
    CYGNET MANUFACTURING CO. v. THE UNITED STATES
    [No. A-115.
    Decided June 1, 1925]
    
      On the Proofs
    
    
      Patent; contract; payment if patentadle. — Where responsible officers of the Government employ plaintiff to invent and perfect a device with the mutual understanding that if the said device is patentable the Government will compensate plaintiff for its services, and the said device is completed, accepted, and manufactured for and used by the Government in large quantities, and a valid patent is thereafter issued by the United ¡ States Patent Office to plaintiff, through its chief engineer, a contract will be implied to pay plaintiff for its services in inventing and perfecting said device.
    
      Same; pleading. — Where the petition sets out facts showing an agreement between plaintiff and the Government, and plaintiff claims damages on the basis of infringement of its patent, the petition will not be dismissed, but compensation will be | awarded on the basis of the implied promise.
    
      The Reporter's statement of the case:
    
      Mr. John W. Van Allen for the plaintiff. Wilcox & Van Allen were on the briefs.
    
      Mr. Melville D. Church, with whom was Mr. Assistant Attorney General William J. Donovan, for the defendant. Mr. Ha/rry E. Knight was on the brief.
    The following are the facts as found by the court:
    I. The plaintiff is a corporation duly incorporated under the laws of the State of New York, and during the different transactions hereinafter set out in these findings was, and still is, doing business in said State and elsewhere, with its principal place of business and factory at Buffalo, N. Y.
    II. The plaintiff was originally engaged in the manufacture of side-car attachments for motor cycles, and had been in that business for some time, when, about two years after the beginning of the World War, it became interested in the manufacture of mounts for machine guns. It made drawings of several designs for machine-gun mounts and manufactured quite a number. About the time the United States declared war against. Germany, April 6, 1917, the plaintiff sent one Leadley Ogden, who had previous to that time been engaged in soliciting orders from foreign governments, to Washington, D. C., in charge of plaintiff’s business in that city, where he remained as its representative during the years 1917, 1918, and 1919.
    III. In December, 1916, Edgar C. Messersmith was employed by the plaintiff company as its chief engineer at an agreed compensation, and so continued during the various transactions set forth hereinafter in these findings of facts. His duties were principally those of an inventor engaged in developing inventions and plans for the ben^t of the plaintiff and the general advancement of its business. There was a general understanding during his employment that any inventions patented by him were to be assigned to plaintiff without any compensation additional to his regular salary.
    IY. Before being sent to Washington, as described in Finding II, Mr. Ogden visited practically all the foreign commissions in New York, endeavoring to interest them in two of the products of his company, a pedestal for an aircraft mount and a machine-gun tripod of folding type, and while engaged in this work he gained a knowledge of existing tripods. After being sent to Washington he visited the headquarters of the Marine Corps, and after a number of interviews he was given a commission to develop a two-wheel machine-gun cart for the transportation of a gun and its ammunition and after a short period of development and test secured one or more orders from the Marine Corps for such carts. Capt. A. B. Cole, an officer in the Marine Corps, who was interested in machine-gun work, was deeply interested and pleased with the cart above mentioned and asked him during one of their interviews what the plaintiff company knew about machine-gun tripods. Mr. Ogden showed him their folding type of tripod, which he said was useful to a certain extent but was not what was wanted. The Marine Corps at that time, July 22,1911, was in urgent need of 200 tripods to mount the Lewis machine gun. Captain Cole could not state definitely the type desired, but suggested that Mr. Ogden visit the Colt Patent Fire Arms people at Hartford, Conn., and endeavor to arrange to make the so-called Browning tripod, which, he thought, with some modification, particularly an adapter, would hold the Lewis gun satisfactorily. Mr. Ogden had an interview with Mr. Nichols and Mr. Browning, who refused to allow him to use that design, as Mr. Browning did not want the mount used with any gun but his own. Mr. Ogden reported the result to Captain Cole, who then told him his company would have to build a tripod that would give him what he wanted. In a number of interviews thereafter Captain Cole told him in a general way that he wanted a tripod with three legs, the rear leg being^Longer than the two front legs so that the tripod could be mounted over a low bank with the rear leg spiked to the ground, and, the two front legs being forward, the gun could fire over a wall or parapet, the gun to be able to be moved in traverse and in elevation and to be locked in its set position, and also be able to traverse in “jumps.” Mr. Ogden made a rough sketch and sent it to the president of the plaintiff company, who turned it over to Mr. Messer-smith, its chief engineer, with instructions to work it out. No directions as to how it was to be. worked out were shown on the sketch, nor had any been given by Captain Cole. Neither Mr. Ogden nor Captain Cole had any technical knowledge