.ti 

0 

~ . " 

RE,F ID :A101383 

342 OCTO.B:EH '.rl~.l{~f, 1890. 

S1.at1:ment o.f the Cnse. 

timis to the refusa.l to Jim! C!~rtain conclusions of law are c 

siderccl s111liciently in what has been s:Lid already. on. 

1/w r.lt.JcJ'f!IJ qf t~1.e 01i1·~·1.cit . Oo'1u·t 'tc\' re-ve·r8ed, anrl the ca8e ii 

•re111.an(~ed, ·un.tli. £t £l1Jrectwn to. ent~r a. decree for t/111 bibe/,. 

/,ants }01· tlliJ fntl mnottnt 1:/ tlieu· rla•nwr;e8, w·i.t/1. i1itar · 

j . 1 l ,p 1 • l • • C,<t ·1'om trie 1 ,at1J q; toe repm·t 1!f trie com.m:i,s.nrm.111' ?:n tfi.a .Di,. 

friat Oo'WJ't, a:nd for t/1 . .n;•r co8l8 ·1:11. tlw JJ£sti-ict Uuuirt an[ 

in tlw Oi.1~cu1:t Omt1·t, and ?:n tl1.i8 cow·t, on botli appeal;;. l 

SO:LOMONS ·o. UNI.TKO STATES . 

.AJ'.l'J,AL FJWnl TJI E COUWl' QI<' CL1UMS. 

No. 6;1. Argued November lQ, 11, ·1890. - l)~Chlc~ Dccl!mbcr 8, lf«lO. 

'Vhen a person in the empl<1y of the United States makes nn invention u! 

value and takes out; letters p:itent fur it, t;he gnn:ri1mcnt, if it n1ak<l$ usu 

of t,he i11\'ent;ion wit;hont the consent of the patent;ee, hcco111cs thcn!h 

liable to pay the patcilt;ec there.for. . y 

Ir 11 μur::<un in t.he c111ploy :11111 pay of another, or of the Unitctl Stntcs, is 

directed LO de,·i:;c or perfect an ins1,n1me11t err rncnns for 11ccn111pih;hiui• 

n prescril.>t•ll n:s11lt, anti he obeys, and s111.:cceds, uncl takes out li:tt~r~ 

pat;e11t, Jnr his 1111·e11t;ion or clis<;ovc:ry, he can"not, nfter sncct).~sfully 

nccompli:;hing t.he work for which he was employed, plead title thereto 

us again~t his employer. 

l\'h"n 1L pe1:,;011 in l;hc e1i1ploy o.f nnothcr in a certain line of work tlt!ViSi!~ 

1111 i111pron:d meLIH>i:I or i11strt1111e11t. for doi11g that work, 11111] uses the 

properl.y of his c111ployer :111d the sci'\' ice,: of other cmplny(:s to .1.1e,·c:lop 

ancl pnt in praeticable form hi>; im·e11t,ion, and expli!:itly ass<:11ts to 1111

, 

use. hy his e111ployer of sui.:h in,·cntion, a jnry., or a court. trying th<: fucii;, 

is warnu1ted i11 llmli11g t.hat he has ;;o Jar rei.:oi;uized 'the obiigaLiuns of 

serl'ice flowi'ng fr11111 his employment and t.he IJcncflts resull,ing fn 1111 his 

nse of the prnpert;y, :111(1 t,he nssist;'1111r;e of the cocmploy(:s, n.f .liis· um- · 

ployc!t', ns. t;n have given to such employer an irrevocable license lo 11,c 

s111:h i11,·c11ticm. 

/lfcG'lttr!J , .. l\)ny.,la111i, 1 How. 202, aflirmeu nud applied. 

Dmmw iJ1e rears lSG'i and lSGS Spencer M. Olill'k was in 

the employ of t.he govemment as Chief of the Bureau of 

l~ngr:wing and P1·inting. Th1t1; lrnrenu wns not one crcatcrl 

by any special act ·of .Congress, hut \\'its estab'lishec~ by order 

@'pp roved for Release by NSA on 12-19-2014 pursuantto E .0. 1352a 
REF ID:A101383 ~ . 

