extracharge for these improvements.
    “ I am. Col., very respectfully, your ob’t serv’t,
    “H. Berdan,
    “ Vice-President of the Berdan F. A. Mf’g Go.
    
    YIII. June 4, 1866, the said board of officers concluded its labors and made a final report to the Secretary of War, which contained this recommendation and statement, namely:
    “ Fourth. This Board recommends the plan of alteration submitted by H. Berdan. This gives the stable breech pin, secures the piece against premature discharge, and involves only a slight change of our present pattern of arms.”
    IX. June 16, 1866, the Chief of Ordnance made a report upon this subject to the Secretary of War, in which, alluding to Berdan’s gun and four others, he recommended that fifty of each be prepared at the Springfield Armory at the expense of the United States, and be so issued to troops that an equal number of each kind should be in the same company; that the arms should be thoroughly tested by the troops and that no plan for alterations should be adopted until after this test had been made. He also recommended the purchase of new arms to compare with the devices named (Berdan’s among them) for altering the Springfield gun. June 26, 1866, the Lieutenant-General approved these recommendations except the proposition to place new patent arms in the hands of troops for trial, This he disapproved because there was a large number of muzzle-loading arms on hand capable of economical alterations. July 26,1866, the Secretary of War issued the following order:
    “ War Department,
    “ Washington City, July 26, Í866.
    “General: You are hereby directed to take immediate measures for the conversion of twenty-five thousand Springfield muskets into breechloaders of the best pattern, and for the preparation of an adequate supply of ammunition for them.
    “ Your obedient servant,
    “Edwin M. Stanton,
    “ Secretary of War.
    
    
      “ Brevet Major-General A. B. Dyer,
    “ Ohief of Ordnance, If. 8. Army.”
    
    No gun has been bought by the Government from defendants and no gun has been manufactured by the Government which is a copy of the gun recommended by the Hancock Board.
    X. July 21, 1868, said H. Berdan filed two applications in the Patent Office of the United States for improvements in breech-loading arms, for which patents were issued, namely: Patent dated March 30, 1869, numbered 88436, and patent dated April 5, 1870, and numbered 101418. These were duly assigned to plaintiffs.
    XI. In the Springfield gun (the official small arm of the U. S. Army) the breech-block is solid and fills all the breech chamber, except in this: it does not bear against the rear end of the chamber, and that end of the chamber is not intended to take up any part of the recoil, except upon the breech-pin alone, as hereinafter shown.
    The breech-block is fastened by a hinge at its forward end to the top of the barrel. The hinge-pin is of less diameter than the hinge-holes through which it passes, thus permitting some slight movement or play in the hinge so that the pin may not be cut during recoil. There is a recess at the head of the breech-pin; this recess is somewhat concave in form, and into this the cam-latch locks; the shaft of the cam-latch hinge is smaller than the hinge-holes through which it passes, and this shaft extends horizontally beyond the barrel, terminating in a handle or thumb-latch, as shown in the Allin gun; when the breech-block is shut and locked this handle lies under the angle of the hammer and is so arranged that with the hammer in the third or lowest notch (or entirely down) the breech-block can not accidentally unlock and open. In locking or unlocking the cam-latch this handle turns across the head of the firing-pin and thus operates to prevent premature firing as in the Allin gun. In firing, the breech-block sets back under the force of the recoil; the loose hinge at the forward end gives play there; the loose hinge of the cam-latch gives play at that point and the recoil is transmitted through the breech-block to the cam-latch, with the head of which it comes in direct contact, and then through the cam-latch to the head of the breech-pin. By reason of the small diameters of the respective pins or shafts of the two hinges as compared to the hinge holes through which they pass no strain is brought upon these hinges by the recoil.
    
      In Allin’s gun the cam-latch was simply a locking device, while in the Springfield gun it also takes up and transmits the recoil as did the brace in Berdan’s gnu of 1866.
    In the Springfield gun the cam-latch performs an additional and different office from Allin’s cam-latch. The hinge-pin of the forward hinge and the cam-latch shaft are purposely made small and the hinge'loose that the pin and shaft may not be subject to injury during recoil, and also to permit play; the horizontal elongation of the hinge-pin hole permits the breech-block to slide bodily backwards under the influence of the discharge; the cam abuts against the surface of its recess in the breech-block at one end and transmits the recoil from the surface of this recess at one end to the face of the breech screw at the other end without subjecting the shaft upon which it turns to any strain; by the elongation of the hinge-pin hole in the breech-block, and the intentional looseness of the camshaft and arbor in the bearings, the transmission is effected (through the interposition of the cam) of the force of the recoil from the breech-block to the breech-screw. The bearing of the cam is above the center of the breech-screw and its resistance consequently, through the resolution of the force of recoil, tends to press the rear end of the breech-block downwards. The front end of the block is secured against lifting (in case ,of escape of gas from the cartridge) by the engagement of the flanges at its top and forward end under cars made upon the receiver, substantially in the form used by Allin, and shown in the specifications and drawings upon which his patent issued.
    Several models of Springfield arms have been placed in evidence, and as to them we find: The model of 1865 was the Allin gun. The model of 1866 (finding xn) was a tight-jointed mechanism, and except for the ejector device, elsewhere described in these findings, theBerdan model has no bearing upon this case. The loose-jointed mechanism appeared in 1868, with the new ejector device elsewhere in these findings described. For the purposes of this action the model of 1868 and those subsequent are alike, and for these purposes the description given in these findings of the Springfield gun applies to all models subsequent to that of 1866.
    XII. The Berdan gun (patent 52,925) was not loose-jointed; when the breech-block was down there was no play, for then
    