as to how the results were to be worked out. The working drawings were submitted to the Marine Corps with more or less satisfactory approval. Following the submission of the drawings an order for 150 tripods was given. Thereafter a sample was made and tested at Quantico, Va., and one or two weaknesses developed, the principal one being its failure to retain its set position when locked while firing. Another sample was made which had what was called a Cole clutch clamp, which was tested July 21, 1911, with very satisfactory results. The first order was furnished along the lines of the second sample or model. The agreement was to furnish 200 “ Cygnet machine-gun tripods ” for $100 each, or a total of $20,000, f. o. b. cars at Quantico, Va., delivered by freight. “ ihe Cygnet tripod ” was covered by patents applied for and was designed to accommodate the Lewis machine gun. An order was afterwards given by the Marine Corps for an additional 100 tripods of the “ Cygnet type,” which were delivered by plaintiff, making 300 tripods in all delivered to and paid for by the Marine Corps. During the time a suitable type of tripod was being worked out by the plaintiff as a mount for the Lewis machine gun, suggestions of minor changes were made by Captain Cole and Mr. Messersmith. Some of these changes were paid for by the Marine Corps as extras. On May 20, 1918, Mr. Messer-smith made application for a patent on thé tripod gun mount furnished to the Marine Corps, and letters patent No. 1320702 were granted to him on November 4, 1919.
    V. After the order of the Marine Corps for machine-gun tripods was well under way Captain Cole advised Mr. Ogden, plaintiff’s sales agent, to present its machine-gun tripod to the Ordnance Department for adoption. He accordingly presented both types of tripods which plaintiff had prepared for the Marine Corps to the Ordnance Department, and Major McFarland, then chief of the small-arms and machine-gun section of the engineering division of the Ordnance Department, caused both types to be put through tests. Prior to that time a sample of the improved type of tripod had been furnished to the Army and sent to France, and in May, 1918, a request from the General Staff in' France was received by the Ordnance Office to put the type in production. Captain Stanley, in charge of the accessories branch of the machine-gun section, engineering department, Ordnance Office, who handled machine-gun tripods, requested Mr. Ogden to see Major McFarland, which he did, and Major McFarland stated that the change from the Browning type of tripod to the Cygnet type would seriously disarrange the work of the Engineering Bureau, but, as General Pershing had asked for it, it must be done. He wanted to know whether plaintiff could get into immediate production, and if not, how quickly its blue prints could be put into shape to enable the plants then making the Browning guns to transfer their energies and materials to the Cygnet type. Mr. Ogden, requested information as to bow plaintiff’s interests would be protected, and Major McFarland asked whether the tripod had been patented, and was told that a patent would be applied for. Major McFarland said it would not be wise to go into the question of a patent, as it might delay production; that the Government had purchased a tripod of the Cygnet type, and it belonged to the Government, which could put it into production, presuming that the plaintiff, would get compensation by a claim against the United States. Mr. Turner, president of the plaintiff company, and Mr. Messersmith, the chief engineer, arrived on May 21, 1918, two days after this conversation with Major McFarland, who then asked Mr. Ogden if he had reported their discussion as to compensation for the Cygnet tripod to the president. Mr. Ogden stated that he had and that Mr. Turner was satisfied. Major McFarland then said that was quite satisfactory to him.
    On May 23, 1918, thebe was a general conference at the office of the Ordnance Department in the Ford Building-on Pennsylvania Avenue, between Messrs. Turner, Ogden, and Messersmith, on the part of the plaintiff, and Major McFarland, on the part of the Ordnance Department, who had authority, among other articles, to place orders for machine guns and accessories, and Captain O’Leary, of the Ordnance Office, who, after Major McFarland, became head of the small-arms division. There were also present Captain Stanley, who was serving under Major McFarland, in charge of machine-gun accessories, representatives of the Nelson Blooner Co., and of the New Britain Machine Tool Co., which last had been prior to the conference manufacturing the Browning machine-gun tripod.
    The purpose of the conference of May 23, 1918, was to make arrangements to begin the manufacture of the Cygnet tripods as soon as possible. The facilities of the companies represented were canvassed to ascertain which was best prepared to begin early production of said tripods. They adjourned with the understanding that another meeting would be held at New Britain, Conn. Accordingly on May 27, 1918, another conference was held at New Britain at which plaintiff was represented by its chief engineer, Mr. Messer-smith, and the Army was rejDresented by several officers. Mr. Messersmith presented blue prints, designs, and models showing the Cygnet' tripod, and during his stay at New Britain further samples and tests were made which resulted in the production of the type of Cygnet tripod accepted by the Ordnance Department and afterwards manufactured and used by the Army as the machine-gun model of 1918. From the investigations conducted at the conferences at Washington and New Britain it appeared that the companies engaged in manufacturing Browning tripods had much greater facilities, such as machinery and materials on hand, than plaintiff, and could therefore begin work on the manufacture of Cygnet tripods sooner, and as a result of this conclusion defendant some time in June, 1918, informed plaintiff that it would receive no orders for tripods and that they would be given to the companies manufacturing Browning tripods, and this was afterwards done. It was fully understood at all conferences and interviews between responsible representatives of the plaintiff and the Government that plaintiff should receive compensation for the use of its said machine-gun tripod by the Government if its device was patentable.
