
    ELEANOR R. DASHIELL, Executrix, v. THE UNITED STATES.
    [No. 18741.
    Decided March 18, 1901.]
    
      On the Proofs.
    
    An officer in .the Ordnance Bureau patents certain breech-loading mechanism. The patent does not cover an extractor. Prior to the issue of the patent license is granted, at an agreed price, to the defendants to manufacture guns containing the patented improvement. The officer devises an extractor, and informs the Chief of Ordnance that he intends to patent it, and will wish pay for it, as well as for the breech mechanism. No reply is made.
    I. An action can not be maintained in this court for the use of a patented invention unless it be founded upon a contract express or implied.
    II. Where the Government acquires a license from an inventor to use one element under one patent, to wit, the breech mechanism of a gun, and does not acquire a license under a second patent to use another element of the same device, a cartridge extractor, and the ordnance officers insist that the license under the first patent was intended to cover the right to use the extractor when the device should be perfected by the inventor, the use of the extractor by the Ordnance Bureau is not a case of contract, and a suit for royalty can not be maintained.
    
      The Reporters' statement of the case:
    The following are the facts of the case as found by the court:
    I. Plaintiff’s testator was, until his death (since beginning this action), an officer of the United States Navy; he was appointed a cadet midshipman June 27, 1877, and subsequently held the following commissions: Ensign, junior grade, from July 1, 1883; ensign, from June 26, 1884; lieutenant, junior grade, from December 26,1893. Prior to commencing this action he had been on shore duty under the Bureau of Ordnance for about six years, acting as inspector of ordnance from January 10, 1891, to June 15, 1893.
    
      EE. Dashiell’s drawings of a Cartridge-case extractor were submitted to the Bureau of Ordnance (Navy Department) in November, 1890, when he was constructing the ordnance proving ground at'Indian Head, Md.; he had been sent there about September 1, 1890. While there he made the alleged invention of the extractor now in controversy. January 30, 1891, he was informed as a result of experiments that the extractor would probably fail to work, as the force of the spring was not sufficient to hold the hook down on the rim of the cartridge, and it would slip. In November, 1890, after filing' his application upon which a patent [No. 468331] was. afterwards (November 4, 1890) issued, Dashiell made a second sketch of an extractor, differing from the first in that it allowed the breech plug to move a little before the pull on the cartridge shell began, and also in that the extractor had a projection which operated so as to hold the hook firmly in place while the cartridge shell was being drawn out.
    III. Another extractor, as Dashiell knew, had been devised by another officer, to overcome the defects in Dashiell’s first extractor; this- also failed. March 1, 1891, Dashiell wrote the Chief of the Bureau of Ordnance a letter on the subject of extractors, discussing various types and inclosing a sketch of his second extractor, saying:
    “The drawings I send are full size and can be easily worked up by Worsey, who, I think, is the best gun mechanism designing draughtsman at the yard. He has been several years at Woolwich.”
    These drawings were approved by the Bureau of Ordnance-March 10, 1891.
    IY. An extractor of the second type [Patent 494917, issued April 4,1893] having been made, a 4-inch gun with Dashiell’s breech mechanism and this extractor was tested in July, 1891,. all the cases being satisfactorily withdrawn by the extractor. This was the first actual fixing test of the breech mechanism, as well as the first test of the extractor.
    Y. January 22, 1892,- Dashiell entered into the following agreement with the Bureau of Ordnance [as to Patent 494917]:
    “ Whereas letters patent of the United States for an improvement in breech-loading ordnance will be granted to the party of the'fii’st part, dated Eebruaxy 9, 1892; and
    
