
    PHILIP McALEER v. THE UNITED STATES.
    [No. 13376.
    Decided March 31, 1890.]
    
      On the Proofs.
    
    A machinist, employed as a skilled mechanic in the Bureau of Engraving and Printing, during working hours makes and perfects an invention connected with the machinery under his charge; he uses Government property of trifling value in making his device and tools and machinery in its preparation. The Government pays the expense of taking out a patent, which he assigns to it for a nominal consideration, though with an understanding that the free use of the invention shall 'last only while he is an employé of the Bureau. He is discharged, and now brings suit for royalty.
    
      It may not be the duty of an employé of the Government to invent; hut where it is his duty to secure the most efficient service of machines under his charge, and he devises an improvement and perfects the invention-during working hours .with Government material and appliances, and the Government pays for taking out the patent, the case falls within the rule in Solomon’s Case (22 C. Cls. R., 342). No action can be maintained for royalty, and no contract can be implied.
    
      The Reporters' statement of tbe case.
    The following are tbe facts of tbis case as found by tbe court:
    I. Plaintiff is a citizen of tbe United States, a resident of the city of Washington, and a machinist by occupation.
    II. From the year 1861 until about the 10th day of February, 1876, plaintiff was employed as a mechanic in tbe Bureau of Engraving and Printing, formerly designated the Currency Division of tbe Treasury Department. His duties were those of a skilled mechanic, and during tbe greatest part of tbe time particularly related to tbe charge and repair of machines used in that Bureau for cutting and trimming’ fractional currency, including machines of tbe character hereinafter mentioned.
    During eleven months, beginning in November, 1876, and ending about September 10, 1877, be was employed in said Bureau and paid as a watchman. At the latter date he was discharged.
    III. December 7, 1876, letters patent Nol 170873 were issued to plaintiff for improvement in paper-perforating machines.
    IV. Of the perforating machines described in the specifications accompaninying letters patent 170873, thirteen have been made for the use of the Bureau of Engraving and Printing, and that number of machines are now in use there, as are some “ pin machines.”
    V. The difference in operation between the plaintiff’s invention for paper perforating and the machine known as the “pin machine,” which it was designed to supersede, are in many respects in favor of the former; the speed of the former is greater than the'latter; it will perforate more sheets per diem; the cost of constructing the knives is less than that of constructing the pins; the knife machine requires less repair than the pin machine. The pin machine does not punch entirely through the paper, but leaves a burr at the back, while tbe knife machine makes a clean cut, leaving no burr. This is the principal advantage of f.he knife machine and is a material one.
    VI. Except as hereinafter found ( see Finding IX), plaintiff has received no compensation from the Government for the use of his invention.
    VII. January 10, 1876, plaintiff executed the instrument set forth at the close of this finding, which was recorded in the Patent Office.
    This assignment was made at the suggestion of George B. McOartee, then Chief of the Bureau of Engraving and Printing.
    It was contemporaneously agreed by and between plaintiff and said McOartee that the assignment should hold good only during plaintiff’s employment in said Bureau of Engraving and Printing, and not longer. Plaintiff was discharged from Government service without fault on his part September, 1877, and his efforts to be restored have been fruitless.
