
    ALFRED J. BROOKS v. THE UNITED STATES.
    [Nos. 20855 and 20856.
    Decided October 24, 1904.]
    
      On the Proofs.
    
    Before the issuance of letters patent the claimant submits his method of calking vessels to the Chief of the Bureau of Construction and Repair of the Navy Department, who expresses his belief that the invention is a good one and advises the ■ claimant to procure a patent. After the issuance of the patent tests are made of the device by the Navy Department, which prove satisfactory, and the claimant is so notified. By subsequent contracts with third persons the defendants require two vessels to be constructed “ with Brooks’s improved method of calking.” The claimant lias no dealings whatever with the contractors, and they refuse to pay the royalty for the use of the invention, notwithstanding their contracts require them to hold the United States harmless from every demand of any kind on account of the adoption of any plan , or for the use of any patented invention.
    I. It is settled law that where an officer having authority appropriates private property for public use, admitting it to be private property, an implied contract will arise.
    II. Where an officer uses a patented invention, acknowledging the right of the patentee, an implied obligation arises.
    
      III. Where the defendants’ officers obtain authority from the pat-entee to use his invention, and provide in a contract with a third person that he shall use that particular method of the. inventor, they are bound to know that the contractor can not ■execute his contract without using the invention.
    IV. Where the Secretary of the Navy is authorized by law to construct vessels in the most improved way he is necessarily clothed with large discretion both as to the materials and methods to be used.
    V.An inventor, after his invention has been adopted for use by Government officers and incorporated by them in contracts with third persons, is not bound to proceed against the contractors for an infringement.
    VI.Where the Government has authorized the use of the patented, article by a contractor with the consent of the inventor, it can not maintain that the using was an infringement by the contractor and not a taking by the Government.
    
      The Reporter's statement of the case:
    The following are the facts of the case, as found by the court:
    I. On October 9,1894, the United States through the Commissioner of Patents issued to the claimant herein letters patent No. 527169 for an improvement in the method of calking vessels, which letters patent and the drawings and specifications relating thereto are made part of the petition herein.
    II. Before applying for said letters patent the claimant made a model of his invention and showed it to Commodore Hichborn, then Chief of the Bureau of Construction and Repair of the Navy Department, to whom he said he was going to apply for a patent. That officer expressed his belief that the invention was a good one and advised the claimant to go ahead with it; that he would recommend it.
    III. After the issuance of said letters patent the claimant’s improved method of calking vessels was tested by the Bureau of Construction and Repair, Navy Department, with satisfactory results, and the same was adopted both by said Bureau and the Light-ITouse Board, of which the claimant was in terms informed by the respective chiefs of said Bureaus. Thereafter contractors were required by the specifications to use said method of calking in the construction of the vessels described in the respective petitions — that is to say, specifications for the composite light vessels Nos. 68, 69, and 70, described in the petition in cause No. 20855, and which specifications were common to all said three vessels, among other things provided:
    
      “0diking. — The main deck will be , calked with three threads, one of cotton and two of oakum; the spar deck to be laid and calked according to Brooks’s patent. . The berth deck will be calked with one thread of cotton and one of oakum. Decks to be payed with pitch, excepting in cabin and crew space; the cabin and crew space will be payed with paint. The outside planking, seams, and butts shall be calked with five threads of oakum and payed with pitch before wood sheathing is placed on the vessel. Wood sheathing to be calked with oakum, and all plats, butts, and seams of plating and waterway shall be properly calked. Before launching, the vessel must be watered and thoroughly searched and made tight.”
    
