
    PAUL BUTLER v. THE UNITED STATES.
    [No. 14889.
    Decided June 4, 1888.]
    
      On the Proofs.
    
    The Government manufactures and attaches to fire-arms the hook attachment for stacking arms covered by the Metcalf patent. The War Department does not procure a license from the inventor and holds no communication with him. After the expiration of the patent, his assignee sues to recover for the use of it, alleging that the United States by their acts promised to paya reasonable sum for the right to manufacture and use, and that the right for each hook was worth 15 cents. A considerable number were manufactured and attached to fire-arms more than six years before the bringing of the action.
    I. Where there was no express agreement looking to a continuous use of a patent right, and the nature of the thing taken was not of sueh a character as to import such an intent or to impose such an obligation, the liability of the Government arises exclusively from its own acts, and the contract, if any, is strictly that which the law implies.
    II. If an action be brought to recover a royalty for each patented article-manufactured and used by the Government without a license or express agreement, the statute of limitations will apply to all that entered into the Government’s use more than six years before the bringing of the action, and in the case of a hook attachment for stacking arms, the term “ manufactured and used” will be construed to mean the completion of the combination, so that the firearm with the patented device attached to it was ready for sale or military service.
    
      The Reporters’ statement of the case:
    The following are the facts as found by the court:
    I. The letters patent /for improvement in hook attachments No. 137786, referred to in first paragraph of petition, were issued by the United States on the 15th day of April, 1873, to Ira Merrill, and were re-issued on the 18th of August, 1874, numbered 6021.
    II. The letters patent for improvement in hook attachments No. 149141, referred to in the second paragraph of the petition, were issued by the United State# cm the 31st day of March, 1874, to Henry Metcalfe.
    
      III. The title to said letters jiatent numbered 149141, and to said re-issued patent No. 6021, and to the inventions secured thereby, became vested in the petitioner by sundry contracts and mesne assignments, as follows:
    Assignment, dated May 15,1873, by Ira Merrill to Edmund Bice, of an undivided one-half interest in the letters patent granted to Mm as aforesaid.
    Assignment, dated March 21,1874, by same to same, of same interest, made to correct error in said assignment of May 15, 1873.
    Agreement between Ira Merrill, Edmund Rice, and Henry Metcalfe, dated April 20,1874, whereby they became co-owners -of all said letters patent.
    Supplemental agreement between the parties last aforesaid, dated July 10,1874, defining the interest of each in said letters patent.
    Assignment, dated January 4,1875, by said Merrill, Metcalfe, and Rice to O. P. Deane, of all their right, title, and interest in and to said letters patent.
    Assignment, dated April 22, 1875, by C. P. Deane to T. A. Curtiss of all his right, title, and interest in and to all said letters .patent.
    Assignment, dated December 6, 1876, by T. A. Curtiss to C. P. Deane of all his right, title, and interest in and to all said letters patent.
    Assignment, dated June 23, 1877, by C. P. Deane to the claimant, Paul Butler, of all his right, title, and interest in and to all said letters patent.
    Assignments made on the 1st day of December, 1880; the first three to Charles P. Deane by said Metcalfe, Rice, and Merrill, respectively, and the fourth made by said Deane to the petitioner.
    IV. The hook attachments are in general use on both muskets and carbines in the United States Army, and are useful and valuable for stacking the same, supplying an absolute need in the carbine and in the musket as used on the frontiers, where bayonets are not used, and generally a substitute for and an improvement on the use of the bayonets for stacking ■muskets, and a fair royalty for the invention by the United States is the sum of 8 cents per hook.
    
      V. The usage of the War Department with regard to the adoption of improvements in fire-arms is as follows:
    
      “ Needed improvements in the service arms are suggested or developed during the progress of manufacture by officers and employes of the Ordnance Department, and often by officers of the line of the Army after actual trials in the hands of troops. The changes thus suggested, if promising, are put on a few arms, and after extended and thorough trials, at place of manufacture, to prove their utility, a number are made — embracing the changes suggested — for experimental purposes and placed in the hands of troops for actual trial, and in the event of such trials proving satisfactory the changes are adopted and put on all arms issued to the service. Needed improvements have been added from time to time regardless of the fact that the same may be infringements of patent rights.”
    VI. There have been attached at the arsenals of the United States to completed fire-arms, between August 18,1874, and April 12, 1886, the time of the bringing of this action, hook attachments covered by said letters patent as follows :
    (1) Between April 12, 1880, and April 12,1886, 181,792; of which arms 23,624 were issued to troops for use during the same period.
    (2) Between March 31, 1874, when the device was first used by the United States, and the 23d June, 1877, when it was assigned to the claimant, 62,603; of which arms 43,170 were issued to troops or to States during the same period.
    (3) Between June 23,1877, and April 30, 1880, 49,209; of which arms 29,210 were issued to troops or States during the same period.
    
      Mr. Benjamin F. Builer and Mr. O. I). Barrett for the claimant.
    
      Mr. F. P. JDewees • (with whom was Mr. Assistant Attorney-General Soward) for the defendants.
   Nott, J.,

delivered the opinion of the court:

The petition in this case contains four avermentsj which, taken together, present the claimant’s cause of action.