    Plaintiffs request to have the machines in question stamped with his name as patentee was refused by the Chief of the-Bureau of Engraving and Printing.
    “Whereas I, Philip McAleer, of Washington, D. C., have invented certain improvements in paper-perforating machines, for which letters patent of the United States were granted to me and bear date December 7th, 1875;
    “And whereas the United States Treasury Department is desirous of acquiring the right to use said invention as fully described in said letters patent:
    “Now this indenture witnesseth, that for the sum of one dollar and other valuable consideration to me paid by the said Department, I do hereby grant and license the said United States Treasury Department and its bureaus the right to make- and use machines containing the improvements claimed in said letters patent to the full end of the term for which said letters patent are granted.
    “ Witness my hand and seal this 10th day of December,. 1875.
    ■“[l. s.] “Philip McAleer.
    “Becorded Jan. 17, 1876.”
    VIII. It was no part of plaintiff’s official duty to make the said invention. In making it he used Government material, but this was of trifling value; he made it partly out of office hours in the office, partly out of office hours at his home, and partly at such hours as he found leisure during office hours in the office.
    The device was to be applied to machines then under his charge as a machinist; it was made entirely with Government tools and machinery; he was aided by Government employés; the device was not used until 1879, when plaintiff was not in Government employ;-before it would operate the device required mechanical changes; these were made, and the device was perfected and applied by Government machinists, using Government tools and material.
    IX. Plaintiff received from the Governmen t wages as a machinist from some time in 1864 to February, 1876, inclusive, and as a watchman from November, 1876, to September, 1877, both inclusive. The Government paid the Patent Office expenses and fees incident to the issue of the patent.
    X.- The following assignment was made by plaintiff:
    “Whereas by assignment dated July 1st, 1882, one Asa Whitehead did assign and set over unto Christian G. Schneider all right, title, and interest in certain patents, claims, and property acquired from one Philip McAleer:
    “ Now this agreement witnesseth that, in consideration of the mutual interest of the parties hereto in said patents, claims, and property, as well as other valuable considerations moving thereto, the parties hereto agree that in the. collection, receipt, and payment of any accounts or moneys which may now be due for the use heretofore of, or which may hereafter become due and payable by reason of the use of any one or more or all of the devices or machines mentioned in the letters patent granted to or to be applied for by the said Philip McAleer by the Bureau of Engraving and Printing in the Treasury Department of the United States of America, or by any agent thereof, all such accounts, receipts, or moneys shall be and are to be divided equally between them, the parties hereto, share and share alike, the one-half to the said Philip McAleer and the one-half to the said Christian G. Schneider.
    “ And further that in any contract made, or which may’ be made, under and by reason of the aforesaid assignment of Asa Whitehead to Christian G. Schneider, dated July 1st, 1882, whereby the right to manufacture for use and to use may be granted, or any sale made to any person or persons, or to any bureau or Department of the United States other than the said Bureau of Engraving and Printing, all royalty or royalties and moneys received or paid by reason thereof shall be and are to be divided between the parties hereto in the following proportions, that is to say, five-eights (-§) to the said Christian G. Schneider and three-eights (§) to the said Philip McAleer.
    