      the block abutted against the barrel at one end and the brace against the breech screw at the other; Berdan by jointing his block (making thus a block and brace) procured a square recoil shoulder against the end of the breech-pin; but he did not procure any play in the parts; there were elongated holes in the plate-fastening of his breech-block, as shown in the Pat<ent Office model, a device replaced in the gun shown the Hancock Board (No. 4) by a band which has a minute slip upon the barrel under strong pressure; but neither the holes nor the band are claimed to give, nor do they give, looseness of construction ; they merely take up slight wear of the parts. It is admitted that no single element in patent 52,925 is new. The combinations shown in claims 1, 2, 4, and 5 were novel and useful.
    XIII. The Berdan extractor (patent 52,925) was intended for rim-fire cartridges; with those cartridges it was successful; it was not successful when used with center-fire cartridges, for this reason: The flange of the rim-fire cartridges expanded somewhat at the time of explosion, and the shell thus took a firm seat in the barrel. This expansion did not occur in the center-fire cartridges, and therefore the shell was pressed back by the ejector spring in proportion to the speed with which the breech-block was raised; the movement thus communicated to the cartridge was therefore not sufficiently fast to throw the cartridge out of the receiver. To counteract this difficulty, Berdan introduced the friction plunger into the receiver just behind the cartridge-head, thus counteracting the backward pressure of the spring until the breech-block was open sufficiently to allow the shell to clear the face of the breech-block when ejected, so that the motion backward should not be impeded by the intervening breech-block. This friction plunger singly or in combination was not patented by Berdan.
    It appears that the ejector in patent 52,925 would only operate when a rim-fire cartridge was used. The G-overnment uses center-fire cartridges.
    The plunger shown in the Allin gun, and intended to eject the cartridge, did not work successfully in practice.
    XIV. In the model before the Hancock BoarcL the following changes in the extractor device appeared: The spur at the top was retained; the hook was transferred from the bottom of the receiver to the left side, and was a projection from the upper end of a U-spring, the spiral spring being abandoned; a friction plunger was placed in tbe middle in the bottom of the receiver held up against the cartridge head (when the gun was loaded; by a flat spring placed underneath the barrel. This has been shown m finding v.
    The Springfield gun of 1866 has a U-spring, a hook, which is a slight projection from the upper end of the spring. The hook runs in a slot at the side of the barrel. There is a spur attached to the hinge at the top, there is a friction plunger, and in place of the ways a deflecting stud is placed in the bottom of the breech-receiver. ' This ejector device, except for the omission of the u ways” and the substitution therefor of the beveled deflecting stud, is the device found in the gun submitted by Berdan to the Hancock Board. The u ways ” and the beveled deflecting stud are mechanical equivalents.
    In the Springfield gun of 1868 appears for the first time the extracting device since in use, and the hook, spur, and the friction plunger ceased to be used from that time.
    XY. After abandoning the unsuccessful Allin device for extraction and ejection, defendants took up Ball’s device (letters patent No. 60654), known colloquially in the Government service as the Lamson extractor. This device was a failure for these reasons: The points would get dry between the ejector plate and the part of the spring movement irjton it, and after comparatively few extractions the device would become worthless, a hole being worn through the plate; it wore out quickly and was apt to stick. The point of the spring was liable to stick against the ejector; the surface of the ejector became covered by a hard deposit from the smoke; against this the spring would not work. Smoot’s device for an ejector is not shown to have been used or to be useful, and can not be successfully employed upon the Springfield gun.
    XYI. Extraction and ejection of cartridges was thus performed in all Springfield guns beginning with the model of 1868, and continuing since.
    Extraction: By an extractor plate swinging on the hinge-pin, and struck above its center of motion by the forward end of the breech-block near the completion of its movement in opening.
    Ejection: By accelerating the movement of the extractor by means of a spiral ejector spring which surrounds the stem of the ejector spindle, and bears against the bottom of its hole in the receiver at one end, and against the head of the spindle at the other end. When the extractor is revolved by the opening of the block, the ejector spring is compressed by the ejector spindle, the point of which rests in a cavity in the back of the extractor above its axis of motion. The continued revolution of the extractor finally brings the prolongation of the ejector spindle below the axis of motion; as soon as the center is passed, the sudden release-of the ejector spring causes the extractor to rapidly rotate about its axis, and to carry the empty cartridge shell against the beveled surface of the ejector stud, by which it is deflected upward and thrown clear of the gun.
    This specific device was perfected by Benjamin F. Adams, an employó in the Springfield Armory. He invented it in the autumn of 1868.
    XVII. The extraction and ejection of cartridges was thus performed in the Bussian-Berdan gun, patent No. S8436.
    Extraction: By an extractor swinging on the joint screw and struck above its center of motion by the forward end of the breech-block near the completion of its movement in opening.
    Ejection: By accelerating the movement of the extractor by the ejector spring, one end of which has a solid bearing on the hinge strap slide, and the other resting on the extractor above the center of motion, causes the spring to be compressed by the movement of the latter until the direction of the resistance passes below the center of motion; the sudden release of the spring then throws out the extractor, carrying with it the shell, which in passing out is deflected by the beveled surface of the ejector stud, and is thus thrown clear of the piece.
    The only difference between the Berdan and Adams devices is that Berdan used a fiat spring while the Government used a spiral spring; both perform the same office and attain the same result in the same way; the use of the flat spring or of the spiral spring is matter of choice, and is in no way material to the result.
    Adams, when he made his invention, was ignorant of Ber-dan’s prior invention.
    XVIII. Letters patent, numbered as follows, were issued at the dates set forth and to the persons named, upon drawings, specifications, and claims, which are made part of these findings:
    
      Hiram Berdan, No. 52,925, February 27, 1806.
    Hiram Berdan, No. 101,418, April 5, 1870; antedated March 21, 1870.
    Hiram Berdan, No. 88,436, March 30, 1869.
    The Berdan Fire Arms Manufacturing Company, assignees of Hiram Ber-dan, No. 51,991; reissue No. 3,117, January 9, 1866; reissue date September 15, 1868.
    E. S. Allin, No. 49,959, September 19, 1865.
    Edward S. Wright, assignor to himself and George Brown, No. 45,126, November 15, 1864; antedated November 13, 1864.
    Nathan S. Clement, No. 14,949, May 27, 1856.
    James W. Preston, assignor to A. B. Ely, No. 61,865, February 5, 1867.
    William W. Hubbell, No. 28,486, May 29, 1860.
    Isaac M. Milbank, No. 52,734, February 20, 1866.
    Frederic W. Howe, No. 46,671, March 7, 1865.
    Cyprien Chabot, No. 47,163, April 4, 1865.
    Benjamin S. Eoberts, No. 36,531, September 23, 1862; reissue No. 2,068, September 5, 1865.
    Benjamin S. Eoberts, No. 36,531; reissue No. 2,067, September 23, 1662; reissue date September 5, 1865.
    James Warner, No. 41,732, February 23, 1864.
    George P. Foster and George F. Foster, No. 49,994, September 19, 1865.
    Edward Maynard, No. 30,537, October 30, 1860.
    William S. Smoot, assignor to Windsor Manufacturing Company, No. 68,250, August 27, 1867.
    William W. Hubbell, No. 3,649; reissue No. 193, Julyl, 1844; reissue date March 11, 1851.
    Samuel Strong, No. 38,644, May 19, 1863.
    Joseph and George Henry Needham, assignors to James Graham Grey, No. 64,999, May 21, 1867.
    W. Wheeler Hubbell, No. 65,812, June 18,1867.
    Cyprien Chabot, No. 49,718, September 5, 1865; antedated June 15, 1865.
    William H. Miller and G. W. Miller, No. 51,739, December 26, 1865. >
    Benjamin S. Eoberts, No. 52,887, February 27,1866.
    Albert Ball, one-half assignor to Windsor Manufacturing Company, No. 60,664, January 1, 1867.
    John Webster Cochran, No. 39,120, July 7, 1863.
    Joseph Eider, assignor to himself and E. Remington and Sons, No. 40,887.
    Benj. F. Joslyn, No. 39,407, August 4, 1863.
    H. O. Peabody, No. 35,947, July 22, 1862.
    Alfred B. Ely, assignee of Francis J. Vittum and Edgar M. Stevens, No. 33,560; reissue No. 3,653, October 22, 1861; reissue date September 28, 1869.
    William H. Miller and George W. Miller, No. 68,099, August 27, 1867.
    William Morgenstern, No. 86,434, February 2, 1869.
    William Morgenstern, No. 87,190, February 23, 1869.
    William Montstorm, No. 15,307, July 8, 1856; reissue No. 2,445, Division A, January 1, 1867; also reissue No. 2,446, January 1, 1867.
    Morgenstern’s application for patent No. 86,434 was made October 22, 1868.
    Morgenstern’s application for patent No. 87,190 was made March 23,1868.
    Berdan’s application for patent No. 88,436 was made July 21, 1868.
    