      “ Whereas the party of the second part is desirous of manufacturing guns containing said patented improvements;
    “ Now, therefore, the parties have agreed as follows:
    “ I. The party of the first part hereby licenses and empowers the party of the second part to manufacture, subject to the conditions hereinafter named, at such place or places as may be convenient, to the end of the term for which said letters patent were granted, guns containing the patented improvements, and to use and sell the same.
    “ II. The party of the second part agrees to make full and true returns to the party of the first part, upon the first day of January and July in each year, of all guns containing the patented improvements manufactured by them.
    “III. The party of the second part agrees to pay to the party of the first part one hundred and twenty-five dollars, as a license fee, upon eveiy gun manufactured by said party of the second part containing the patented improvements.
    “IV. Upon a failure of the party of the second part to make returns or to make payment of license fees, as herein provided, for ninety days after the dates herein named, the party of the first part may terminate this license by serving a written notice upon the party of the second part; but the party of the second part shall not thereby be discharged from any liability to the party of the first part for any license fees due at the time of the service of said notice.”
    VI. Some months prior to the execution of the above agreement Dashiell had informed the Chief of the Bureau of Ordnance that ho intended to patent the second extractor if it were patentable, and that he would wish to be paid for the use of the extractor as well as for that of the breech mechanism. No repty was made to this suggestion.
    VII. October 31, 1892, Dashiell applied for a patent for his extracting mechanism. Thereupon patent, No. 494917, was issued to him April 4, 1893. Its specifications and ■ claims were as follows:
    “ My invention relates to cartridge-case extractors for use in breech-loading ordnance.
    “In rapid-fire guns and smaller breech-loading guns generally, a cartridge case is used having a rim on the rear end thereof. When the gun is fired the. pressure of the gases is liable to expand the cartridge case and to wedge it in the gun, rendering it difficult of removal. Eor the purpose of withdrawing the cartridge case, extractors of various types are emplojmd, most of which are unsatisfactory in operation, failing in frequent instances to withdraw the empty cartridge case when it has become firmly wedged in the gun. This invention is intended to remedy these defects, and to provide an extractor 'which is certain to withdraw the empty cartridge case after each round, no matter how firmly the said case may be wedged in the gun.
    “This invention is applicable to those classes of breech-loading ordnance in which the breech plug’ is first turned about its axis through a given angle and is then withdrawn rearward in a direction approximately parallel to the axis of the bore. Thus it is specially adapted for use with breech-loading ordnance of the slotted-screw system, and works equally well either with a cylindrical plug which is drawn rearward in the direction of the axis of the bore, or with a conical plug which is swung through an arc above a pivot at one side of the breech, but which during the first' part of its rearward movement moves in an arc tangent to the axis of the bore.
    “Reference is had to the accompanying drawings, wherein the same parts are indicated by the same letters throughout the several views.
    “Figure 1 represents a horizontal section through the axis of a breech-loading gun and the breech plug, the latter being-represented as being swung clear of the gun, and the cartridge-case extractor being represented in the position in which it would be after having withdrawn the cartridge case. Fig. 2 represents a sectional view of a portion of the breech of the gun and the breech plug as it is about to be closed, the cartridge-case extractor being shown as slipping over the rim of the cartridge. Fig. 3 represents a similar view to that shown in fig. 2, after the breech is closed and the gun ready for firing. In figs. 2 and 3 the firing pin and attachments are omitted for the sake of clearness in the drawings. Fig. 4 represents a view of the inner face of the extractor, or the face next the axis of the breech plug. Fig. 5 represents a side elevation of the extractor with the spring fitted to the same. Fig. 6 represents a front view of the extractor and spring.
    “The extractor A carries a curved flange a at its forward end, whose curvature is approximatively that of the exterior of the cartridge case, so that its lower surface may fit snugly over the said cartridge case. The rear edge of this circular flange is perpendicular to the elements of the cylinder forming the cartridge case, while its front edge a' is made sloping as shown in figs. 5 and 6, so that it may be readily wedged up over the rim c of the cartridge case C. This hook-shaped flange a is on the forward end of a rectangular bar at provided near its forward end with a lug a3, and carrying near its center a spring B attached by a screw b entering the screw bole a5 to the back of the said bar. The rear end of the said bar terminates in a downwardly projecting hook ad. The breech plug D is perforated as at d to allow for the introduction of the extractor which is pushed in from the front of the breech plug, and is held in place by the inward pressure of the spring B and the hooked ends a and cd. Shoulders cd are provided on the extractor bar which project beyond the sides of the aperture d and prevent the extractor from being pushed back too far for reasons to be hereinafter shown. A shoulder may be left on the breech plug, or a separate piece dJ may be screwed on to the breech plug as shown in figs. 1, 2, and 3.
    “A recess e is cut in the interior of the gun just in front of the rim of the cartridge to allow the head of the extractor to enter freely, and is continued far enough around to allovr the extractor to be turned with the breech plug through the desired angle for unlocking the slotted screw threads.
    “The operation of the device is as follows: The breech being open, and the breech plug and extractor being in the positions shown in fig. 1, the gun is loaded, and the breech plug is then swung round briskly into the breech of the gun. The sloping face al of the extractor, on striking the rim of the cartridge, forces the extractor bar backward until its shoulder or lug al passes to the rear of the shoulder d'. Then the face a' is forced upward by the inclined surfaces so that the further forward movement of the plug and the action of the spring finally cause it to snap over the head of the cartridge. Should the hook a fail to slip easily over the i’im of the cartridge, as soon as the shoulders cd strike the face of the -plug, the whole inertia of the moving plug is brought into play on the wedge face a', and the hook a snaps over the head of the cartridge. The plug and extractor being in the position shown in fig. 3,' the gun is fired, and the gun servant begins to open the breech. The first motion is mainly a turning- of the plug about its axis, in which the head of the extractor follows through the small arc around the cylindrical surface of the cartridge case, and slips for'ward relatively to the plug the same distance that the plug is moved back in unlocking. The second motion of the plug is a comparatively rapid motion in, or very nearly in, the line of the axis of the bore. During the first part of this motion the extractor is held by the cartridge case and slips back as the plug is drawn forward, drawing the projection cd beneath the lug cl', and then the hook cd brings-up with a jerk against the rear face d* of the now rapidly moving breech plug. The plug then acts as a hammer, giving all its inertia to jerking the cartridge case clear of its seat in the powder chamber, and dragging it out into such a position that it either falls upon the ground or may be readily removed by hand.
    
