Opinion of the Court.

ernment's stamp sheet does not have the large unprinted space in center of the sheet as shown in claimant's patent on pages 5 and 12.

X. The net profits to the United States from the sale of the products of the multiple stamp sheets, and the multiple backing covers, from April 16, 1900, to June 30, 1910, exceeded $3,000, for which no payment has been made, nor is it otherwise shown what a reasonable royalty for the use of said stamp-holder device so patented would be if the same were valid.

XI. Upon the foregoing findings of fact the court finds the ultimate fact, so far as it is a question of fact, that by reason of the former state of the art shown in Finding II, as well as by reason of the nonuse by the defendants of certain material elements included in claimant's specifications for which patent was granted, the said patent granted to claimant does not possess novelty or utility, and the use by the defendants of the stamp book made by them does not make them liable to the claimant in this action for damages.

Mr. Hosea B. Moulton and Mr. F. P. B. Sands for the plaintiff. Mr. John M. Thurston, Mr. Earl Sherwood, and Mr. Rexford M. Smith were on the brief.

Mr. W. H. Pumphrey, with whom was Mr. Assistant Attorney General Huston Thompson for the defendants.

ATKINSON, Judge, delivered the opinion of the court:

This case having been decided on February 12, 1912, is now before us on plaintiff's motion for a new trial, and for amendments of findings of fact by both plaintiff and defendants.

This suit was brought to recover from the United States under an implied contract the sum of $1,000,417.56, which is alleged to be the net profits accruing to them from the use of a patented device granted to plaintiff, covering a period of 10 years from April 16, 1900, to June 30, 1910. The defendants deny the validity of the patent, as well as the ex

Opinion of the Court.

istence of an implied contract in fact for the use of the device by the Post Office Department.

The most important question presented by the findings is that of jurisdiction. The circumstances attending a transaction involving the manufacture and use of a patented device out of which an implied contract to pay royalties therefor arises, must indicate much more than mere consent to its use upon the part of the patentee. The convergence of other important facts must obtain. It must clearly appear that the defendants not only used the patented device, but at the time of user did so with knowledge of the patent and absolutely no claim of ownership or title upon their part in the thing used. In other words, the invitation to use the patented article must be accepted by a user of the same with what amounts to a disclaimer upon the part of the defendants of title or ownership in the invention used, if as in this case the defendants positively disclaim having used the patented article, and follow this assertion with a positive claim of invention upon their part, quite distinct from the letterspatent granted to the claimant, declining to concede either use or ownership in the article used to the claimant, the elements of mutuality are lacking, and the transaction is one of infringement. This case is totally unlike United States v. Palmer, 128 U. S., 262, and United States v. Berdan Fire Arms Co., 156 U. S., 552. In these cases the patented article was exhibited to competent boards appointed by the proper departments to test as preliminary to user the proffered articles; the United States not only knew of the patented invention, but used the same without claim of ownership or title in itself to the article used. Responsibility attached as upon contractual relations, wholly upon the idea that the circumstances of user by the defendants disclosed a lack of any claim of ownership or title upon its part in the article used. As was said by the Supreme Court in Schillinger v. United States, 155 U. S., 169, "The successive allegations place the parties in continued antagonism to each other, and there is no statement tending to show a coming together of minds in respect to anything." The findings in this case disclose that the Post Office Department

Opinion of the Court.

previous to the issuance of stamp books worked out the plans and specifications for the same without actual knowledge and certainly quite independently of the Farnham patent; that before issuing the same through its proper legal officer reviewed said letters-patent and then proceeded in strict disregard of the same to manufacture and sell the same as an invention wholly its own, expressly repudiating the Farnham patent as having any relation thereto.

The Supreme Court in deciding the Berdan case used this language: "While the findings are not so specific and emphatic as to the assent of the Government to the terms of any contract, yet we think they are sufficient. There was certainly no denial of the patentee's rights to the invention; no assertion on the part of the Government that the patent was wrongfully issued; no claim of a right to use the invention regardless of the patent; no disregard of all claims of the patentee, and no use, in spite of protests or remonstrance. Negatively, at least the findings are clear. The Government used the invention with the consent and express permission of the owner, and it did not, while so using it, repudiate the title of such owner," which clearly differentiates that case from this and at the same time states the rule upon which we predicate the decision of the court in this case. We think the language entirely apposite and that the transaction here involved was one of infringement.

