#### WILLIAM F. BROTHERS v. THE UNITED STATES.

[No. 33072.

Decided June 14, 1917.]

*On the Proofs.*

*Jurisdiction; assignments.*— Section 3477, Revised Statutes, prohibits the assignment of any claim for infringement of letters patent prior to the time plaintiff! acquires title of patent, and the jurisdiction of this court to consider actions for infringement is limited by the act of June 25, 1910, 36 Stat, 851. *Patent; infringements.*— Where the defendants’ device was designed to be and in fact was different from that of the plaintiff’s, an infringement of the latter’s patent rights can not be said to result from a change that was not intended to and did not produce a mechanical equivalent.

*Implied contract.*— In suits on an implied contract it is essential to a recovery that the owner be shown to have consented to the use of the 'property.

*Same; infringement.*— Where the petition is based on an alleged infringement, a recovery can'not be based on the theory of an implied contract.

*The Reporter's*statement of the case:

*Mr. Samuel E. Darby*for the plaintiff.

The adjudication of the validity and pioneership of the Brothers patent in suit by the Court of Appeals for the Second Circuit, 223 Fed., 359, removes the necessity for considering many of the questions which ordinarily arise in patent infringement litigation, including a discussion of the prior art patents.

The decision of the Court of Appeals also wipes out many questions regarding the structure involved, and so we come to this court — the way having been pointed out by the Court of Appeals — with an exceptionally clear cut case in which the questions at issue are reduced to a very narrow compass.

The question, then, is, whether or not the act of June 25, 1910, 36 Stat., 851, gives the Court of Claims jurisdiction to entertain a suit and award compensation for an infringing use of a patented apparatus occurring *after*the date of the act where the apparatus in question *is not put into condition for infringing use until after the date of the*act, even *463though the physical apparatus, though not in condition for infringing use, was owned, used by, and in the possession of the United States *-prior*to the date of the act.

In the present status of the case claimant bases no claim for compensation by reason of the use of the cableways by the Government prior to the date of the Act of June 25,1910. The contention of claimant in this regard is that the apparatus used by the Government *prior*to the date of the act is not, in the eyes of the law, the same apparatus which was used *after*the date of the act because of the fact that it was not put in condition for infringing use until after the date of the act. And the putting of the apparatus in condition for infringing use made it, in legal effect, a different apparatus.

The spirit of this statute as construed by the Supreme Court is to afford a remedy for a wrong where such remedy did not exist before and the act is, therefore, to be given a liberal scope and meaning. *United States*v. Palmier, 128 U. S., 62; *Sehillinger*v. *United*States, 155 U. S., 163; *United States*v. *Berdan Fire Arms Go.,*156 U. S., 552; *Bussell*v. *United States,*182 U. S., 516; *Harley*v. *United States,*198 U. S., 229; *Qrozier*v. *Krupp,*224 U. S., 303; *Farnham*v. *United States,*240 U. S., 537.

The statute intended to make a division of infringing acts in that, for everything up to the date of the act, the recovery must be had under the old law, while if the infringement continued after the passage of the act — that is, after June 25, 1910 — the recovery must be under the act. The statute gives a remedy where none existed before and it would be a very harsh construction to say that the Government could continue the use of an infringing article without compensation just because it happened to have begun the use, against the will of the inventor and without his consent, prior to the date of the act.

This same idea is brought up again in *Farnham*v. *United States,*240 U.. S., 537, where the suit was for profits on infringement from April 16, 1900, to June 30, 1910, the case being based on an alleged implied contract under the old law. The Government commenced the manufacture of the article *464March 26, 1900, and still continued. The patent was dated January 4, 1898. The court held that there was no implied contract and hence that no recovery could be had under the old law, but as the claim for damages included a period of five days under the new law, viz, from June 25,1910, to June 30, 1910, the judgment should be without prejudice to the presentation of a claim under the statute. Here, again, the court implies that a continuing infringement may be taken as a new infringement after the date of the statute.