SOJ~OMONS v. UNITED STATJ~S. 343 

S ttLtcmcn t of tl1c Case. 

r the Secretary of the Treasury, under t.lte geneC~)OWCrs 11 fcr·rcd bv Lhe second section of tire act ol' ,I ul:ir 1:1 :I Sli2 11011 ' - •' ' > 

;~ Stat. 502, now § :3577 Ite\'. Stat., wbich prO\•idcs as fol- r 

jo\\'S: · :; 'j'ha.t the Secretary of the Treasu.ry be, and is hereby, 

aut.horized, in case he shall think it inexpedient to procure 

«iid 110r;es, 01· a.ny part thereof, to IJe e11g1·:wed and p1·intcd by 

.... 111 .. 10t to eause the said notes, 01· an:i1 1)art Lhel'eOI' to uc COi ' ' 1 . - ' 

('ll!!°rai·ed, printed, and executed, in such form as Ire shall pre-

~cr~bc, at tire Treas111·y DepMtment in "IVashington, and under 

hi:; direction·; 1L11LI Ire is hereby empowered to p1rncha:so and 

l

.-

11•·1

dc all the maclrincr)' and mater:i:ds, aml to c1111i_lov snch p I_ . • . •• 

pi:rsorrs and 1~ppoint suelJ ollicers as rr1a.y be necess:uy for this 

p11rp Os •• '' "-· . While so employed ·1te conceived the idea. of a, self-ca.ncellinc• . 0 

stanip, and ttnclel· Iris direction the crnploy6s of that bureau, 

in t.lrc fa.IL of 1SG7, using go,·ernment property, pr·eptu·cd a 

ilic or plarte, and put into being the concepLion of :Mr-. Olark. 

On Febru:Lt'.Y lO, lSGS, Oln1~c filed <L cavea.t in tire }:'a.tent 

Ollice, a.nd on Septen1be1· l <Lil applica.tiion Jor· a pa.tent. 

While this a.pplicatioi1 was pending, and 011 .Dece1nber G, 

JSti!l, he assigned, by deed duly recorded, his rights to the 

:ippelln.nt, in pa;yrnerlt ofa long-st1L11rling account ol' appellant 

:t!!airist hint. On Deceml?cr 21, 1860, the pa.Le11t was issued 

~; :ippelhLnt, as the assignee of Clark, antcdaLed to ;rune 2.1, 

t5lii). On December 27, :LSG0, <tppellant noti{icd the Corn111i~~i011cr: or Internal Hevenne that Jre was' the OWllet' of the 

p:.1t.r:nt, a.nd sought an fL~T1mgernent for prnpci· compcns:Ltion 

for Lire use of t.lris patented stamp by the go,:e1·11rncnl; on whisJ;ev· barrels. No <Lnswer· was made to Lhis co111nn1nic:Ltion, 

an;·, on September 17, 1875, 11.ppcllant brought this suit in tire 

Court of Cla.irns to recover· fro1n the g(iVernment for such use. 

In :1cltlition to the. matters heretofore st:i.t.ecl, the following 

fact;s w.ere fourfd by the Court of Claims : 

'"l In I.he latter pa.rt of 1S.G7, 01· early pa1·t. o[ JSGS, while 

the subject of revisi11g the 1netlrods ft11" collecting. intel"nal 

r111•e1111c was being considered by the Oom111ittec on "IVnys and 

nlea11s o[ the House of Hepl'eSCll L~Lti \Tes, a Sii bcornrni Ltee was 
I • 

,o 

'f• 

344: 

REF ID:A101383 

OCTOBEJ:1 'l'E.ltivi, iSOO .. 

Stutcmcnt of the Case. 

gi\'Cn spc.ci:d. charge of the tax on whiskey and distilled 

spirits. A 1'00111 was assigned by the Secr·eta.r·y of the 'l'l'ea. 

111·y in the 'Treasury building to this subcommittee, whic~i 

i11rmediatelv proceeded to hold onici:1l consult:Ltions with ti. · " · 1e Secret.:1.ry of' tl10 Tre~tsur-y and Cmumissioner and DepuLI' 

Conrmissio11ei· of' Intel'lla.l·.Revenne. lnto these consultat.io,;. 