      “Patent rights.- — If any article or arrangement used about the machinery, hull, rigging, or elsewhere in the vessel, or in the construction of any part thereof, is subject to a patent right, the royalty for the construction and use of the same is to be paid by the contractor.”
    On December 30, 1896, contracts for the construction of said three vessels were awarded, Nos. 68 and 69 to the Bath Iron Works, of Portland, Me., and No. 70 to Wolf & Zwicker, of Portland, Oreg., the provisions of which contracts, except as to price, were alike, one of which was as follows:
    “ That the party of the first part, in consideration of the matters hereinafter referred to and set out, and of the advertisement, instructions to bidders, specifications, and drawings attached hereto and which form a part of this contract, covenants and agrees to and with the party of the second part to furnish all the materials and labor necessary to completely construct and deliver to the light-house inspector at the buoy depot at Tompkinsville, Staten Island, New York, within ten calendar months from the date of the approval of the contract by the Secretary of the Treasury.”
    For the faithful performance of ivhich contract the contractor executed a bond with approved sureties.
    The several vessels so contracted for were constructed by the contractors according to the terms of their respective contracts and were paid for by the United States.
    
      IY. The specifications for the United States gunboats Vicksburg, No. 11; Newport, No. 12; Princeton, No. 13, and Marietta, No. 15, described in the petition in cause No. 20856, and which specifications were common to all said four vessels, among other things provided:
    
      “Dealt, flanh. — Plank of the several decks to be of the specified thickness when completed, and the undersides to be well fitted to the plating, which will be thickly coated with red lead or other approved material; the edges to be planed fair before a plank is laid, and to have a proper seam for calking with Brooks’s improved method of calking.”
    The sixth paragraph of the contract entered into by the Navy Department with the Bath Iron Works November 15, 1895, for the construction of the Vicksburg, No. 11, and which was common to all the contracts for the construction of said four vessels, among other things provided:
    “ Sixth. The party of the first part, in consideration of the premises, hereby covenants and agrees to hold and save the United States harmless from and against all and every demand or demands of any nature or kind for or on account of the adoption of any plan, model, design, or suggestion, of for or on account of the use of any patented invention, article, or appliance which has been or may be adopted or used in or about the construction of said vessels, or any part thereof, under this contract, and to protect and discharge the Government from all liability on account thereof, ■or on account of the use thereof, by proper releases from patentees, or otherwise, and to the satisfaction of the Secretary of the Navy.”
    For the faithful Derformance of which contract the claimant executed a bond with approved sureties.
    The several vessels so contracted for ivere constructed by the several contractors according to the terms of their respective contracts and were paid for by the United States.
    V. On August 26, 1896, after the naval constructor at the Mare Island Navy-Yard, Cal., had made a favorable report on the test of the claimant’s method of calking on a section of deck planking and expressed a desire to apply it on .a vessel, the claimant, through his attorney, C. E. Creecy, in response to a request from the Chief of the Bureau of Construction and. Repair, asking what the claimant would charge for calking with the Brooks improved method the forecastle deck of the Petrel, then constructed or being constructed by the Government at the Mare Island Navy-Yard, addressed a. letter to that officer as follows:
    “ WashiN&toN, D. C., August 86,1896.
    
    “ Chiee oe the Bureau oe Construction and Repair, Navt Department.
    “ Dear Sir : Referring to the Bureau’s letter of the 17th instant (2228-96), inclosing recommendation of the naval constructor at the navy-yard, Mare Island, Cal., that the Brooks method of calking be applied to the forecastle deck planking of the Petrel, and inquiring what price will be required for the calking referred to, should it be authorized, I have to reply that I am instructed by Mr. Brooks, the pat-entee of this method, to authorize the use of the process on the Petrel for the calking specified without any charge.
    “ Mr. Brooks has found that the best results are obtained with his process by driving the first thread of cotton instead of tarred oakmn', as it spreads and fills up the groove better than the latter. Of course, the cotton can be treated with tar oil, or any waterproof material desired by the Department, before being driven. The attention of the contractors should be called to this feature of the process.
    “ Very truly,
    “ C. E. Creect,
    
