
    FLETCHER’S CASE.
    Addison C. Fletcher v. The United States.
    
      On the Proofs.
    
    
      The Commissioner of Internal Revenue advertises for designs for stamps and plans for their cancellation. The claimant submits his invention.for a self-canceling stamp. About the same time the Chief of the Bureau of Engraving and Printing devises a somewhat similar stamp, and offers it gratuitously to the Government. It is adopted and largely used. Both the claimant and the chief of the bureau apply for letters-patent. The claimant is declared to be the original and true inventor, and a patent is issued to him and refused to the other. The claimanibrings his suitin this court on the implied'contract arising from the advertisement of the Commissioner, the submission of his design by the claimant, and the adoption and use thereof by the Government. This court re-examines the question of originality. The /invention of the claimant is for an adhesive stamp perforated and underlaid with tissue or bibulous paper ; the invention of the chief is for a perforated stamp underlaid with any paper of less tenacity, such as rice-paper. The stamp used by the Government is not underlaid with bibulous, but with calendered paper.
    
    
      I. An implied contract at the common law does not arise in favor of an inventor who lias submitted in response to an invitation an invention for a self-canceling stamp if the defendants adopt and use the somewhat similar design of another party, both inventions being distinct things, having different origins, and growing to completion under different experiments and circumstances.
    II. If the Government adopt the design of one inventor, and a patent is subsequently issued to another for the same device, this court has not jurisdiction of an action for an infringement.
    
      The Reporters' statement of tbe case:
    The court found the following facts:
    On the 24th December, 1867, at Washington, the advertisement, a copy of which is annexed to the petition, was published by the Treasury Department, and is as follows:
    “ Treasury Department,
    “ Washington, 1). 0,, December 24, 1867.
    “All persons desiring to furnish designs for internal-revenue stamps, or plans for their cancellation, are invited’to submit them for examination at this office prior to February 1, 1868, with a view to their adoption if found to be satisfactory and effectual.
    “ Particular attention is called to the desire of the Department to procure such a stamp and adopt such a method of cancellation as shall effectually protect the Treasury against losses from counterfeiting and from the restoration and reuse of stamps.
    “Persons submitting propositions are requested to state the terms upon which their plans, designs, and stamps are offered to the Government.
    “Each plan submitted will receive careful attention.
    “E. A. ROLLINS.
    “ Commissioner
    
    Shortly after the advertisement, the petitioner caused to be submitted to the Treasury Department a revenue-stamp invented by him prior to and about August 1,1867, and described in letters-patent granted to him, a copy of which is hereto an■nexed.
    No terms for the use of his invention were stated by the petitioner iu his submission of it to the Department.
    
