
    JAMES H. L. EAGER v. THE UNITED STATES.
    [No. 16634.
    Decided June 4, 1900.]
    
      On the Proofs.
    
    The claimant’s assignor is a skilled mechanic, long employed by the Government in responsible positions in its ordnance shops. He obtains a patent for “Improvement of rifling machines for heavy guns.” This patent he assigns to claimant, who now alleges that the United States, without claimant’s consent and without compensating him therefor, adopted the patented improvement, and has continually used it in-the rifling of cannon in the Washington Navy-Yard.
    I. No recovery can be had in a patent case in this court unless it is shown that the Government wittingly used the device, not with adverse intent, and with the patentee’s consent.
    II. Where a skilled mechanic in the Government employment in the ordinary course of his employment, with the aids furnished by the Government and the suggestion and advice of his superior officers, produces a device upon which a patent is issued, he can not recover for its use by the Government. Solomon and Gill• Cases (21 O. Cls. R., 479; 22 O. Cls. R., 335; 25 O. Cls. R., 415).
    
      The Reporters' statement of the case:
    The following are the facts of the case as found by the court:
    I. May 25, 1885, there were issued to James E. Streett, a citizen of the United States, and a resident of the District of Columbia, letters patent of the United States No. 318821, for improvement of rifling machines for heavy guns. The specifications, claims, and drawings of this patent are made part of these findings.
    II. In November, 1881, Streett was employed as leading man in the ordnance department of the Washington Navy-Yard, at $3 per day. He had been a machinist there from 1862, except during a part of 1863, and 1861. His duties as leading man were to direct the making of tools, to keep them in order, including, incidentally, the designing of tools and the improvement in workmanship, form, or design of the tools used, particularly special tools for special work. He-continued at the yard as an ordnance mechanic special at the same pay until July 7, 1887; since then he has been employed at the navy-yard as follows: July 7,1887, to August 15,1887, quarterman, at $3.30 per da}*-; August 15, 1887, to January 23, 1888, ordnance mechanic special, at $3.04 per day, except that from October 1, 1887, to January 1, 1888, the pay was $3.20 per day; June 3, 1889, to the date of this action, quar-terman, at $4 per day. January 23, 1888, to June 3, 1889 (except about two months at beginning of period), he was employed by defendants as subinspector of ordnance at New Haven.
    III. By two deeds of assignment, dated March 16, 1885, and October 26, 1886, respectively, the said James R. Streett assigned his interest in said letters patent to the plaintiff.
    IV. August, 1884, Commander Caspar F. Goodrich was appointed inspector of' ordnance at the "W ashington Navy-Yard. At that time 6-inch steel guns were being rifled there with a single-cutter rifling head. The manufacture of steel guns at the navy-yard began in 1883. The rifling cutter was. mounted on a pivoted cutter carrier, placed in a slot extending through the head, from one side to the other, a short distance in the rear of its front face. Above one end of this slot the face of the head was cut out, to give space for the upper arm of the carrier, to which part the cutter was attached. There was a spiral spring back of the carrier, near the end away from the pivot, and a feed screw and a stop screw passed through •the face of the head and bore against the carrier, at that part which was over the spring. The adjustment of these screws determined the distance and angle at which the cutter projected from the side of the head, and consequently the depth of the cut, while the spring allowed the cutter to be pressed in toward the head as the tool was drawn back through the gun after each cut.
    V. This process of rifling was deemed slow. Commander Goodrich saw that the power of the machine which drove the head admitted of more work, and that quicker work could be done by placing a number of cutters at equal distances around the circumference of the head; he planned to place two cutters at each of four points equally distant around the head. In October or November, 1884, he made a rough sketch of ins design, and consulted the foreman of the gunshop, and also Streett, both of whom at first thought it not advisable to attempt so much. Goodrich insisted upon his plan.
    VI. After Commander Goodrich’s suggestion to his subordinates, Streett made drawings of a 6-inch rifling head, with eight cuttei’s, to be constructed as follows: Two slots (1.75 inches wide and 1.90 inches deep) to be cut through the head, at right angles to each other, three-quarters of an inch back of the face of the head. At either end of each slot the metal immediately above it to be cut out through to the face of the head, and the metal above where the slots crossed (to the depth of three-quarters of an inch below) was also to be cut out, leaving a square opening through the center of the face of the head and a round pocket below the crossing of the slots. The space where the slots crossed was to be completly filled by a piece of steel, with straight sides, extending from the face of the head to the bottom of the pocket and secured by a bolt, thus making four slots, in each of these slots was to be placed a box containing two cutter carriers mounted on a pivot running across the box, which was itself held firmly in place by a bolt, running through the face of the head and through the box into the metal of the head below the box. The shape of the carriers was substantially the same as in the old rifling head, but they were smaller, the box being shorter than the slot in the old head. Each carrier was to be provided with a spring and set screw for adjustment, as were the old carriers, the set screws projecting through the face of the head. By the use of a wrench and a profile gauge the carriers could be adjusted so as to secure a uniform depth of cut in each groove.