    VI. Commencing in the summer of 1918, Cygnet tripods were made for the Government from that time until at least April 11, 1922. On September 13, 1918, an application was filed by Mr. Messersmith in the United States Patent Office for a patent on the Army type of the Cygnet machine-gun tripod.
    On September 27, 1918, the following communication was addressed to the Commissioner of Patents by plaintiff’s attorneys :
    “ In the matter of the above application, we request that the same be made special and taken out of its turn for examination on its merits a.s the invention embodied therein relates to a gun tripod which is now being used by the United Status Army and our client is depending upon manufacturing this tripod in quantities by means of capital which is to be furnished by parties who will be governed to some extent on the character of the claims which will be allowed in this case. Inasmuch as it is necessary to embark in this enterprise as quickly as possible in order to give the greatest aid to our Government in the present Avar, we urgently r - quest that this case be taken up for examination on its merits immediately.”
    The above request was approved by the Commissioner of Patents on September 30, 1918.
    On March 4, 1919, the following letter was written by plaintiff’s attorneys to the Commissioner of Patents:
    “ In response to a previous request which we made in this ■cas* the same was made special for examination on ifs merits in order to enable parties who contemplate embarking in the manufacture of these tripods for mounting guns to •determine the character of the protection which is likely to be obtained and thus aid in the progress of the Avar. At the present time the question of determining the' royalties which are to be paid to the owner of this invention is being-held up by the Government awaiting the final decision as to the claims which are to be allowed, and as the Government is anxious to close this matter as soon as possible, Ave request •that the amendment Avhich we filed in this case February 13, 1919, be taken out of its order and action had on the .same as early as possible.”
    On February 17, 1920, letters patent No. 1331116 were issued by the United States Patent Office to Edgar C. Mes-sersmith for the Army Cygnet machine-gun tripod, and on February 27, 1920, said patent Avas assigned by him to the plaintiff company.
    YII. The state of the art prior to the time Avhen Messer - .smith applied for patents No.s. 1320702 and 1331116 is exemplified by the patents referred to beloAv.
    United States patents: Maxim, 329471; Vavaseur, 381095; Koener, 408882; Warner, 413118; Stoller, 583518; Slocum, ■671661; McKinney, 769447; Scott, 934223; Sonnberg, 1012738; Williams, 1028167; Voller, 1032254; Schmeisser, .1033624; WitheroAv, 1196197; Schneider, 1214226; Howell, 1276220; Akeley, 1300805.
    British patents: 16649 of 1890; 4894 of 1911; 111655 of 1917.
    The above patents are made part of this finding by reference thereto.
    VIII. The plaintiff, through its sales agent, wrote a letter, dated October 1,1919, to the Ordnance Office, requesting information concerning the total production and the total cost of machine-gun tripods and spare parts therefor of the model of 1918 that had been manufactured by or for the Ordnance Department. This information was refused in a letter to plaintiff signed by Lieut. Col. Herbert O’Leary, chief of the small-arms division of the Ordnance Office, upon the ground that all persons in the military service were prohibited from furnishing information that might be made the basis of a claim against the Government with the suggestion that if plaintiff established its right to receive royalty on the model of 1918 it would “ have a just claim against ..the Government ” and the information requested would be furnished.
    IX. The following stipulation was entered into between ■counsel for plaintiff and defendant on May 25,1922:
    “It is hereby stipulated by and between counsel for the respective parties in the above-entitled case, subject to the approval of the Court of Claims, that the question of values .and the quantity of machine-gun tripods manufactured by or for the United States Government be reserved until findings of fact as to the validity of the Messersmith patent No. 1338116, and the liability of the United States for the use ■of said patent No. 1333116, and the existence or nonexistence of an implied contract in favor of the petitioner for damages, profits, and disbursements be found by the Court of Claims.
    “ This practice has been sanctioned by the Court of Claims in many patent cases, notably in Bethlehem Steel Go. v. United States, and effects a great saving of time to both the ■court and the parties.”
    X. Upon the foregoing facts the court finds the following ultimate facts, so far as they are questions of fact:
    
