
    MAMIE C. WOOD ET AL v. THE UNITED STATES.
    [No. 18204.
    Decided May 20, 1901.]
    
      Of the Proofs.
    
    Patentees offer their invention for an electric-light buoy to the LightHouse Board, which declines to purchase for the reason that the invention has not been subjected to any practical test. Subsequently .the board manufactures and uses a device more or less different from that of the patentees. Their method requires two chains and two anchors to keep the buoy in position, and a tube through which the cable passes upward through the buoy to the electric light. • The device adopted employs a different kind of electric light than the claimants’ and discards the chains and anchors.
    
      I.When Government officers decline to purchase a patented invention and subsequently use a device different in form and in practical operation, the case is at most one of involuntary infringement, which can not be turned into a case of implied contract.
    II.In a patent case in this court the claimants can not show what their invention, as used by the Government, is worth to commerce. The rule for estimating damages laid down in tha leading case of McKeever (14 O. Ols. B., 396) was affirmed by the Supreme Court (18 id., 757) and has been adhered to ever since.
    III.Where a man tortiously infringes, all that he makes or saves by his wrongful act belongs to the patentee. Where he sues in contract his damages are what the defendant agreed to pay, or what the license, express or implied, is reasonably worth.
    
      The Reporters' statement of the case:
    The following are the facts as found by the court:
    I. That William R. Wood, Peter E. Smith, and Elizabeth E. Wyman, executrix of the last will of Shepherd R. Spruill, deceased, claimants herein, are citizens of the United States, residing in Halifax County, in the State of North Carolina, and have always yielded true allegiance to the United States; that they are the sole owners of the claims hereinafter sued on, never having sold or assigned the same, or any part thereof, to any person or persons.
    II. That on the 21st day of November, 1876, the said William R. Wood, Peter E. Smith, and Shepherd R. Spruill, deceased, obtained letters patent for improved electric-light buoy, No. 184553; that said letters patent have ever since said date been owned and held by said parties, and the said William R. Wood, Peter E. Smith, and the said Elizabeth E. W junan, as executrix of the last will and testament of the said Shepherd R. Spruill, deceased, owned and held the same up to the expiration of the time of the said letters patent, which letters patent are annexed to the petition herein.
    HI. No buoy of the precise form of the device shown and described in the said letters patent has ever been, put into actual use, nor has any such buoy ever been made. In 1877 the claimants requested the Light-House Board to try their type of buoy, but the board declined to do so. There was no further communication between these parties until 1888, when the claimants called attention to what they held to be the use of their patent by the Light-House Board, but were informed that the Board did not consider that the electric buoys used by it conflicted in any way with the claimant’s patent.
    The proposals of the patentees and the action of the LightHouse Board appear in the following papers:
    “To Prof. HeNRY & Members of the Light-House Board:
    “I herewith present for your examination and approval, the ‘ electric light buoy’ of Messrs. P. E. Smith, S. R. Spruill, and W. R. Wood, of Scotland Neck, N. C.
    “In the construction of our buoy, we claim a new application of some known principles.
    “The Atlantic cable proves that electricity can be carried in any amount and to any distance under the water.
    “Recent experiments have so simplified the electric light that it can be effectually used on our buoy.
    “M. Jablouskoff, of Russia, has shown that if two carbon pencils are inclosed in clay or similar material, like the double wick of a candle, and adjusted the proper distance apart to produce the electric arc, you obtain a steady and constant light, the pencils keeping their relative distance apart till entirely consumed. But M. Ladaguin, of St. Petersburg, clearly shows that if the carbon is inclosed in a glass cylinder or globe and oxygen excluded from the globe the light is maintained to any length of time, and there will be no consumption of the carbon.
    “Any known method of generating electricity can be used, but we prefer the ‘electro-magnet,’ driven by a hydro-carbon engine, as the cheapest and most certain, as the engine is so constructed as to require no skill and very little attention in running, merely oiling the parts.
    “A copy of the patent and diagram of its operations, together with a pencil sketch, showing construction of the lower end of the tube, is herewith submitted. The drawing in the patent sketch is incomplete, manifestly, as it requires two wires to produce the electric current. The pencil sketch shows the manner of closing the tube, and preventing the cables chafing. A is tube, B is lower funnel-shaped projection to receive and bind the gutta-percha filling, through which the wires pass, thereby holding them in position and prevent any sudden shock or wear, C is the gutta-percha, D D bolts holding same in tube, E E are cables for conducting electricity, F lower plate or ring, and G upper plate, between which the gutta-percha is fastened. Fig. 2 shows the construction of the plate, like letters referring to like parts.
    “In presenting this buoy, we claim to fill a want, long-needed in inland navigation, of sounds, mouths of rivers, and approaches to harbors generally.
    