Spencer· .UL Cl:Lrk, tire Chief of tire Bureau of E11gr·<wiug au(~ 

l'rinting, was c:dled. oflicially, and to him was assigned the 

duty of de\'ising a stamp, and it was early detcrrnincd and 

understood by nil, including Jifr. Ohu·k, that tire schernc would 

proceed upon t.he assumption that tire best stamp which he 

conl<l devise would be adopted and rnade a, pal't oT t;bc revised 

scheme. 111 these co11snlt:1tious it was mnLunlly under·stood 

that .J\{r. Ola.1·k was acting i11 his ollicial capacity, as ChieJ of 

the .Bur·eau ol' E11gr:wing :L1,rcl J>r•ii1ting, and it was not untler·. 

stood 01· in tim:tt.ed that th~ stamp which he was. to dei•ise 

would be patented 01· Lecome his personal property. 

"JT. In tire co·m·se ol' the consultations 1·cfon·ed to in the 

first finding, Jlf1'. Olal'k liLid before the Commissioner and sub. 

committee <t self'-cancclling revenue stalllp as being, in his 

opinion, <L VCI'.)' desir·a.lJfe Stanrp fol' the JWevention of- fraud. 

Th is sta111 p was S;Ltisfacto1'.y to the Oonnn i ttee on \\7 avs and 

·:Means and to the Commissioner 9f Jntm·n:d Jlevemrc. '1t was 

of the same design and constrnction as the stamp subscquentlr 

adopted by tilie Oornmissinnc1· a.nd rn:tnufactured and used b·i· 

the govetr1111011t, :is hel'Cina[ter set forth, :1nd was tire sarn'e 

device as tha,t set l'or·th and described in the specific:itions of 

OhLrk's patent annexed to and forrning part of the petition. 

"Ill. .N'o ba.1·gain, agr·eement;, contr·:wt 01· underst;;1nding 

was evet· en l:ernd in to Cl!' reached between the ofticer·s (,( tlie 

government and :Mr. Clark concerning the right or the gorernrnent to use tl1e invent;ion or· concerning the remnner·ation. 

if any, \\'hich slro.rrld be pa.id fo1· it;, Neither· did J\fr. Clark 

give 11ot.icc 01· i11tirnate that he intended to pmtect; the same 

by letters p:1.tc11t, or· that Ire would expect to be p:dd n r·oya!Ly 

if the goverrin1eut ~honld manufacture and llSe starnps ol' Iris 

invention. .J3c:f'or·e t;he Jina.I adoption of' the starnp by Lire 

Comm issiunci: .. · · In Lel'llal ne\·en ue 110 stated to him that; tire 
·REF 

SOLOJ\iONS v. UNITED ST ATES. 345 

Opinion of the Court. 

I ·rrri. w·ts his own, but that; ho should make no charcrc to c ()SI ' o 

I , ~,. yeru 1ucn t thernfor:, as he was en1 ployed 011 a s:d:u-v bv 

(,II. 0 • •• .l 

the croi·ernme11t a·nd had used the 111:tcl1111er"Y a11d qther prop-

.'",Jt' tire <r0\7Cl'lllllent in the }Jerfect;ion of tho sta1111J ~: -. ei·(,\ · o . :· .n _, 

. · ,·c-s license to use the .invention was ever g·i rcn lnr ]\fr ~r ~ . - . . . . -~ . . . .. l'lnrk t.o ~he government, 11or a11y notice p1·ob1b1t1ng its use 01. 

intii11 :tting Lhat_he \\·ou~d den11Lnd a 1·oy:dty. 

•·JY. Irn111edintely alter the enactment of: the act 201;h .July, 

JSGS (15 Stat. 125), and before J\1:t'. Olark had lilcd a.n applicat.ion fo.r a 1mtei"1t, the Oornmissione1; of Jnte1·n:il Jfovc11 ue 

adopi.cd t,hc sL~Lmp as the_ 01_1e to b? _used in tJ1e i;ollect,ion ol' 

ihrl ra.x on whiskey and d1sr,illed sp11·1ts. lt was adopted by 

1

,hc (Jo11 1111 issiuner· on the reco111rncndation of _Mi-. Clark. 'J'he 

Coinini:isioncr·'s selection 1·e[e1Tecl to tire eo111plet1~d :rnd perfc<:tcd st:unp which had be.en devised by the clai111ant and 

