
    HUBBELL’S CASE. William W. Hubbell v. The United States.
    
      On the Proofs.
    
    
      'fíús case was referred to the Court, of Claims Inj the Joint Resolution 3d June, 1864, (13 Stat. L., p. 588.) The claim is for the use l>y government of three separate inventions: the first for that of an externally spherical explosive shell, the second for a time and impact fuse, and the third for a percussion device. The joint resolution requires the court to investigate and determine, is the claimant, 1st, “ tlie original inventor of the shell and fuse, and percussion device,” or of either of them, and if he has a just and equitable right to compensation for the same; 2if, “ what amount of compensation he is entitled to receive for the uso of the inventions up to the time of adjudication, and for a full and entire transfer of his patents to the United StatesProvided, That said compensation shall not exceed one hundred thousand dollars. The court finds that the claimant is the original inventor of the fuse and of the pererission device, and awards him compensation therefor.
    
    When by a joint resolution of Congress the court is required to investigate and determine whether the claimant is the original inventor of a certain fuse, and of a percussion device, and whether he is entitled to a just and 'equitable right to compensation therefor, and what amount of compensation he is entitled to recover, and the court finds that he is the original inventor, it necessarily follows that he has a just and equitable right to compensation. This right must be determined by thexminoiples and considerations which obtain in ordinary cases between privaté persons and parties for the use of inventions or infringement of iiatents. But the damages are restricted within the amount limited in the act referring the case to the court. (Joint Resolution "Ad June, 13 Stat., p. 588.)
    
      Messrs. Carlisle and McPherson for tbe claimant.
    TIIE SHELL. TUB IMPROVEMENT CLAIMED IN THE PATENT.
    It is a reinforce — flat-based—containing a preponderating weight placed around the fuse-hole.
    
      
      The original invention.
    
    Specification prepared and sworn to January 22, 1846, and filed in Patent Office, July 13, 1846.
    
      The shell used, by the United States contains the invention patented.
    
    However near may appear tlie old mortar and howitzer systems to the present shell-gun system, they are essentially different inventions, so much so that although the former had been known for hundreds of years, it is admitted that the latter was invented by Paixhans, who first described it in 1822.
    A reinforce was used in the old mortar system, but it was excluded by Paixhans from his shell system, and has not been used by any nation but ours.
    It was introduced into our system as late as 1847.
    It was applied to the Paixhan system by Hubbell, in 1842, and having been by him perfected and recorded, was put to. practical use in April, 1843.
    . A reinforce in the shell is useful to give precision to the flight of the shell. A perfectly concentric shell without reinforce would be better, but as no shell can be made concentric, a reinforce is necessary.
    The object of the reinforce is not weight merely, but preponderance. A small weight at a distance from the center may preponderate over one nearer the center.
    Hubbell, as early as October, 1843, claimed the invention of a preponderating mass, and had then invented it.
    Although he located it in front, thinking that the best position, its use in any other position to produce preponderance is a use of his invention.
    Its use in the rear, or opposite the fuse-hole, by the United States, is to produce preponderance only.
    It is incorrect to charge Hubbell with having used the segment only to keep the fuse foremost. He thought it tended to do so, and supposed it thereby gave precision to the fire; but his ultimate object wa'S to give precision to the shell; and if he be mistaken in the mode by which the segment gives precision, he is not the less entitled to priority of invention for giving precision by the preponderating mass, let it operate as it may.
    Hubbell never claimed that the segment would keep the fuse foreipost; only that it tended so to do.
    
      This is certainly the fact. It may be that all shells revolve in their flight, but those that are perfectly balanced on their axis will revolve faster than those weighted on one side.
    If, as admitted, the segment is used in the United States shells only to produce preponderance, and if the fuse, used alone, produces preponderance, then in placing the segment opposite the fuse there must first be used metal enough to balance the fuse before any preponderance can be given; and so the segment must be larger than would be required around the fuse-hole to produce the same preponderance. The weight of the fuse co-operates with the segment around it, and neutralizes a part of the segment opposite. This is an evil. The least amount of segment should be used that will produce the preponderance desired. It “should never be greater than is absolutely indispensable,” &c.
    It is said that it is not desirable for the shell to strike fuse foremost — that it will be extinguished. This probably is the case with the old fuse, but not with the navy fuse. In the only instance where a shell is recorded to have struck fuse foremost, the fuse (a navy fuse) was not extinguished.
    
      The fuse used by the United States contains the .invention patented.
    
    The distinguishing feature in the fuse is the method of protecting the burning column from extinction by water. This is done by interposing between the burning .column a larger chamber, communicating with the outside by small vents. It is essential that the fire should pass beyond the chamber to a point where the water cannot reach it before the shell strikes the water; hence the vents are made direct, by the shortest line, into the chamber; and, to prevent such water as may enter from falling upon the burning column, the vents open opposite the base of the chamber; .and, to arrest the ' water, the vent is directed toward the base of the chamber at right angles.
    This expanding chamber was invented by Hubbell as early as 1842, and perfected in its application as early as March 9, 1843, more than two years before it was used in the navy or elsewhere.
    The combination of cap with direct vents, enlarged chamber, and open-end carrier, was first invented by Hubbell.
    He first combined them in a metal stock.
    
      He first invented the enlarged chamber.
    He first invented the direct vents.
    He first used the metal carrier with an open end. Before his discovery it was always either closed or much contracted.
    The direct vents, the chamber, the open column, all combined in a metal stock, constitute the present navy fuse.
    In the army, experiments were for range, accuracy, and time only. They were never addressed to the object of exploding shells in the sides of ships.
    No target was ever used by the army thick enough to envelop a shell or cause its explosion by concussion.
    The navy never experimented with shells before Commodore Wadsworth’s experiments with Hubbell’s shells in 1842.
    The attention of the navy was first directed to the subject by Hubbell, through Commodore Engle, commanding the Philadelphia navy yard in 1842.
    Hubbell explained his shell to Commodore Engle. He saw the importance of it, and urged it upon the department “not to let it pass — it was very important.”
    Hubbell’s was the germ of the navy shell. Improvements have been made, u but his was the germ.”
    On the 27th of April, 1843, Hubbell experimented with his shells in the presence of Lieutenant Wurtz, of the navy, who had been detailed by Commodore Engle to witness the experiments.
    Commodore Engle knew the principle of the shell, and had strongly recommended it to the Navy Department. No shells were then used in the navy. Engle has since experimented with shells, and knows what have been used in the navy. He says Hubbell’s shell was the germ of the navy shell.
    Hubbell was the first in the United States to organize shell with a burning fuse to explode on impact, and not merely on time.
    Other experiments in that direction used a detonating exploder, but none were so early as his.
    Hubbell perfected his shell to explode on impact, and reduced it to practical use in April, 1843. Those shells that struck the target, exploded by concussion; the one that missed, exploded on time. These are the perfect results which were his object, end and aim. The trial was perfect in its results.
    Hubbell has the earliest patent for his shell. He has the earliest patent for bis fuse. He bas tbe earliest patent for tbe exploder.
    Until after bis invention was perfected in April, 1843, every government device failed.
    