      “Attorney for A. J. BroohsP
    
    VI. In the construction of like vessels for the United States by contractors, including the Crescent Ship Yards and the Union Iron Works, the usual license fee or royalty therefor was paid by the several contractors to the claimant.
    Before the filing of the several petitions herein the claimant informed the Secretary of the Navy that the Bath Iron Works, the contractor for the construction of the Vicksburg and the Newport, Nos. 11 and 12, had used the claimant’s method of calking without his authority and refused to pay for the same, and, asserting the liability of the Government for such use by reason of having adopted said method and by incorporating the same in the specifications as aforesaid, requested the Navy Department to deduct from the contractors the sum of $800 for each vessel and pay the same to him. The Secretary of the Navy refused to comply with the request for the reason that the contractors had agreed to hold and save the Government harmless from all claims and demands of every description on account of the use of any patented invention adopted or used in the construction of said vessels. There were no negotiations between the claimant and the contractors respecting the use of his said invention.
    VII. The method of calking by means of the claimant’s invention Is, as set forth in the specifications, made part of the petition herein, as stated in finding i.
    VIII. To show the state of the art, and by way of defense respecting the validity of the patent, the court, at the defendants’ request, finds that the following letters patent antedating the letters patent so granted to the claimant were issued, to wit:
    To Maurice Fitzgibbons, No. 119836, dated October 10, 1811, for an improvement in wood pavements;
    To James D. Finley, No. 462480, dated November 3, 1891, for an improvement in flooring;
    To Robert B. Caswell, jr., No. 430375,, dated June 17, 1890, for calking vessels by holding the calking material in grooves opposite each other in the abutting edges of the planks; which several letters patent and the specifications pertaining thereto are in these wrorcls: (Here insert in case of appeal.)
    The method prescribed for calking in the foregoing specifications, while in some respects similar to the Brooks method of calking, are not, nor either of them, substantially the same as the'Brooks method of calking vessels.
    IX. The reasonable license fee or royalty for the use of the claimant’s improved method of calking in the construction of the vessels herein named was:
    For said composite vessels Nos. 68, 69, and 70, $500 each, or $1,500; and
    For the Vicksburg, No. 11; Newport, No. 12; Princeton, No. 13, and the Marietta, No. 15, $800 each, or $3,200, making in all for the calking of said seven vessels the sum of $4,700.
    
      
      Mr. Jolm O. Fay for the claimant:
    After the claimant had perfected his invention he submitted it to the United States for its adoption for use in the construction and repair of the vessels of the United States. This submission was made to the Chief of the Bureau of Construction and Repair of the Navy Department, Admiral (then Commodore) Hichborn. The admiral caused the device to be thoroughly tested, and having by these tests established the value and practicability of the device, adopted it by placing it in the specifications for the construction of the gunboats involved in this suit. Following this lead, the LightHouse Board also inserted it in their specifications for the building of the composite vessels likewise embraced in this suit. No pretense was made bj^ the Government officers that it was not the claimant’s property, nor was there any attempt to tortiously appropriate it; but, with his assent and recognizing his rights, they adopted it and used it not only for the construction of the vessels in this suit, but for a number of other vessels built for the Government at or about the same time and for which a royalty was paid to the claimant. These circumstances, it is respectfully submitted, establish an implied contract, as has frequently been held by this court and the Supreme Court. (See McKeever v. United States, 19 C. Cls. R., 669; Palmer v. United States, 20 C. Cls. R., 432; Talbert v. United States, 25 C. Cls. R., 141; Burdett v. United States, 26 C. Cls. R., 48.)
    
      Mr. George II. 'Walicer (with whom was Mr. Assistant Attorney-General Pradt) for the defendant:
    While the Navy Department in its specifications for the calking of the decks of certain vessels called for the process covered by claimant’s patent, there were no negotiations with him on the part of the officials of said Department. They simply ordered that the process be used, and it mattered not that the consent of the claimant had not been asked. The Government made no contract, either express or implied, with the patentee, the claimant herein, for the use of his patented invention in any of the vessels mentioned in this cause. If the Government is liable at all for the use of the claimant’s invention, it is liable as an infringer of the patent, and in such case this court has no jurisdiction because the action is one of tort. (Schillinger v. United ¡States, 24 C. Cls. R., 278; 155 U. S., 167; Forehand's case, 23 C. Cls. R., 477.)
    The claimant himself testified that there were no negotiations between himself and any officials of the Government looking to the use of his process.
    There is no privity between the Government and the claimant. All the negotiations in which the Government participated were strictly with the contractors. The Government especially disavowed any liability to the owner or owners of any patent which might be used in executing contracts. The claimant should therefore seek remuneration from the contractors for the use of his method. If not proceeding against them in his own name, he had recourse against them under the provisions of the act of August 13, 1894 (28 Stat. L., 278, c. 280), in the name of the United States, but he failed to proceed against the contractors in his own name or to avail himself of the provisions of said statute in the name of the United States.
   Peelle, J.,

delivered the opinion of the court:

The claimant seeks to recover, on the theory of an implied contract, the license fees or royalties for'the use, by the defendants’ contractors, of his patented device for calking-vessels.

The facts from which the claimant contends an implied contract arises are substantially these: Before the issuance of letters patent to the claimant he submitted his method of calking to the then Chief of the Bureau of Construction and Repair of the Navy Department, to whom he said he was going to apply for a patent, and that officer expressed his belief that the invention was a good one, and for the claimant, to go ahead with it; that he would recommend it. After the issuance of letters patent tests of the device were made under the direction of said Bureau, which proved satisfactory, of which the claimant was informed by the Chief of said Bureau. Thereafter the contractors, to whom contracts were awarded for the construction of the.vessels in controversy,, were by a provision in the specifications, set forth in the findings, required to use the Brooks method of calking; and to protect the Government against any and all claims and demands of any nature on account of the use by the contractors, of any patented invention in or about the construction of said vessels the sixth paragraph of the contract, set out in the finding's, was inserted.

From the fifth finding of fact it appears that when the Government desired to use the claimant’s method of calking-on the U. S. S. Petrel through its own officers, doubtless for the purpose of further testing the device, terms therefor were sought from the claimant, who responded that his method of calking might be used thereon “ Avithout any charge.” This correspondence shows that the Government continued to recognize in the claimant a legal property right in his iiwention, and this while the invention was being applied to the vessels contracted for.'

The claimant contends that the act of the Navy Department in adopting, and requiring contractors to use, his patented invention, coupled with its use by them, operates in law as a taking of private property for public purposes, for which an implied contract arises to make compensation within the meaning of the last clause of the fifth article of the '.Constitution, which provides:

“ Nor shall private property bo taken for public purposes Avithout just compensation.”

The first question, therefore, is, What is a taking within the meaning of that clause of the Constitution? We think it may be regarded as settled law that where an officer of the Government, haAdng authority to act, takes or appropriates to public use property, admitting it to be private property, an implied contract will arise to make compensation. (United States v. Great Falls Manufacturing Co., 112 U. S., 645.) In that case, hoAvever, as the taking was by legislative authority, it was clearly the exercise of the right of eminent domain; but in the case of the United States v. Berdan Firearms Co. (156 U. S., 552) a recovery was had on an implied contract for the use of a patented invention, though no act of Congress authorized such use.

And so it has been held that when the Government, by its proper officer, uses a patented invention, acknowledging the right of the patentee thereto, an implied obligation will arise to pay therefor (Hollister v. Benedict Manufacturing Co., 113 U. S., 59; United States v. Palmer, 128 U. S., 262) ; and this upon the theory, as was held in the case of James v. Campbell (104 U. S., 356), that the right of the patentee, under letters patent granted by the Government, was exclusive of the Government as well as of all others and stood on the same basis as other property.

On the other hand, it has been held that when an office]- of the Government, having authority to act, takes and holds the possession of property under claim that it belongs to the Government, no implied contract will arise to pay for the use and occupation. (Langford v. United States, 101 U. S., 341.)