llll!!l':t-i'ccl and made in the Bnr·cau_ of Engr·;wing and Pri11ti11g 

:inJ :1.ppro1·cd by the Oorn111itteo of 'Vays and :i\foa11s, as seL 

forth in t.he second finding. Tho Gover,nmmft then proceederl 

10 111 :wufact111·c at the Bureau of ·Engh1,vi11g and J'r·i 11 ting 

l:ir!!"c quautities ol' these stamps. The first so 111anul'act11rcd 

we;c; ddi1'ercd to the Oo1nrnissioner of Internal l:evenue .on 

the 2f.it,lt Aug11st, lSGS, and tho 2d November· f(llloll"i11g was· 

li.xcd hy the Seci:eta.ry of the Trnasury as t.hc day for· co111-

ruencing- t;he use the_rnoL Their m:i.riufaetnre and use were 

c(, 11 1i11ued 1111.til sorne time in the year 1ST2-, the last issue to 

1.lie.collecUon dist1·icts being on Febru:1r:j' 15, "1872.n 

And upon these facts judgment w:rn enternd in favor· of the 

irorc1·111nent. ·21 C. 01. :I-in, a.nd 22 0. 01. :335. Fl'0111 such 

11 1t- 111;11 t an appeal '''as brnugh t to this cou.r't. 

" 

.Hi'. /ew-is Aln·a/1.ani and .Ah. Benjam,1:n Ji'. B·ntlm· for 

appellant. 

.JI/'!'. 8o!.·£o£tm• Oenez·rt.l for a.ppellees. 

M.1(. Jus'l'rcE B1mwK1~, nfter stating the case, deliv:ered the 

opinion ol' I.he court. 

The c:1se presented by the foregoing facts is one not free 

from i.liflkulties. The government bas used the in\'ention of 

.,.,. -
r 

REF ID :·A101383 

OCTOBER TE RM, i890. 

Opinion of the Court. 

J\fs. Olal'l.:: a.nd has profited by such use. It was a.n i11\'enti . II . I on of value. The claimant and appe .ant JS t te owner o[ such 

pateut, .and has never consented to its use h_y the gol'el'lliuent 

:From these fa0ts, standing a.lun.e, an obliga.t,iou on tlit: part of 

the gove1·11me11t to pay naturally :~rises.X The go\•e1·11111ent ha:; 

, l/ 1.10 n101·e. po,~·e1· to a;ppmp1·i;~te a rnan's .p1·ope1·t.)'. invested in a 

1 patent titan 1t has to take Ins prnperty 111vested 1n 1·eal eslatc· 

no1· docs the n1erc Jact that :Lil i11v~nto1· is at the ti111e o[ hi~ 

i1.1vention in .the ernpl'.:>Y :Jf the gove1·nm~nt trn-11sf~1· ~o it any 

title to, 01· 111terest 111 1t. An c111ploye, perfo1·1111ng all Lite 

duties assigned to l1i1n "in his depa.rtment of se1·vice, rnay exer. 

cisc ltis i1wcnEive faculties in :u1y direction he cl1ooses) with 

t;he assu1·ance that whatever i 11 vention he rna.y th us eonceire 

,\and perfect is his individual property. The1·e is 110 dill\:rcnco 

,~;i between tl1c govel'llment and any otlie1· e111pluyc1· in this 

1 respcct.X But this general rule is subject to these li1nitaLions. 7, ]J one is elllployed to devise or perfect an· inst1·umcnti, or a 

,: me:tns :01· acco1nplis.l1i.n.g a pl'CSCI'ihecl result'. he 0a.n11ot, after 

t 

1

. , succcsslully accompl 1sh 111g the work foi· w h 1ch he was cm. 

'\ plo.ycd, plead title thereto as ag:1i '.1st his em pl.oyel'. 'l'hat 

. i l w 111ch he has ~)eon em ployed a.nd p:lHI. to accolll pl 1sh l:ecomcs, 

: · i ''.lien acco1n1:l1sl.1c_d, the propcrt._y of his c11.1ploye1·. \\'_ha.tercr 

; nghts as an 111d1ndual he rna.y have had rn and to l11s inven. 

