McAleer v. United States

Statement by Mr. Chief Justice FULLER:

This is an appeal from a judgment of the court of claims rendered March 31, 1890, dismissing the petition of one Philip McAleer, whose administratrix was substituted in this court. The petition was filed November 27, 1888, 'to recover from the United States compensation for the use by the United States of certain inventions made by the petitioner, and protected by letters patent of the United States issued to him, such use being under licenses to the United States executed by petitioner.' The several inventions and improvements for which letters patent were issued to petitioner were set out, and it was averred that 'knowing that the said inventions and improvements so as aforesaid secured to the petitioner by letters patent were mainly, and almost exclusively, useful to the United States, in the said bureau of engraving and printing, the petitioner, at the request and by the advice of George B. McCartee, Esq., then superintendent of said bureau, for the United States, executed and delivered to the said McCartee a license to the United States to use the petitioner's inventions aforesaid mentioned in letters patent No. 170,183, which was accepted by said McCartee for the United States, and under said license the United States continued thereafter to use said inventions.' The license was then set out, and similar licenses were alleged to have been executed and delivered for the use by the United States of other inventions and improvements. The petition also averred that the United States advanced about the sum of $200 to be expended in procuring the issue of letters patent, 'the officers of said bureau having urged the petitioner to have his aforesaid inventions and improvements protected by letters patent, with the view of securing to the United States, in the said bureau of engraving and printing, by licenses as aforesaid, the exclusive use of the said inventions and improvements;' that at the time of the issue of the letters patent, and of the execution of the licenses, it was agreed between petitioner and the superintendent of the bureau, in behalf of the United States, that petitioner should be retained and employed in the bureau as machinist as long as the bureau continued to use said inventions or improvements, or any of them, under the licenses; and that he was subsequently discharged. The petition further stated 'that under the aforesaid licenses there was an implied agreement between the United States and the petitioner that the United States should pay to the petitioner, for the use of said improvements and inventions, whatever the said use was reasonably worth, and the petitioner, upon information and belief, says that the said use was reasonably worth the sum of thirty-one thousand dollars, ($31,000.)'

The defendant pleaded the statute of limitations, the assignment for valuable consideration of the patented improvements, and want of novelty.

The case having been heard, the court of claims, upon the evidence, filed the following findings of fact and conclusion of law:

'(1) Plaintiff is a citizen of the United States, a resident of the city of Washington, and a machinist by occupation.

'(2) From the year 1864 until about the 16th day of February, 1876, plaintiff was employed as a mechanic in the bureau of engraving and printing, formerly designated the 'Currency Division of the Treasury Department.' His duties were those of a skilled mechanic, and during the greatest part of the time particularly related to the charge and repair of machines used in that bureau for cutting and trimming fractional currency, including machines of the character hereinafter mentioned.

'During eleven months, beginning in November, 1876, and ending about September 10, 1877, he was employed in said bureau, and paid, as a watchman. At the latter date he was discharged.

'(3) December 7, 1875, letters patent No. 170,873 were issued to plaintiff for improvement in paper-perforating machines.

'(4) Or the perforating machines described in the specifications accompanying letters patent 170,873, 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.'

'(5) 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, is 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 the knife machine makes a clean cut, leaving no burr. This is the principal advantage of the knife machine and is a material one.

'(6) Except as hereinafter found, (see finding 9,) plaintiff has received no compensation from the government for the use of his invention.

'(7) January 10, 1876, plaintiff executed the instrument set forth at the close of this finding, which was recorded in the patent office (liber C 20, p. 40) January 17, 1876.

'This assignment was made at the suggestion of George B. McCartee, then chief of the bureau of engraving and printing.

'It was contemporaneously agreed by and between plaintiff and said McCartee 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.

'Plaintiff's 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 7, 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.

'Recorded Jan. 17, 1876.

'(8) 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 employes. 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.

'(9) Plaintiff received from the government 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.

'(10) The following assignment was made by plaintiff.'

(Here followed an assignment made by McAleer to one Schneider.)

'(11) Plaintiff's invention was applied as follows, to machines in the bureau of printing and engraving: The first machine was completed in April, 1879; two in August, 1879; one in 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 in use at the same time. Each machine can separate about 8,000 sheets a day.

'(12) 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.'

(Here followed plaintiff's letters patent No. 170,873, dated December 7, 1875, application filed September 14, 1875, for 'improvement in paper-perforating machines;' also, letters patent No. 164,920, dated June 29, 1875, application filed June 9, 1875, for 'improvement in rotary paper cutters,' to Agur Judson, of Newark, N. J.; also, letters patent to Merriam & Norton for 'improved cutting machine,' No. 55,336, dated June 5, 1886; also, letters patent to Alva Worden, of Michigan, for 'machine for cutting leather fly nets,' No. 41,459, dated February 2, 1864.)

'Conclusion of law. Upon the foregoing facts, the court find, as conclusion of law, that the petition be dismissed.'

The opinion, by Davis, J., is reported in 25 Ct. Cl. 238.

T. A. Lambert, for appellant.

Asst. Atty. Gen. Conrad, for appellee.

Mr. Chief Justice FULLER, after stating the facts in the foregoing language, delivered the opinion of the court.