    VII. Streett made his drawings at home in his own time; when they were nearly finished he showed them to Commander Goodrich; he consulted Commander Goodrich frequently and received his advice and suggestions as to the improvement both aimed to accomplish; he afterwards completed the drawings; the finishing work was done at his home, and completed November 23, 1884. Commander Goodrich then consulted Commodore Sicard, the Chief of the Bureau of Ordnance, in the matter, and on the understanding that Streett’s plan involved merely the adaptation of an old tool, with the working of which they were thoroughly familiar, permission was given to issue the following written order: “ November 29, 1884. Make an experimental l’ifle bead for ■cutting eight grooves. ” This head was made by the machinists of the gun shop, under Streett’s direction, at defendants’ expense; it was completed February 24, 1885, and put into use. While it was being made, the old rifling head was improved by putting two cutters on the carrier in place of the single cutter.
    VIII. After the cutter carriers had been placed in the boxes in the construction of the experimental rifling head, Streett, to quote his own language, “of course naturally saw” that it would be an advantage to advance the' cutters simultaneously by making all the. boxes move out together, and therefore, soon after the rifling head was finished in the form described in Finding VI, some changes were made in it. The straight-sided centerpiece was replaced by a four-sided, cone-shaped piece, the sides sloping inward so as to make it smaller toward the front. This new centerpiece was provided with a screw, so that it could be moved forward and back, the screw having' , a square head in front so that it could be turned by a wrench. The cutter boxes were no longer held stationary, but were keyed to the cone by T-shaped splines, fitting into T-shaped grooves in the sides of the cone, so that its- movements advanced or retracted all the boxes equally. Around the front end of the central screw was a stop screw, fitting into threads in a face plate, which was screwed to the face of the head. When these changes were made the number of carriers in each box was reduced from two to one, so that the head cut four grooves at a time, instead of eight.
    These changes were made in the spring or summer of 1885, but Streett made drawings for them in his own time before the rifling head was finished in its original shape. These drawings were shown to Commander Goodrich, and it was decided that the head should be finished as originally planned, so that it could be put in use as soon as possible, and that the cone and movable boxes should be constructed afterwards, so as not to interfere with the use of the rifling head.
    IX. December 8,1885, an order was issued to make a 10-inch rifling head with more than two cutters, which head was finished about August 13, 1887. It was made with four cutters, like the experimental head in its altered form, except that'the face plate was screwed down directly over the slots, without any intervening material. To avoid injuring the guns, bronze jackets were put around the rifling heads in May or June, 1885.
    Between June 28, 1889, and October 23,1897, rifling heads, with cutter carriers in movable boxes, of the general type claimed to be covered, by Streett's patent No. 318821, were made at the Washington Navy-Yard.
    The superiority of the rifling heads of this type over the single cutter head formerly in use lies solely in the rapidity with, which the work can be done. If the rifling now done be at all more accurate than that done with the old rifling head, in 1884 and previously, the difference is due to the greater accuracy with which the rifling heads now in use are made, their parts being all ground by machineiy; whereas in 1884 the parts were filed and scraped by hand, and did not fit together so perfectly.
    X. This claim was first presented to defendants by letters dated April 15 and 25, 1889. The reply of the Secretary of the Navy, dated June 11, 1889, reviewed the circumstances, under which the rifling heads had been made and used, and concluded as follows:
    “Under the circumstances, as shown in the report of the-Chief of the Bureau of Ordnance, and it appearing that at the time the device in question was developed at the navy-yard in Washington, D. C., and for several years prior thereto, Mr. Streett was, and had been, an employe of the ordnance department of said yard, and that during the period of such employment there he .was charged, as his regular duty, with the design and manufacture of shop tools of the character of the machines referred to, for which service he was regularly paid by the Government, the Department must decline to recognize your claim.”
    Plaintiff nor his assignor never offered to enter into a contract with defendants granting the right to make and use rifling heads under his patent until February 2, 1891, over nineteen months after this action was brought. This offer was made to the Chief of Ordnance of the War Department, and was declined on the ground that the Ordnance Office preferred the type of rifling head which it had in use.
    