      “Iu witness whereof the said parties hereto set their hands and seals, thereby binding- their assigns and legal representatives, this 1st day of July, A. D. 1882. " '
    “[seal.J " ' . “Philip McAleer.
    “ Witnesses:
    “13. II. Bradford.
    “Christian G-. Schneider, [seal.]” .
    Xi. Plaintiff’s invention was applied as follows to machines in the Bureau of Engraving and Printing:
    The first machine was completed in April 1879; two in An gustj 1879; oneiu October, 1879; six at divers times between December 10,1880, and February 18,1881; one in April, 1881; two in the .spring or summer of 1884. All of these machines are not iu use at the same time. Each machine can separate about 8,000 sheets a day.
    XII. The following are the specifications, claims, and drawings upon which plaintiff’s patents issued, and specifications, claims, and drawings upon which patents were issued at the dates shown to the persons named therein.
    [Philip MuAleer’s Letters "Patent Ko. 170873, dated December 7, 1875.1
    “My invention relates to improvements in machines adapted for perforating and cutting paper designed to be subsequently separated by hand. It has for its object to produce a cut which shall leave no burr, so that sheets perforated or cut may be compactly packed upon each other, and be readily counted and handled without sticking or catching to one another. With this object in view my invention consists of a perforating-machine, the cutting-knives of which are adjustably secured to two parallel.shafts, and adapted to slightly pass each other when rotated, so that the cutting surfaces shall in passing each other penetrate the interposed sheet from opposite sides and produce a shearing-cut, thus avoiding any burr on either side of the paper, as will be hereinafter more fully set forth.
    “ To enable those skilled to more fully understand the construction and operation of my machine I will proceed to describe the same, referring by letters to the accompanying drawing, in which—
    “ Figure 1 is a top perspective view of a machine embodying .my invention; and Fig. 2 a detail view of the cutting disks, showing clearly the passage of the cutting edges to produce the shearing cut.
    “ Similar letters indicate the same parts in both figures.
    “A is the name of the machine, provided with a feed-table, B, O, and D are two parallel shafts, mounted in suitable bearings in upwardly-inclined projections of the frame A, the bearing-boxes being held in place by a suitable supporting'cross-arbor and frame, B, screwed to the frame, as clearly seen in Fig. 1. F and (Jr are circular knives secured by set-screws a to the parallel shaft, so that their cutting edges will just pass a common center between the shafts C and D. These knife-edges are slightly beveled to make them more keen and certain in their cutting, and are divided up into any number of independent knives by radial slots b, extending from' the periphery inwardly a short distance'. The upper shaft C is arranged slightly behind the vertical axis of the shaft D, so that the heels of the successive kuives shall approach and pass each other, as clearly seen in Fig. 2, and thus produce a shearing-cut. The slots or spaces b between the knives form interruptions to a continuous cut, and thus leave solid partitions in the sheet between the cuts made by the knife-edges.
    “The rotary knife-disks are adjusted longitudinally upon their respective shafts up towards each other, so that they will just pass without contact. This may be doneby placing a sheet or strip of thin paper between their disk-faces while adjusting and withdrawing it after the set-screws have been secured.
    “ EL is a guide-clamp hinged to the arbor of the frame, and so hinged tiiat it may be thrown up in the position shown in Fig. 1, out of the way, when desired, and dropped down into the position shown in dotted lines, to rest upon and guide the sheet being operated upon.
    “ The knives, slightly passing each other, and the common center between the shafts, necessarily penetrate the sheet of paper and the edges of the slots b grasp the partitions between the cuts, and serve to positively feed the paper through the machine, requiring no other device for accomplishing this end.
    “The shafts C and D are geared togei her for obvious reasons. “ What I claim as new, and desire to secure by letters patent, is—
    