In the case of Schillinger v. United States (155 U. S., 163), affirming the judgment of this court (24 C. Cls. R., 278), where a contractor -of the Government had used a patented invention in the execution of his contract without the consent and over the protest of, the owner of- the patent, the court held that such use was “ plainly and solely an action for an infringement ” — a tort — the remedy for which, under Revised Statutes 4919, was an action on the case, of which this court had no jurisdiction. But in commenting on the case of United States v. Palmer (supra), which was a claim for compensation for an authorized use of a patented invention, and therefore not an infringement, the court in the Schillinger case said:

“ Here the claimants never authorized the use of the patent right by the Government; never consented to, but always protested against it, threatening to interfere by injunction or other proceedings to restrain such use. There was no act of Congress in terms directing, or even by implication suggesting, the use of the patent. No officer of the Government directed its use, and the contract which was executed by Cook (the contractor) did not name or describe it. There was no recognition by the Government or' any of its officers of the fact that in the construction of the pavements there was any use of the patent or that any appropriation was being made of claimant’s property. The Government proceeded as though it were acting only in the management' of its own property and the exercise of its own rights and without any trespass upon the rights of the claimants. There was no point in the whole transaction from its commencement to its close where the minds of the parties met or where there was anything in the semblance of an agreement. So not only does the petition count upon a tort, but also the findings show a tort. That is the essential fact underlying the transaction and upon which rests every pretense of a right to recover. There was no suggestion of a waiver of the tort or a pretense of any implied contract until after the decision of the Court of Claims that it had no jurisdiction over an action to recover for the tort.”

Whether, when a contractor in the execution of his contract uses a patented invention and the Government accepts the work so done, the owner of the patent can waive the tort and sue on an implied contract, is not involved in this case, because the invention was submitted to the Government and by it tested and adopted, of which the owner was notified, and the Government thereafter required that particular method of calking to be used by incorporating the same in the specifications for the construction of its vessels.

In the Schillinger case the court, in connection with the language quoted from that case, says:

“ There was no act of Congress in terms directing, or even by implication suggesting, the use of the patent. No officer of the Government directed its use, and the contract which was executed by Cook (the contractor) did not name or describe it. There was no recognition by the Government or any of its officers of the fact that in the construction of the pavements there was any use of the patent or that any appropriation Aras being made of claimants’ property.”

Not so in the present case, for here the Government knew that the Brooks method of calking was protected by letters patent. Not only so, but the Chief of the Bureau of Construction and Repair of the Navy Department had advised the claimant to procure a patent and that he would recommend its use. To that end the method of calking was tested and its use was required. This being so, we think it matters not whether the contractor knew that the Brooks method of calking was protected by letters patent or whether it procured from the owner a license for its use, for the Government had obtained such authority, and by incorporating in the specifications that the contractor should use that particular method of calking it was bound to know that the contractor could not execute its contract without using the claimants’ patented invention.

It is not controverted that the Secretary of the Navy was authorized by law to construct the vessels in controversy and to construct them in the most improved way, to do which he was necessarily clothed with large discretion, both as to the materials and methods to be used, as was the Secretary of War in the case of the Great Falls Manufacturing Co. v. The Attorney-General (124 U. S., 581) in determining what land should be. taken to carry out, in the best manner, the object Congress had in view by the act in that case, though he took lands outside the survey and map which the act directed to be first made showing the lands to be taken.

And so in the case of Hollister v. Benedict Manufacturing Co. (supra) the court said:

“ If the right of the patentee was acknowledged, and, without his consent, an officer of the Government, acting under legislative authority, made use of the invention in the discharge of his official duties, it would seem to be a clear case of the exercise of the right of eminent domain upon which the law would imply a promise of compensation, an action on which would lie, within the jurisdiction of the Court of Claims, such as was entertained and sanctioned in the case of the United States v. The Great Falls Manufacturing Co. (supra).”

In the case of United States v. Lynah (188 U. S., 445-464), after a careful review' of the authorities respecting what is a taking of private property for public purposes, the court says:

“ The rule deducible from these cases is that when the Government appropriates property which it does not claim as its own it does so under an implied contract that it will pay the value of the property it so appropriates.”

And so this court, in the case of Gibson v. United States (29 C. Cls. R., 18-25), respecting what constitutes an implied contract, said:

“ There can be no contract unless the parties, either by expression or implication, agree; and where the United ” States deny the title of plaintiff in a taking, the law will not imply, as against the claim of the Government, an agreement to pay. Contracts are made by the agreements and implications arising from acts of parties and not from their denials and differences.”