      In tbo winter and spring of 1868 a number of methods and devices for revenue-stamps were submitted by the inventors thereof to the Department; and these were referred and submitted to a committee appointed by the Department for examination and report. But it was not shown that any comparison was made of the device of the petitioner with other devices.
    In 1864-’65, Spencer M. Oiark invented a revenue-stamp, composed of two pieces of paper, one thicker th.an the other, and perforated, and the perforation covered with the thinner paper. And in his experiments therewith at his house he experimented with different kinds of thin paper to be used in covering the perforation, such as tissue-paper, India proof-paper, rice-paper, and other thin papers, some bibulous and some not, and wafers. And he continued these experiments till February, 1868, when he filed the caveat a copy of which is annexed. After that, the said Clark continued his experiments at the Currency Bureau, using various kinds of thin paper to cover the perforation of the thicker paper, until July, 1868, when, for the paid whisky-stamp hereinafter referred to, he adopted, as a cover for the perforation, Belgium paper.
    After the enactment of the statute of July, 1868, chapter 186, conferences were had between the Committee of Ways and Means of the House of Representatives and the Commissioner of Internal Revenue in relation to stamps to be employed under said act, and among others in relation to the tax-paid spirit-stamp. And the said S. M. Clark, then having charge of the Rote-Printing Bureau of the Treasury Department, printed and submitted to said committee and Commissioner the revenue-stamp invented by him, which was approved and adopted by said committee and Commissioner, and was subsequently used by the defendants as the tax-paid spirit-stamp from September 15,1868, to Eovember, 1871.
    All the tax-paid spirit-stamps employed by the United States were made in the Bureau of Engraving and Printing, formerly called the Currency Bureau, of which said Clark was chief from 1861 to March, 1869, and he expressly waived all compensation for the use of his invention by the United States.
    All the tax-paid spirit-stamps employed by the United States were made of bank-note paper and Belgium paper, which is made partly of linen and partly of cotton stock, and had some sizing in it, and is calendered. It is less absorbent than tissue-paper, less liable to shrinkage when wet, and can be written on with a pen, while tissue-paper cannot be.
    The tax-paid spirit-stamp employed by the United States was of value to the United States; by its means the revenue was more efficiently collected, and the removal and reuse of the stamps was rendered difficult, though not impossible. From 15th September, 1868, to 1st November, 1871, 4,451,400 stamps were used by the defendants, and their use was finally abandoned because of the increase of cost in cutting the hole in or perforating the stamp.
    Upon the application of said petitioner for a patent, August 10, 1868, it was considered in the Patent-Office that the application of the petitioner and said Clark and others interfered, and a hearing was ordered and had, and the Commissioner decided in favor of said Clark. And an appeal from said decision was taken by the petitioner to the supreme court of the District of Columbia, and on said appeal letters-patent were awarded to the petitioner, and were granted to him April 5, 1870.
    No. 101604.]
    The United States of America to all to whom these letters-patent shall come:
    Whereas Addison C. Fletcher, of New York, New York, has alleged that he has invented a new and useful improvement in adhesive postal and revenue stamps, and has made oath that he is a citizen of the United States; that he verily believes he is the original and first inventor or discoverer of the said improvement, and that the same hath not, to his knowledge and belief, been previously known or used; has paid into the Treasury of the United States the sum of thirty-five dollars, and presented a petition to the Commissioner of Patents praying that a patent may be issued therefor: These are, therefore, to grant to the said Addison C. Fletcher, his executors, administrators, or assigns, for the term of seventeen years from the fifth day of October, one thousand eight hundred and sixty-nine, the full and exclusive right and liberty of making, using, and vending to others to be used, the said improvement, a description whereof is given in the annexed schedule and made a part of these presents.
    In testimony whereof I have caused these letters to be made patent and the seal of the Patent-Office to be hereunto affixed.
    
      G-iven under my band, at the city of Washington, this fifth day of April, in the year of our Lord one thousand eight hundred and seventy, and of the Independence of the United States of America the ninety-fourth.
    W. T. OTTO,
    
      Acting Secretary of the Interior.
    
    Countersigned and sealed with the seal of the Patent-Office.
    [L. s. | SAML. S. FISHER,
    
      Commissioner of Patents.
    
    
      Copy of specifications.
    