,~: ti,,e po\l·ers, a.ntl that which they a.r7 able to :wco111plish, ho 

i l1as sold in :td\•a.nce to his employer.I So, a.lso, when one i~ in 

tlte e111ploy ol' a.notl1er in :L ccrt:Lin line of wo1·k, and devises 

an i1'11pl'!Wed metliud 01· instrument foL' doing tl1at w01·k, and 

uses the property of his employer and the sei·v.iees ol" other 

cmployl:s to develop aml pt1t in practicable :form his inwmtion, 

a.11d expl.icitly assents to the use by his ernploye1· or such inve 11 • 

Lion, a jtiry, or :1 court. try'i11g tlte facts, is warrn11ted in find. 

ing tltat lie h:rs so fa1· recog11izecl the obliga:tions of se1·1

1 icc 

tlowi11g frolll his e1nployrnent <L11<l the benefits resulting from 

his use of' tlte propert;y, and the assistance of the coemployi;s, 

of .his cn1ploye1', as to ha\'C given to such crnployct· :i.11 irrnn1. 

cable license to use such invention. The case of jlf'Olu»[! \'. 

](:1:ng8fond, 1 ~How. 202, is in poi.nt. In tha.t case w:rs pre8entctl 

the <JllCStion as to tl10 l'iglit of defendants to use an inre11tion 
·•) n. 

SOLOMONS v. UNl'L'ED ST ATES. 

Opinion of the Court. 

REF ID:A101383 

347 

1(c ·ind rmtented by one Ua1·lny. The facts as slated and 

111111 • he ruliugs of the cou1t al'e these: "That 1-Lufoy was erntl ,,.r( bv the defonda11ts at thei1· foundl'y in Piltsburrrh po.\ v J • •• • o ' 

e

.

1

,.·111 ... wao·cs from the1n bv the week·, while so en11.,lovr-•d rvu - o o . J . , .... J · ' 

IW cJ:du1cc\ to lmve lllV~lltecl tb~ lnl(Jl'OVClllent patented, a.nd., 

nfLcr scvcrnl unsucccsst·ul expel'1me11ts, made a snceessfnl one 

in Octobi::1', J 884:; the ex perirnents we1·0 made in the defendants' ronudl'y, um\ wholly at thei1· expense, while Hal'ley was 

receiving his wages, which were incl'Cased on accoun.t of the 

useful result. .Harley continued in thei1· employment 011 

wa"cs until .Tanu:L1·y or Ji'ebl'Uary, 1835, dnying n;ll which tirne 

Ire ~n:11lc rollers for th.em; he o[ten spoke aJio11t pl'ocu1·ing a 

pate;nt, aud pr~)li:tl'ed .rno1.·e than 0~1_: set 21' papcl's Jor :he. pu rposu; rn.ade his appl1C!:Lt1011 the· I.1th }eb1:nary,_ JS0::>, fol' :L 

patent; 1t was gl'an.ted on the 3cl of :Mal'ch, assigned to the 

plaintiffs on the lGth .of ~Lirch, pu1~tmnt. to <Ln a~Tecr11c11t 

madi: iii January. \Vbile J:l.a.rky continued 111 1»ho de'lendants' 

cniplP.)'ll1eul;, he proposed that; .they should ta.kc out '.L pa.tent., 

1111

d purcliasc his right, which they declined; he made 110 

di;ni:ind on thorn for any compens:Ltion fo1· using his impro\'e111enl;, nor gave them any not.ice not to use it,. till, on some 

mi~uudcrsta11di11g on anotl1c1· subject, he gave them snch 

nutfoe. abont tho time of l1is leaving their.· foundry, and aftu1· 

111 :ikin.g t.hc :1green1ent wiLh t11e plaintiffs, who owned,~ 1'011.JJdry in l'ittsbul'gh, :fμr nn assignment to them of: his 1·\ght;. 

'(l'l.ic defendants continuing to make rollers 011 Jlal'ley's plan, 

the present action was brought in October, 1835: witl1011t any 

pr(~rious ncitice by them. The cou1t left it to .tho ju1·y tu 

diwidu wl1at the facts of: the case were; but, if they were as 

1.estilied, cl1a.1:ged that they would fully justify the p1:es11rnpt.io11 uf lic.ensc, :t special priYilege, 01· gran.t t.o the defendanti:; 

ln nse t.he invention; and the fact,s a.mounted to 'a co11se11r. 

aud :illowa.nce· ol' such use,' and show such a eonsideration as 

would s11ppol't :w express licc11se or gra.nt, or call for the presurnptiQn of one to meet the jushice ()f the case, by exernpting 

them fJ:om li:d)ilit.y; having equal effect with a license, aml 

•"il'ill"' tl1e defendants a. right to Lhe continued use of the i11- o 0 ·~ 

1•e11tiun." On review in tbis court, the r.ulings -ol' the trial 

. .. 
"' 0 • "' ,. 