In *Syracuse Chilled Plow Co.*v. *Leroy Plow*Co., 238 Fed., 684, Judge Hazel, in District Court of Western District of New York, states:

“ It makes no difference that defendant does not adapt its construction to attain all the benefits of the patent in suit. It has all the means to attain the result, and presumably it was its intention to operate the plow in the same way as complainant’s operated.”

Identity exists with reference to the question of infringement, if the idea of means protected by the patent is found substantially existing in the invention practiced by the alleged infringer. *Robinson on*Patents, vol. 3, par. 892; *Lourie Implement Go.*v. *Lenhart et*al., 130 Fed., 122; *Columbia Wire Go.*v. *Kokomo Steel <& Wire Co.,*43 Fed., 116.

A device which is constructed on the same principle as that of a patent, has the same mode of operation, and accomplishes the same result by the same or equivalent mechanical means, infringes the patent, although it may differ in form. *American Caramel Co.*v. *Glen Rock Stamping Co.,*201 Fed., 363.

In *Knight*v. *Gavit,*Fed. Cas., No. 7,884, the court said:

“ The question is not whether the two machines are identical in form, or whether they are equally perfect in their adaptation to use. It is the commonest of all devices with those who seek to defraud a patentee to give a novel exterior to their piracy, to modify forms, introduce new parts or omit old ones, to change the position of the parts, and, generally, to mask their violations of the patent right as best they may. * * * Courts and juries look through the artifice of dress to the essential substance and decide by reference to the substance alone. This is the law in regard to combinations of machinery, as well as those which may be, in common language, spoken of as simple inventions.”

*465In *Marconi Wireless Telegrapli Go., etc.,*v. *Deforest Radio Telephone and Telegraph Company,*225 Fed., 65, the court said:

“ The whole defense amounts to this, viz: That defendant can take, and has taken, an infringing set of apparatus and so arranged or coordinated it as to avoid infringing. * * * It seems to me that it would be proper to grant a preliminary injunction hei’e on the sole ground that the apparatus vended and used by defendants was capable of infringing and would, when ordinarily used by operators, be so adjusted as to infringe. * * ***I do not believe that a noninfringing device which could be made more efficient by an operator after he got to sea, or just before starting, by making it infringe would be permitted to remain in the non-infringing and less efficient form.”

Judge Coxe in the Court of Appeals for the Second Circuit in the case of *Parsons Non-Skid Go.*v. *Atlas Chain Go.,*198 Fed., 399, where the device in its natural, usual, and preferential use constituted an infringement, held that it is not a defense to a suit for infringement that it is possible, by limiting its efficiency, to so use the device as not to infringe. He stated:

“ In other words, the defendant places in the hands of the chauffeur an apparatus which may infringe or not, according to whether it is wound up loosely or tightly. Should it appear that the best results can be obtained only by a loose adjustment, it is hardly probable that a chauffeur will take the additional time and trouble to secure an inferior result. If experience shows that a loose adjustment prevents skidding and saves the wear and tear, of the tires, it is safe to assume that it will be adopted, notwithstanding directions to the contrary.”

*Wright Go.*v. *Herring-Gurtiss Go.,*204 Fed., 597; *Weed Chain Go.*v. *Cleveland Go.,*196 Fed., 213; *Parsons Go.*v. *Asch,*196 Fed., 215; *Penfield*v. *Chambers,*92 Fed., 630; *Heap*v. *Tremont,*82 Fed., 449; *Norton*v. *Jensen,*49 Fed., 859; *Rogers*v. *Mergenthaler,*64 Fed., 799; *Dowagiac Go.*v. *Minnesota Moline Plow Go.,*118 Fed., 136; *Adams*v. *Folger,*v. *Folger,*120 Fed,, 269.

*Mr. Henry G. Workman,*with whom was *Mr. Assistant Attorney General Huston Thompson,*for the defendants.

