Schillinger v. United States/Dissent Harlan

Mr. Justice HARLAN (dissenting).

I am constrained to withhold my assent to the opinion and judgment in this case.

The United States granted to Schillinger in 1870 a patent for an alleged new and useful improvement in concrete pavements. That patent was surrendered, and a new one issued in 1871, based on amended specifications. The present suit against the United States proceeds upon the ground that in a pavement constructed in the capitol grounds, under the supervision of the architect of the capitol, the United States knowingly obtained, and still enjoys, the benefit of the improvement covered by the Schillinger patent.

Can a suit be maintained against the United States in the court of claims, as upon contract, for the reasonable value of such use of the patentee's improvement?

In James v. Campbell, 104 U.S. 357, this court said: 'That the government of the United States, when it grants letters patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use, without compensation, land which has been patented to a private purchaser, we have no doubt. The constitution gives to congress power 'to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,' which could not be effected if the government had a reserved right to publish writings or to use such inventions without the consent of the owner. Many inventions relate to subjects which can only be properly used by the government, such as explosive shells, rams, and submarine batteries to be attached to armed vessles. If it could use such inventions without compensation, the inventors could get no return at all for their discoveries and experiments.'

U.S. v. Great Falls Manuf'g Co., 112 U.S. 645, 656, 5 Sup. Ct. 306, was a suit in the court of claims to obtain compensation for all past and future use and occupation by the United States of certain lands, water rights, and privileges claimed by the plaintiff and taken for public use by the agents of the government. This court said: 'The making of the improvements necessarily involves the taking of the property; and if, for the want of formal proceedings for its condemnation to public use, the claimant was entitled, at the beginning of the work, to have the agents of the government enjoined from prosecuting it until provision was made for securing in some way payment of the compensation required by the constitution,-upon which question we express no opinion,-there is no sound reason why the claimant might not waive that right, and, electing to regard the action of the government as a taking under its sovereign right of eminent domain, demand just compensation. Kohl v. U.S., 91 U.S. 367, 374. In that view, we are are of opinion that the the United States, having, by its agents, proceeding under the authority of congress, taken the property of the claimant for public use, are, under an obligation imposed by the constitution, to make compensation. The law will imply a promise to make the required compensation where property, to which the government asserts no title, is taken, pursuant to an act of congress, as private property to be applied for public uses. Such an implication being consistent with the constitutional duty of the government, as well as with common justice, the claimant's cause of action is one that arises out of implied contract within the meaning of the statute which confers jurisdiction upon the court of claims of actions founded upon any contract, express or implied, with the government of the United States.' In Great Falls Manuf'g Co. v. Attorney General, 124 U.S. 581, 597, 598, 8 Sup. Ct. 631, it appeared that the secretary of war was authorized by an act of congress to take possession of premises that might be covered by a survey and map direct to be made. He took possession of property and water rights that were alleged not to be embraced in such survey and map, and it was contended that in so doing he was guilty of trespass. This court said: 'If the secretary of war, who was invested with large discretion in determining what land was actually required to accomplish in the best manner the object congress had in view, found it necessary to take, and has taken and used, and still holds, lands of the plaintiff for the proposed dam, which happened not to be covered by the survey and map, the United States are as much bound to make just compensation therefor as if such lands had been actually embraced in that survey and map.' After observing that it must not be understood as holding that the secretary could bind the United States to pay for lands taken by him which manifestly had no substantial connection with the improvement under his charge, the court said: 'It is sufficient to say that the record discloses nothing showing that he has taken more land than was reasonably necessary for the purposes described in the act of congress, or that he did not honestly and reasonably exercise the discretion with which he was invested; and consequently the government is under a constitutional obligation to make compensation for any property or property right taken, used, and held by him for the purposes indicated in the act of congress, whether it is embraced or described in said survey or map or not. U.S. v. Great Falls Manuf'g Co., 112 U.S. 645, 646, 5 Sup. Ct. 306. * *  * Even if the secretary's survey and map and the publication of the attorney general's notice did not, in strict law, justify the former in taking possession of the land and water rights in question, it was competent for the company to waive the tort, and proceed against the United States, as upon an implied contract, it appearing, as it does here, that the government recognizes and retains the pssession taken in its behalf for the public purposes indicated in the act under which its officers have proceeded.'

In Hollister v. Manufacturing Co., 113 U.S. 59, 67, 5 Sup. Ct. 717, the principles laid down in James v. Campbell and in U.S. v. Great Falls Manuf'g Co., above cited, were recognized and approved. And in U.S. v. Palmer, 128 U.S. 262, 269, 9 Sup. Ct. 104, the decision was that the United States was liable to suit in the court of claims, as upon implied contract, for the value of the use of an invention which was used with the consent of the patentee.

It may therefore be regarded as settled that the government may be sued in the court of claims, as upon implied contract, not only for the value of specific property taken for public use by an officer acting under the authority of the government, even if the taking was originally without the consent of the owner and without legal proceedings for condemnation, but for the value of the use of a patented invention, when such use was with the consent of the patentee.