      “It will be evident that, other things being equal, the heavier the gun the heavier would be the breech plug and the parts moving therewith, which together lend their inertia to starting the cartridge case from its seat in the powder chamber, and at the same time the more difficult would it be to move the cartridge case. Thus it will be seen that the herein-described extractor is specially adapted to the various sizes of gun using fixed ammunition. It will also be evident that the herein-described extractor will withdraw a dummy cartridge or an unfired round of ammunition with equal ease and safety as with an empty cartridge case.
    “Having thus described my invention, what I claim, and desire to secure bjr letters patent of the United State's, is—
    “1. In a breech-loading gun in which the breech plug is withdrawn rearward, the combination with a breech plug having a slot therein and a shoulder or projection attached to or integral with the said breech plug at the forward end of said slot, of a bar passing through said slot and having a limited longitudinal motion therein, the said bar being provided at its f orward end with a curved hook adapted to engage the rim of the cartridge, at its rear end with a hook adapted to engage in the breech plug, and on its back a projection adapted to be drawn beneath said projection on the breech plug, substantially as and for the purposes described.
    “2. In a breech-loading gun in which the breech plug is withdrawn rearward, the combination with a breech plug-having a slot therein and a shoulder or projection attached to or integral with the said breech plug at the forward end of said slot, of a bar passing through said slot and having a limited longitudinal motion therein, the said bar being provided at its forward end with a curved hook adapted to engage the rim of the cartridge, at its roar end with a hook adapted to engage in the breech plug, and on its back a projection adapted to be drawn beneath said projection on the breech plug, and a spring engaging in said slot and adapted to press said bar toward the axis of the breech plug, substantially as and for the purposes described.
    “3. In a breech-loading gun in which the breech plug is withdrawn rearward, the combination with a breech plug having a slot therein and a shoulder or projection attached to or integral with the said breech plug at the forward end of said slot, of a bar passing ■ through said slot and having a limited longitudinal motion therein, the said bar being provided at its forward end with a curved hook having an inclined face adapted to slip over and snap behind the rim of the cartridge, the said bar being also provided at its rear end with a hook adapted to engage in the breech plug, and on its back a projection adapted to be drawn beneath said projection in the breech plug; and a spring engaging in said slot and adapted to press said bar toward the axis of said breech plug, substantially as and for the purposes described.
    “4. In a breech-loading gun of the character described, the combination with the breech plug D slotted at cl and having the projection d!, of the extractor A comprising the curved hook a sloping at a', and provided with shoulders a0, the bar a4 provided with projection a3 and the hook a0,- and spring B secured to the back of said bar, substantially as and for the purposes described.”
    VIII. For rapid-fire guns cartridge shells and extractors are necessary. Rapid-fire guns are not used in the highest calibers. Six inches was at the date of the transactions now under consideration regarded as the practical limit of caliber for such guns. No extractor in existence in 1892 could have been used with the Dashiell breech mechanism (without reconstruction of the breech mechanism) except the Dashiell extractor, or possibly that of Canet. The latter was never practically applied to the Dashiell breech mechanism." October, 1890, upon submitting working drawings of the breech mechanism to the Bureau of Ordnance plaintiff’s testator accompanied them with an extractor then in ordinary course of manufacture at the Washington Navy-Yard.
    IX. In December, 1890, the Chief of 'Ordnance, U. S. N., informed Dashiell that he feared the extractor submitted would slip from the head of the cartridge case. March 1, 1891, Dashiell submitted a sketch of another extractor — that now under consideration. This extractor was completed at Indianhead, Md. (the Government proving ground), after Dashiell had filed the application upon which letters patent No. 468331 were afterwards issued.
    X. Between Juty 25, 1892, and April 13, 1896, the validity of Dashiell’s patent No. 468331 was being litigated. During this period the following correspondence took place:
    “Naval ProviNG GrouND,
    “ India/n Head, Md., April 9, 1893.
    