      “ In a perforating machine, the combination, with two parallel shafts, of one or more disk-knives adjustably secured to each shaft, and having their peripheries broken by radia slots and adapted to overlay, substantially as and for the purposes descri bed.
    “ Witness my hand and seal to foregoing specification this 25th day of August, A. D. 1875.
    “ Philip McAleeb. [l. s.]”
    [Agur Judsou, Letters Patent 2^0.164920, dated June 29,1876; application filed June 9, 1875.]
    “My invention consists in employing, in conjunction with a series or gang of disk cutters fixed on a revolving shaft, another series or gang, peculiarly applied, upon another shaft, whereby they may be adjusted to a proper inclination relative to the plane of revolution of the non-adjustable or other gang; and it further consists in certain details of construction.
    
      “In the accompanying drawings, Figure 1 represents a front view of a machine illustrating my invention; and Fig. 2, a similar view of the frame, showing the inclination of the adjustable-shutters on one shaft relatively to the fixed ones on the other shaft.
    “A is a frame-work of any appropriate kind; B, a revolving-shaft, driven by any suitable gear, C, and carrying any desired number of circular or disk cutters secured thereon. 33 is another or lower shaft, parallel with shaft B, and having a gear engaging with and imparting motion to gear O. On this shaft 13 I place a series of disk cutters, E, noik‘ of which are rigidly secured to the shaft, but, on the contrary, so applied thereon that while they are caused to revolve with the shaft they may be adjusted thereon to a slight inclination to the axis of their shaft, and held yieldingly to such position, this inclination insuring a proper clean shearing cut as the paper passes between the upper and lower cutters.
    “An efficient means which 1 have devised to effect this end is as follows: Each disk cutter E is placed upon its shaft loosely enough to permit a limited lateral play and lateral adjustment, a key or pin,/, or other proper detent, compelling it, however, to revolve with the shaft. A bar or rod, G, made adjustable in its support or bearings H, is provided with a series of pins or projections i i, etc., each of which serves to limit the inclination to which its adjacent cutter may be deflected out of parallelism with the cutters on the shaft B. A series of springs, jj, etc., secured to an adjustable rod or bar, K, bears, one against each of the disks, forcing one side of each disk in one direction until its opposite side is brought against the limiting guides or pins i i, the other surface or face of each disk near its center bearing against any suitable post, sleeve, or stop, 7c, whereby it shall not be capable of being moved beyond the predetermined fixed limit in that dirección.
    “ It will be seen that the degree to which the bar Gis shifted, so as to move its g»uides or pins i i away from the back of the disks, will determine the degree of inclination of the cutters E relatively to the upper cutters and to the shaft 13, and that the springs yy, exerting, as they do, a constant pressure against the back of the disks at one side of their centers, keep them up to their work under any and all adjustments required. At the same time the edges of the disk, where the cutting or shearing of the paper takes place, are always in proper working contact.
    It will be further observed that I avoid all liability of straining or tearing the paper, which is incident to all machines where paper is pulled through the machine against the edges of stationery knives, for in my machine the cutters are the partial feeders and assist to draw the pajjer through.
    “ The paper may be fed to and received from the cutters by any proper means.
    
      “ If paper strips of different widths be desired, the same •shafts, whicii may be of any required length, may have different gangs of cutters, those of one gang being set farther from each other than those of another; by this means producing at the same time strips of different widths.
    “ I claim— ,
    “ 1. In combination with two parallel shafts and a series of disk paper-cutters fixed on one of them, a series of disk cutters on the other shaft, and revolving therewith, but adapted to be adjusted to an inclination to the plane of revolution of the other series, substantially as and for the purpose set forth.
    “ 2. In combination with the shaft D and its loosely attached cutters E, the springs j, guide-pins i, and stops 7c, applied and ■operating relatively to the cutters, substantially as and for the purpose described.
    “Ague Judson.”
    [Men-iam and Norton’s Letters Patent No. 65336, dated. June 5, 1866.]
    “This invention relates generally to the manufacture of shoe-binding, and particularly to the method of cutting skins into those strips, which, by subsequent processes, are made into long shoe-binding ribbon.
    “The invention consists in the employment of two series of conducting aprons or tapes, between which the skins are fed up to the cutters, in combination with an upper and a lower series of rotary disk-cutters; also in arranging the series of tapes or aprons so as to conduct the skins up to and away from the cutters, the material being kept in position between the tapes during the entire action of the cutters upon each skin ; also in the employment of auxiliary tapes between the main tapes to conduct the strips from the machine; also'in the arrangement of the cutter-blocks loosely on their shafts, with a spring on the outer end of one or both series of blocks, by means of which the whole of both series of cutters are kept in proper relative lateral position ; also in the arrangement of the upper tapes or aprons upon swinging frames, by means of which a pressure is maintained upon the skins and strips cut therefrom during their entire passage through the machine.
    “A machine embodying the invention is represented in the ■drawings, Figure 1, showing a plan of the same; Fig. 2, a vertical transverse section on the line x x of Fig. 1; Fig. 3, a vertical longitudinal section.
    “ a denotes the frame; b and c the cutter-shafts, geared together, and each carrying a series of cutter-blocks, so mounted upon the shaft as to rotate with'it, and so as to be capable of sliding endwise upon it. The inner faces of the outer blocks on each shaft and both faces of each of the other blocks has fixed to or forming part of it a circular or disk cutter, d, every two .adjacent- cutters on the opposite shafts forming rotary shears.
    