      XIX. The War Department is early and regularly informed of all improvements and inventions in fire-arms and ammunition. It is aware of the state of tlie art at all times, and generally knows of all patents upon fire-arms as soon as issued. The attitude of the War Department towards inventors in ordnance has been one of neutrality; it has neither denied nor admitted the legal rights, if any there were, of inventors; in an endeavor to perfect the Government arm that Department has taken advantage of all knowledge within its reach and of all inventions; it does not deny the claims of inventors, but has proceeded upon the policy that executive officers should not decide upon such claims against the Government or upon conflicting claims, but that the claims should be presented without prejudice before some other tribunal than an Executive Department. Berdan, as an officer of plaintiffs herein, assignees of his inventions during the period covered by this action, was in constant communication with the ordnance officers, requesting the use of his devices by the Government; they knew him as an inventor and knew his inventions as soon as they were patented. In 1867 it was known that Berdan was at work upon an ejector, and in August, 1868, that he had applied for patents for improvements in fire-arms, but it does not appear that prior to issue of patent the ordnance officers knew of the specific devices protected by letters patent No. 88,436, issued March 10, 1869, upon application filed July 21, 1868, except as hereinafter appears.
    XX. An examiner in the Patent Office, upon May 13, 1867, in the matter of the interference between the application of William S. Smoot and the patent of Albert Ball, for improvement in fire-arms, decided, upon evidence before him, that Smoot was the earlier inventor; said evidence as stated by said examiner showed that a model of the Smoot invention was made at the National Armory in January, 1865.
    Berdan had in August, 1866, completed a gun containing his device.
    XXI. The following license was given as therein appears:
    “ Know all men by these presents, that in consideration of the sum of ten thousand dollars ($10,000), paid to me by warrant on the Treasury of the United States, I hereby grant, sell, and convey to the said United States the right and privilege to alter two thousand (2,000) of the muskets or rifles now belonging to the United States, according to a pattern to be furnished by me, to correspond with the one furnished by me for trial by the Board of Ordnance officers, under the act of Congress approved 12th of June, 1858, and selected by said Board on the 3d of August, 1858. This agreement to include all my patent privileges for 2,000 arms.
    “ Given under my hand and seal this 13th day of September, eighteen hundred and fifty-eight, at Washington, D. 0.
    “ Geo. W. Morse, [seal.]
    “ Signed and sealed in presence of—
    “M. Adler.
    “Joñas P. Keeler.
    [Indorsements on foregoing license.]
    “Approved:
    “ War Depart., 13 th Seftr, 1858.”
    “John B. Floyd,
    “ Seéy of War.
    
    The following rates were given the Hancock board in 1866 by different patentees of fire-arms; rates at which the Government should be permitted to use their patented devices appearing in arms presented to that board in competition for adoption by the Government:
    
      
    
    
      
      
    
    Where the names appear in duplicate the proposals are for different kinds of arms.
    The royalty paid the Remingtons for a gun made by them was 50 cents per gun; of these guns some 600,000 were sold in Europe. How this gun was constructed, or how it or any part or parts of it were protected by patents does not appear.
    XXII. It do es not appear that plaintiffs or Berdan have manufactured for sale any muskets containing the extractor-ejector device (patent No. 88436), or that muskets have been manufactured under this patent, or that licenses to manufacture arms containing this device have been sold except as hereinafter set forth. The extractor-ejector device found upon the Springfield musket, which is alleged by the plaintiffs to be covered by tbeir patent No. 88436, is a most efficient, useful, and valuable device, believed by Army officers to be the best known in the art for use in a single-fire military arm of the Springfield typ e. It is far superior to the Allin extractor-ejector device previously in use upon the Army musket. The cost of ’manufacturing the extractor-ejector now in use (since 1868) is $1.25 per gun less than the cost of manufacturing the Allin device.
    Several witnesses of high military position, experts in the practical use of arms of this description and familiar with the cost of manufacture, have testified to the great value of the
    
      extractor-ejector device, claimed to be covered (and understood by them to be covered) by patent No. 88436, and they are of the opinion that a reasonable royalty for the use of this device would be the saving in cost over the Allin device plus a sum, varying somewhat with each witness, but of which the average is $1.41§ per musket, thus giving as royalty the sum of $2.66§ per musket. It does not appear upon what facts these witnesses based their opinions, or that they were cognizant of facts in relation to sales or licenses of this or other similar inventions upon which to found thefr opinions.
    The Colt Arms Company paid Lamson, owner of the Ball device, for the purpose of protecting the ejector device in three thousand guns manufactured by them, the sum of 10 cents per gun; this payment, however, was in the nature of a compromise to avoid risk of litigation; it does not appear that the Lamson-Ball device was, in fact, put into any of these guns.
    A contract was made by plaintiffs with the Russian Government to furnish muskets containing the device covered by patent No. 88436, but what royalty was paid by said Gvernment does not sufficiently appear.
    William H. and Geo. W. Miller, January 6, 1888, licensed plaintiffs to use their patented device (patent of December 26, 1865, reissue October 1, 1867) for the sum of $2,500, to be paid as follows:
    “ Twenty-five Hundred dollars when a contract shall be signed Tor the sale of 30,1)00 guns with the Russian Government, and at the rate of 10 cents per arm in advance when contracts for other arms, the patents of which are owded by the Berdan Arms Company, shall be signed, until the whole amount shall be paid.”
    Said Millers settled with defendants for alleged infringement of their invention in the sum of $20,000.
    In a negotiation with the Spanish Government for guns containing this Berdan extractor-ejector the folio wing compensation was paid: For 30,000 guns plaintiffs received $60,000 in cash and an order for ten millions of cartridge cases, which netted them $2,50 per thousand (or about $25,000) for the cartridges, and also an order for a set of machinery for making cartridge cases, for which they received, as profit, about $5,000.
    This contract was made, however, upon the understanding that tbe royalty for the gnn should be $2.50 per musket, while, for reasons of policy, the price of the muskets was reduced, the price of. the cartridges being correspondingly increased ; but it also appears that the ejector-extractor was not alone contemplated in this contract, there being other devices in the Spanish gun claimed by plaintiffs to be protected by their patents. (See, also, findings iv and xxi.)
    The cost of manufacturing the Springfield rifles during the fiscal years ended June 30 was as follows: 1882, $12.72; 1883, $12.52 ; 1884, $ 12; 1885, $11*88. Upon the foregoing facts and circumstances (including said findings iy and xxi), but without there being other evidence in the case, the court find the ultimate fact that 5 per cent, upon the lowest cost of manufacturing the musket during the period covered by this action, as they construe the Statute of Limitations, was a fair and reasonable royalty for the right to manufacture and use the' extractor-ejector device covered by-patent No. 88436.
    XXIII. In 1867, during the autumn, Berdan showed to Colonel Benton, commandant of the Springfield Armory, at the armory, a transformed musket, containing the extractor-ejector subsequently described in the specifications .and claims of patent number 88436; Colonel Benton then and there examined and tested the device; he neither approved or disapproved it; his attitude was neutral. August 3 and 4,1868, Berdan had a conversation with G-eneral Dyer, then Chief of Ordnance, in the Ordnance Office, upon the subject of his devices; during this conversation the Chief of Ordnance said, in substance, that he had recommended that some steps should be taken or some court constituted for the purpose of determining the value of the various claims for devices used in the Springfield gun, the Army officers (in his opinion, he said) being powerless to settle the question. Berdan’s application for patent No. 88436 was then pending in the Patent Office and Berdan explained generally its features. The Chief of Ordnance said in substance, that if any of the features should be used by defendants in the Springfield gun the ordnance officers expected to pay for them when the claimant had gone through the proper channels and settled the claim.
    While this application for patent 88436 was pending in the Patent Office the following letters were written:
    