    “ The Chief of Bureau of OrdNANCe,
    ‘ ‘ Na/uy Department, Washington, D. G.
    
    “Sir: I herewith offer to sell to the Bureau of Ordnance the shop license to manufacture the improvements in cartridge-case extractors, for which a patent was granted me April 4th, 1893 (No. 494917), for a royalty for each gun fitted with said improvement as follows: For each 4" gun, $25; for each 5" gun, $30; for each 6" gun, $35, and increasing from these figures at the rate of $5 for each inch or fraction thereof increase of caliber. For calibers below 4", same rate to hold as for the 4".
    ‘ ‘ Should this proposition meet with the Bureau’s approval, and a regular ’contract be drawn up in accordance therewith, I desire to waive any claim for royalty upon the 4" guns to No. 30, inclusive, and upon the 5" guns to No. 20, inclusive.
    “Very respectfully, your obedient servant,
    “R. B. Dashiell,
    
      “Bnsign, TI. 8. NrnyP
    
    “No. 5044. “Bureau of OrdNance,
    “Navy DepartmeNt,
    “ Washington Oity, August 10, 1893.
    
    “Sir: (1) The Bureau has had your proposition for purchase of shop license to manufacture extractor under consideration, and has thought that no decision could be reached pending the suit regarding breech mechanism.
    “ (2) The Bureau is of opinion that if you are paid for the use of the mechanism that would include pay for extractor, as the mechanism can not be considered as effective without a proper extractor. If, however, you are not allowed royalty for the breech mechanism, the Bureau can then consider the extractor as a separate claim.
    “Respectfully, W. T. SaMpsoN,
    ‘ ‘ Ohief of Burecm of Orekvmce.
    
    “Ensign R. B. Dashiell, U. S. N.,
    
      “IT. 8. 8. New York.”
    