    united states patent-office.
    Addison C. Fletcher, of New York, N. Y. Letters-patent No. 101604, dated April 5, 1870, antedated October 5, 1869. Improvement in adhesive postal and revenue stamps.
    The schedule referred to in these letters-patent and making part of the same.
    To all whom it may concern:
    Be it known that I, Addison C. Fletcher, of the city, county, and State of New York, have invented a new and useful improvement in adhesive stamps applicable for postal, internal-revenue, and other purposes, of which the following is a full, clear, and exact description, reference being had to the accompanying drawing forming part of this specification, in which—
    Figure 1 represents a face-view of a series of adhesive stamps made in accordance with my improvement, and
    Figure 2, a section of the same, taken as indicated by the line x x in Fig. 1.
    Similar letters of reference indicate corresponding parts.
    My improvement in postage, internal-revenue, and other adhesive stamps involves or includes a new method of canceling them, whereby in any attempt to remove them from the documents or surfaces to which they have been applied, they are so effectually mutilated and destroyed as to make it an impossibility to use them a second time without a detection of the fraud.
    My invention consists in constructing the stamps with a hole or holes through the body of them, and covering or backing the same with thin tissue or other bibulous paper, made to firmly adhere to the stamp, and the rear surface of the stamp, with its bibulous-paper covering to the hole coated or backed with mucilage or other adhesive substance, while the front surface or face of the stamp, together with the bibulous paper seen through the opening therein, has any suitable figure or vignette printed thereon.
    Thus constructed, the stamp cannot be removed from the surface to which it has been stuck without the destruction or tearing of the tissue or bibulous portion of it.
    The following further description, referring to the accompanying drawing, will suffice to explain how this, my invention, is or may be carried out:
    Thus, I take a sheet of stamps, A, and punch through the body-portions of each stamp one or more perforations, a, after which the backs of the stamps are covered by a sheet of tissue or any thin bibulous paper, B, firmly cemented thereto by mucilage, or otherwise, so as to cover the holes a in the stamps, and subsequently, mucilage or other suitable adhesive substance applied to the exterior surface of the tissue-paper and backs of the stamps, to secure the adhesion of the stamps, by moistening them on their backs, or otherwise moistening the surfaces to which said stamps are designed to be applied. The stamps A have any suitable vignette or figure engraved or printed on them, as also has the tissue or bibulous paper B, covering the perforations a in them. This printing on the two surfaces or portions A and B of the stamps may either be done separately and before applying the bibulous paper to the backs of the stamps, or it may be done after the bibulous paper has been secured thereto, the perforation a in the stamp admitting of such a general and simultaneous impression of the two surfaces or portions A and B.
    When a stamp, as thus constructed, has been applied to a sheet of paper or other article or surface, it not simply becomes adherent thereon throughout or over its entire surface, but more especially or tenaciously so on that part of its surface or back covering the perforations a in the stamp, by reason of its thinner construction at that part, as produced by the tissue- or bibulous-paper covering to the perforations a, so that and by reason of the delicate and peculiar character or property of said paper, any attempt to remove said stamp without defacing it by first moistening it will be useless, for the bibulous paper covering the opening a will be so washed or torn, as that, in the endeavor to remove the stamp, it will have its design more or less destroyed or defaced, and thus prevent a second use of the stamp.
    What is here claimed, and desired to be secured by letters-patent, is—
    An adhesive stamp, made up of a thick portion or body, A, having a perforation or perforations, a, through the face of it, and thinner portion, B, composed of tissue or any suitable bibulous paper, and applied as a covering to said perforation or perforations, both portions being securely connected or incorporated to make up the complete stamp, and the latter being suitably engraved or printed on its face and having adhesive material applied to its back, substantially as specified.
    ADDISON 0. FLETCHER.
    Witnesses:
    A. Le Clebc.
    A. Kinkier.
    Washington, D. 0., February 10, 188S.
    The general principles of my invention are as follows: I first punch the paper on which the stamps are to be printed either before or after gumming, with a hole of any shape that may be desired, in such a manner that the hole shall be within the space occupied by such stamps. Then I cover this hole on one side or the other of the paper with any preparation or paper which has less tenacity than the original sheet — either with rice-paper, tissue-paper, wafer, or any similar or suitable material — in such a manner that the area by which it is attached to the paper is less than the area which will be attached to the instrument, article, or envelope after the stamp is put to its proper use. I then print the stamp, a portion of the printing being necessarily on the material with which the hole is filled. When the stamp thus printed is attached for use, the portion fitting the hole cannot be removed for reuse by wetting, as it will adhere to the surface to which it is attached more than it does to the surface of the stamp, and the stamp being soaked or peeled off will have a hole in the face, preventing reuse.
    S. M. CLARK.
    
      Washing-ton, D. 0., February 10,1808.
    Personally appeared before me S. M. Clark, to me personally known, who, being duly sworn, deposes and says that he is a citizen of the United States, and that he believes himself to be the original and sole inventor of the above-described invention.
    S. M. CLABK.
    
      To the Commissioner of Patents :
    
    The petition of S. M. Clark, of Washington, D. C., respectfully represents that he has made certain improvements in the method of preparing and printing internal-revenue and postage stamps and other similar work, by which their reuse is prevented, and that he is now engaged in making experiments for the purpose of perfecting the same, preparatory to his applying for letters-patent therefor. He therefore prays that the subjoined description of his invention may be filed as a caveat in the confidential archives of the Patent-Office, agreeably to the provision of the act of Congress in that case made and provided, he having paid ten dollars into the Treasury of the United States and otherwise complied with 'the requirements of the said act.
    S. M. CLABK.
    Sworn to and subscribed before me this 10th day of February, 1868.
    [l. s.] EMD. F. BBOWN,
    
      Notary Public.
    