      lc Washington, August 3,1868,
    “ Genebal : I hold some patents on the system of converting muzzle-loading muskets into breech-loaders, recently adopted by the United States. I am also the inventor of other points in the same system not yet patented, but applications for which have been made some time since, and I am now informed that the business of this branch of the Patent Office is some five months behindhand, and that my application would be acted upon at once on a receipt of a note from the Department that it is desirable that these applications should be disposed of to enable me to present my claim to the Government for the use of said patent.
    “Trusting that you will grant me this favor,
    “I am, very respectfully, your obedient servant,
    “H. Bebdan. .
    “ Bvt. Maj. Gen. A. B. Dyeb,
    “ Chief of Ordnance.”
    
    “Wab Depabtment, Washington City,
    
      11 August 12,1868.
    “Sib : I have the honor to transmit herewith a communication, dated the 3d instant, from H. Berdan, asking that his application for patents for various improvements in fire-arms be acted upon immediately by the Patent Office, in order that he may present his claims against this Department for its use of said inventions, and to state that so far as this Department is concerned the early consideration of the aforesaid claims is regarded as being desirable.
    “ Yery respectfully, your obedient servant,
    “J. M. Schoeield,
    
      “Secretary of War.
    
    “ The honorable the Seobetaby oe the Intebiob.”
    September 25,1868, Colonel Benton wrote to the Chief of Ordnance a letter from which the following is an extract:
    “National Abmoby,
    “Springfield, Mass.. Sept. 25, ’68.
    “ Gen’l A. B. Dyeb,
    “ Chief of Ordnance, Washington, D. O.:
    
    “ Sib : I have this day sent to your address, by express, a box containing a rifle musket altered to a breech-loader on the plan of 1868, and a wooden model of the same with a spiral-spring extractor.
    “ The specimen gun is arranged so that either the flat spring or the spiral-spring extractor may be used for the purpose of testing the merits of both.
    
      “This gun has been fired about 5,000 times — 3.700 with the spiral-spring extractor. Both the extractors worked well throughout and either would, in my opinion, be suitable for the service.
    “ The spiral-spring extractor has the advantage of being cheaper to make and to be better protected from dirt and moisture. The other one is more accessible in case of accidents.
    “ Not having any authority to make any changes, themodels are being made for the flat spring. Mr. Adams, one of our workmen, suggested the peculiar arrangement of the spiral spring.”
    # # # # * * *
    
    The Chief of Ordnance answered Colonel Benton by a letter from which the following is an extract:
    “Ordnance Office, War Department,
    “ Washington, Sept. 28,1868.
    “ B’t Col. J. G-. Benton,
    “ Coni’dig Springfield Armory :
    
    “Sir: The altered rifle musket and the wooden model of
    the same, referred to in your letter of the 25th inst., have been received and examined, and are returned by express, as requested by you.
    # #*####
    “ The addition of the plunger to work between the spiral spring and the cam is believed to be an improvement, and you are authorized to introduce it if you should become satisfied that it is a desirable change.
    “ The other changes mentioned in your letter will not be made.
    “Respectfully, your obedient servant, .
    “A. B. Dyer,
    
      “■B’t Maj. Gen., Chief of Ordnance.” The following letter was subsequently written:
    “ Ordnance Office, War Department,
    “ Washington, Nov. 12, 1868.
    « Bvt. Col. J. G-. Benton,
    “ Commanding Springfield Armory :
    
    “Sir: The model converted musket, which ‘accompanied your letter of 2d inst., will be returned to you by this day’s express.
    “The Secretary of War has approved of the spiral-spring ejector which you have adapted to this gun, and the number of muskets you are authorized to alter will be altered to conform to this model.
    “Respectfully, your obd’t serv’t,
    “T. J. Treadwell,
    
      “Bvt. lit. Col. and Maj. of Ord., in charge.”
    
      The following correspondence took place between Berdan and the commandant of the Springfield Arsenal:
    “ Hotel de l’Europe,
    
      “Lucerne, June 7 th, 1876. ,
    “My Dear Colonel: I think of going to America about the 1st of Sept., partly to see the exhibition, but principally to see if something can’t be got from the Govt, for the use of my patent on ejecting the shell by the power of a spring.
    
      “I have not forgotten your kind promise to do what you could to help me to get a reward, as I was the first to present such an ejector to the commission.
    “ My object in going over is to effect some sort of a compromise, if possible, since all efforts in other directions have failed during ten years, and as I should count very much on your valuable assistance (rendered so not only in consequence of your having been on the commission, but for the reason that you are in charge of the armory at the present time), I write to enquire as to whether or no you will be on duty during the months of Sept, and October, so that the Govt, could get a report from you in case the Secretary of War desired to do so. If you can give me any suggestions as to the best way to proceed to effect an amicable settlement, I would not only regard them as strictly confidential, but would be extremely obliged to you, my dear col., for them. Up to the present time the case has been in the hands of a lawyer, and is, I believe, before the Court of Claims.
    “ I will bring with me a range finder, which from present appearances will soon be adopted by the Prussian Govt.
    “Very truly, yours,
    “ Berdan.”
    “National Armory,
    
      “Springfield, Mass., June 22d, 1876.
    “Geni. H. Berdan,
    
      “Hotel de VEurope, Lucerne, Switzerland :
    
    “Dr. Sir : Your letter of the 7th inst. is received.
    “It is not in my power to render you any assistance in the prosecution of your claim for royalty on the extractor of the Springfield rifle further than to inform you that it has been the practice of the War Dept, in similar cases to refer them to the United States courts. It is understood that the Court of Claims has not the power to investigate the validity of patents. There are two suits now pending in the United States courts against myself as the agent of the Government for infringing in the use of the extractor. I understand that other claims exist and may be prosecuted in like manner.
    “ It is important, therefore, that some competent tribunal should decide on the legality of these claims that there may be no conflict, and that exact justice should be done in this matter.
    