    “IT. S. S. New York,
    
      “Philadelphia, Pa., August 18, 1893. “The Chief of the'Bureau of OrdNANCe,
    
      uJVavy Depa/riment.
    
    “Sir: I have the honor to acknowledge the receipt of the Bureau’s letter No. 5044, of the 10th instant.
    “1. In reply I would say that the patent granted me for the breech mechanism, in regard to which the present litigation exists, was for a combination to handle quickly a breech lock and to provide an efficient firing device. As the design for an extractor was not completed until a week after the application for the patent named, had been filed, no extracting device appears in the said patent.
    “For the shop license to manufacture this mechanism the Bureau is under contract with me to pay $125.00 royalty per gun so fitted. As soon as I had devised an extractor and could defray the expenses of obtaining a patent on it I procured a separate patent on the said extractor. If the Bureau is using this extractor my claim for compensation is undoubtedly valid. That such claim is in no way excessive, but, on the contrary, just and moderate, is clear from the following-facts: The price which seemed to me to be just for a 4" rapid-fire mechanism complete was $150.00. The sum of $125.00 royalty specified in the contract was satisfactory to me for the reason that the first-named patent (the one named in the contract) lacked an extractor.. I add the cost of a 4" extractor and thus make the total royalty for a 4" gun mechanism $150.00, which figure is anything but excessive when compared to the royalty of $250 which the Bureau deems just in its contract or agreement with the Driggs Ordnance Co. as a price for each 4" breech mechanism of the Driggs-Schroeder type, or when it is remembored that that figure ($250.00) would have been the royalty to be paid the Seabury stockholders had the Bureau manufactured their device. -
    “I therefore respectfully renew the ofier to sell the shop license in question, as set forth in my last letter on the subject.
    ' “I am, sir, your obt. servant,
    “R. B. Dashiell.”
    “5730. “Bureau oe OrdNANCe,
    “Navy Department,
    “ Washington Giiy, September U¡,, 1893. “Sir: Referring to your letter of the 18th instant:
    “1. The Bureau incloses herewith a copy of the report of the board appointed to consider your claim-for royalties for the use of the extractor in B. L. guns.
    “ Respectfullv,
    “W. T. SAMPSON,
    “ Chief of Bureau, of Ord/na/nce, “Ensign R. B. Dashiell, U. S. N.,
    “ U. S. S. New York, Philadelphia, Pa.”
    [Inclosed in the above.]
    “Navy Department,
    “Bureau op Ordnance,
    “ Washington, D. G., September 13, 1893.
    
    “Sir: In compliance with directions contained in your endorsement on letter No. 5255 from Ensign R. B. Dashiell, making- a claim for extra compensation for the use of his extractor in connection with the breech mechanism which the Bureau manufactures under a shop license from him, the board has the honor to make the following report:
    “ (1) There is no mention of an extractor in the claims made under patent No. 468311, for an improvement in breech-loading ordnance, upon which the shop license, dated January 22, 1892, is based.
    ‘ ‘ (2) It appears from the report of a board, made to the superintendent of the Naval Gun Factory, dated April 28,1893, No. 2728, that the extractor being manufactured is substantial^ the one covered bjr Ensign DashielPs patent, No. 494917, dated April 4, 1893, and that it was his invention.
    “ (3) Ensign Dashiell states that his design for this extractor was completed a week after his application for a patent upon the breech mechanism was filed. The application was filed November 4, 1890.
    “(4) The working drawings of this extractor at the gun factoiy are numbered 7430, and dated March 10,1891.
    “ (5) It appears, then, that although not patented in this country until April 4, 1893, the working drawings of the extractor in question were supplied to the gun factoiy in March, 1891.
    “ (6) It further appears from the records of the gun factory that at the time of the granting of the shop license for the Dashiell breech mechanism, January 22, 1892, the extractor, had been manufactured and was in use with that mechanism.
    “ (7) The board is of the opinion that Ensign Dashiell has no equitable claim for extra compensation for the use of an extractor which was a necessary and actual part of the breech mechanism at the time the right to manufacture it was .acquired.
    “ Respectful^, “C. S. Sperry,
    “ IAmt. Oomda\, U. 8. Na/oy.
    