      Mr. J. J. Coombs for claimant:
    This case comes into court by virtue of a special act of Congress, approved June 3, 1864, entitled “ Joint Resolution relative to tbe claim and letters-patent of William Wbeeler Hubbell.”
    The petitioner claims compensation for tbe use, by tbe United States government, of three several inventions for which be bolds letters-patent, as follow:
    1. Letters-patent for “improvement in eccentric explosive shells,” issued January 22, 1856, and reissued January 19, 1858.
    2. Letters-patent for “ a new and useful improvement in explosive shells for ordnance,” (including a time and impact fuse,) issued January 7, 1862,
    3. Letters-patent for a “new and useful improvement in projectiles for fire-arms,” (including a percussion fuse,) issued January 24, 1860.
    Tbe claim for tbe percussion fuse is founded upon claimant’s patent of January 24,1860. Tbe patent covers a projectile as well as a percussion fuse, but this claim arises under that portion of it, only, which relates to tbe fuse.
    Tbe percussion fuses used by tbe government infringe tbe eighth, ninth, tenth, and fourteenth claims only, of tbe specifications of tbe patent. For tb e purposes of this case, tbe patent may be considered as embracing said four last-mentioned claims only.
    “Tbe elements of the invention are, first, a metallic ‘striker’ or plunger, traversing within an inclosing cylinder, said striker carrying fulminate upon its front end, communicating by a suitable aperture with a chamber or magazine formed within tbe same, and opening outwardly at tbe rear thereof, and striking against a projection or tube placed at tbe front end of tbe inclosing cylinder, open spaces being left along its. length, between its sides and the inner surface of tbe cylinder.
    “In tbe second place, in providing suitable communicating apertures between that portion of the inclosing cylinder at the rear end of the striker and the surrounding powder space within the shell.
    “Third. In the use of screws of soft metal, to secure the striker in the rear end of its inclosing cylinder, so that the striker may be released by means of its inertia when the projectile is fired from the gun, or in the use of a plug fitting into the rear end of the striker, and also into the rear end of the inclosing cylinder, for the same purpose.
    “ Fourth. In the combination of an inelastic seat with the rear end of the inclosing cylinder, to receive the striker as it recedes, when the projectile starts, to prevent a rebound thereof.” ■
    This is a correct definition of the invention, with one qualification which the law supplies. The qualification is, that mechanical equivalents may be substituted for any of the devices described in the patent, without changing the character of the invention. — Tatham vs .Le Boy, 2 Blatch., 486,487. Nelson, J. Blanchard Gun Stock Company vs. Warren, 1 Blatch., 278. Nelson, J. Gorham vs. Mixter, 1 Amer. Law Jour., N. S., 543. Sprague, J. McCormick vs. Seymour, 2 Blatch., 246, Nelson, J. By am vs. Farr, 1 Curt., 263. Curtis, J. McCormick vs. Talcott, 20 How., 405. Gaboon vs. Bing, 1 Fish. Pat. Cases, 397. Clieeord, J. Singer vs. Walmsley, 1 Fish. Pat. Cases, 558. Matthews vs. Skates, Ibid., 602. Burden vs. Corning, 2 Fish. Pat. Cases, 477.
    The claims of the patent are all based upon different combinations of the devices described therein, except the eighth and fourteenth, which are each based upon a single device.
    The ninth and tenth claims are the most important, as they include only the features of the invention which are absolutely essential to its practical use, and features which are found combined in every percussion fuse that has ever been adopted, or used to any extent, in this or any other country, as will be more fully shown hereafter. This is especially true of the tenth claim. Said features of the tenth claim may be enumerated as follow:
    A striker, moving freely in a carrying cylinder, having fulminate on or in its front end, to explode by percussion on striking a solid substance in front, and having, also, a magazine of powder in it, with vents to convey the fire from the fulminate to the magazine in the striker, from said magazine out into the carrying cylinder, and from said carrying cylinder into the powder space of the shell.
    All these elements are included, by express words, or by the clearest implication, in said tenth claim; and no other elements or conditions are included in it.
    The ninth claim includes substantially the same elements, with one additional element, viz., the air spaces around the striker. These spaces, or some equivalent thereof, are also absolutely essential to the effective operation of the fuse.
    The eighth and fourteenth claims are based upon special devices which may be dispensed with, without destroying the efficiency of the fuse; and they are therefore less important than the ninth and tenth. Some of the fuses used by the government clearly infringe the eighth claim, and others the fourteenth, but all infringe the ninth and tenth claims.
    DATE OE INVENTION.
    The counsel for the United States, with the aid of an expert for fifty days, at $50 per day, have been unable to find described in any American or foreign patent, or in any book or printed publication of a date anterior to the claimant’s patent, any percussion fuse containing the essential elements of this invention.
    But inasmuch as the United States have introduced a fuse said to have been made in 1856, by one Hotchkiss, containing some of the features of claimant’s fuse, (but which proved worthless on trial, and was abandoned,) we call the attention of the court to three fuses made by the claimant in 1846, and containing all the features of the ninth and tenth claims of his patent. That these fuses were made by the claimant in 1846 is abundantly proved.
    The evidence proves, beyond controversy, that the claimant made percussion fuses, embracing all the essential features of the fuse described in his patent, some ten years earlier than Hotchkiss made the abortive zinc fuse, and more than fifteen years before any similar fuse was ever described in any American or foreign patent, (except his own,) or in any book or printed publication.
    We do not allege that said fuses made by the claimant in 1846 contain the subject matter of his eighth claim, nor will we insist that they contain the precise subject matter of his fourteenth claim ; but they do contain the elements of the ninth and tenth claims, just as clearly as.the fuses described in the patent contain them. They contain, also, all the elements of one modification of the invention described in the specification of the patent.
    The percussion fuses which have been used in the military and naval service of the United States, embracing the claimant’s invention, or material portions thereof, as claimed in his patent, are the Hotchkiss fuse, the Schenkl fuse, the Parrot fuse, and the Absterdam fuse.
    And here we make the point, that this case is not to be tried as if it were a suit upon the patent against an alleged infringer. Under the act of Congress referring this case to the court, this court is to inquire, first, whether the claimant is “ the original inventor of the shell and, fuse and percussion device ” described in his patents, “ or either of them,” and whether he has “ a just and equitable right to compensation for the same.” And, second, “ what amount of compensation he is entitled to for the use of his inventions and patents.” Surely, the question whether his claims are drawn with the. utmost skill, is not submitted to the court. If he is the original inventor of the shell, fuse, and percussion device described in his patents, or either of them, and if the government has used said inventions, or either of them, then the court is to inquire whether he has a just and equitable right to compensation therefor; whether his claims are as broad as his invention or not. Undoubtedly, the court is authorized to award compensation for the use, by the ' government, of anything which Mr. Hubbell might legitimately claim by a reissue of his patents.
    If the claimant, by the unskillfnlness with which he has drawn his claims, has so limited himself to specific forms and proportions that any one can use the essential elements of his invention without technically infringing his claims, he would have to cure these defects in his patent by a reissue, before he could maintain a suit for its infringement. But the “justice and equity” of his case would be as strong before a reissue as afterward. The defect in his claims would constitute a mere technical defense, and not an equitable one.
    We are very sure, however, that the percussion fuses used .by the government do, each and every one of them, infringe tbe ninth and tenth claims of the patent, which claims cover the essential elements of the invention; and that they would be held to infringe said claims in an action for infringement.
    MODIFICATIONS OF CLAIMANT’S INVENTION.
    There are two distinct modifications of the invention described in claimant’s patent. One is described in the specification and shown in the drawings, but the other is described in the specification only.
    In that modification shown in the drawings the striker is confined in the carrying cylinder by two lead screws, intermediate between the base of the cylinder and its front cap, and when the projectile starts in the gun, its forward movement and the inertia of the striker cause the lead screws to be severed, and the striker to recede to the rear of the cylinder, there to remain until the front end of the shell strikes its object, when it flies forward against the cap in front. In this case the lead seat at the rear end of the cylinder, to receive' the striker and prevent it from bounding, becomes important. This lead seat forms the subject-matter of the eighth claim of the patent.
    In the other modification, described in the specification, the striker is held back against the base or rear end of the cylinder by a cork or plug, one end of which is set into the rear end of the striker, and the other into a hole in the base of the cylinder. In this case the striker does not recede at all on the starting of the projectile, and therefore the lead seat to receive it, and prevent it from bounding, is not necessary. The eighth claim, therefore, is not applicable to this modification. Nor are there, in this modification, any lead screws (or the precise equivalent thereof) to hold the striker and release it upon the starting of the projectile in the gun; and therefore the fourteenth claim is not applicable to it.
    But the ninth and tenth claims embrace devices only that are found combined in the same way in loth modifications.
    It will be seen, as we proceed, that the Schenkl and Hotch-kiss fuses are made on the principle of the first-mentioned modification, and infringe all four of the aforesaid claims, to ■ wit, the eighth, ninth, tenth, and fourteenth; but the Parrott and Absterdam fuses, being made on the principle of the last-mentioned modification, do not infringe the eighth or perhaps tbe fourteenth claim, but do infringe the. ninth and tenth equally with the Schenkl and Hotchkiss.
    The testimony being entirely conclusive of the fact that the claimant is the original inventor of the percussion fuse described in his patent, the government is driven to the narrow and purely technical ground of defense, that, by reason of the unskillful manner in which the claims are drawn, the percussion fuses used in the military and naval service do not infringe them, although manifestly embracing all the essential elements of the invention.
    
