#### RICHMOND SCREW ANCHOR COMPANY, INC., v. THE UNITED STATES

[No. A-117.

Decided December 7, 1925]

*On the Proofs*

*Patent rights; assignment.*— The assignee of letters patent assigns them to the plaintiff, attempting thereby to invest plaintiff with the right to recover for past infringements. Such a right is not assignable as against the United States, 36 Stat. 851.

*The Reporter's*statement of the case:

*Mr. 0. EUery Edwards*for the plaintiff. *Messrs. Joseph W. Cox, Archibald Cox*and *James H. Griffin*were on the briefs.

*Mr. John, 8.*Bradley, with whom was *Mr. Assistant Attorney General Herman J.*Galloway, for the defendant. *Mr. Hatrry E. Knight*was on the briefs.

The former opinion in this case is reported in 58 C. Cls.. 433, decided June 4, 1923. The following are the additional facts found December 7, 1925:

I.The United States installed on or before January 1,, 1919, 810 cargo beams covered by the Lenke patent, as follows:

Army base, South Brooklyn_366

Army base, Norfolk, Va_256

Navy base, Charleston, S. C- 88

Army base, New Orleans, La_100

Total_ 810

II. Since January 1, 1919, the evidence establishes that no additional beams of the Lenke type have been installed or used by the United States.

III. The fair license value on a royalty basis is the sum of twenty ($20) dollars a cargo beam, amounting in this case to the sum of sixteen thousand two hundred ($16,200) dollars.

IY. The use of the Lenke cargo beam by the United States instead of the cargo beams theretofore installed and used *398resulted in a saving of 2,000 pounds of metal per beam. The market price per pound of the kind of metal employed in the construction of cargo beam was *6y2*cents per pound, thus enabling the United States to save in the expense of installation the difference in weight between the old beams used and the Lenke beam, viz., the difference between 3,300 pounds and 1,300 pounds, or 2,000 pounds on each beam installed, amounting in the aggregate to $103,480.

The United States installed the Lenke beams by contract with third parties. The beams were installed for the exclusive use of the United States. None were sold or installed for profit, other than such as accrued to the United States by reason of the saving in cost of installation. The single advantage which the United States gained by the use of the beams was the saving in cost of the same and the convenience resulting from their novelty. They were used by the United States for Government purposes. There is no proof in the record as to any other saving or advantage to the United States.

Y. The plaintiff and earlier owners of the Lenke patent did not manufacture cargo beams of the Lenke type, but consistently followed the practice of licensing others to make and use them.

The court decided that plaintiff was not entitled to recover.

Booth, Judge,

delivered the opinion of the court:

The original petition in this case was filed May 23, 1921. When the case came on for proof the parties entered into an express stipulation, in part as follows: “ Therefore, subject to the approval of the court, it is stipulated by and between counsel for the respective parties that the taking of testimony respecting the nature and amount of compensation to be paid by defendant will be postponed until the issues determining the liability of defendant to pay compensation have been decided by this court.”

The case is for an infringement of a patented cargo beam. The court has heretofore uniformly approved a course of proceeding in patent cases wherein the validity of the patent is challenged, in accordance with the stipulation set *399out above. In this case we approved the stipulation and the parties proceeded accordingly. A record of considerable proportion presented to the court the vital issue of a patentable invention. The parties so treated it, and the case was argued upon that one point and no other. June 4, 1923, the court sustained the validity of the patent and remanded the case, in accord with the stipulation of the parties, to the general docket, with leave to either party to take testimony respecting damages recoverable. The case is before us now in virtue of the above order of remand, and the court is for the first time advised as to the nature, extent and character of plaintiff’s contention respecting the allowance of sums either as royalty, damages, or profits.

We have gone into the previous history of the litigation in order to demonstrate that the issue which we confidently believe determines the case was not raised upon the former argument and was not deducible from the record then presented. The court was not informed and had no means of knowing when the patented devices were used by the United States until the present record disclosed the fact. The per-tinency of what we have said appears from the subsequent discussion of the case, and clearly reflects the necessity for great caution in adopting a rule of procedure of such general application when a closer inspection and knowledge of the exact dates respecting user is obviously available to both parties.

Claim I of plaintiff’s patent reads as follows:

> “A permanent rigid structure constructed with upright posts spaced a material distance apart, a cargo beam of greater depth than thickness provided with means near the lower edges of said beam for connecting a tackle block therewith, and pivotal supports at the ends of said beam at higher points than said connecting means, said supports being connected with said posts.”

Claim II repeats the combination of the beam with the rigid permanent structure described in Claim I, and details the essential elements of novelty which enter into the construction of the beam to cause it to function differently from all its predecessors. Claims III and IY detail its adaptability to a shed structure. Therefore, when the intended *400design of the patentee is accomplished, when use of the patent device occurs, it must necessarily be when the beam is installed. The beam itself with all its novelty is incapable of any practicable use until it is affixed in a “ permanent rigid structure.” The predominating idea of the inventor was to supplant the old cargo beam affixed in a permanent structure with one of much less weight affixed to the structure or shed in much the same way, but adapted by reason of superior improvements to the carriage of great weights irrespective of the angle from which applied. This we held to be the extent of novelty in the patent involved, and while narrow in scope nevertheless entitled the plaintiff to recover, assuming of course the establishment of infringement by the defendant.

From what has been said it is manifest that the patent was of such a character that it was incapable of use until installed as above set forth, resulting under the record now before us in a judgment for the defendant. It is conceded by both parties to the record that 810 cargo beams of the type involved have been installed by the defendant as of January 1, 1919. The findings (58 C. Cls. 434, 435), disclose that on September 29, 1920, the original inventor, Lenke, assigned his letters patent to Thomas E. Chappell, and that Chappell in turn, on March 7, 1921, assigned them to the plaintiff, attempting by the last assignment to invest the plaintiff with the right to recover for all past infringements of the patented device. Under the decision of the Supreme Court in *Brothers*v. *United*States, 250 U. S. 88, “An unliquidated claim against the United States, under the Act of June 25, 1910, c. 423, 36 Stat. 851, for the alleged infringement of a patent is not assignable with the patent.” In deciding this particular point the Supreme Court, in the *Brothers*case, used this language:

> “ From the findings it appears that claimant filed application for his patent July 18, 1895, and, upon such application, letters patent No. 551,614 were granted and issued, under date December 17, 1895, to his assignees, Sarah E. Brothers and Maria A. Brown, to whom he had made assignment pending the application. Subsequently the letters patent were assigned to claimant, under date October 2, 1912, two and one-half months prior to their expiration by *401limitation on December 17, 1912. His claim to compensation is necessarily limited to this brief period, since there could be no assignment to him of any unliquidated claim against the Government arising prior to the time he became the owner of the patent. R. S. § 3477.”

The former judgment of the court as expressed in its conclusion of law will be set aside, and a new judgment this day entered dismissing the petition. It is so ordered.

GRAham, *Judge;*Hay, *Judge;*DowNey, *Judge;*and Campbell, *Ohief*Justice, concur.'