    “A. R. COUDEN,
    “ IÁmt. Oomclr., U. 8. Navy.
    
    “Philip R. Alger,
    
      “ Professor, TJ. 8. Navy.
    
    “To the Chief of the Bureau oe OreNANce.”
    “Navy Department,
    “ Washington, November 1893.
    
    “Sir: The Department has received and considered your ■communications of the 1st and 2d instant, in relation to your ■claim for royalty on a patent breech mechanism and patent extractor for quick-firing guns, and said communications baying been referred to the Bureau of Ordnance for remarks, were returned to the Department on the 15th instant with the following endorsement:
    “ ‘ Respectfully returned to the Department with the report [of September 13, 1893] of a board ordered to consider and report upon the claims of Ensign Dashiell.”’ [Addressed to Dashiell.]
    XI. May 28, 1890, prior to Dashiell’s invention of his extractor [No. 494911], the Bureau of Ordnance had contracted with the Driggs Ordnance Company for the right to make and use 4-inch guns, with both a patented breech mechanism and an extractor, for a royalty of $250 per gun. Only two guns were ever made under this contract, the royalties being-paid August 1, 1890.
    XII. The state of the art at the time when Dashiell first devised the extractor, shown and described in patent No. 494917, is indicated by the following patents, whose specifications, drawings, and claims are made a part of these findings:
    “U. S. patentto J. Nock, No. 7480, July 2, 1850;
    “E. Doen, No. 20940, July 20, 1858;
    “Joshua Gray, No. 48337, June'20, 1865;
    “C. B. Richards, No. 81290, Aug. 18, 1868;
    “Hiram Berdan, No. 85162, Dec. 22, 1868;
    “F. Yetterlin, No. 85494, Dec. 29, 1868;
    “D. Williamson, No. 87997, Max'. 16, 1869;
    “John Hanson, No. 109731, Nov. 29, 1870;
    “ J. W. Cochran, No. 126446, May 7, 1872;
    “W. Trabue, No. 207782, Sept. 3, 1878;
    “Paul Mauser, No. 270599, Jan. 16, 1883;
    “British patent to J. H. Burton, No. 59, Jan. 9, 1867;
    “W. E. Newton, No. 1200, Apr. 9, 1868.”
    XIII. A reasonable royalty for the device in suit would be $5 a gun. The cost of such extractors, with their springs, to the Government is $8.88 apiece for 4-inch guns and $13.94 apiece for 5-inch guns, two extractors being issued for each gun.
    X1Y. In the years 1890, 1891, and 1892, $250 per gun was a reasonable price for ordnance breech mechanism, including a cartridge-case extractor. Up to September 20,1895, defendants had manufactured 61 4-inch guns, 68 5-inch guns, and 1 6-inch gun, all fitted with a breech mechanism and extractor claimed to be covered by the patent now in question. Forty 4-inch guns and 16 5-inch guns remained in course of construction to be so fitted.
    XY. In the summer of 1891 Commodore Folger, after witnessing the successful firing of the breech mechanism in controversy at Indianhead, told Dashiell that the Government would pay for the breech mechanism. Dashiell answered that the extractor was not included in the patent which he was expecting to be granted him, and. Commodore Folger advised Dashiell to patent the extractor. Dashiell answered that he intended to take a patent, but had no money to pay expenses and would take a patent later. Later there was a conversation between them as to the amount to be paid Dashiell for the breech mechanism. Dashiell claimed that he should be paid as much as other breech-mechanism inventors were being paid by the Navy Department, but admitted that the extractor not being included he would not have a full right to that sum, which was $250 per gun, until he got a clear title to the extractor. He also told Commodore Folger that he (Dashiell) must be satisfied with less than $250 per gun at that time because he did not know whether the extractor was patentable or not. In another conversation in 1891 Dashiell told Commodore Folger he was going to have the Government pay for that as well as for the breech mechanism; at which the latter laughed and shrugged his shoulders, but gave no reply.
    January 25,1891, Dashiell first learned that what he claimed to be his extractor was attached to a Government gun.
    July, 1891, Dashiell notified Chief of Ordnance that extractor was not covered by breech-mechanism patent.
    