1. That on March 17, 1874, the Government adopted a patented device, being a hook attachment for stacking fire-arms, since which time 309,000 have been manufactured for use, and a large number used “ with the consent of the patentees and their assignees.”

2. That on “the 23 June, 1877, all right, title, and interest in and to the letters patent, and the invention covered thereby, were assigned to and vested in the complainant.”

3. “ That said patentees and assignees offered the use of said improvement to the United States, which offer theUnited States, after careful investigation, accepted, and adopted said improvements, and have since manufactured and used said improvements extensively, whereby the United States promised to pay to the owners of said letters patent a reasonable sum for the right to manufacture and use said improvements, and your complainant says that the right to manufacture and use said hook attachment is worth 15 cents for each hook attachment so manufactured and used.

4. “ That the United States are, by said contract, bound to pay a reasonable sum to said Paul Butler for said improvements manufactured by them and used since the 23d day of June, 1877, and for all said improvements which they have used since said 23d day of June, 1877, irrespective of the time when the same were manufactured.”

The patented device consists of a simple hook, attached to a musket, rifle, carbine, or other small-arm at the upper band. Its real value lies in its form and position, being so shaped and so placed that it makes no unsightly excrescence on the gun, and does not interfere with the sight.

On the hearing, it was argued by the counsel for the claimants that the claims of the inventors for royalty, which accrued before the assignments of the patent, passed to the present claimant by virtue of the assignments, and that an action thereon may be maintained against the United States therefor,, notwithstanding the Act 1853 (Rev. Stat., § 3477). But inasmuch a.s the petition neither sets up the assigned claims as. a cause of action, nor avers damages suffered thereby, nor seeks to recover upon them, the court declines to pass upon the validity of the assignments.

The only issue of fact in dispute relates to the value of the device, or the amount of the royalty; and the only question of law involved in the case is as to the running of the statute of limitations.

Concerning the rule for the measure of damages it is sufficient to say that the court proceeds under the same rule and by the same means as in McKeever’s Case (14 C. Cls. R., 390) and finds thfe reasonable royalty for the right to manufacture and use the patented devices of Ira Merrill and Henry Metcalfe to be 8 cents per hook.

Concerning the statute of limitations, it seems to the court manifest that this action is brought upon a contract, though an implied one, to recover a royalty of 15 cents for each hook attachment manufactured and used by the United States. There is no allegation in the petition looking to an exclusive appropriation of the patent by the Government, such as would preclude the claimant from selling rights to other persons. On the contrary, the petition expressly alleges that the user of the invention was “with the consent of the patentees and assignees,” and that by implication “ the United States promised to pay to the owners of the letters patent a reasonable-sum for the right to manufacture and use.” It is not perceived why a complete cause of action did not exist when the first completed hook was attached to the first completed gun. Neither is it perceived why the claimant’s right of action was not as complete on the 12th April, 1883, as on the 12th April, 1886; i. e., why he might not have brought his action as well within six years after he acquired a right to the royalty as within nine. There was no express contract postponing the payment of the royalty or making it contingent upon a demand or other event; and there was neither agreement nor usage-, whereby a number of items may be merged in an account stated,, and thus become in legal effect a single cause of action. Mrsi Nutffs Oase (ante).

in this case arises exclusively from its own acts; and the contract which exists, if any, is strictly that which the law implies. There was no express agreement looking to a continuous use of the patent right,, and the nature of the thing taken was not of a character to import such an intent, or to impose such an obligation.

were to take a vessel from the claimant’s wharf or a wagon from his shed, the retention of the vessel or of the wagon would deprive him of his property and import a continuous use and intent to use. Tlie obligation to return the property and compensate for the use would be continuous until it was returned. But if the Government had taken coal from the claimant’s field or corn from his crib, the obligation to pay would be complete on the instant of taking, and it is well settled that a suitor can not recover for property taken or service rendered more than six years before the bringing of his suit. (Patterson’s Case, 21 O. Gis. R., 322.)

To state briefly the situation of the case and the view of the court:

If the action is brought to recover for the taking of the invention as though it were corporeal property susceptible of being taken • absolutely from the possession of the one party and into the possession of the other, then the claim first accrued when the invention was first taken, and the whole of the demand comes within the statute of limitations.

If the action is brought to recover for the present existing user of the patented articles; that is to say, is founded on the user existing at the time of bringing the suit, then there is no evidence to show the number of the patented articles in use at that time, nor the value of the diminished user; for it is manifest that the value of the user has some relation to its period, and that an inventor can not allow his patented articles to remain twelve years m use and then, under the guise of suing for an existing user, recover damages for the entire use, past, present, and prospective.

If the action is brought, as the court understands it to be, to recover a royalty for the use of each patented article, then the recovery must be limited to articles which entered into the defendants’ use within six years from the time of the bringing of the action; and by the term umanufactured and used,” is to be understood the completion of the combination, by attaching the hook to a completed fire-arm, so that when the attachment was made the fire-arm and patented device were ready for sale or military service.

The judgment of the court is that the claimant recover of the defendants the sum of $14,543.36. 
      
       Affirmed, without opinion, by the Supreme Court, October term, 1882.
     