Per Curiatvx :

The plaintiff had assigned his application for a patent for “improvement in cableways on gravity anchors,” and after *466letters patent had been issued and had been assigned to various parties he became the owner of said letters patent about two and a half months before their expiration by limitation in 1912. It is essential that any right of action he has be confined to said two and a half months’ time. There could be no assignment of any claim against the Government to him arising prior to the time he became the owner of the letters patent. *'Section SlfH, Revised, Statutes.*

The Court of Claims did not have jurisdiction of claims for infringement of a patent by the United States until the act of June 25, 1910, 36 Stats., 851. Any jurisdiction which the court now has is subject to the limitations of that act. It is therein expressly provided that the Court of Claims shall not entertain suits “based on the use by the United States of any article heretofore owned, leased, used by, or in the possession of the United States.” The cableways complained of in this action were used by and in the possession of the United States prior to June 25, 1910. In order to meet the question thus presented the plaintiff claims that subsequent to June 25, 1910, the Government materially altered the cableways being used by it in such way as to make them infringe his patent. That result is said to flow from the fact that the Government decreased the deflection of the cables; that is, tightened them up, and that by so doing in connection with the loads they carried the towers were caused to yield or tilt and thereby to become in essence towers such as plaintiff’s patent contemplated and covered. The cableways designed by the Government and used by it were intended to be rigid. So far from being like plaintiff’s design they were intended to be different from it, and they were different. There can. be no question that as constructed and used generally the said cableways used by the Government did not infringe plaintiff’s device. That he had a meritorious device may be conceded. *Brothers*v. *Lidgerwood Mfg.*Co., 223 Fed. Rep., 364.

During the course of the defendants’ work on the Panama Canal and the use of its cableways it was found necessary to tighten the cableways so as to admit of the carriage of loads over and free of the work being constructed, and the cables *467were accordingly tightened. This was done in the orderly conduct of the work upon which the Government was engaged. The railroad tracks upon which the base of the tower rested were built parallel with the canal cut and were at times constructed upon fills resting upon swamp or soft ground. These conditions may at times have caused a yielding of the tower under the stress of the load upon the cable-ways; and if that fact be conceded the question is, Would the act of the Government in making the change suggested amount to an infringement of plaintiff’s patent ? As above stated, there was not intention on the part of the Government to allow its cableways to yield or tilt. As changed they did not amount to a mechanical equivalent, and in the absence of such an intention and mechanical equivalent it can not be said that the changes which the Government made and the results which followed, largely on account of the character of the foundation, would amount to an infringement. If the changes in the cables or the addition to the loads thereon could convert the Government’s cableways into a device embodying the essential features of plaintiff’s device, that fact would demonstrate the invalidity of plaintiff’s patent because of the prior state of the art. Intended as they were to be rigid and designed as rigid towers, well known in the art, the circumstances that from an overburden they might at times yield or tilt some, would be but a demonstration of the well-known fact that even a rigid tower may tilt before it collapses, and that it will topple over or collapse under sufficient stress. If plaintiff’s claim be so construed as to prevent the use of a rigid tower which under any state of circumstance may yield or tilt to some extent, then his claim in that regard would be too broad to give it validity.

Plaintiff’s petition is plainly based upon an alleged infringement, but it was suggested in argument that if he can not recover for an infringement he may recover upon an implied contract. Plainly the two positions are inconsistent and the same facts do not give a right of action for both. The plaintiff protests that the Government had no right to use his device, and he can not recover upon an implied contract unless he consented to such use. *Russell’s case,*182 *468U. S., 516; *Healy*v. *Sea Gull Specialty*Co., 237 U. S., 479, 480.

The evidence is very conflicting as to whether the tower, after the deflection of the cables was lessened, tilted or yielded at all. If they did so it was the result of accident and not of design. The evidence does not show any tilting or yielding of a tower during the period of plaintiff’s ownership of the patent.

We think plaintiff has not shown an infringement of his patent and that there can be no recovery as upon an implied contract. The petition will therefore be dismissed.