      “ Your proper course will be to make your claim known to the Chief of Ordnance, who will do what is right and proper.
    “ Your obt. servt.,
    “ J. G. Benton, Lt. Col.”
    The Berdan extractor and ejector device (patent 88436) was exhibited in competition with other guns to a board of officers detailed to test guns and called the “ Terry Board,” in the year 1873; in the report of that board the device was fully described. General Benét became Chief of Ordnance in June, 1874, and has since held this position. He understood the Springfield device for extracting and ejecting the shell, as described in the “ Terry ” report, as “ seemingly identical, certainly the mechanical equivalent,” of Berdan’s device for the same subject, covered by patent 88436. After the decision of the case of McKee ver versus The United States in this court (December term, 1878, 14 C. Cls. B., 396) General Benét has been of this “ decided opinion:”
    “First. That the Supreme Court having given the opinion in the case of Seymour v. Osburne (11 Wallace U. S. S. C. lie-ports, p. 633) that “inventions-secured by letters patent are property in the holder of the patent, and are as much entitled to protection as any other property, consisting of a franchise during the terms for which the franchise or the exclusive right is granted,” that patent rights are private property and can not be taken by the United States without due compensation; and,
    “ Second. That a use of an invention protected by a patent is the use of i>rivate property that must be paid for, and, therefore, an implied contract that has a place in court, and that, if the validity of the patent is sustained and its use by the Government is proved to the satisfaction of the court, the inventor must be paid.”
    General Benét, “ with this understanding,” continued the manufacture of the Springfield gun, containing the disputed ejector and extractor device, after adjournment of the “Terry Board,” with the expectation that, if the court sustained a claim by Berdan against the Government upon his patent No. 88436, then the Government must pay him for the use of his invention. Plaintiffs have desired that the Government should use their patented devices and have also desired and requested compensation for such use.
    Upon the foregoing facts the court find that since 1874 the Berdan extractor-ejector device (described in patent No. 88436) has been used by defendants’ ordnance officers knowingly and without claim of adverse right, believing the device in the Springfield gun to be the device, or the mechanical equivalent of the device, covered by said letters patent, and with the anticipation that should the understanding of the said ordnance officers as to plaintiff’s rights be judicially decided to be correct the defendants would compensate plaintiffs' for such use.
    XSIY. Manufacture of Springfield model 1866 began in September, 1866, and ceased July 27, 1869. Of this model there were manufactured 52,627 muskets. Manufacture of the model of 1868 (including all subsequent models, which for the purpose of this action do not differ) began in January, 1869; of these guns there were manufacture^! from January, 1869, and the date six years prior to the beginning of this action, to wit, July 26, 1881, 224,952 muskets; between July 26, 1881, and the expiration of the patent there were manufactured 159,940 muskets.
    XXV. The following models were examined by the court during the trial of this cause: *
    Springfield models 1865, 1866, 1868,1870,1873, and 1884.
    Berdan model gun from Patent Office of No. 53925. ,
    Roberts models from Patent Office, patents 1862 and 1866.
    Hubbell model gun of 1844 from Patent Office.
    Hubbell model of I860 from Patent Office.
    Hubbell model No. 2.
    Wright gun.
    Guns of George W. Morse, two from Ordnance Office and one referred to in testimony of Mr. Hubbell.
    Millbank model from Patent Office.
    English muzzle-loader.
    Springfield breech mechanism 1865, 1866, 1868.
    Berdan model from Patent Offioe, January 9, 1866.
    Berdan gun, 2, E. P.
    Russian Berdan, No. 1.
    Bridgeport Berdan gun, No. 1.
    Bridgeport Berdan gun, No. 2.
    Remington gun, breech action.
    Models of guns patented by Berdan or mentioned in these findings.
    Except as incorporated in the foregoing findings all requests for findings of fact, by either party, are denied.
    
      Mr. George 8. Boutwell for the claimant. ■
    
      Mr. F. P. Dewees (with whom was Mr. Assistant Attorney• General Cotton) for the defendants.
   Davis, J.,

delivered the opinion of the court:

An opinion has already been read in this case, in which plaintiffs’ several patented devices for improvements in military arms were discussed, and the conclusion was reached that one of these, that for extracting and ejecting the shell after firing, is found in the Springfield musket. Further proceedings were directed to be taken in accordance with a memorandum handed down with the order remanding the cause. The case is now resubmitted in accordance with the terms of the order and memorandum.

At the second hearing defendants introduced patents which were not before called to our attention, and which, it is claimed, anticipate plaintiffs’extractor ejector device. Defendants’ counsel have also again urged upon our consideration the patent of W. S. Smoot (No. 68250), which we described and discussed in our former opinion. We see no reason upon a reexamination of this last-named invention to change the opinion heretofore expressed by us in regard to it; in fact the model lately submitted tends to show more strongly that the device lacks the simplicity of the Springfield or Berdan ejector, and that it would, apparently, be more susceptible than either of them to the effects of dust and dampness, that it would be more easily injured by accident, and would require greater care and attention. All of these criticisms show defects which in an army musket are serious. As to this, however, we are without the benefit of any evidence of practical experience in the use of the ejector and our suggestions remain merely matters of opinion founded upon an examination of the patent and the model-The Smoot patent is very broad in character; the claim is for “a cartridge-extractor swinging loosely on a common center with that of the carrier or breechblock when said extractor, after being gradually operated by swinging the said block, is made to take on by any means a suddenly accelerated movement to extract the shell, without accelerating the movement of the block itself by which the extractor is operated.” The claim is very broad; it covers the whole scheme of cartridge ejection; there is in it no limitation to any specific device; on the contrary, it covers “ any means” which shall give a suddenly accelerated movement to the shell without regard to the details of the mechanism employed for that purpose.