      “Sounding buoys will answer when there is motion of the water, but become wholly inefficient when the water is still, as is the case in small sounds and rivers for days at a time. We propose to give the mariner a safe and sure guide in the darkest night, as well as fog by day.
    “Believing nothing so costly as human life, and that nothing should be left undone to save it, in the urgent demands of commerce we present our plan for your favorable consideration, asking your approval of our scheme, with permission to make practical demonstration of its worth in the harbor or some of the waters" leading to Norfolk or Baltimore, or where you think proper.
    “I am, very respectfully,
    “P. E. Smith, ilFor the Partners.”
    
    “WASHINGTON, March 13, 1877.
    
    “The committee on experiments, to which was referred the proposition of P. E. Smith and others for illuminating floating-beacons by means of electricity, respectfullyreport as follows:
    “The plan of illuminating points of danger to the mariner by electricity is by no means new. It has been proposed by different persons, but no attempts have been made, as far as the committee is informed, to realize the proposition, or, if such attempts have been made, no announcement has been given to the public of their success.
    “The proposition of Mr. Smith and others is in the same condition as those which have previously been proposed, founded on principles of electricity which, although true in themselves, have as yet not been applied to purposes of the kind in question, and indeed great obstacles exist in the way of their application. These are as follows:
    “1. The difficulty of keeping up a continuous light between the poles of an electric battery, especially in a glass vessel constantly agitated by the motion of the sea, the slightest change of distance between the points being sufficient to extinguish the light.
    “2. The chafing of the cables, due to the. motions of the buoy, would render it difficult to preserve the continuity of the electrical circuit without leakage.
    “3. The expense of keeping up a continuous stream of electricity, whether by mechanical or chemical action, would be great.
    “4. The scientific knowledge required in the way of attendance could only be obtained at a large cost.
    “To overcome these obstacles by original investigation Mr. Smith and his associates have made no investigations, but expect the board to realize their conception at its own expense and by its own experience.
    “This, however, is not in accordance with the policy of the Light-House Establishment.
    “ While it gladly avails itself of all positive improvements in aid of navigation it can not receive and pay for hypothetical' improvements which are to be realized by itself.
    “Inventions must be presented to it in a condition for actual use, and if in this condition they are found to be improvements they are adopted.
    “ The committee therefore recommends that no further consideration be given to the proposition of Mr. Smith and others in its present unrealized condition.
    Very respectfully,
    “(Signed) “Joseph HeNry,
    “ Ghairman Com. on Experionents. '
    