      XI. Between May 26, 1885, and October 28, 1886, two 6-inch guns were rifled with what is claimed to be the patented rifling head at the Washington Navy-Yard. Between October 28, 1886, and June 28, 1889, when this suit was brought, twenty-two 6-inch guns and three 10-inch guns were so rifled there.
    Between June 28, 1889, and Octpber 22, 1897, other guns were rifled with rifling heads claimed to be of the patented type; this at the Washington Navy-Yard.
    XII. About November 16, 1889, defendants, without plaintiff’s objection, used at the United States Arsenal, Watervleit, N. Y., a device claimed to be covered by the patent issued to Streett.
    XIH. Specifications, claims, and drawings from the Patent Office used in the trial of this case are as follows:
    “Rifling-Machine for Heavy Guns.
    “Specification forming part of Letters Patent No. 318824, dated May 26,
    1885.
    “Application filed March 18,1885. (No model.)
    “Yu all whom it may concern:
    
    “Be it known that I, James B. Streett, residing at Washington, in the District of Columbia, have invented certain new and useful improvements in rifling-machines for .heavy guns, of which the following is a specification, reference being had therein to the accompanying drawings.
    “ This invention relates to implements for rifling heavy guns; and it consists in the constructions and combinations hereinafter set forth and claimed.
    “In the drawings, figure 1 is a side elevation and front view of a rifling-head with cutters for rifling eight grooves. Fig. 2 is an elevation of the same head with cutters and cutter-carriers removed. Fig. 8 is a partial section of the same head through the cutter-box. ■ Fig. 1 is a detached view of one of the cutter-holders. Fig. 5 is a front-erld elevation of a modification of the rifling-head, part of the front plate broken away. Fig. 6 is a longitudinal central section of same. Fig. 7 is a front elevation of the cutter-box, cutter-carriers, and cutting-bits. Fig. 8 is a longitudinal section of the cutter.-carrier box. Fig. 9 is a perspective view of one of the cutters. Figs. 10 and 11 are front and side views of a graduated wrench for adjusting the regulating screws.
    > “I will first describe the modification shown in figs. 1 to 4.
    