    It will be seen that a reasonable compensation for the past use of this invention alone, amounts to more than double the sum that the court is authorized to award the claimant, without reference to the future use during the residue of the term of the patent, the title of which will pass to the government by virtue of a judgment in favor of the claimant.
    
      Mr. JE. P. Norton, special counsel, and Mr. T. R. Talbot, for the defendants.
    It will be seen by reference to the title of the joint resolution of Congress submitting this case to the Court of Claims, and by the language of the resolution itself, that the claim of the patentee is to be confined to the letters-patent issued to him. This court has to try the validity of said patents, the originality of the inventions claimed in said patents, and decide as to the existence of the verbal contract alleged by the claimant to have been made between himself and the late Colonel Bom-ford, colonel of ordnance of the United States Army. .
    The claimant and his counsel have endeavored in their briefs, submitted in this case, to extend the investigation beyond the inventions claimed in the letters-patent of the claimant; but there is nothing in the language of the joint resolution to indicate that the issue to be tried in the court is in any respect different from the issues in patent cases tried in other courts of the United States. In one branch of the argument it will be shown by a full citation of cases that that alone which is claimed by the patentee can be made the subject of controversy between the patentee and those from whom he demands compensation for the use of his patent.
    It will be noticed by reference to the submission that the in-quines of the court are to be confined to those parts of ordnance included within the denomination of shells and fuses. There is a large range of inquiry connected with ordnance that cannot be appropriately discussed in this case. Our inquiries are to be confined solely to shells and fuses.
    
    The time-fuse is composed of a case of paper, wood or metal inclosing a column of burning composition, which is set on fire by the discharge of the piece, and which, after burning a certain time, communicates with the bursting’ charge.
    There are three kinds of time fuses employed in the United States service — mortar fuse, the Borman fuse, and sea-coast fuse.
    
    What is denominated by Colonel Benton in his work the seacoast fuse, is stated by him in a note to be a valuable fuse invented by the late Mr. Cyrus Alger, of Boston, Massachusetts, in 1842. It is a fuse known, however, in the naval service especially, as a navy fuse, and is referred to in this record by that name. This fuse is principally distinguished from the mortar fuse, by having a little cap constructed to prevent the burning composition from being extinguished, when the projectile strikes against water. It is composed of a brass plug, which is firmly driven into the fuse hole of the projectile; a paper fuse inserted into the plug with the fingers immediately before loading the piece, and a water-cap screwed into the plug, after the paper fuse has been inserted. The water-cap is perforated with a crooked channel, which is filled with meal powder. The meal powder communicates fire to the paper fuse, and the angles of the channels break the force of the water. The top of the cap has a recess which is filled with a priming of meal powder, and is covered with a disk of sheet-lead to prevent accidental ignition.
    The concussion fuse is made to operate by the shock of the discharge, or by the shock experienced in striking the object, and is applicable to spherical projectiles.
    The percussion fuse explodes by the striking of some particular point of a projectile against an object, as in the case of rifled cannon projectiles.
    PATENT oe 1858 — Eccentric Shell.
    The first of the patents of the claimant enumerated in the joint resolution was granted in 1856, and reissued in 1858, and is for an alleged improvement in the construction of a shell.
    