It seems to me-looking at the case from the standpoint of mere contract-that these principles control the present inquiry, and sustain the right of the claimant to sue the government for the value of the use of his alleged invention. Congress made an appropriation of $200,000 'for improvement of capitol grounds according to the plans and under the general direction of Frederick Law Olmsted, to be expended by the architect of the capitol.' 18 Stat. 214. The architect invited proposals for laying concrete pavement required for the proposed improvement according to those plans and specifications, and one Cook was the lowest bidder. His bid was accepted. Schillinger protested against the contract being awarded to Cook, the latter having no right to use the Schillinger patent. He gave notice to the architect of his patented rights. It was found by the court of claims that 'at the time the bids were opened plaitiff protested to the architect against the award being made to any one but his associate, Roberts [who was entitled to use the Schillinger invention]; but the architect and his advising engineers decided they would award the contract to the lowest bidder, on the ground that, as the validity of the Schilinger patent had not been tested at law or in equity, they could not decide whether it was valid or not, and that the interest of the government, in their judgment, would be best subserved by giving the contract to the lowest bidder, taking a bond to protect the government from the suit threatened by claimant.' In the contract between the government, represented by the architect of the capitol, and Cook, for a concrete pavement, according to the Olmsted plans and specifications, it was provided 'that in the event of any legal proceedings being taken by other parties against the contractor of the United States for the infringement of any patent or claimed patent during execution of the work, the contractor shall hold the United States harmless.'

All this shows that the architect of the capitol was aware of the existence of the Schillinger patent. He did not dispute Schillinger's rights under the patent, nor did he, as the representative of the government, claim that the patent was invalid, nor, if valid, that the government could get the benefit of it in the contemplated improvement without compensating the patentee. On the contrary, he in effect recognized a right to such compensation, if the patent was valid, and took a bond from the contractor for the protection of the government in the event of a suit against the contractor that would interfere with the use of the Schillinger invention in the pavement in the public grounds. But no such suit appears to have been brought. The patentee had the right to waive any suit against the contractor or the architect that would interfere with the prosecution of the work, and look to the obligation of the government to make him just compensation for the use of his invention. It was so ruled in the Great Falls Case. The authority of that case is not here disputed. As the government had granted the patent, the purpose to commit a tort cannot be imputed to the architect as the agent of the United States. His action meant no more than that he would leave the question of the obligation of the United States to make compensation for the use of the Schillinger patent to depend upon a decision by the courts as to its validity.

Under the authority given by congress to expend the money appropriated in improving the capitol grounds according to specified plans, the architect of the capitol had a large discretion, and was authorized, so far as the government was concerned, to use in such improvement any patented invention that those plans would require, or that would best subserve the public interests, subject, of course, to the constitutional obligation to make just compensation to the inventor. The constitution imposing that obligation is a covenant between the government and every citizen whose property is appropriated by it for public use. If Schillinger's patent was valid, then the government is bound by an obligation of the highest character to compensate him for the use of his invention, and its use by the government cannot be said to arise out of mere tort, at least when its representative did not himself dispute, nor assume to decide, the validity of the patent. If the act of congress under which the architect proceeded had, in express terms, directed him to use Schillinger's invention in any pavement laid down in the public grounds, then such use, according to the decision in U.S. v. Great Falls Manuf'g Co., would have made a case of implied contract based on the constitutional obligation to make just compensation for private property taken for public use. But such a case is not distinguishable, in principle, from the present one, where the architect, proceeding under a general authority to expend the public money according to specified plans, uses, or knowingly permits to be used, a particular patented invention, not disputing the rights of the patentee, but leaving the question of the validity of the patent, and the consequent liability of the government for its use, to judicial determination.

I do not stop to discuss the question whether Schillinger's patent was valid, nor whether it was infringed by the mode in which the pavement in question was constructed. Those questions would have been here for determination if the court below had assumed jurisdiction, and decided the case upon its merits. That court dismissed the petition for want of jurisdiction, on the ground simply that there was no contract, express or implied, between the owner of the patent and the government. It held that the appropriation or use of the Schillinger invention was in the nature of a tort, and this conclusion rested upon the ground that the architect of the capitol denied that any private right existed under the alleged patent. But this was an error. There is no finding by the court showing a denial of that character, even if it be assumed that such a denial could be deemed of any consequence in view of the constitutional obligation to make just compensation for private property taken for public use.

I am of opinion that when the government, by its agent, knowingly uses or permits to be used for its benefit a valid patented invention, it is liable to suit in the court of claims for the value of such use, and that its liability arises out of contract based upon the constitutional requirement that private property shall not be taken for public use without just compensation.

It is proper to say that the claimant in his petition does not place the claim for compensation as distinctly upon the basis of contract as he might have done. But, as the opinion of the court may be interpreted as proceeding upon the broad ground that the government could not be sued as upon contract, express or implied, unless its agent at the time the invention was used for its benefit recognized or admitted the validity of the patent, I have thought it appropriate to state my view of that question.

2. There is another view of the case which is independent of mere contract. The act of March 3, 1887, for the first time gives the court of claims jurisdiction, to hear and determine 'all claims founded upon the constitution of the United States.' If the Schillinger patent be valid, and if the invention described in it has been used or appropriated by the government through its agent charged with the improvement of the capitol grounds, then the patentee, or those entitled to enjoy the exclusive rights granted by it, are entitled to be compensated by the government. And the claim to have just compensation for such an appropriation of private property to the public use is 'founded upon the constitution of the United States.' It is none the less a claim of that character even if the appropriation had its origin in tort. The constitutional obligation cannot be evaded by showing that the original appropriation was without the express direction of the government, nor by simply interposing a denial of the title of the claimant to the property or property rights alleged to have been appropriated. The questions of title and appropriation are for judicial determination. Those being decided in favor of the claimant, the constitution requires a judgment in his favor. If the claim here made to be compensated for the use of a patented invention is not founded upon the constitution of the United States, it would be difficult to imagine one that would be of that character.

As the agent of the government was moved to use the Schillinger invention because the patent had not then been established by the decision of any court, it may be stated that it was subsequently sustained, as the findings below show, in numerous cases; the earliest being Paving Co. v. Perine, 8 Fed. 821 (1881, Sawyer, J.), and the latest being Hurlbut v. Schillinger, 130 U.S. 456, 9 Sup. Ct. 584.

I am authorized by Mr. Justice SHIRAS to say that he concurs in this opinion.