    •X* * *x- ■>;* * * -x-
    IY. When Letters Patent No. 184553 were issued, incandescent .electric lighting had not passed the stage of a laboratory experiment, and no electric-light of any type existed that could have been maintained for more than a few hours even under favorable circumstances.
    Y. After a considerable period of experiment the LightHouse Board placed electric lights on certain buoys marking Gedneys- channel, the light being first exhibited on the night of November 7, 1888, and having been in successful operation practically ever since. The buoys are juniper spars, such as have been used for buoys for centuries. The electric cable runs in a groove, from one end of the buoy to the other, covered by a wooden batten, not water-tight. The buoy is moored directly to a heavy mushroom sinker, the shackle at the heel of the buoy running through the eye of the sinker, so as to minimize the twisting movement of the buoy at its base. On top of each buoy is an Edison incandescent lamp (made in accordance with Letters Patent No. 223898, of January 27, 1880; No. 251540, of December 27, 1881, and Nos. 264651 and 264698, of September 19, 1882), inclosed in a water-tight glass jar, protected by a heavy metal cage. The Edison lamp consists of a carbonized bamboo filament, inclosed in a glass globe exhausted of air as nearly as possible, the electricity being conveyed to and from the filament by fine wires passing through the glass. The globes used are larger and more nearly spherical than those ordinarily in use, but otherwise the lamps are of the usual type. The electricity is generated at a station on the shore, from which cables run to the junction boxes, whence a cable runs to each buoy. The cost of the necessary electric plant and of its maintenance, and of keeping the buoys and lights in proper order, repairing damage caused by ice or passing vessels, etc., is very much greater than that of the buoys and lights themselves.
    VI. The state of the art, at the date of the claimants’ application for their patent, is shown by the following patents and publications, which are made a part of this record:
    “Wonders of Electricity, published by Scribner, Armstrong & Co., New York, 1872, at pages 258, 259.
    “British provisional specification of J. H. Tuck, No. 1609 of 1857.
    “ United States patent to Gardner and Blossom, No. 20706, June 29, 1858.
    “ British patent to—
    William Bauer, No. 590 of 1860.
    H. R. Fanshawe, No. 2580 of 1862.
    P. C. A. Jodocius, No. 1751 of 1863.
    O. W. Siemens, No. 261 of 1867.
    Fleeming Jenkin, -No. 390 of 1869.
    J.' B. Stoner, No. 731 of 1871.
    “United States patent to—
    J. B. Stoner, No. 138293, April 29, 1873.
    M. Day, jr., No. 147827, February 24, 1874.
    M. Day, jr., No. 156015, October 20, 1874.
    “ British patent to—
    Chauvin, Goizet and Aubry, No. 2410 of 1875.
    J. H. Johnson, No. 2787 of 1875.
    Pryse Protherce, No. 2725 of 1876.
    “United States patent to Henry Woodward, No. 181613, August 29, 1876.”
    A specimen of the Edison lamps used on the defendant’s buoys is made a part of this record as an exhibit.
    
      Mr. John O. Qhaney for the claimant (Messrs. Dudley & Michener were on the brief):
    In view of the facts present in the case at bar, it is hardly conceivable that claimants should be opposed on the ground that there is no implied contract here to pay for the use of this invention by the Government.
    