      First. That the mechanisms of the “ Cygnet machine-gun tripod,” later designated by the Government as the machine-gun tripod “Model of 1918,” as embodied in Edgar C. Messersmith’s patent No. 1331116, issued February 17, 1920, possessed patentable novelty, utility, and invention, and as between the plaintiff and the United States was a valid patent.
    
      Second. That the said Cygnet machine-gun tripod was .adopted by the United States Ordnance Department and used by the United States Army with the consent of the plaintiff, with the express understanding between responsible representatives of plaintiff’s company and the Ordnance Department that compensation should be paid by the Government to plaintiff if the mechanisms of said t'ripod proved to be patentable.
    The court decided that plaintiff was entitled to recover.
   Booth, Judge,

delivered the opinion of the court:

This case may not involve a prolonged discussion. The findings disclose the transaction in detail. The Army during the war needed especially a practicable type of tripod for use in connection with machine guns. The plaintiff first designated a type which, after actual test, met the requirements of the service, and 300 of this type were manufactured, delivered to, and paid for by the defendant. They were used by the Marine Corps, and covered by letters patent #1,320702. During the course of fulfilling the contract for the Marine Corps tripods the plaintiff delivered an improved type of tripod, which was submitted to the Ordnance Department for adoption, and this design was likewise put through actual tests and, in fact, along with the other, sent to France, where it met with the approval of General Pershing. Thereafter, as the findings show, repeated conferences between the proper and authorized officers of the Army and the plaintiff resulted in an understanding and agreement that this type of tripod should be manufactured by the New Britain Machine Co., of New Britain, Conn., under the personal supervision of and in accord with blue prints and specifications designed and furnished by the plaintiff. At the time there was a clear and fair understanding between the parties that the plaintiff was not doing this for nothing, but was to receive compensation if the tripod was patentable. The tripod was patentable, as evidenced by letters patent #1331116, issued on February 17, 1920.

The defendant contests the plaintiff’s right to recover under the theory that the allegations of the petition make out a case of infringement, and having preferred a case of this character is precluded from relying upon a contract for user. The petition in this case does not fall within the rule. The facts as alleged predicate no right of recovery as for infringement; on the contrary, an implied contract is relied upon, and manifestly the gravamen of the complaint, as thus alleged, excludes the idea of infringement. See also the following cases: United States v. Burns, 12 Wall. 246-254; Clark v. United States, 95 U. S. 539-543; United States v. Behan, 110 U. S. 339-341; Wisconsin Central R. R. v. United States, 164 U. S. 190; Huse v. United States, 222 U. S. 496.

If the facts as alleged bring the case within the long line of authorities respecting the right of recovery as upon an implied contract, we would not be warranted in dismissing the petition because in the statement of the case the amount of compensation claimed is for the use of a patented device upon substantially the same basis as in cases of infringement. We do not mean by this assertion to establish the rule of damages in infringement cases as applicable here. The case falls within the decision of this court in Talbert v. United States, 25 C. Cls. 141; 155 U. S. 45. It is clearly not an infringement case. The extent of recovery is limited to reasonable compensation for the services rendered in securing to the defendant a device such as the one involved and for which the defendant obligated itself to pay. Crozier v. Krupp, 224 U. S. 290, 304; McKeever v. United States, 14 C. Cls. 396; affirmed 18 C. Cls. 751; Hartman v. United States, 35 C. Cls. 106-109.

The defendant interposes other contentions. We think they are disposed of in Solomons v. United States, 137 U. S. 342; Harley v. United States, 198 U. S. 229; National Electric Signaling Co. v. United States, ante, p. 338. The courts uniformly recognize the rule that where one is employed and paid for developing a patentable device, and he accomplishes the task during the course of such employment, when his time is the time of the employer, he may not claim title thereto adversely to his employer. As a matter of fact the controversy, does not arise here. The employee perfecting the device and obtaining letters patent recognizes title in the plaintiff.

The case, pursuant to the stipulations of counsel, will be remanded to the general docket for proof in accord with this opinion. It is so ordered.

Hat, Judge; DoayNet, Judge, and Camebell, Chief Justice, concur.

Geaham, Judge, took no part in the decision of this case.  