      ‘ ‘ A is the cutter-stock, which is attached by its shank B to a rifling-bar and is forced forward into the gun (preferably from the muzzle), the forward movement and the twist being' produced by machineiy of usual construction, the same forming no part of my present invention. The front end of this stock has a cruciform slot, A', therein when four sets of cutters are used.
    “The center piece C rests in a recess in the front end of stock A, and is secured therein by bolt D. This center piece C has as many plane faces on opposite sides as it is found desirable to operate upon. In the present case the piece C has four plane faces, which form supports for as many cutter-holders; but it is apparent that the center piece may have any number of faces, and that two, four, or any other number of cutter-holders may be applied and a corresponding number of grooves cut at each advance of the cutter-stock.
    “E is the front-plate of the rifling-head, which rests against the stock A and is firmly secui’ed thereto, thus making inclosed casings of the slots across the face of the cutter-stock, each casing having a radial opening. In each of these inclosures in the rifling-head there is a closely fitting cutter-box F, which has its seat against the center piece 0, and is held against rising by the pin G passing through the faceplate and box and entering the stock A.
    “ In each cutter-box there is one, or, preferably, a pair of cutter-carriers II, pivoted at I on a spindle passing through the cutter-box from side to side.
    “The cutter-carrier has a rear projection having curved end K, which rests in a curved recess in the cutter-box. The lower arm, L, of the cutter-carrier is also preferably arc-shaped and the cutter-box is made to conform thereto. An offset, M, from the side of the lower arm, gives a bearing for the sot screw N, which passes through the front plate. A spring O, in the rear wall of the box, bears against the lower arm of the cutter-carrier. A forward-projecting arm, S, extends into a notch in plate E.
    “The upper face of the cutter-carrier has a dovetailed groove, in which there is a cutter P, of hardened steel, secured firmly in the dovetailed groove in the cutter-carrier and projecting above the face of the carrier. These cutters or teeth are arranged at an obliquity relative to the axis of the rifling-head, approximating the average pitch of the rifle-grooves. They are secured in position in any. convenient manner, as by screws or a screw-plate, in front and rear. The cutters are narrower in the rear than in front, and the grooves in which they are held are of corresponding form.
    “The screws N N pass through the front plate E, and are in front of the carriers H, in such position that said carriers can not swing forward far enough to elevate the tools P beyond the depth of the completed rifling, when these screws need not be moved again during the operation of rifling the gun. The screws N In are turned out slightly on the first cut, when spring O will press forward the arm L of the cutter-carrier. As the rifling-head is forced forward the resistance of the cutter tends to rock the cutter-carriers toward the screws N, and thus drive the cutters deeper into the work; but the screws N serve to prevent this. After each cut the screws N may be retracted, thus permitting the cutters to make a deeper cut. These screws N must be all uniformly adjusted, so that all the cutters will enter the groove to an equal depth. This adjustment is accomplished by a wrench working on a graduated arc or disk. (See figs. 10, 11.) It being premised that all the cutters have the same radial- projection, then the graduated plate R. is applied against the face-plate E, so that the wrench S', which is swiveled in plate R, may pass over the head of one of the screws N. The wrench R may then be turned, and a very fine adjustment thus be made, and by turning all the screws N successively in this manner the cutters are advanced equally.
    “The same wrench, or one differing only in size, may be used in the same manner for operating the screw which advances or retracts wedge-piece C', as will be hereinafter described.
    “I will now describe the construction of my device, whereby all the cutters may be adjusted simultaneously.
    “The cutter-box F, figs. 5, 6, 7, and 8, differs but slightly in construction from that hereinbefore described. Side plates, a «, are rabbeted to the base i, and attached by screws or pins for convenience in construction. The cutter-carriers BL are pressed forward by spring O against the screws N, which pass through the front plates.#, of the box, their heads extending through slots in the face-plate E.
    “The center. piece C' is made wedge-shaped for a portion of its length, and the stock A is recessed to permit a longitudinal movement of this centerpiece, the movement being accomplished by means of the screw e, which passes through the centerpiece and has a collar, f, at each end thereof, and engages a screw-thread in the head stock.
    “The cutter-boxes are held by keys or splines g to the centerpiece C', these keys being dovetailed into the boxes and centerpiece in such- manner as to permit a longitudinal movement of the centerpiece with reference to the boxes, but to hold the boxes firmly against radial movement away from the centerpiece.
    “The face-plate E may have a central detachable piece, E', to permit the removal of the wedge-shaped centerpiece C' and its screw entirely from the stock, which thus permits the radial withdrawal of the cutter-boxes.
    “It is intended that the joint between the cutter-carrier H and the cutter-boxes (as at to) shall be tight, to prevent any chips or scraps of metal entering. The joint at n may be closed by the insertion of bits of rubber or similar material.
    “The cutters operate as the bar is thrust or drawn forward, the springs O serving to press them first into operative position, and the screws hi holding them against advancing into the metal farther than the predetermined distance. In withdrawing the head the tools press the springs back, and no injury to the completed work results.
    “The cutters can be advanced after each cut to the amount required for the next cut, either by setting the screws N or by moving in the wedge piece O', which presses out all the cutter-boxes uniformly.
    “Very fine adjustments of the cutters are required, to distances measured by the one-thousandth of an inch. This fine adjustment of all the cutters simultaneously may be measured by the movement of the wrench S on its graduated plate, when the wrench is applied to the screw e, which actuates centerpiece C'.
    “I claim—
    “1. A rifling head having radial- grooves, cutter-boxes therein, pivoted cutter-carriers in said boxes, and cutters on said carriers, as set forth.
    “2. In combination with a rifling-head, a radially movable box therein, a cutter-carrier in said box, having a firm abutment to resist its outward extension while moving forward, and a spring which yields to permit the depression of the cutter while withdrawing the head.
    “3. The combination, with a rifling headstock having radial grooves, of a series of cutter-boxes, cutters, and carriers mounted in said grooves.
    “4. In a rifling-head, the combination of a grooved stock, a face-plate attached thereto, a series of cutter-boxes in said grooves, and pivoted cutter-carriers in said boxes, as set forth.
    “5. The cutter-boxes, the pivoted cutters therein having close joints with the boxes, and springs for rocking the cutter-carriers on their pivots.
    “6. The combination, with the cutter-boxes and pivoted cutters mounted therein, of adjusting-screws in front of said cutter-carriers to determine the limit of movement thereof.
    “7. The combination, with the rifling-head, of a series of cutter-boxes in radial grooves therein, and a plurality of cutters mounted in each cutter-box, substantially as described.
    “ 8. In a rifling-head, the combination, with the stock, of a radially movable central wedge piece, a series of cutter-boxes
    