      The claim in this patent is a very narrow one, and is in the following language:
    “What I claim as my invention is the combination of the head or segment of the solid sphere with flat base uniformly around the fuse hole, with a segment of the hollow part forming a spherical shell with flat-based head and externally smooth, as described.”
    The purpose of his invention is alleged to consist of “ arranging a given weight of metal for a spherical shell of any size to fire from cannon or shell guns in such manner that the greatest amount of vis inertiw is obtained to keep or retain the fuse hole in front in the flight of the shell, with the least proportionate displacement of the powder space in the interior of the shell.”
    It will be seen that witnesses for the claimant and for the United States concur in the opinion that the mode of constructing shells with a reinforce, for the purpose of giving preponderance of weight around the fuse hole, is a useless invention.
    Patent oe 1862 — Time Fuse.
    The next patent in order is the patent of January 7,1862, called in the resolution “ a patent for the fuse.”
    It would seem that in this patent he intended to make a resume of everything in the nature of a fuse; of all that he claimed relating to fuses; and he has placed in a single fuze stock devices for the explosion of a shell by percussion, concussion, or impact, and upon time.
    The only fuse with which we have any concern, under this patent, is the time fuse, as described and claimed in the patent.
    The claimant claims that the fuses that are now used in the navy, known as navy fuses, are violations of that portion of his patent of 1862, which claims the invention of time fuses.
    The fuses used in spherical shells in the United States Navy at this time are described by Admiral Dahlgren as “ navy regulation fuses,” consisting of a small column of combustible composition, which has been set by driving into a paper case; that this paper case is afterward set into a bronze tube; that at the end of this tube is a water-cap, which is a small cylinder of bronze, with several perforations, the principal object of which is to prevent water, sand, or other substance from ex--tinguishing the fuse if it should encounter those substances; that at the end of the fuse is a small leaden cylinder, called the safety-plug 5 that this is generally attached to the paper case, but sometimes to the bronze tube in which the paper case is placed; that the purpose of the safety-plug is to prevent accidental explosions, and that this plug is detached by the shock of the firing, and that the flame is thus permitted to have access to the powder in the shell.
    These fuses are alleged by the claimant to be violations of his patent of 1862.
    Before reviewing the testimony of witnesses it may be proper first tb make an examination of the historical and documentary proof in this case.
    We first call the attention of the court to the report of General Maynadier, (p. 37,) dated “ South Boston Foundery, Massachusetts, September 28,1840,” and directed to the chief of the Ordnance Department. The report states that it gives the results of experimental firings made at that place with 10-inch iron howitzers. A description is given of the fuse used in these firings. In connection with this description is the following statement, extracted from the report:
    “ To prevent the extinction of the fuse by contact with water, when firing in ricochet, as also its being driven out of the fuse-hole by starting out on the shell’s striking, a fuse-caj) was used during these firings, which is found to be essential for the service of boom cannon, and which also possesses advantages that will render its use in shell-firing desirable, whatever may be the kind of gun used. This fuse cap is made of iron and covers the fuse, which is driven below the exterior surface of the shell. The cap fits in a circular space countersunk around the fuse-hole and concentric with it. It rests on the shoulder made by this countersink, and is secured in its place by two screws running through it into the shell. Four holes are bored through each cap to allow the fire from the charge to communicate to the fuse composition. These boles are covered with a piece of varnished paper, 021 which is pasted a small sheet of tin-foil, thus allowing the shells loaded and the fuses driven into them to be exposed without danger of exploding or being injured by dampness. When the shells are to be used the paper and tin-foil are torn off, and the priming, which has been inserted through the holes in the fuse-cap, is exposed. The fuses which have been fired with these caps have never failed to catch fire on the discharge of the piece, and have not been extinguished by striking the water in ricochet, or by the falling of the shell on land fuse downward. Sketches of the fuse cap, of the socket, and of the ribs for strengthening the shell, accompany this.”
    The learned counsel for the defendants, after reviewing the evidence relating to the 11 time-fuse,” remarked:
    1 We have thus traced the fuse, water-cap and case used by the United States from the year 1840 to the year 1847. We have shown that the substantial improvements which exist in the navy fuses dow in use were made in the years 1840 and 1842, by the conjoint efforts of two men now departed. The one by his genius, energy, and character, the founder of an establishment which still survives; the other, a distinguished officer, the inventor, as early as 1812, of the colnmbiad gun, (Benton’s Ordnance, p. 190,) ardent and indefatigable in every inquiry which might advance the service to which his life was devoted.
    But this claimant says that neither the one, or both combined, of these eminent men were the inventors of the improvements that have been detailed in the evidence of the United States, but that he is the sole inventor and entitled to large compensation.
    It will be observed that there is no reference made in the examination to any shell or device claimed to have been invented by Hubbell before 1842, as having any relation to the controversy regarding time-fuses. So far as the essential question in this controversy is concerned, the priority of the invention of the water-cap, the case is abandoned on the part of the claimant, by limiting the beginning of his inventions to the year 1842) for we have shown by the report of G-eneral Maynadier a water-cap which protected the fuse, without which the fuse could not be used with efficiency, and which is the very essence of the claim in the patent of 1862, relating to time-fuses.
    Patent oe 1860 — Percussion Fuses.
    Rifled ordn anee is of comparative recent use both in the United States and in Great Britain. One of the first projectiles with rifled cannon introduced into the service of the United States was that of Mr. Hotchkiss. He states that he and a brother, now deceased, commenced work and experiments with fuses and projectiles as early as 1852, and that he recognized the percussion exploder as an exploder that he first saw some time in October, 1856, soon after the return of his brother Andrew Hotchkiss from Europe; that he and his brother were experimenting with exploders of that description and firing them in February or March, 1856. He states that some of them worked well and some not, until they got them perfected, after which they did work well. He describes the species of rifled cannon from which they were fired, as having been a small cast-iron cannon, rifled, of about 2¿-inch bore. He describes the shells as being two parts of iron and one of soft metal, and that the soft metal expanded by the compression of the two pieces of hard metal being driven together. He states that the percussion exploders were in the same perfected form as the one that was presented to him, and that the only difference was that some were made shorter on account of their being for a smaller shell. He states that the percussion fuse or exploder which was shown to him, and is an exhibit in this case, was invented by his brother, Andrew Hotchkiss; and that his first recollection as to experiments in the matter of percussion devices made by his brother, was in the fall of 1852, or fore part of 1853; that his brother, in'his lifetime, employed an agent to obtain a patent, and sent on a model, the same as represented by the exhibit, to the Patent Office, and that his brother died soon after; that in the spring of 1857 he made an application by letter to the Navy Department for the testing of his improved gun and projectiles and fuses.
    It will be seen that in the spring of 1857, Mr. Hotchkiss introduced to the knowledge of the government, and placed on file in the records of the government, a description of a system of rifled ordnance, consisting of a rifled cannon, a conical projectile, and a percussion fuse.
    Subsequently, after the commencement of the war, as a manufacturer, Mr. Hotchkiss sold to the United States large quantities of projectiles with percussion fuses, first invented by his brother and improved by himself. The United States also purchased from Mr. Parrott, Mr. Schenkl, and Mr. Absterdam, large quantities of percussion fuses.
    It may be remarked that these fuses were accompanied by projectiles, sold to the government at the same time by these different manufacturers.
    These percussion fuses, manufactured and sold by Messrs. Hotchkiss, Parrott, Schenkl, and Absterdam, are alleged to have been infringements on the claimant’s patent of 1860. They are introduced by the claimant as exhibits in the case, and for the use of these fuses by the United States he claims compensation. It is not charged that the government ever has manufactured any fuses similar to those complained of; and the fact is that no percussion fuses have been made by the government, but they have been purchased from the manufacturers.
    The claimant claims to have caused to be made in the year 1846 percussion exploders which are made exhibits in this case. The witnesses who swear to have worked upon these percussion fuses, also swear that they have not seen them from the time they worked upon them until the time of giving their testimony; two of the witnesses having given their testimony in 1864, and others in 1868; periods of eighteen and twenty-two years having-elapsed since the witnesses had examined the work to which they swore. There is no proof in the record that the claimant ever showed or described those percussion fuses to a human being until the year 1859, when he made his application for a patent.
    It will be seen in the evidence of Mr. Hotchkiss that before the death of his brother, the percussion fuse which he had invented had been perfected, and fulfilled all the conditions required by the law. He employed an agent to apply for a patent, but while his papers were in the hands of his agent, he died. More than a year after his death, and more than two years after its introduction to the Navy Department, Mr. Hub-bell makes his first application for a patent, which he claimed to have invented more than thirteen years before. Suppose that before his death, in 1858, Mr. Hotchkiss had obtained a patent ? Would the Patent Office, after having granted a patent to Mr. Hotchkiss, have granted one to the claimant, Hubbell, for substantially the same thing? The decisions which have been cited, and all authoritative decisions, in England and America, concur that no patent should be granted to an inventor under such circumstances.
    Does the circumstance that death intervened and prevented the obtaining of a patent make any difference? Not under the decision of the Supreme Court of the United States in the case of Kendal vs. Windsor, which has been cited.
    But it is contended that the invention of Mr. Hotchkiss was not a perfected invention. What condition, required by law, did not exist ¶
    