      “ The end block, e, of the upper shaft is made stationary with respect to the shaft, and the adjacent cutter on. the lower shaft overlaps the inner face of the corresponding cutter of the upper shaft to form the shears, and each two cutters of each block on the upper and lower shafts, respectively, work between the two cutters of adjacent blocks on the opposite shaft, so that the distance apart of the cutters on each block being equal, the two series of cutters form a series of rotary shears at equal distance apart.
    . “ To keep the cutting-faces of the whole series of shears in contact a spring, j\ preferably of rubber, is inserted between the outer cutter-block, g, and a block, h, the pressure of the spring having a tendency to force the whole series of blocks endwise, and of course keeping the cutters in contact, one spring serving’to preserve the contact of every, set of cutters working together.
    “ In card-cutting machinery disk-cutters arranged upon two shafts have been kept in relative position by springs placed within blocks and pressing the cutters up to their proper bearings ; but it will be obvious that the accurate adjustment of the cutters can not be so readily maintained by such construction as by the employment of a single spring crowding the whole series of cutters in the same direction and maintaining them accurately in position, and the necessity of the employment of blocks between the cutter-blocks is obviated.
    ‘-At the front end of the frame a a drum, i, is mounted in stationary bearings, and at the opposite end of the frame is a similar drum, 7c. Around these two drums, and over the lower set of cutter-blocks, a series of aprons or tapes, l, extends, as seen in Pig. 3.
    “To the standard which supports the cutter shafts a swinging frame, m, is hung, the outer end of this frame carrying a drum, n, around which and a similar drum, o, on a swinging frame at the opposite end of the machine, and over each alternate cutter-block of the lower shaft, a tape, or apron, p, passes, as seen in-Pig. 3. Each tape p travels in contact with the tape l below it, or with the skins passing over such tapes l. The drum i sets out beyond the drum n, so that the skin can be brought properly into position for the upper tapes to bite upon it as it is presented between them, the two sets of tapes acting as carriers to take the skins up to the cutters, and, by their pressure upon or contact with the skin, keeping it properly distended or from being drawn away as it passes between them and is acted upon by the cutters. Pressure of the upper tapes upon the skins supported on the lower tapes is produced by the weight of the swinging drum n, or by suitable springs j, and pressure-of the upper tapes upon the strips cut from the skin, to keep them firmly in position and feed them from the machine, is produced by the weight of the drum o, or suitable springs-which hold the same down.
    
      “In conjunction with another or third series of tapes, these tapes also act to keep the strips properly in place after the action of the cutters and as they are fed from said cutters, they being- maintained in the same relative position they occupied in the skin until the cutters have acted upon the whole skin. These auxiliary tapes q pass around the upper cutter-blocks and the drum o, so that each strip cut by the knives is held between the tapes l and p, or between the tapes-l and q, excepting the two outer strips, which are fed between the tapes q and bands r, passing around the end blocks on the lower cutter-shaft and the drum 7c.
    “ From this description the operation of the tapes which feed the skin into the machine and keep it in position with respect to the cutters, the action of the cutters in dividing the skins into strips of equal width, and the action of the tapes which keep in position all of the strips and feed them from the machine, will be readily understood.
    “ We claim—
    “ 1. The arrangement of the cutter-blocks to slide upon their shafts when they are kept in relative position by a spring or springs upon the end of one or both of the cuttter-shafts, substantially as described.
    “ 2. The combination of two series of tapes holding the skins in position and feeding them to the action of the cutters with two series of disk-cutters which divide the skins into strips, substantially as set forth.
    “ 3. The combination, with cutters which divide the skins, of a series of taires conducting the material to and carrying it in strips from the action of the cutters.
    ■“ 4. The employment of the auxiliary tapes which, in connection with the main tapes, keep all the strips in position until the skin is cut entirely through.
    “ 5. Hanging the drums, around which the upper tapes pass, upon swinging frames, so that pressure of the upper tapes upon the skin is maintained, substantially as set forth.
    “ M. H. Merriam.
    “ E. L. In orton.”
    [Alva Worden’s Letters Patent No. 41,459, dated February 2, 1864.]
    
      uTo all whom, it mag concern :
    