    
      Mr. H. IJ. Beam for the claimant:
    This is not a case of infringement of patent, because the claimant expressly authorized the use of his invention by the Government. This device was tendered to and accepted by the Government long before claimant had procured or taken any steps to procure a patent. This invention or device thus tendered was accepted and adopted by an officer who had authority to bind the Government by contract for that purpose. (See Act of Congress, June 30,1864; 2 Brightley’s Dig., 289; Act March 3,1865, § 174; Act July 20, 1868, §§ 23, 25, 26, 103,157.) These considerations distinguish this case from Pitchers (Jase, 1N. & H., 37; Node’s Case, 1.0. Gis. B., p. 71; 2 id., 
      45; and other cases in which this court has refused to award damages against the United States for unauthorized use by its officers of a patented invention.
    The facts, circumstances, and acts which would raise an implied contract as between individuals, will also raise one as between the Government and the citizen, certainly where the officer whose acts are in question had authority to bind the Government by an express contract. (Brook’s Oase, 2 G. 01s. B.,p. 180;. Curtis’s Case,20. 01s.B., p. 144; see also IN. & H,, 37 ; Smoot and Spicer’s Case, 5 O. Oís. B., 490, 15 Wall., 36-5Í ; Salomon’s Case, 7 0. 01s. B., p. 482 ; 9 id., 54; 18 Wall.) ,
    The circular advertisement of December 24,1867, from the Internal Bevenue Bureau, was a request and offer to inventors generally, which any one capable of performing the service might accept at any time before it was revoked, and perform the service; and such a request on the one side and acceptance and performance by claimant on the other, is a valid contract, made on a valuable consideration, which the law will enforce. (Loring v. Boston, 7 Met., 411, and cases cited; Symmes v. Frazier, 6 Mass., 344; Freeman- v. Boston, 5 Met., 56; Williams v. Garwardine, 4 B. & Ad., 621, (1833;) Smith v. Moore, 1 Com. B., 438; Denton v. G. F. Railway, 5 Ellis & Blackburn, 860, 85 Eng. Com. Law.)
    If the claimaint is the real author and original inventor of the device in question, it follows that he alone performed the service requested, and is entitled to compensation promised; and it is no defense to this action to show that his device was brought to the notice of the Internal Bevenue Bureau and its adoption secured by another person. (Thatcher v. England, 3 Oom. B., M., G. & S. Bep., 254; Lancaster v. Walsh, 4 Meeson & Wellsly, 16.)
    It is no defense to this action to show that the officers of the Government at the time of the adoption of this device did not know this claimant as the real inventor. It is the person who actually performs the service, in whose favor the law raises the promise to pay. (Lewis Trieleey, 20 Barbour, (N. Y.,) 387.) Even though the advertisement of December 24, 1867’, did not amount to a request in this case, still if the defendant accepted and knowingly availed itself of services donefor it by the claimant without its authority or request, and continued the use of claimant’s device for two years and upward after notice of his ownership, the claimaint would be entitled to reasonable compensation, the law implying both a request and a promise to pay. (Abbott v. Herman, 7 Gr., (Me.,) 118; Weston v. Davis, 24 Me., 374; Salomon’s Case, supra; Linüsley’s Case, 4 C. Ols. R., p. 359 ; BurehieVs Case, 4 C. Ols. R., p. 549.)
    
      Mr. John S. Blair was heard for the defendants, and Mr. Bnooh Totten in reply.
   Loring, J.,

delivered the opinion of the court:

The learned counsel for the petitioner rested their ease on a contract between him and the United States, and the point is stated in their brief as follows : “ By the advertisement for designs, the submission by the plaintiff of the stamp, and the adoption and use thereof by the Government, an implied contract was created, and the defendant is bound to pay a reasonable compensation for the use of the invention.”

We think the answer to this is that made at the bar, that the Government did not use the petitioner’s stamp nor contract with him.

The evidence shows that both the petitioner and Spencer M. Clark were original inventors of the same mechanical contrivance in the form of a stamp. But their several inventions were distinct things, for they had different origins, and grew to their completion under different experiments and circumstances, and had different ownerships, for each invention was the property in possession of its inventor, who could use it himself and contract in relation to its use, till a patent was issued vesting exclusive rights in the patentee; and we think it clear on the facts stated that the paid whisky-stamp used by the Government was the invention and property of Clark, for which,, in September, 1868, no patent existed, and which he was free to deal with at his pleasure, and which then, by express agreement with the officers of the Interior Department, he licensed the United States to use without cost; and as all the use of the Government was under this express contract with Clark for his invention, it was not under the implied contract with the petitioner, which he founds on the advertisement for a design and his submission of one and the use of it by the United States. On this part of tbe case, which excludes all reference to a patent and its effects, we think an implied contract at the common law is not made out.

The'second point of the learned counsel for the petitioner is thus stated in their brief:

“ The invention was the property of the plaintiff, as well before as after he had received his patent, and the Government had no more right to use his invention without compensation than any private individual.”

But the petitioner had no exclusive rights in his invention till he had obtained his patent; and if any rights accruing to him by that have been infringed, the remedy is not within our jurisdiction. 1  