      Mr. 8. F. Phillips and Mr. F. D. MeEenney for the ■claimant.
    
      Mr. Oha/rles O. Bi/nney (with whom was Mr. Assistant Attorney- Genial Pradt) for the defendants.
   Davis, J.,

delivered the opinion of the court:

Compensation is claimed in this case for defendants’ alleged use of a device patented bjr plaintiff’s testator of cartridge-case extractors intended for the breech-loading guns upon which Letters Patent No. 494917 were issued. Plaintiff’s testator (Dashiell) was at the time of his invention an officer in the Navjr, charged with civil engineering work under the Ordnance Bureau at Indianhead (in the State of Maryland, upon the Potomac River), the Government ground for testing Navy ordnance. He was an assistant inspector (afterwards an inspector) of ordnance at the dates of moment in this action.

While assistant inspector of ordnance Dashiell submitted to the Bureau of Ordnance drawings of a breech mechanism. November 1,1890, he applied for a. patent on this mechanism, which was granted February 9, 1892, and numbered 468331. This patent did not cover an extractor, although the drawings submitted to the Bureau of Ordnance had included an extractor, and the specification contained this clause:

“One or more ordinary or suitable extractors are secured to the front end of the plug for effecting the withdrawal of empty cartridge shells or cases from the guns.”

The extractor so submitted to the Bureau of Ordnance was not satisfactory, and Dashiell submitted a second device, which when tried on a 4-inch gun in July, 1891, was efficient. This was the first actual firing test of the breech mechanism and extractor.

January 22, 1892, Dashiell agreed with the Bureau of Ordnance (contemplating the issue to him of a patent for his invention) that defendant should manufacture (for the term of the patent) “ guns containing the patented improvements, and to use and sell the same.” Eor this privilege defendants agreed to' pay $125 as a “license fee upon every gun manufactured * * * containing the patented improvements.” Before this Dashiell had orally informed the Chief of Ordnance that he intended to patent, if possible, the second extractor, and would wish pay for it as well as for the breech mechanism. To this suggestion no reply was made. _

The second extractor (the one now in question) is covered by Letters Patent No. 494917, issued April 4, 1893.

The claim made in this case is for the use by defendants of “ a certain extractor for use in breech-loading guns,” covered by this patent No. 494917, at the rate of $45 each. It is the extractor alone that is presented for our consideration. In Ms brief counsel “waives any contention in this case except upon the fourth claim * * *, which is as follows: ‘In a breech-loading gun of the character described the combination with the breech plug D, slotted at d, and barring the projection d' of the extractor a, comprising the curved hook a sloping at A, and provided with shoulders a\ the bar a4 provided with a projection a3 and the hook ac, and spring d secured to the back of said bar, substantially as for the purposes described.’ The questions are, therefore, as'to the patentable quality of a certain combination considered as a unit, the use and the value of such use by defendants.”' (Plaintiff’s brief, p. 12.)

The only express contract in this case is that of January 22, 1892, which plaintiff correctly contends does not cover the extracting device. Any contract by which defendants became bound to compensate Dashiell for his alleged invention must be implied from the circumstances disclosed in- the findings of fact. These show that Dashiell, plaintiff’s testator, an officer of the United States Navy, performing (at the period under consideration) shore duty under the Bureau of Ordnance, submitted drawings of a breech mechanism to that Bureau. Later he applied for a patent, which in due course was issued (No. 468331). This patent is not now in question.