      
      
    
    
      
    
    
      surrounding said wedge piece and keyed thereto to permit radial but not longitudinal movement, and a plurality of pivoted cutter-carriers mounted in said boxes.
    “9. In a cutter-carrier box, the combination of the base b, the side pieces a «, rabbeted thereto, and the cutter-carriers pivoted in said box on a pivot passing through the sides thereof, substantially as described.
    “10. The combination, with the stock A, of the face-plate E, having removable centerpiece E', the wedging centerpiece C', the screw e, which actuates said centerpiece, and the cutter-boxes keyed to said centerpiece, as set forth.
    “11. The combination, with the set screws of a rifling head, of a graduated wrench-plate, and the wrench pivoted in said plate, as set forth.
    “In testimony whereof 1 affix my signature in presence of two witnesses.
    “James E. Streett.
    “Wittesses:
    “Margaret Streett,
    “James H. L. Eager.”
    XIY. Other patents used and referred to in the trial of this case were as follows:
    British patent to C. W. Lancaster, No. 13161 of 1850; S. Colt, No. 429 of 1854; E. Adams, No. 2000 of 1854; J. H. Johnson, No. 2145 of 1856; J. Vavasseur, No. 1933 of 1861; H. Pieper, No. 4425 of 1819; W. E. Lake, No. 2838 of 1880.
    United States patent to W. and E. Foster, No. 26487, December 20, 1859; J. Brewer, No. 79198, June 23, 1868; J. Cook, No. 153316, July 21,1874, and No. 156137, October 20, 1874; J. B. Douglas, No. 189889, April 24, 1877; I. S. Schuyler, No. 230825, August 3, 1880, and No. 256166, April 11, 1882; J. M. Johnson, 316040, April 21, 1885, application filed December 24,1883; J. Flower, No. 122243, December 26, 1871; J. Wheelock, No. 257422, May 2,1882; T. L. Webster, No. 64388, April 30, 1867; J. S. Ettenborough, reissue No. 5277, February 11, 1873; E. T. Prindle, reissue No. 9738, . June 7, 1881; W. H. Gwynne, No. 33884, December 10,1861.
    United States patent to A.-Bonzano, No. 37898, March 17, 1863; W. and C. Sellers, No. 46714, March 7, 1865; W. D. Squires, No. 157034, November 17, 1874.
    
      Mr. John G. Olumey for the claimant. Messrs. Dudley & Michener were on the brief.
    