Now, let ns apply the rules deducible from the authorities cited to the present case. There is no contention that the Government asserted any ownership in the Brooks method of calking. On the contrary, the Government conceded not only that the method was patented, but that the claimant was the owner thereof; and, with that knowledge on the part of its responsible officers, entered into sundry contracts whereby its contractors were obligated in express terms to use that particular method of calking in the construction of its vessels, and it has received the benefit thereof.

The claimant does not appear to have had any dealings with the contractors looking to the use of his invention by them separate from the Government, to whom he had given authority to use. Nor was the claimant, after his invention had been adopted for use by the Government and incorporated in its specifications, bound, especially in the absence of any notice thereof, to pursue the several contractors who had used his invention with the authority and direction of the Government.

Where the United States enter into a contract in which the contractor agrees generally to indemnify and save harmless the Government from any claim growing out of the use by the contractor, without the consent of the OAvner, of any patented invention he may see fit to use in the execution of his contract, such as patented tools, machinery, and the-fiike, such use would clearly fall within the ruling in ih.é'ScMlUn-ger case as an infringement.

But when the Government, by its proper officer, having authority to use and appropriate a patented invention, the ownership of which it concedes in the patentee,, obligates a contractor, in express terms, to use such invention, it is bound to know that such contract can not be executed without the use-and consequent taking of such invention; and having been so taken, the Government can not successfully defend on the ground that the use. by the contractor was an infringement for which no liability attaches to the Government, for the reason that the taking was by direction of the Government with the consent of the owner of the patent ^ ancl even if the use, as between the contractor and the owner ; of the patent, was an infringement, still as between the Gov- \ eminent and such owner the taking was by the Government with his consent, and to that extent it might be urged, though we do not think it necessary in this case, that the rule aui facit per alium facit per se would apply.

In other words, if the Government’s contract with the builders of the vessel had merely required satisfactory calking without specifying the Brooks patent, and the builders had used that device on their own motion, .it might well be held that the patentee’s only remedy was against the build-^"' ers; or if the contract had specified the Brooks patent, as it does, and there had been no prior agreement or understanding between the Government and the patentee whereby the Government had acquired his consent to the use of the invention as in this case, it might be held that no contract could be implied. But here the only privity which existed was between the Government and the patentee, and he was a stranger to the agreement between the Government and the builder; and the Government provided in its contract with the builder for the very contingency which has arisen, and is amply indemnified against loss by reason of any judgment which may now be rendered for the use of the claimant’s invention. Good faith on the part of the patentee required that he should allow the Government to use his invention either on vessels constructed by Government employees or on vessels constructed by Government contractors; and good faith on the part of the Government requires that it should see the patentee compensated as its officers promised he should be, and especially so when it has carefully protected itself against loss.

It would seem that when the United States required the contractor to use the claimant’s invention nothing was left to1 consummate the taking but the execution on the part of the contractor of the operative or mechanical act of its use. It is in analogy as if the Government had employed the contractor to carry out its predetermined purpose in the use of the particular method of calking and thereby mediately instead of immediately reached the result.

The taking was not of a thing having physical existence, like lands or cattle, but was of an “ exclusive right” secured to the claimant by the Constitution (Art. I, sec. 8), which gives such right the character of property. And the laws which have been passed to give effect to that purpose have been construed, as Chief Justice Marshall said they ought to be, “in the spirit in which they were made.” (Grant v. Raymond, 6 Pet., 218-242.)

Therefore it seems clear to us that the exclusive right thus guaranteed by the Constitution, giving it the character of private property, which is so conceded by the authorized officers of the Government, can not be taken by them or by another through their contractual directions and appropriated to governmental purposes without the implication of a contract to make just compensation therefor, and, so believing, we must hold that the claimant is entitled to recover, and judgment is accordingly ordered to be entered in his favor for the sum of four thousand seven hundred dollars ($4,700).

Howry, J., was not present when this case was argued and took no part in the decision.  