In October, 1890, Dashiell submitted to the Ordnance Bureau drawings of “ certain improvements in breech-loading ordnance,” with a view of having them adopted by defendants. The device was adopted, and January 22, 1892, prior to the patent under consideration, an agreement was entered into-between the inventor (plaintiff’s intestate) and the “Bureau of Ordnance, Navy Department,” of which the material points were in substance as follows: Dashiell licensed the Bureau to manufacture, under certain conditions, during the term of the patent, guns containing the patented improvement, and to use "and sell them. The Bureau agreed to make returns twice a year of all guns “containing the patented improvements manufactured by them;” the Bureau agreed to pay “as a license fee” one hundred and twenty-five dollars for each gun manufactured by them containing the “patented improvements,” and Dashiell reserved the right to terminate the contract upon failure of payment without loss of license fees then due. Later, in a letter dated April 9, 1893, Dashiell offered to sell to tbe Bureau of Ordnance for a specified royalty tbe sbop license to manufacture tbe improvements in cartridge-case extractors, for wbicb a patent was granted April 4, 1893 (No. 494917).

In November, 1890, Dasbiell submitted to the Department of the Navy the device now in question, afterwards covered by the Letters Patent No. 494917. In the autumn of 1891 Dasbiell notified the Chief of Ordnance that be would expect compensation for the use of bis invention should he secure a patent therefor, and soon after the patent was issued he offered the Chief of Ordnance to sell to defendants a license to use the extractor at certain prices.

The agreement of January 22,1892, did not in express terms embrace the extractor device; this was not patented until April 4, 1893 (No. 494917). the inventor, an officer in the Navy who bad been employed more especially in ordnance work, in March, 1891, notified the Chief of Ordnance of the Navy that be intended to apply for a patent upon bis device for a cartridge-ease extractor, and if successful that be should expect compensation for use of the invention. October 31, 1892, be did appty for a patent; he received it in due course and, April 4, 1893, promptly after its issue be applied to the Ordnance Bureau for a contract. August 10, 1893, the Bureau answered: “The Bureau has had your proposition for purchase of sbop license to manufacture an extractor under consideration, and has thought no decision should be reached pending the suit regarding breech mechanism. (1) the Bureau is of opinion that if you are paid for the use of the mechanism that would include pajr for the extractor, as the mechanism can not be considered effective without a proper extractor; (2) if, however, you are not allowed royalty for the breech mechanism the Bureau can then consider the extractor as a separate claim.”

Sx^eedy and certain extraction from tbe gun of tbe empty shell after discharge is an essential element of any rapid firing device, and this Dasbiell aimed to accomplish; that be achieved reasonable success in bis effort is shown by tbe Government’s agreement with him as to tbe manufacture of guns containing bis patented improvements; this contract necessarily related to breech-loading rifles in which metal cartridges were used, hence an extractor was necessary and Dashiell’s extractor was then in fact in use by defendants.' The Bureau of Ordnance intended to compensate Dashiell for. the use of his device, which was deemed valuable, but naturally this intention covered the whole device; it can not be held to have covered a portion only unless such intention is evident. The agreement, however, shows nothing of the kind; it recites that a patent “for an improvement in breech-loading ordnance” will be granted to Dashiell, who licenses defendant to manufacture guns containing the “patented improvements;” that is, all the “patented improvements..” The language of this license contains no words tending to limit its plain and natural import, to. wit, that whatever was patented was covered by it. The license is not limited in effect to any portion of the device, but it'empowers defendants to manufacture “guns containing the patented improvements” — that is, all the patented improvements then the subject of discussion, examination, or negotiation; so the license foe is to be paid for “every gun?’ containing the patented “ improvements,” and the agreement is based upon the desire of defendants to manufacture guns containing the improvements to be covered by the patent in contemplation.

In fact, the Government has received the benefit of only one element of breech mechanism, even if it have received that (as to which we express no opinion), and nothing in the findings shows any intention on defendants’ part to use that element alone or to recognize any rights of Dashiell in it or any value in it as a separate mechanism. The license does not cover the claim in the case made upon defendants and the facts do not disclose a contract by implication for the use of the extractól-as a separate device.

Petition dismissed.  