      Here it is admitted that claimants went to the Government’s officers and agents with their patent in their hands, avowing it as their property, and proposing to sell it to them for a consideration; that the same was declined at the time because the claimants would or could not go to the expense of buoys, cables, and an electric-light plant to the satisfaction of these officers and agents.
    The said invention was not denied by these officers and the ownership of the invention was never questioned.
    At that time these officers feared that the expense of operating the device would be too much for practicable purposes and thought that there would be great difficulty in protecting the cable, etc., but they did not question the existence of an electric light of a practical kind, and only doubted their ability to maintain it in a buojr at Gedney’s Channel.
    They, however, still never doubting claimants’ patent, proceeded shortly afterwards to test the feasibility of an electric light on a buoy in Gedney’s Channel, found it practicable, and adopted it.
    The exact form of the buoy used by claimants in illustrating their invention is not used, but it is the equivalent of the claimants’ and it is an adoption of claimants’ device when any known form of buoy is used. Under such circumstances and upon such facts the law implies a promise to pay for the use of the device.
    In Gammeyer v. Newton (94 U. S. R., 225) the Supreme Court said:
    “The rule of law is well settled that an invention so secured is property in the holder of the patent; and that as such the right of the holder is as much entitled to protection as any other property, during the term for which the franchise or the exclusive right or privilege is granted.”
    In the Burns Case (12 Wall., 246) it was held that “agents of the public have no more right to take such private property than other individuals * * * as it (the patent act) contains no exception warranting any such invasion of the private rights of individuals. Conclusive support to that proposition is found in a recent decision of this court, in which it is held that the Government can not after the patent is issued make use of the improvement any more than a pri-yate individual, without license of the inventor or making him compensation.”
    In MoKe&o&ds Case (14 C. Cls. it., 396), as also in GilVs Case (25 C. Cls. R., 415), the principle. was declared that where a patentee came to the Government with his “patent m his hand, avowing the device to be property, seeking to dispose of it as such, and a responsible agent of the Government were to accept it or adopt it and put it into the Government service and the Government should derive a benefit therefrom,” the facts constitute an implied sale.
    In United States v. Palmer (128 U. S. R., 262) (at p. 269), it was held that where the claimant invited the Government to adopt his patented infantry equipments, and the Government did so, an implied contract to pay a just compensation therefor thereby arose.
    Other authorities might be cited, but it is deemed unnecessary. The Constitution recognizes patent rights as property and so do the laws made in pursuance thereof. The Constitution also provides that private property shall not be taken for public use without just compensation.
    
      Mr. Charles O. Binney (with- whom was Mr. Assistant Attorney- General Pradt) for the defendants.
   Nott, Ch. J.,

delivered the opinion of the court:

The facts in this case which have any legal significance are few and brief. The patentees offered their invention to the Light-House Board; the Light-House Board declined to purchase it for the reasons that it was still in a theoretical state; that it had not yet been subjected to any practical test; that they regarded it as too uncertain to warrant their undertaking the risk and cost of practical application.

Nothing further passed between the parties. In the course of time the Light-House Board found, manufactured, and used a device different from that of the claimants. The thing to be attained was the keeping of an electric light afloat in all kinds of weather. The submarine electric cable was not new; the buoy was not new; the electric light was not new. All that the claimants could bring to the Light-House Board was a specific method for obtaining the desired object — a safe, practical, and permanent floating electric light.

The claimants’ method for attaining this object consisted of a designated kind of electric light, two chains and two anchors, to keep the buoy in position, and of a tube through which the cable passed upward through the buoy to the electric light. A device which the Light-House Board adopted employed a different kind of electric light and discarded the two chains and anchors and the tube, though it employed a spar which may be regarded as a mechanical equivalent of the tube.

Here, then, were two things different in form and different in practical operation. It seems plain to the court that if the Government trespassed upon the claimants’ rights it was a case of involuntary infringement by the officers of the Government, which, under the decisions of this court and the Supreme Court, canmot be turned into a case of implied contract.

Upon the question argued relating to the validity of the patent the court expresses no opinion.

It should also be said that the evidence of damages is, in the opinion of the court, inadmissible. The claimants have shown what the value of the electric-light system in this channel is worth to commerce — to the commerce of the world. It may be doubted whether that would be admissible if the suit were for an infringement. But this court, in the leading Case of McKeever (14 C. Cls. R., 396; affirmed by the Supreme Court, see 18 id.,757), laid down a sufficient rule for such cases. The question to be determined is, What was the invention worth in -the market? What would the parties have taken and paid if the matter had come to an express agreement? What would any person needing the invention have been willing to pay for it?

Where a man tortiously infringes, all that he makes or saves by his wrongful act belongs to the patentee. Where he sells a right to manufacture or use his patented invention and sues in contract, his damages are what the defendant expressly agreed to pay or what the license, ■ express or implied, is reasonably worth. (Pasquean’s case, 26 C. Cls. R., 509; Hartman's case, 35 ib., 106, and cases there cited.)

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