    It will be remembered that Mr. Hotchkiss invented a projectile and percussion fuse which were tested by repeated experiments ; that in the spring of 1857 the firm of Hotchkiss & Co. introduced to the government of the United States a rifled cannon, projectile and percussion fuse ; that so far as the fuse was concerned, the metal of the cylinder was not strong enough to resist the firing charge of powder, although it had proved sufficiently strong in their own experimental firing; that the material was changed, and that, with some additional improvements, the fuse, with the projectile which accompanied it, was sold to the United States.
    How stands Mr. Hubbell1? In 1846 he appears by the-testimony to have caused work to be done on what was intended to be, when completed, a percussion exploder or fuse; in an incomplete condition, without a single test or a single experiment, it was laid aside. In 1859 an application is made for a patent. In the interval, a percussion fuse had been, without any knowledge of his invention, perfected and introduced to the government of the United States. It is true that it had not been introduced to the public by the granting of a patent. But what public has the inventor in ordnance but the government of the United States ? To that government it had been introduced, was in their possession, and was described by written description in its archives. What had Mr. Hubbell done % Whatever he had invented he had concealed, although in constant communication with the government. Indeed, in 1859, he was before Congress for compensation for his invention, and Admiral Dahlgren and other officers were before a committee created at the request of Mr. Hubbell. But not a word was said about a percussion fuse. He seemed to have forgotten that he was the inventor of such a thing. And it was not until after that Congress had adjourned, the fall of 1859, that an application was placed upon the files of the Patent Office. He never has subjected one of his percussion fuses to the test of practical experiment, neither- his device of 1846 or of 1860. His devices exist alone in theory. Under such circumstances, what right has he to demand compensation from the United States for the use of percussion fuses which it has purchased from Mr. Hotchkiss, and other inventors, who have presented to the government inventions approved and tested by actual experiment and use?
    The evidence introduced by the claimant clearly shows that whatever he might have devised in 1848, with regard to a percussion fuse, he had abandoned it. Concussion, with his plugs and vents, Avas the sole and predominant idea. All the witnesses who speak favorably of his shell, place its excellence in its concussion device, the misfortune being, howeA’er, that the government could never see its excellence and haA'e never used it.
    VALUE OE THE INVENTION — COMPENSATION.
    The first question submitted to the court is: Is William Wheeler Hubbell the original inventor of the shell and fuse and percussion device claimed; and has he a just and equitable right to compensation for the same ?
    In'other words, if William Wheeler Hubbell is the inventor of the deAdces patented by him, has he a just and equitable right to compensation ?
    As has been stated already, the allegation that there was a contract between Mr. Hubbell and the Hnited States through Colonel Bomford, was the cause manifestly of the passage by Congress of the resolution. The resolution states that one of the reasons for sending this case to the Court of Claims was that the testimony with regard to the validity of the patent and the verbal contract was so voluminous as to require legal investigation. What pretense of proof Hubbell may have made before the committee of Congress of the existence of a verbal contract we do not know; but we do know that in this ease he has presented no proof whatever.
    He is not entitled to compensation for the patent of January 19,1858, because the device which he pretends to have invented Avas in use long before he claims to have invented it, and because the alleged invention will not produce the effect that is claimed for it; and also, that, if it did, it would be injurious Avhen used in connection with the fuses now and always used by the Hnited States.
    He is not entitled to compensation for the use of the time fuses used by the Hnited States, because he was not the original inventor, as is demonstrated by the eAddenee we have introduced.
    He is not entitled to compensation for the use of percussion fuses which he claims, because the United States has never used fuses of the description which he claims in his patent. And even if the United States had used the invention which he claims of 1848, he has no just and equitable right to compensation, because for the period of fourteen years he concealed that invention from the knowledge of the government, although in constant communication with it for that length of time, and because another inventor, without any knowledge of HubbolPs alleged invention, more than two years before lie made application for a patent, constructed a percussion fuse similar to that which he alleges that he invented, made it known to the government, and subsequently sold in large numbers fuses .made substantially upon the plan of the one first introduced by him to the government; and because percussion fuses were in public use in Europe and known to all ordnance men of the civilized world years before the date of the patent of the claimant.
   Casey, Ch. J.,

delivered the opinion of the court:

This case has been referred to this court by ajoint resolution of Congress, approved June 3,1864, and jurisdiction was thereby conferred upon us u to investigate and determine—

“ First. Is William Wheeler Hubbell the original inventor of the shell and fuse and percussion device aforesaid, or either of them, and has he a just and equitable right to compensation for the same ? and

Second. What amount of compensation is he entitled to receive for the use of his inventions and patents, as claimed, up to the time of the adjudication, and for a full and entire transfer of his patents to the United States 1”

Ey a subsequent proviso the sum which the court is authorized to award and adjudge is limited to one hundred thousand dollars, and payment of such sum as this court shall award “ shall vest the full and absolute right to said patents in the United States.”

In pursuance of this joint resolution, the claimant filed his petition in this court. The United States have defended the case upon the ground that the claimant, Hubbell, was not the first and original inventor of the shell, the fuse, and the percussion device, or either of them, and that he is therefore not entitled to any part of the sum we are authorized to adjudge. The case has been prepared and presented with great care and elaboration on both sides. On the part of the claimant, by his own extensive scientific, mechanical, and legal knowledge, aided by eminent counsel, the case has been developed, in its facts and theory, with great fullness and completeness of analysis, description, and detail; while on the part of the defendants, the exhaustive and skillful labors and arguments of the Assistant Attorney General, and the special counsel for the United States, have greatly lightened our labors and assisted us in reaching the conclusions we have arrived at.

The claim made is for compensation for the use of three separate and distinct inventions, of which the claimant alleges he was the first and original inventor, respectively, and that they are severally not only new, but useful, practical devices.

The first claim is for an externally spherical, explosive shell. And for this shell the plaintiff claims the combined results as a unit of greatest accuracy, greatest range, greatest power of blast, and greatest strength. These results he alleges he attains by combining a flat-based internal segment of preponderance or compensation, uniform or concentric with the axis of the fuse or fuse-hole, a smooth, spherical external surface of shell, a heavy brass fuse, and a sabot of wood to control the entrance, position in and exit of the shell from the gun. This shell the claimant caused to be patented on the 22d day of January, 1856, and on the 19th of January, 1858, had it reissued to embrace some improvements made after the date of the first patent, and to correct some errors or inaccuracies. In the schedule or description annexed to that patent, he states the object sought thereby to be accomplished as follows:

“ The nature of my invention consists in arranging a given weight of metal for a spherical shell of any size to fire from cannon or shell guns, in such manner that the greatest amount of vis inertia} is obtained to keep or retain the fuse-hole in front, in the flight of the shell, with the least proportionate displacement of the powder space in the interior of the shell, by combining with and uniformly around the fuse-hole the flat-based segment of a solid sphere, and with and behind this the segment of a hollow sphere, forming externally a smooth spherical surface, and internally the eccentric form with flat base around the fuse-hole.”

Tbe second claim is for tbe use of a time and impact fuse, and is covered by tbe claimant’s patent of January 7, 1862. Tbis latter patent embraces also a shell or projectile in connection with tbe fuse, but no claim is made in respect of it in tbis case..

He describes, generally, tbe invention as follows :

“First. In constructing an expanding fire chamber around' tbe mouth of tbe burning column of tbe fuse, with a flat base- and direct or quick-acting vent, to expand and bold tbe fire tO' explode tbe .shell, notwithstanding- tbe entrance of water.

“ Second. In tbe construction and manner of application of an improved device to explode tbe projectile on percussion after firing it from a gun, as well as on time.

“Third. In tbe construction and manner of application of an improved device to explode tbe projectile on concussion, after firing it from tbe gun.

“ Fourth. In tbe construction and manner of application of an improved device to explode the projectile on impact after firing it from the gun.

“ Fifth. In tbe construction and manner of application of an improved device to explode tbe projectile at any instant of time, and any place or position, after firing it from tbe gun.

“Sixth. In tbe construction and manner of applying these improved devices together in one projectile, so as to develop their respective properties, as exigencies may require in an action, in tbe same projectile.”

After a special and minute description, with full reference to tbe plates and drawings, be says:

“Havingnow fully described my invention, and tbe manner of making and using it, what I claim is—

“First. I claim tbe vent‘15,’ opposite and nearly or quite at right angles to tbe base of tbe chamber ‘ 4,’ to receive and discharge tbe fire as quick as possible, and deliver tbe water direct on tbe base of the chamber to diffuse it in tbe best manner, as described.

“ Second. Also I claim expanding tbe fire in au enlarged chamber around the mouth of tbe burning columns, so as to secure a large body of fire to insure tbe explosion of tbe shell as described.

“ Third. I also claim combining tbe percussion exploder with tbe burning fuse, by securing tbe cylinder F ’ to the inner end of tbe fuse stock, and providing it with a head for the striker, inside of the cylinder, sons to unite the percussion and the fuse principles for explosion, as described.