    “Be it known that I, Alva Worden, of the city of Ypsilanti, in the county of Washtenaw, and State of Michigan, have invented a new and useful machine for Gutting- Leather Fly-Rets for Horses; and I do declare that the following is a fuil, clear, and exact description of the construction and operation of the same, reference being- had to the annexed drawings, making a part of this specification, in which—
    “ Fig 1 is a perspective view of the machine set up and ready for use. Fig. 2 is a transverse section. Fig. 3 represents one of tlie circular knives, and Fig. 4 one of the plates or washers used upon the shaft of the cylinder to hold the knives the required distance apart.
    “ The letter A represents the horizontal shaft upon which the knives are attached.
    “ Letter B represents two pinions, which cause both shafts to revolve at the same time.
    “ Letter 0 represents the perpendicular standard or framework in which said shafts revolve.
    “ Letter D represents the nut by which the knives are held stationary upon the shaft.
    “ better E represents one of the washers or plates that separate the knives.
    “ Letter F represents one of the knives detached from the cylinder, and letter G represents the box in which the journals of the shaft revolve.
    “ The nature of my invention consists in arranging circular knives, separated by uniform plates or washers, upon a horizontal shaft or cylinder, with spaces or breaks in the circular knives so arranged that the space or break in each alternate knife will form direct rows or lines, so that when the knife-cylinder is made to revolve by means of a crank or pully the edges of the knives working upon smooth surface or corresponding cylinder fitted with grooves in which the edges of the knives work closely, uniform slits or incisions with breaks in each alternate row will be made in a strip of leather of the desired width to form a net-work.
    “ The machine is constructed by round or circular knives fitted upon a small horizontal shaft with a round or circular plate of smaller size, also fitted upon the same shaft between the knives, with spaces of uniform size and distances cut out of the edges of the knives, and when the required number of knives are fitted upon the shaft the whole is firmly united, forming a firm cylinder by means of nuts and screws at the end of the shaft.
    “ What I claim as my invention, and desire to secure by letters patent, is—
    ‘‘The arrangement of circular knives upon a revolving cylinder so that passing a strip of leather under the cutting cylinder uniform incisions will be made in the leather with uniform breaks in each alternate row of incisions, so that the leather when cut by the machine forms a diamond net-work.
    “Alya Worden.”
    