      
      Mr. Oha/rles O. Bmney (with whom'was Mr. Assistant Attorney- General Bradt) for the defendants.
   Davis, J.,

delivered the opinion of the court:

Plaintiff’s assignor, James it. Streett, is a skilled mechanic in ordnance. He has been long employed by the Government at the navy-yard (in Washington), where he has held posts of responsibility in the ordnance shops. His creditable record is shown in the findings of fact.

It is now alleged in his behalf that he obtained a patent (318824) for “Improvement of rifling machines for heavy guns;” that he assigned his interest in the patent' to this plaintiff, and that “on or about the 29th day of November, 1885, the United States, with petitioner’s consent, and without compensating the petitioner therefor, adopted the said patented improvement and has continually used the same from said date to the present time in the rifling of cannon at the Washington Navy-Yard, and is now using the said patented improvement in the rifling of cannon at the said place.”

The record presents that difficult, vexed, and always unsatisfactory question of a claim for royalty made by a skilled, trusted, faithful mechanic under pay in his employer’s shop, devoting his mind to the work in which his employer has gained his success, living in the atmosphere of the development of his mechanical art, surrounded by men all-imbued with the same spirit, but all (and after all) under the direction and control of men (superior officers) selected because they are men of science and thoroughly trained experts, not only in the mechanics, but also in the philosophy and technique of the profession of which the mechanic’s particular and restricted branch is but a small part.

James R. Streett was long employed in the navy-yard shops in Washington. Beginning as a machinist in 1862, he later had charge of tools, including the designing and improvement m tools. He was employed as a quarterman, then as an ordnance mechanic, again as a quarterman, later as a sub-inspector, and so on.

During the period of importance in this case he was a paid ordnance mechanic.

It is well understood that in the development of new inventions, in tbe perfection of tbe practical application to tbe machine of tbe theoretically successful idea of tbe inventor, and in tbe improvement of what is not technically new but is nevertheless valuable, there is assistance and advice and supervision throughout the workshops from the latest apprentice boy arrival to the scientific chiefs. The endeavor for success is substantially unanimous in a harmonius and reasonably ambitious shop; the advisory officers and the skilled labor work harmoniously in a common effort and a common pride to achieve a successful result in which all reap a portion of credit.

So Streett shows a commendable career as a skilled mechanic; one naturally and necessarily always working under the counsel and friendly assisting eye of the scientifically trained naval officer.

The substance of this case is that defendants at the Washington Navy-Yard used a device for cutting the interruptions in screws of breech mechanisms of heavy guns, a device which is claimed to be covered by Streett’s patent (now assigned to Eager).

No recovery can be had in this action unless such facts are shown as develop a use by defendants of plaintiff’s claimed device wittingly, not with adverse intent, and with his consent. (McKeever v. United States, 14 C. C. R., 396; Berdan v. United States, 25 C. C. R., 355; 26 C. C. R., 48; 156 U. S. R., 552; Schillinger v. United States, 24 C. C. R., 278; 155 U. S. R., 163.)

Nothing of the kind is shown here. Plaintiff with such highly skilled Government experts as Commodore Folger (later Chief of the Bureau of Ordnance) and Captain Goodrich (then especially in charge of the ordnance work at the navy-yard) conferred from time to time upon a mechanical proposition, an improvement in the mechanical art which was developing and which was before them for mechanical solution. Few new devices appear complete upon the field of competition; nor does the law require this in its protection of the inventor; but the law does sternly demand that the alleged invention shall be in fact the fruit of the individual brain whose owner obtains the patent. The intention of the patent law is to protect the inventor who invents.

The skilled mechanic in this case while under defendant’s pay, in the ordinary course of his professional employment, with the surroundings and aids which the Government furnished and the advice and suggestion of his superior officers, produced a device upon which a patent was issued. As to the validity of that patent we. have no reason to express any opinion. Admitting (for the purposes of the argument) that it is valid, still, there can be no recovery against defendants here on this petition, for reasons which may be found in the Solomon and Grill cases. (21 C. C. B., 479; 22 C. C. R., 335; 25 C. C. R.,415.)

We do not see in the findings of fact anything to indicate that defendants intended to use the device in issue here as Streett’s device or did use it wittingly as his device, if they did use it or its mechanical equivalent at any time.

Petition dismissed.  