“ Fourth. I also claim the lead stopper b*,’ inserted in and secured to the inner end of the fuse stock, by screw-threads or similar means, as and. for the purpose described; and also forming the chamber or space 1V between this stopper and the burning column,.as described.

“Fifth. I also.claim the chamber ‘q? and its opening‘p’ between the liead.M and the fuse column, as described.

“ Sixth, I also claim the lead or metallic stopper ‘Z Z’ in the metal base or groove covering the holes 1 and releasing on concussion to explode the projectile, .as described.

“ Seventh. I claim the fire-chambered water capping combined with the cylindrical fuse opening or stock, carrying the. burning column with cylinder opening at the inner end to hold the fire and explode the shell on impact, as described.

“Eighth. I claim the adjustable, metallic timing rod (W) in the burning column, or near its side, to adjust the fuse to explode the projectile at any instant of time, as described. Also, I claim the strand of quick match Hi’ in its lower end to raise and lead the fire down on time, as described.

“Ninth. I claim the fire chamber ‘Í’ in the capping between the water table or plate 2/ and the capping vent, formed by combining them to .prevent extinguishment of the fuse, as described. Also, I claim the raised ventc 3 ’ of the water table into the chamber, as described, to increase its capacity to exclude water. Also, I claim the chamber (1) between the vent 13 ’ and the orifice of the column ‘ vj as described.

“Tenth. I claim forming an enlarged or priming chamber ‘ 7 ’ around or by the side of the timing rod, to insure an ignition of the fuse by presenting a large priming surface for the smaller vent, and allow the timing rod to extend through the capping and be adjusted, without interfering with the priming, as described.

“Eleventh. I claim the file cuts or fracturing points on the side of the timing rod, so as to break it off without the use of an instrument, in adjusting the time in action, as described. And I also claim the quick or double three or four threaded screw on the timing rod, to adjust it quickly, as described.”

The third claim of the plaintiff is for a percussion fuse, as described in his patent dated January 24, 1860.

The elements of the invention, according- to Mr. Burr, examined as an expert, are:

“First. A metallic striker ’or plunger, traversing within an inclosing cylinder, said striker carrying fulminate upon its front end, communicating by a suitable aperture with a chamber or magazine formed within the same, and opening outwardly at the rear thereof, and striking against a projection or tube placed at the front end of the inclosing cylinder, open spaces being left along its length, between its sides and the inner surface of the cylinder.

“ In the second place, in providing suitable eommunicating apertures between that portion of the inclosing cylinder at the rear end of the striker and the surrounding powder space within the shell.

“ Third. In the use of screws of soft metal, to secure the striker in the rear end of its inclosing cylinder, so that the striker may be released by means of its inertia when the projectile is fired from the gun, or in the use of a plug fitting into the rear end of the striker, and also into' the rear end of thé inclosing cylinder, for the same purpose.

“ Fourth. In the combination of an inelastic seat with the rear end of the inclosing cylinder, to receive the striker as it recedes, when the projectile starts, to prevent a rebound thereof.”

The claims in this patent which relate to the fuse are the sixth, seventh, eighth, ninth, tenth, eleventh, and fourteenth, and are as follows: ,

“ Sixth. I claim the extension of the carrying cylinder r r, to the back part of the projectile, in combination with the metallic striker *, the spaces 4, 4,4, 4, Fig. 8, and the rear side orifices v, so as to allow the projectile time to penetrate and the striker to effect its explosion.

“ Seventh. The flat sides or open spaces 4, 4, 4, 4, Fig. 8, between the striker and the cylinder, to allow the air to pass through from rear to front and front to rear of the striker to facilitate its effective action in the cylinder.

“Eighth. The seat of lead u, at the base of the cylinder, to receive the striker as it recedes to the back part of the cylinder, and by its non-elastic nature prevent a reaction of the striker in the cylinder when the projectile starts in the gun.

“ Ninth. I claim the fulminate in the front end of the striker in combination with the cylinder, the tube to, the chamber y, and the spaces 4, 4, 4, 4, Fig. 8, so as to carry ¿he fulminate in tbe gun, and cause it to explode the shell with a certainty and ease, on penetration, as described.

“ Tenth. The combination of the firing vents v, v, in the rear of the cylinder, with the magazine of powder y, in the striker, so that the striker when it explodes the fulminate in the front of the cylinder shall discharge a body of fire back, in the cylinder and through these firing vents, to explode the shell after a sufficient time has elapsed to allow it to penetrate.

u Eleventh. I claim the wooden cylinder seat 8, in combination with the cylinder and striker, to steady the cylinder and receive the striker when starting in the gun; and also I claim the auxiliary magazine of powder t in the cylinder seat, in combination with the striker, to facilitate the firing of the contents of the shell through the vents v v.

Fourteenth. I claim the combination of the two opposite lead screws 2, 2, with the cylinder and the striker, forward-of the center of gravity of the striker, so as to secure and release and allow the striker to operate without impinging on the cylinder as it is released, and without obstruction from the severed metal as it plunges forward, as described.”

These claims are denied on the part of the United States. They insist that Hubbell is not the first and original inventor of the shell as'claimed, or of either the time and impact fuse ox the percussion device; or that, if he was the original inventor of any of the arrangements or devices claimed in any of his patents, that they were not new and useful devices and inventions, reduced by him to a practical end and purpose, and introduced into public use.

1st. They allege that the combination of the segment of the solid sphere with flat base uniformly around the fuse-hole will not accomplish the object proposed by Mr. Hubbell in his invention and patent, which was to obtain such vis inertia} for that part of the shell as to retain the fuse-hole in front in the flight of the shell through the atmosphere.

2d. It is contended that if it would accomplish and attain the object proposed by the claimant, any other re-enforcement in that part of the shell, in any other form, shape, or manner, which would increase the preponderance of the weight of that part of the sphere, would produce the same result as the particular flat-based segment of Hubbell; and that various forms of re-enforcement of such shells bad been nsed and known prior to the date of the claimant’s invention.

3d. They also allege that eccentric shells with flat-based segments were described and published in two several works long prior to the date when Hubbell claims to have made his invention and discovery. And they present a description and drawing of such a shell from a work by Louis de Toussard, published at Philadelphia iu 1809, entitled “The American Ar-tillerist’s Companionand also from a French book entitled “Nouvelle Force Maritime,” by H. J. Paixhans, published at Paris in 1822. The re-enforcement by a flat-based segment in these cases is opposite instead of at the fuse-hole.

So in regard to both the time and percussion fuses. The United States deny that Hubbell was the original inventor of the same, as claimed in his respective patents. They have presented many reports and voluminous evidence to show that the elements, arrangements, and combinations of the fuses as claimed by him were known, applied, and used before the date of his invention.

The evidence on these transactions covers a period of a quarter of a century, and embraces nearly the whole range of experiment and improvement of that period in ordnance and projectiles. This is contained in about sixhundred closely printed octavo pages of proofs, besides numerous drawings, together with many exhibits of shells and fuses, in the different stages of improvements of that period, both of those made by the claimant and other experimenters and inventors. Any statement or condensation of the evidence within any reasonable limits of an opinion is therefore impracticable. After a long, patient, full examination and comparison of the evidence on the one side and the other, we can only state the conclusions, or ultimate facts, at which we have arrived. And these are:

1. That Hubbell is not the first and original inventor of the flat-based re-enforced shell, as claimed by him in his patent dated January 22,1856, and reissued January 19,1858. Nor will said device and invention accomplish the objects and purposes designated in said patents. And the irse of the shell in question by the United States was no injury to the claimant or any infringement of his patents.