There is nothing in the Smoot invention which is in any sense a discovery and there is nothing of this nature in any of the extractors shown to us. It was admitted and is shown by the many devices before us that a suddenly accelerated motion to the shell was generally assumed to be necessary ; the principle was not new; what was sought and what was patentable was the mechanical combination which could successfully accomplish the desired result in a military arm exposed to the weather and dirt in unskillful, anxious, and busy hands. All extractor inventions have had the same aim, which is but the application of known methods to a known result; all that remained for a patent was the mechanical combination. Smoot claimed a result which inventors in firearms were then striving to obtain, to wit, the suddenly accelerated motion imparted to the shell after it had been loosened in the bore and when the way should be clear for its sharp ejection rearwards. We are not called upon for the purpose of this case to decide whether this claim is so broad as to make void the patent, or whether the claim is limited to the particular device described in the specifications, and these specifications are so broad in their description as to cover almost any possible extractor which shall at first loosen the shell and then suddenly eject it; for example, as an extractor Smoot in his specifications makes his breechblock swing—

“Both in conjunction with and also independently of the extractor, to impart a‘ suddenly accelerated movement without restricting myself to a block opening upward or downward or otherwise. As a spring ejector in addition thereto it is of the essence of my invention to impart a suddenly accelerated movement to the extractor, whether rotated on the action of the breechblock or otherwise, as may be the more eouvenient for the play of the operating spring. This spring to perform its functions may, as seen in the drawings, be made to react by passing the center of the extractor, acting endwise thereto, by link or other familiar attachment, or it may be made to pass under or over the same and react by striking into a notch, or it may be made to act otherwise, so only that by its reaction the extractor is made to take on suddenly accelerated movement.”

It is difficult to imagine a broader specification; it is intended to cover what the claimant claims, namely, any method of imparting suddenly accelerated movement to the shell. The details of the particular method described for obtaining this result are not those found in the Springfield gun or the Berdan device, nor is the claim limited to the details described by any such words as “ substantially as described” or “ substantially as set forth.” (Burr v. Duryee, 1 Wallace, 531; Case v. Brown, 2 Wallace, 820; Seymour v. Osborn, 11 Wallace, 516; Dedrick v. Seigmund, Official Gazette, vol. 52, No. 10, p. 1537; The Corn Planter Patent, 23 Wallace, 181.)

It is not for us to decide whether the Smoot patent is or is not valid ; we have only to see whether the device anticipated Berdan’s or anticipated the device found in the Springfield arm; we are still of opinion that it did not.

Morgenstern’s patent No. 86,434 is dated February 2, 1869, but it was applied for October 22, 1868; Berdan’s application for patent No. 88,436 was filed July 31,1868, three months in advance of Morgenstern; this patent No. 86,434 may therefore be laid outside the case, and we shall consider the other patent, No. 87,190. Here is found a device much more similar to that of Berdan or the Springfield rifle than any of the many others which have been brought to our notice; it may be thus described: There is a set screw lying horizontally upon the top of the gun-barrel, just forward of the receiving chamber, its head pointing towards the muzzle of the gun; the after part of this set screw is in the form of a cone, its apex being near the ejector plate, but with a space between them; around this cone is wound a wire following the shape of the cone and so constituting a volute spring; the apex of the cone points to the center of the ejector plate, and the cone is immovable except that through the screw it may be forced forward or back in a line with the bore of the gun; it has no movement at any angle with the plane of the bore; after leaving the apex of the cone the volute spring continues in the same form a short distance when its end is straightened out and strikes the ejector plate substantially in a line with the apex of the cone. The inventor says as to this in his specifications:

“ The volute spring 6 * * presses against the extractor W in such manner, before said extractor is moved by the swinging breechblock * * as to tend to retain said extractor in the position seen in Fig. 1, but after the said extractor has been turned so far on its axis as to bring the point against which spring 6 bears below a right line passing through said axis and the centre of screw J, the said spring presses upon the said extractor in such a manner as to force the extractor into the position illustrated at Fig. 2.”

It would seem from this description that when the breech-block was closed the point of the spring rested somewhat above the center of the extractor plate, and by the turning of the plate, through the opening of the breechblock, was brought slowly past the center, when, being released, it shot downward and backward. That part of the spring which projects beyond the cone is unsupported either internally by a mandrel or externally by a casing; the spring therefore lacks strength and durability; it has' a tendency under pressure to buckle or to take the form of a bow. This difficulty was apparently appreciated by the inventor, as in his succeeding patent he adopted a different device.

Morgenstern’s claim upon this branch of his patent was as follows:

u In combination with the ejector W the spiral spring 6 and set screw J, the whole arranged to operate substantially as and for the purpose set forth.”

His combination is of three parts, the ejector, spiral spring, and set screw. As we have seen, in the then state of the art, this claim is a narrow one to be strictly construed. The inventor himself emphasized the importance of the set screw in his specifications, where he said <c the object and advantage of the set screw J are to increase the effectiveness, as it (the spring) loses its elasticity, or as circumstances nlay require” and he adds that in case the spring should break it may still be made to act “ by crowding the portions together by the screw J.” As to the spring, he preferred one in a volute form, but added this : “ A plain spiral spring may be employed with its end properly straightened out to act on the ejector W.” So’ Morganstern regarded as valuable, and important to his combination, the set screw, and* he left, in any contingency, a portion of his spring in such form that it would be subject to bow or buckle under i>ressure. The arrangement of the set screw and spring are vital elements of the Morgenstern combination.

The difference between the various devices intended to produce successful extraction and ejection of the cartridge, produced in the years just succeeding the war, were most minute, and to the layman who now examines them for the first time it might well seem doubtful whether, given the one unsuccessful invention, a shilled workman could not have manufactured the other sucessful invention without the exercise of any inventive genius. But the many patents issued covering such devices show a general effort to accomplish the desired result by methods substantially similar and differing only in apparently trifling details. These details, however insignificant they may have appeared at the time to one not familiar with the art, were then evidently deemed important by experts, as is shown by the many patents applied for and the many patents granted. It does not appear in this case that any practically successful extractor-ejector for a rifle of the Springfield type was produced in advance of the Berdan or Adams device. The differences between the many inventions were slight. The successful device is simple in construction and much resembles the others, as they resemble each other; but changes as slight as those found in this device, when compared with others, are found in the other devices when compared with each other,

Morgenstern, Smoot, Ball, and the rest produced interesting inventions not very unlike in mechanical construction, yet each held by the proper authority to be patentable, and none so far as we have been shown has proved to be successful in practical use. Slight changes in the detail of arrangement were important to success in a device of so fine and delicate adjustment, which must uevertheless be simple in construction and durable under exposure and rough or careless treatment. Morgan-stern’s first ejector, it seems to us, did not fulfill these conditions ; the inventor apparently realized this, for within seven months he presented a modification of it, which was patented. JT mechanical skill only was required to adapt Morgenstern’s first unsuccessful invention to the successful result achieved by Berdan and Adams, we would expect that fact shown in the description of the second device. But it is not so ; he entirely changes his spring arrangement, still leaving it with a tendency to buckle; but fails to produce a design having the distinguishing elements of the Springfield device : simplicity, certainty, and durability.