      Mr. T. A. Lambert and Mr. Upton M. Young for the claimant:
    Claimant was the inventor of several machines which, the United States Treasury Department was “desirous of acquiring the right to use.” And the Department proposed to pay the patent fees if claimant would give this right. Claimant thereupon gave the Department the right to use his machines; stipulating, however, that their use should be contingent upon and coincident with his- employment by the Department. This condition was accepted by the Department. It, therefore, became an integral part of the contract and the contract was executed upon these terms.
    It will be observed that there are two separate elements in this contract each independent of and supported by its own consideration, namely, the right to use the invention and the use of the invention,
    -In other words, the Department purchased the right to use the invention; not, however, indefinitely nor without condition. It had received the full equivalent for the money advanced by it in the acquisition of this right. Thus, that part of the contract was completely executed. The contract, by its very nature, depending as it did on the defendant’s employment of the claimant, demanded that at the end of each period for which claimant received his pay, rests should be made, and UDder the authority of PerMns v. Hart, 11 Wheat, 251, these rests must have been taken as an execution of the contract, toties quoties, find could not have been unsettled by the violation of any subsequent and unexecuted part of the agreement.
    It was not necessary to mention in the assignment that the use was conditioned upon some other agreed consideration. The law is correctly stated in the syllabus to Allen v. Jaguish (21 Wend., 628). “ It is not indispensable to the validity of a contract that the cause moving to the act should be mentioned as the consideration; it is enough if from the whole instrument it be manifest that there is a consideration.”
    The agreement with reference to .continuance of work so long as defendant used plaintiff’s invention was the motive that led to the assignment, and was part of t he same transaction, although not in the same instrument.
    This brings us to the second element in the contract, viz, the actual use by the Department of the invention in consideration of and concurrently with which the claimant was to have the benefits of continuous employment. This was in the nature of royalty, i. e., of compensation to him for the work done by his invention. Just here it is well to notice that the wage he received was not the real consideration, because his pay was to be no greater during the use of his invention than it had been prior to its assignment, while his personal labor would be no less. It was, in fact, the benefit and security of continuous employment.
    The right to use the machines resides with the defendant by virtue of the assignment, but the condition precedent to its exercise of that right has been persistently violated by it. The defendant alone has violated the contract. It has accepted the work done by the machines, but it refuses to give claimant the stipulated consideration, i. e., continuous employment during such user. (Rodemer v. Eazelhurst, 9 Gill, 288.) *
    Defendant’s contention that the action must be upon the special agreement is, we submit, erroneous. In fact, a careful review of the authorities, where the defendant is the party in default, shows that only in Kentucky can such a class < f cases be found, and a Kentucky case is the only one cited by the defendant to support his proposition. This difference is noted in 2 Smith’s Leading Cases, 49, where the author says, “It is, as a general rule, true that where there is a special contract, plaintiff can not sue in general assumpsit, but this does not apply where the defendant is in default.” Referring to Jewell v. Sehrceppel (4 Cowen., 56‘4); Allen v. Jaquish (21 Wendell, 629); Myrieh v. Slas'on (19 Yt., 122); Merwin v. Perkins (9 Pick., 298). And then the author says — but see Rankin v. Darnell (11 B. Monroe, 30).
    If further adjudications on plaintiff’s right to consider the special agreement abrogated by the act of the defendant is needed, we respectfully refer the court to the following cases: Darby v. Johnson (21 Yt., 17) -, Leipel v. Ins. Oo. (84 Pa. St., 47); Welsh v. JInfield (5 Gilman, 298). See also cases collected in 2 Smith’s Leading Oases, 49.
    Defendant may contend that in all these cases the suit was on a quantum meruit for work done prior to the breach by the defendant, while in the case at bar the suit is for work done subsequently. But the right is the same, whether the breach occurred before or after performance.
    The court further held, that where the work was performed after the time stipulated, with the knowledge of the defendant, that “ the law imputes a promise on his part to pay what the labor was reasonably worth(Debois v. Canal Co., 4 Wend., 285.)
    The court will observe that defendant’s use of claimant’s invention was precisely the same as so much labor performed by claimant individually; and when it used the machines, after the knowledge of a violation on its part of the express agreement, it was with the implied promise to pay claimant the reasonable value of the work done; and ttíe measure of compensation is not controlled by the terms of the written contract. (Darby v. Johnson, 21 Vt., 17; Rodemere v. Haslelmrst,. 9 G-ill, 288; and the cases collected (page 44) 2 Smith’s Leading Cases.)
    Claimant could not return to the defendant all he received from the Department up to the time of his discharge because of the defendant’s violation of the contract and sue for a breach, as the contract had been executed and closed up to the time the defendant commenced to use the claimant’s machines, and its act in accepting the work after that time, in violation of the contract, was an abandonment of the express agreement, but under an implied promise to pay the royalty due, as decided by the Supreme Court of the United States in the Sibley Case (12 Wall., 246).
    
      Mr. John C. Chaney (with whom was Mr. Assistant Attorney-General Cotton) for the defendants:
    If claimant is to prevail in his demands, every skilled workman in the Government' employ may demand extra pay, for there is not an expert mechanic in the Government service but what makes incidental improvements, adds to or takes from the general structure of the machine, changes the angle of certain pinions, or in some way modifies the gearings and improves the work —a work, of course, which he is employed and paid to do, but a work he can truthfully say is only known to those acquainted with the “ art and mysteries” of mechanics.
    It is mechanical skill, but not inventive skill; but whether-it be mechanical or inventive, we affirm that the Government under his employment was entitled to all that McAleer knew of mechanics — to his brain and brawn, to the improvements on the machinery that he might and did make, to his best efforts as a skilled workman in all respects.
    