Plaintiff vigorously opposes the findings of the court respecting the prior state of the art, and all other contentions challenging the validity of claimant's patent, asserting a want of authority upon the part of the defendants to make such a defense. If the case involved an express contract between the parties, plaintiff's objections would be sound: Harvey Steel Co. v. United States, 38 C. Cls., 662; 196 U. S., 310; United States v. Palmer, 128 U. S., 262. Where, however, the jurisdiction of the court as well as plaintiff's right to recover depends upon a user of the alleged invention under such circumstances as to warrant an implication of a contract to pay therefor, the rule is quite the opposite, especially so where the defendants deny all the allegations of the petition. The existence of the essential elements out of which an implied contract arises, heretofore set forth, is a subject

Opinion of the Court.

of disputation, and the defendants can not be precluded, simply because the United States is involved, from showing by positive proof, a situation that in itself precludes the idea of mutuality or recognition of plaintiff's patent on its part. The question raised is not new, it has heretofore been passed upon, and the court has uniformly held it to be without merit. Morse Arms Co. v. United States, 16 C. Cls., 296; Harvey Steel Co. v. United States, 38 C. Cls., 681; Societe Anon. v. United States, 224 U. S., 309; Knapp v. United States, 46 C. Cls., 601; Beach v. United States, 226 U. S., 243.

This court is, of course, without jurisdiction to invalidate a patent; its judgments do not assume to do so. The purpose of the findings objected to, as well as the defense interposed thereunder, is to ascertain just what the plaintiff's invention really was, the full extent or limitations of his claims and their identity with reference to the article employed by the defendants in their manufacture and sale of stamp books and his property right therein. One of the principal defenses goes specifically to the question of identity. As was said by the court in Harvey Steel Co. v. United States, supra: "In all such cases all defenses were open to the defendants-the Government which are open to ordinary defendants in ordinary actions for infringement. They could set up another title, a license under another antecedent patent; they could attack the validity of a patent, and show that the invention which they appropriated was not property; they could maintain that the device which they manufactured differed in essential particulars from the device which the inventor had protected by letters patent: *

treat such suits

infringement."

In a word, they could always as if they were actions for

Bookmaking and bookbinding are very old; no claim of novelty is made by the plaintiff as to any of the elements entering into the stamp book produced by his alleged invention. They are admittedly old. The invention claimed related specifically to a method, a process by which certain specially designed elements combined in a certain way produced a certain result not heretofore produced in that way. The object to be accomplished as gathered from the specifications of the patentee was to produce an inexpensive form

Opinion of the Court.

of cover in which stamps were to be secured in book form, and which might be divided into smaller books of such size as desirable. To accomplish this result the plaintiff first divided the ordinary stamp sheet used by the Government into certain parts, which he designedly left unprinted for the purpose of stitching and folding. This sheet in turn was to be adapted to a backing covering, especially designed as complemental to the stamp sheet, so that by a process of stitching, folding, and cutting great quantities of the completed book might be produced by a series of single operations. There is some question as to the practicability of the invention, due to the contraction and expansion of the stamp sheet as manufactured by the United States, but aside from this, plaintiff's letters-patent disclose by his claims that the finished product to be produced by his methods of manufacture created a stamp book made by stitching the component elements together, then folding the cover in such a way as to inclose both front and back of the book, leaving a sufficient margin for the formation of flaps upon the same to secure its closing. This was the invention upon which he secured his letters-patent, as clearly shown from the history of the patent in the Patent Office. This invention the defendants did not use; they never at any time used a stamp sheet designed in accord with plaintiff's claim therefor; they at no time employed the folding process and attaching their covers, and otherwise omitted, as shown by the findings, at least one margin of unprinted space in the stamp sheet itself. It was held in the case of Singer Mfg. Co. v. Cramer, 192 U. S., 265, "where the patent is not a primary patent and there is no substantial identity in the character of two devices except as the combination produces the same effect, and there are substantial and not merely colorable differences between them, there is no infringement of the earlier patent."

Citations are hardly necessary to sustain the oft-repeated doctrine that where the invention claimed is no more than the employment of elements old in the art to accomplish a new purpose or result, the invention is limited specifically to the detail of one's claims.

The remaining question to be considered is the validity of the patent granted by the United States Patent Office to