One of the subjects named in the memorandum accompanying the order remanding this cause was thus stated:

“ Whether the Government is liable upon the theory of an implied contract to compensate the plaintiffs for the ejector device in use upon the Springfield gun.”

The obligation of the Government to compensate an inventor for the use of a patented invention was very fully examined in the case of McKeever (14 0.01s. B., 396), where for the first time a patentee recovered royalty upon the theory of an implied contract against the United States, directly, without resort to the theretofore customary course of an action in infringement against the individual officer who had used the invention in the discharge of his official duties..

Burn’s Case (12 Wall., 246,) sustained an express contract to pay royalty and was held in the later case of Cammeyer v. Newton (94 U. S. R,, 225), as deciding “ that the Government can not, after the patent is issued, make use of the improvement any more than a private individual without license of the inventor or making him compensation.”

It is now settled that the United States is liable, as is a citizen, to pay for the use of a patented invention. ' Such being the inventor’s right, we meet a difficulty as to his remedy. If there be an express contract between the patentee and a properly authorized agent of the Government, his remedy is clearly in this court; this would be so if the facts disclose an implied contract; but if the use be in its nature an infringement we are without jurisdiction in the matter.

In Forehands’ Case (23 C. Cls. R., 477) there appeared at the most (admitting for argument’s sake all of plaintiff’s contentions) a naked user by the Government in ignorance of any claim of right by the patentee.

The court said:

‘‘Neither plaintiffs nor Howe submitted the patent to the Government, or asked the Government to use the invention or to pay for it, and the Government by no affirmative act recognized any right in the plaintiffs or in Howe in the alleged improvement in cartridges. To establish a contract here, therefore, we must proceed to this extent, that a contract for the use of an invention upon which the inventor may rely for the recovery of royalties is to be implied whenever the Government uses an invention, whether through ignorance or carelessness or mistake. That is, such a contract arises from naked use, even, perhaps, if under a claim of right. A mistaken or unauthorized use of an invention by a Government officer can not, however, create a contract.
“ And we hold that the facts in that case developed at the most a £ disturbance or infringement ’ of plaintiff’s rights, ‘ not a caption of his property.’ ”

In the case of Schillinger (24 C. Cls. R., 278) we held that there had been an actual denial of plaintiff’ rights in the invention used, and, after citing the cases heretofore decided in the Supreme Court and in this court, which seemed to bear upon the question at issue, we said:

“ A careful examination of these cases shows that a contract to convey 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. No formal proceedings in condemnation are necessary to this result. Where, however, there is a denial of private right in an alleged patent, and the invention is nevertheless appropriated or used by the Government, the appropriation's 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 Sehillinger patent was valid and the invention had been used by the Government, acting through a competent agent, a contract for royalty would be implied.”

The latest case upon this point decided by the Supreme Court is that of Palmer v. The United States (128 U. S., 262). It appeared that Palmer had exhibited his invention to a board of army officers, which recommended its adoption to the War Department. This recommendation was approved by the General of the Army, and the Secretary of War adopted the device as a part 6f the equipment of infantry. The Government thereupon manufactured and used the patented invention. Action being brought here to recover royalty upon the theory of an implied contract, plaintiff was successful, and the judgment was affirmed by the Supreme Court upon appeal. The court held that the user was not in tort, and in delivering the opinion Mr. Justice Bradley said:

The Government used the claimant’s improvements with his consent; and certainly with the expectation on his part of receiving a reasonable compensation for the license. This is not a claim for an infringement, but a claim of compensation for an authorized use — two things totally distinct in the law, as distinct as trespass on lands is from use and occupation under a lease. The first sentence in the original opinion of tbe court below strikes the keynote of the argument on this point. It is as follows: t The claimant in this case invited the Government to adopt his patented infantry equipments, and the Government did so. It is conceded on both sides that there was no infringement of the claimant’s patent, and that whatever the Government did was done with the consent of the patentee and under his implied license.’ We think that an implied contract for compensation fairly arose under the license to use, and the actual use, little or much, that ensued thereon. The objection, therefore, that this is an action for a tort falls to the ground.”

We now turn to the findings of fact in the case at bar to discover whether, under the principles thus set forth, plaintiffs have established relations in contract with defendants. It appears, generally, that the War Department is early and regularly informed of all improvements and inventions in firearms; the Department’s attitude toward inventors in ordnance has been one of neutrality; it has neither denied nor admitted the legal rights, if any there were, of inventors; in an endeavor to perfect the Government arms, that Department has taken advantage of all knowledge within its reach and of all inventions; it does not deny the claims of inventors, but has proceeded upon the policy that executive officers should not decide upon such demauds upon the Government or upon conflicting claims, but tb at the claims should be presented without prejudice before some other tribunal than an executive department. This being the general policy of the Department, we find as to the case at bar that the following course has been pursued as to the extractor-ejector device.

Plaintiffs were in .constant communication with the ordnance officers through their agent, the inventor of the patented devices. These officers were early acquainted with the Berdan inventions, whose use the patentee urged upon them. In 1867 Berdan showed the extractor-ejector device (patent Uo. 88436) to the commandant of the Springfield armory; in August, 1868,'he explained the device to the Chief of Ordnance, who said that if defendants should use any of the features of the Ber-dan device “they expected to pay for them when the claimant had gone through the proper channels and settled the claim.”

Plaintiffs had urged the adoption of their devices by the Government and had demanded compensation therefor. It was evidently with an intention ‘o obtain such compensation that Berdan conversed with the Chief of Ordnance, and it is undoubtedly as a sequence to that conversation that the Secretary of War wrote the Secretary of the Interior upon August 12,1868, transmitting a communication “ from JET. Berdan, asking that his application for patents for various improvements in firearms be acted upon immediately by the Patent Office, in order that he may present his claims against thisDe-partment for its use of said inventions,” and stating “ that, so far as this Department is concerned, the early consideration of the aforesaid claims is regarded as being desirable.” The application for patent No. 88436, covering the extractor ejector device, was then pending in the Patent Office; experiments were then taking place at Springfield to perfect an extractor-ejector, and in the following November the device now used in the Government musket was adopted by an order from the Acting Chief of Ordnance.

In 1873 the device for extracting and ejecting the shell was shown to a board of officers detailed to test guns, and was fully described in their official report.

The statute of limitations began to run against plaintiff’s cause of action July 26, 1881, if we are correct in our conclusion upon this subject. (See previous opinion.) Prior to this, and in 1874, General Benéb became Chief of Ordnance; he was familiar with the Berdan device, which he considered “as seemingly identical — certainly the mechanical equivalent” of the Springfield device for extracting and ejecting the shell, and he has continued the manufacture of the extractor-ejector upon this understanding, and upon the understanding that the Government would pay for the use of the invention through the instrumentality of the courts.