      Can an employé maintain an action for improvements thus made and for patented devices the “letters patent” for which were obtained under such circumstances ? {Solomons Case, 21 -0. Cls., 479.)
   Davis, J.,

delivered the opinion of the court:

A patent was issued to plaintiff for a device intended to cut sheets of stamps in such a .manner that they come from the machine not entirely separated, but so cut that they can be easily torn apart. The device was intended to supersede the pin-machine, which produced the same result in the familiar manner of punching a series of holes between the stamps, and plaintiff’s device hád certain advantages oyer the pin-machine which led to its general but not exclusive use in the Bureau of Engraving and Printing.

For a period of some thirteen years, beginning in 1864 and •ending in 1877, plaintiff was almost continuously in the employ of the Bureau of Engraving and Printing as a machinist; and during most of his service he was required to care for and re pair machinery in the separating room, where work of the nature performed by his device was carried on. While perfecting his invention plaintiff was paid as a machinist; he used Government property of trifling value in making his device; he worked upon it in office hours; he used Government tools and machinery in its preparation, and the Government paid the expenses and fees incident to the issue of his patent.

The case, then, seems to fall within the rulings heretofore . made by this court in the cases of Solomons and Davis (22 C. Cls. R., 342; 23 C. Cls. R., 329).

A distinction is sought to be drawn between the right to the machine itself and the right to use the machine, upon the theory that the actual use of the machine was in this case coupled with a condition for payment. It appears from the findings that a written assignment was made by plaintiff to defendants, which in its terms was absolute; by it plaintiff for “ the sum of $1 and other valuable considerations to be paid” licensed the Government to “ make and use” his invention during the- term of the patent. This absolute assignment was qualified by a con.temporaneous understanding that the free use should only last while plaintiff was retained as an employé in'the Bureau of Engraving and Printing.

In the view we take of the case the distinction does not seem important. Plaintiff made his invention while caring for machines similar to his own; true, it was not part of his duty to invent, but it was his duty to do anything found necessary to secure from the machines under his charge most efficient service, to make all repairs to the machines, and to suggest and. apply any improvements which might occur to him, not as an inventor, but as a skilled mechanic. The Government had a right to his tíme and to his best efforts as a machinist. While so employed he devised an improvement to be applied to machines then under his charge; admitting that this improvement-was the product of inventive genius as distinguished from mechanical skill, still the work was largely done in office hours when plaintiff was receiving pay; it was done entirely with Government tools and machinery; and the Government paid for the patent. The device was not used until 1879, when the plaintiff was no longer in the service of the Bureau, and before it worked efficiently the improvement required certain-mechanical changes; these were made and the device was perfected and applied by Government machinists using Government tools and material. The case therefore falls within -the rule laid down in Solomon’s Case (supra.)

There have been introduced in evidence as anticipating plaintiff’s invention three patents; one is for a paper-cutting- machine, consisting of two circular knives fitted to parallel horizontal shafts, one above the other, and so adapted that the cutting edges of the knives slightly pass each other when rotated, and operating as shears cut a sheet of paper passed between them. Another is a similar device for cutting leather bands.. These devices both make a clean cut and are without slots. The third patent is for a machine to cut leather fly nets for horses, thus constructed; round or circular knives are fitted upon a small horizontal shaft “ with a round or circular plate of smaller size also fitted upon the same shaft between the knives, with spaces of uniform size and distances cut out of the edges of the knives, and when the required number of knives is fitted up on the shaft the whole is firmly united, forming a firm cylinder-by means of nuts and screws at the end of the shaft.” Elsewhere in this specification the knives are described as “ circular,” as placed upon a horizontal shaft or cylinder, with. “ spaces or breaks ” in the knives. This cylinder when revolved cuts upon a corresponding but smooth cylinder fitted with grooves. The machine makes incisions in leather passed through it, leaving alternate breaks and producing a diamond net-work.

We do not find in this machine the two sets of knives acting as shears, but we do find the circular slotted knife.

Whether with the fly-net machine and the paper-cutting machine before him it required on the part of plaintiff anything more than the skill of a mechanic to slot the circular knives of the cutter may well be doubted. But this question it is not necessary now to discuss as for the reasons already stated the petition is dismissed.  