2. We further find that Hubbell was the first and original inventor of the time and impact fuse, as claimed by him in his patent, of January 7,1862. And that such fuse has been largely and extensively used by the United States, in violation of his rights as patentee. And that he is justly and equitably entitled to compensation therefor, under the joint resolution of Congress before recited.

3. Wo further find that Hubbell, the claimant, is the first and original inventor of the percussion fuse, as claimed in his patent of January 24, 1860. It is proved that these fuses have been used in great numbers by the United States, in derogation of claimant’s rights secured by his patents.

We cannot doubt, after examining the proofs contained in this record, that shells with flat-based segments were known and used long before the claimant’s alleged invention. They had been accurately and fully described in published works in this and foreign countries. Whether re-enforcements in that form had been made and used immediately around the fuse-hole, as in claimant’s patent, is in our judgment immaterial in this case — re-enforcements to give preponderance of weight to a particular part of the shell. Other forms of increasing the thickness of the shell around the fuse-hole, to give bearing to the fuse and increase the strength of the shell, were also well known, and had been made in various shapes and forms before the claimant’s invention. But if the fact were otherwise, it would not avail the claimant. The invention must not only be new but useful. And it must accomplish by the means prescribed the proposed object and purpose. Tested by this standard, the claimant wholly fails on this branch of his ease.

The declared object of this re-enforcement and increase of weight at the fuse-hole, is to prevent the rotation of the shell as it passes through the air when fired from a gun, and therefore to cause it to strike the object against which it may be directed fuse foremost. Now all the evidence offered satisfies us beyond all reasonable doubt, that these appliances do not prevent the rotary motion of spherical shells when fired from smooth-bore ordnance. And the point of impact of the shell with the object fired at must be purely accidental. And this is none the less so than if such re-enforcement were entirely wanting. That such re-enforcement may secure greater range and accuracy of flight to the shell is not to the purpose; for, in the first place, this was not the proposed and declared object and purpose of the invention; and, in the second place, any other form of re-enforcement, or increase of tbe weight, either at that or any other part of the shell, would produce the same effect as that proposed by claimant ,• and, in the third place, such re-enforcement, and with this view, had been made and used and described long before the date of the claimant’s invention.

And on this branch of the claim, we find that the claimant was not the original inventor of the shell, and is not entitled to receive any compensation for its use by the United States. And as to so much of claimant’s petition as claims compensation for the use of such shell, we find for the defendants and dismiss the petition.

In regard to the claim made for the use of the time and percussion fuses, wo have arrived at the ultimate facts already announced. There is an immense mass of testimony upon the one side and the other. Some of it is vague and general, and much less precise, definite, and satisfactory than we could wish. Much of it is conflicting, and some of it irreconcilable with other proofs in the case. Nor do the witnesses alone differ as to the facts, but are equally at variance in the opinions expressed in regard to the many devices and inventions that have come under review. Experts called upon each side, and claiming full and accurate scientific and practical knowledge of the subjects, reach diametrically opposite conclusions. Eival claimants have attempted to uphold their own inventions and to depreciate all others. The failure of the memory of some of the living witnesses — the death of others — in the thirty years covered by the history and progress of these inventions, have all combined and tended to make the investigation a tedious and a difficult one.

Inventions like those in suit are peculiarly affected by the causes named, and by a variety of other considerations. It was not one that was to come into genéral use, but to be used by governments alone. To bring the invention to anything like perfection, required repeated trials and experiments. The government alone possessed the necessary means and facilities for making such trials. Such tests had to be made in some degree in a public manner, or at least in the presence and under the direction and control of the officers of the government. It was a time, too, when private and professional talent and genius were directed very earnestly to improved ordnance and projectiles. And in that period, the whole system of modern warfare has been recast and revolutionized by improved and more deadly implements of destruction; and especially by the invention and general introduction of rifled cannon with spiral grooves, and the substitution of elongated or conical projectiles for the spherical balls and shells theretofore used.

Through this confused and incongruous mass of proofs, written and oral, and the obscure and dim history they afford of the rise, progress, and perfection of the inventions under consideration, we have been compelled to reach our conclusions. Where so many minds have been directed to the attainment of the same object, it is often difficult to ascertain with certainty who is entitled to the credit of the perfected and completed invention.

It would seem but natural that in inventions like those under consideration, where their final success depends upon complex arrangements, combinations, and adaptations, that some of the same ideas and elements should occur to different persons. Such was doubtless the case in regard to these fuses. For years private parties, as well as various officers of the army and navy, had been directing their thoughts and inventive powers to the production of a fuse that should be both certain and exact in the explosion of shells. Among these, as the evidence demonstrates, there was no more intelligent, scientific, and persistent worker than the claimant. It is fully sustained by the evidence that he has contributed in an important degree, by his inventions, to the present improved and efficient projectiles in use in our army and navy. That, in his intercourse with officers of the army and navy, in the early trials and experiments made upon his inventions, Mr. Hubbell may have received very important information and suggestions in regard to his fuses, is doubtless true; and that he availed himself of some of these suggestions in completing and perfecting his inventions, will in no wise impair his rights as an original inventor. Nor will the fact that others, either before or about the time of his invention, made trials and experiments of some of the elements, devices, and arrangements of his inventions, invalidate his patent or defeat his right to compensation under the joint resolution. If he was the first, as we believe him to be, to combine and arrange the various elements and devices that constitute the fuses used by the United States, so as to make tbem a practical, efficient, and complete invention, and to so delineate and describe tbeir parts, combination, and construction as to enable others to make, apply, and use them, and such device is useful and accomplishes the purpose proposed, he is entitled to recover. And upon a full and careful review of all the proofs, a majority of the court is satisfied that the claimant fairly brings himself within these principles, so far as the time and percussion fuses are concerned. The papers and specifications made out, witnessed, and sworn to by the claimant in 1842 and 1843, describing some of the main features of his inventions, the trials and experiments made in the latter year, and the full and minute description filed in the Patent Office with his application and caveat in 1846, accompanied with the exhibits of completed and perfected fuses, made about the same time, establish, as we think, clearly his right as the first inventor.

Nor does the report of General Maynadier of his experiments in 1840, nor the testimony of Wade of his trials of fuses in 1843, in our opinion, show the contrary. So far as any similarity existed between the fuse used by Maynadier, in 1840, and those of the claimant, they were mere trials and imperfect experiments, that never resulted in a complete combined arrangement and invention. And from data and reports furnished of the trials and experiments alluded to by Major Wade, as made with similar fuses, in 1843, we are satisfied that he is mistaken in the dates, and that the fuses to which he refers were not used or made until 1846 or 1847, and when the claimant’s specifications were on file in the Patent Office. So far as the claim of the late Mr. Cyrus Alger, of South Boston, or his representatives, is concerned, there is no proof in the record that he, prior to 1846 or 1847, ever made any claim or pretension to the invention of any part of the fuse made and fully described before that tizne by the claimant. Mr. Alger, it is true, having a foundery at South Boston, at which projectiles for the government were made, like many other ingenious men, had his mind and thoughts turned to this subject. In the numerous trials and experiments made by him in connection with officers of the army and navy, he may and probably did use some of the devices and arrangements incorporated in the claimant’s invention. They may have been the suggestions of his own mind, or they may have been derived from the officers who had made the experiments for the claimant. In any event, as we understand the proofs, these trials and experiments did not result in a complete and perfected invention until after the claimant had completed his inventions, described them fully, tested their efficiency, and filed his specifications and application for a patent.

If we are right in these facts, it necessarily follows that all the other and later claims and patents, given in evidence by the defendants, so far as they claim the same invention or parts of it, are the merest piracies upon and infringements of the claimant’s inventions.