We find, then, in these faots a tender of the device to the Government, and a use of the device knowingly (certainly since 1874), in the belief that the Government would be called upon to pay royalty for the device, provided the understanding of the Chief of Ordnance was correct — that is, provided the Government was doing what he believed they were doing — manufacturing and using plaintiff’s device or its mechanical equivalent.

The use by the Government was not a mistaken use, for the Chief of Ordnance understood he was doing what we have decided he was doing, to wit, using plaintiff’s device. It was not an unauthorized use, for the Chief of Ordnance has a very broad power in matters of this description (Rev. Stat., § 1164). It was not a use in ignorance, for the Chief of Ordnance was fully informed of all the facts; it was not an antagonistic use, for plaintiffs were anxious that defendants should adopt and use their devices.

The only element of doubt seems to have been whether the ordnance officers should decide finally what they believed to be true, that plaintiffs were entitled to compensation, or whether they should leave that matter to the courts or to some other competent authority.

We are of opinion that, under the rulings of the Supreme Court and of this court, heretofore cited, the facts disclose a contract between the parties to this action for the use of the extractor-ejector device.

Having decided that the patented device has been used by the Government under an implied contract, we must endeavor to find the fair and reasonable value of a license to manufacture and use the protected invention, “ being such a royalty as it may reasonably be presumed the defendants would have been willing to pay and the claimant to accept, if the matter at the outset had gone to an express agreement ” (McKeever v. The United States, 14 C. Cls. R., 425). We meet immediately the difficulty presented in most patent^ cases against defendants, namely, that the Government is necessarily the only user of the device, and that there are no sales or license to others from which á market value can be found. In this case the elements from which we are to determine what is a reasonale royalty are meager.

Experts have been examined, and have given their opinions as to what would be a just compensation to plaintiffs. These witnesses are officers of the.Army, of great experience in the use of military firearms, and they know the cost of manufacture ; but it does not appear upon what facts they base their opinions, or that they are familiar with the royalties paid upon other similar devices by this or other governments or by private individuals. Such value as evidence of this character has consists only in the fact that it may tend to show what these officers, acting for the United States, would be willing to pay for a device of this nature were-it now first presented, and were they free to contract for defendants; at the same time, it must be remembered that this testimony is given after the event and without the pressure of present official responsibility.

There also appear two licenses to use other inventions of a similar character (those of Ball and Miller), but in one case the royalty was paid as a compromise to avoid litigation, and in the other case but one element of an ejector was in question. There is also shown a sale of muskets containing the Berdan device to Spain; but this contract is involved with the sale of cartridges and a cartridge machine, and the royalty seems to have been paid, not for the extractor-ejector alone, but for the gun, which contained other devices.

We have also plaintiffs’ bids to the Hancock Board; but these bids were made in 1866, when the art was in its infancy, and were for a complete jnusket, in which a most valuable element was the breech mechanism, and in which the extractor-ejector-device (not that in question here) was not a success and was speedily abandoned by the inventor; nor earn much importance-be attached to the long list of bids made in 1866 by many inventors. Some of these bids we know covered a complete structure; others, we have reason to believe, covered but portions-of the structure — perhaps single elements therein; all were made while the art of constructing breech-loading arms was inchoate; many (probably) were made with the single view to-adapting to modern uses the large stock of muzzle-loaders in the Government arsenals, and not for the construction of new guns. For similar reasons the Morse license is entitled to little weight, being made for a complete and novel structure, being made in 1858, and covering a very small number of guns. So with the payment to the Millers, which was in settlement of a single element in the combination.

Such are the details of fact from which we must deduce the ultimate fact of the measure of compensation which these plaintiff's should receive for the use of one device owned by them in defendants’ Springfield rifle. No one of these details alone is-entitled to great weight; taken together they may be of aid in fixing a fair royalty; they vary from 10 cents to over $2 per gun. We must first place ourselves in the position occupied by the contracting parties in 1869, when the patent was issued. Since Morse’s time the art had advanced. No longer do we see but one inventor with a completed structure practically the-only efficient arm of the type in existence, but we find a field crowded with devices combining innumerable mechanical combinations, presented in some two thousand patents, and we know not how many other failures which have been forgotten.

At that time (1868-1869) every single element of an extractor-ejector combination was old in mechanics. The result áimed at was recognized by all. Several had nearly achieved that result, so that there was left only a most narrow margin of improvement. How narrow that márgin was we have seen; how naturally it would be crossed under the strain of competition is shown by the fact that two men, working independently, achieved an equal measure of success. In 1869 the defendants had open to their choice very many devices, and there remained the probability of still further improvements, for the art was in a feverish state and invention was rapidly succeeding invention. There was then no element of certainty. Now, after twenty years, we may conclude that the device adopted was the best possible,* but then no one could know what the next day would bring forth •, nor was it.then possible to foresee the great success which has since been achieved.

We know now that the Springfield extractor-ejector device is valuable; that it is durable and useful; that it is believed to be the best known in the art for use in a single-fire musket of the Springfield type, but none of this was known in 1869. Then all was in doubt; neither side knew that with the Berdan-Adams device final success in extractor-ejector devices had been attained; nor did either side know what was the extent of danger from attack by other patentees whose devices very closely resembled that adopted. The quieting licenses we have cited are examples of the troubled state of the art at that time.

Lastly, the quality of the licensee and the quantity of the arms are to be considered. We are not discussing an exclusive license which should limit plaintiffs to the United States as their only customer. Admitting that they were to remain free to press their invention abroad, the adoption of it by their own Government had a certain value in itself. Of more importance is the large number of arms to be manufactured, for he who deals by wholesale charges a less percentage of profit than he who deals by retail, especially when he is put to no cost of manufacture.

From all this we deduce these elements of importance to a -contract made in 1809 — value in the invention, uncertainty in the art, danger of litigation, a valuable customer, a large contract, comparative cheapness of production, and lack of novelty in any element of the combinationn. Nor must we forget the Miller plate, for which the Government has paid. *

It appears that Éerdan offered a complete gun in 1866 to the Government for $ 1.25 each for over 200,000 guns. The extractor device in that gun was not a success for a center-fire cartridge, but the breech mechanism was approved as the best plan known. There were paid to inventors of ejectors, for the purpose of quieting possible proceedings in infringement, some 10 cents per gun; there was paid to Miller by plaintiffs for his extractor plates, used in asmall number of muskets, a trifle less than an average of 10 cents for each plate, and he was settled with by defendants for $20,000. The Spanish Government paid about $2.50 for aD entire gun purchased in small numbers and under some complications. Military experts place the fair royalty for the device at $2.66f per gun. The saving in manufacture is $1.25 per gun, the cost of making the gun ran (during the years in question) from $12.72 to $11.88. From these elements (all set forth in the findings), and following the reasoning in McKeever’s case (supra), we conclude that a fair and reasonable royalty for the right to manufacture and use the extractor-ejector device was 5 per cent, of the minimum cost of manufacturing the gun during the period in question. Judgment for plaintiffs in the sum of $95,004.36.  