That these inventions have been and are of great importance to the government is apparent. Several millions of these fuses were used during the war of the rebellion. Their importance has been greatly augmented by the introduction of rifled. cannon, and especially the impact or percussion fuses, by the use of which, in conical shells, their destructiveness is greatly enhanced by securing certain explosion after complete penetration of, or while imbedded in, the object at which it is fired. But their future use is also secured to the government without farther compensation; for, by the terms of the joint resolution, the damages we may award to him shall be not only for compensation for the use of his inventions and patents, as claimed up to the time of adjudication, but also for a full and entire transfer of his patents to the United States.

The fact that Hubbell is the original inventor of the fuse and percussion device, answers the question of whether he has a just and equitable right to compensation for the same. This just and equitable right to be paid for the use of his invention by the United States must be determined by those principles and considerations which obtain in ordinary cases for the use of inventions or infringement of patents. Were they private persons or parties who had used these fases in the same manner, would he have a claim to damages for that use? Would a bill in equity be sustained against them to enjoin the farther unauthorized use of the inventions, with an account for past use? Had he abandoned his inventions; had he in any way dedicated them to public use; or had he, by anything done or omitted on his part, debarred or precluded himself from a recovery for such infringement or use? So far as this record shows, all these questions must he answered in favor of the claimant-. The fact being conceded or determined that he is the original inventor, and the use undisputed, his right in every respect to compensation is complete and perfect, and nothing has been shown from which we can infer that he had relinquished or released that right, that he had donated its use to the United States, or in anywise abandoned his invention.

The only remaining question is the amount of that compensation. Were this an action for infringement, or a bill to restrain its use, with an account of profits, the rule and measure of damages are well settled.

The actual loss sustained by the patentee is to be measured by the actual profits or benefits received by the infringer. And where this cannot be ascertained with exact and absolute certainty, it is, as in other cases, to be arrived at as nearly and approximately as the nature of the case will permit. Where the use of the invention is limited, as in the present instance, to a single party, the application of the rule is attended with no little difficulty and embarrassment. (See 3 Wall, 320.) We are, however, relieved from any such dilemma by the action of Congress in the joint resolution under which we are trying this action. They have prescribed a special rule for this case, and limited the amount that may be awarded under it. If the claimant be the original inventor of the shell and fuses, as claimed, and be justly and equitably entitled to compensation for them, the sum is not to exceed one hundred thousand dollars ; and his bringing suit and claiming the damages are to be deemed an acceptance of the sum awarded in full of all claim for the use of the inventions and the transfer of the patents. This limitation embraces the three patents as claimed. That for the shell having failed, we are limited to a proportional amount for the other two inventions. Or, in other words, we have no power to award any sum beyond the two-thirds of one hundred thousand dollars. The actual value of a reasonable royalty on the fuses used by the United States since the date of the claimant’s patents would, according to the opinion of professional and expert witnesses, measured by the usual rule, be much greater. Estimated upon that basis and upon the proofs, the actual loss to the claimant and the real gain to the defendants would be little, if at all, short of two hundred thousand dollars. But we are precluded from using this measure of .damage for any other purpose than to ascertain the extent of his just and equitable right to compensation, within the rule and amount prescribed for us by Congress.

. And from all these considerations we are of opinion that, for the use of the ifases and the transfer of his patents' to the United States, the claimant should recover the sum of sixty-six thousand six hundred and sixty-six dollars and sixty-six and two-thirds cents, ($66,660 66|.) And for this sum, upon due consideration,.judgment is entered in his favor.

Peck, J., concurred in this opinion, except as to the amount of damages awarded, which he thought too large.

dissenting.

The counsel for the petitioner claimed that, under the joint resolution referring this case here, he was entitled to compensation for any inventions of his in the shell or fuses used by the United States, although they were not specified in the claims (technically so called) annexed to his .specifications, and for which the patents were issued.

I do hot concur in this. In our system of patent law an invention is not a ground of action'unless it is made so by a patent; and' to determine what inventions shall be patented, and thus become grounds of action, is not a judicial function-. That belongs to the Commissioner of Patents, whose knowledge and means of.information, comprehending the history of inventions, qualify him for the duty, while the. judicial knowledge of a court is confined to the evidence adduced in the case before it, and all it' can do is to determine the validity of the patent on its record, and the grounds of action on that as it' was issued. And it cannot alter the patent nor add a claim to it, for it.cannot know that such claim would have been allowed by the Commissioner, or that a patent would have been issued had the claims in it been otherwise than they are.

And I find nothing in'the resolution of June 3, 1864, from which I can infer a.legislative intent to alter our system of patent, law, or to vest in this court-a jurisdiction over these patents which was .to be independent of the law of patents. Qn the other, hand; I think the only purpose of this resolution was .to open this court to the claimant, and thus to give him what he would not have had otherwise, a judicial decision of bis legal demands upon these patents against the United States. And I think that this is shown in the resolution.

The preamble of the resolution, which declares its purpose, states, as the reason of the reference here, that the mass of. testimony submitted with the patents, “especially in regard to the validity of the same,” prevented the committee from u giving the case the careful legal investigation its importance demands.” And a legal investigation into the validity of patents can only be made by and according to the law of patents. And the enacting clauses of the resolution conform to its purpose, and are to be construed in relation to it. They direct us to ascertain whether the claimant has a just and equitable right to compensation, and what amount of compensation he is entitled to. And right and title apply to legal claims, and not to a bounty or reward.

It was urged at the bar that the resolution directs us to investigate whether the petitioner is the “ original inventor” of the shell fuse and percussion device.

But this is to be construed with the rest of the resolution,, and with its preamble setting forth its purport, and with reference to the law pertaining to the subject. And then I think the words “ original inventor” cannot be construed literally, for an original inventor may not be the first inventor; and Congress could not have intended that the claimant should have .a right to and be entitled to compensation for a device invented by him years after it had been in use by the United States, or for an invention abandoned and never patented by him, nor disclosed till years after others had invented it, patented it,, and brought it into use. And it is observable that the claimant avers in his petition he was the first and original inventor of the device he patented.

It was also claimed for the petitioner that we might find him entitled to compensation for anything that he might, on the evidence before us, cover by a reissue of his patent. • But I think this is not so, for we cannot forestall the judgment of the Commissioner, nor assume that the evidence adduced here, which makes the extent of our j udicial knowledge, is all that his means of information will furnish him with for his conclusion, or that that will coincide with ours. Our action is tó be confined to the record before us, and wc cannot speculate on what may appear before another tribunal, or on what may be done by it in a matter not within our jurisdiction.

For these reasons I think that this case is to be tried here by the same rules of law which govern actions on patents between individuals in courts having jurisdiction of such actions; and that the claimant can recover only on the claims authenticated by his patents and specified in them, and made public notice of what he claimed, and that he disclaimed all other grounds of action. This is the general rule of law, and the claim here ' is,' on its circumstances, a merely legal claim. The United States have paid once to other patentees the full price for all the benefits they have received, and the claimant now seeks to make them pay a second time for the same thing, on the ground of his priority of invention. Such a claim can rest only on a bare legal obligation, and the United States have, by purchase, all the rights and equities, and therefore all the defences of their vendors, and cannot, I think, in law or equity, be made to pay a second time for anything their vendors had a legal right to sell to them.

, . I dissent from the opinion of the majority of the court, so far as it finds the claimant entitled to recover on his patents for ■ the, time and' percussion fuses.

[The learned judge then reviewed the evidence at considerable length, and deduced therefrom facts materially differing from those found by the court. He concluded by saying: ]

And, on the whole case, I am of opinion that the claimant is not entitled to recover on the patents exhibited; that their assignment to the United States would convey to them no right or benefit, and that the petition should be dismissed.  