< ) 

\'i 

348 

REF ID:A101383 

OCTOBER TEE 11'1', 1890. 

Syllabus. 

comt were sustained. Tl1at case is dqcisivc of this. Clark Was 

in the employ of the goven1rnent wl1eu he ma.de this invention 

.Uis experiments 11:erc wholly :tt the expense of the go\'crn: 

inent. He was consulted as to the proper st.a.mp to be used 

aud iL was a<.lopted on his reconunendaJ.ion. He notified th~ 

government tliat he would make uo cl1arge if it adopted his 

1·eco1~11ne11dation and used his st:~m p; and for the ex1wess rea. 

son th:Lt he was in the govel'llrncnt; ernploy, a.nd had used ti . . ~ 

government machinery in perfocting liis stamp. He nci·er 

!pretended, personally, to make any char·gc against the govern. 

1 i ,ment. Indeed, tlie1·c is but one difference between tha.t case 

J ! and. tl~is: in. tlw:t~ H:u.·ley'.s w:~ges we1·c increased on .account 

'jflf his 1nvent1on; Ill this, ()lad:."s were not; but such d1fference 

does not seen1 vital. 'Ve think., thereforn, the rulint,rs of t.he 

. Court of Olai111s were correct, and its judgment is 

Ajjill'1n(J(t. 

:M:ONTA.NA HAILWAY CO'M:PANY v. WAHREN. 

EHIWIG TO nrn SUl'IrnI>rn cou It'!" 01' THE TJWRITOl{Y OF MONTAXA. 

No. 80. .Argued No\·cml.tcr JS, HI, JStlO. - D(!cldcd DcccmlJcr'S, 1800. 

In this cnsc the record co11tain•~ll the plc1uling;; and. a motion .for n newt.rial 

wliich moJJon W:L8 a11thc11t:icatcd by J;hc 1;rilt! juclgc anti set,. fonh 11 ~ 

lcngt.h :lll the IH'oc;ccdil1gs 1Lt the trial, i11cl11di11g J;hc .c1·.ide11cc·, the cxecp. 

Lions to tcsti111011_1', I.lie i11strnc;1·,io11~ to t;hc jury, the cxc;cption~ Lo tho~e 

inst.ruc;tions, a !Jill of cxccpl.ion~ in dne forin, propcrl)" cer.J;ilktl h.i"lhe 

presiding _jn!'lgc, I.he '"""licl.,. n11d ~he j11dg111e111; 011 J;iu: verdict. Thi~ proc1:cdi11g. wa;; in u.cconJancc "'ith I.he prncticc n11Lhorized hy 1,hc S1:at;11te~ 

of Mo11t:u1:L. /11:U1, l.hal. ii. was snlllcic.:nt for J;he purposes of rc1•icw here. 

J\r;1"1'· 1·. Gtam71it/., %; I.I. S. IS.~, ;li;;l;i11gtlished fr<1m this case. 

111 this l:Onrt inquiry is li11lili<:d 1.o 111at.1.crs prcscnJ·,cd to uncl consirlcrc<.l hv 

t.hc court l1el<H1'., -1111.li:ss 1·:111, n:cord prcsenl.s a qucsJ;ion 1101; passed 11p0;

1 

hy that con rt. whi1;li is vit':tl, eit:her·to the jurisdiction, or to lhe fo1111dntion of righli, .nml 11n1; simply one of. proc<"l11rc, 

111aprocueding111H.i<Jr 1;he right of e111i11ent clo111:1in to· condemn, .for use in 

·Lhe co11si;r.n1;tiirn 0J a railroad, 1111 1111devdopcd" prospect" i111ni111:ral taut!, 

tlH: tc;;ui111011y of :1 1;0111pc1;"11t; ll'iLness, familiar wil;h the co1111try a11rl it~ 

s11rro1111dings, a:; to U1c v.al11e oT 'the land taken. rna.y be rccein:tl in cri. 

de1fce, inasmuch a~ ~11ch JH'Opcrty is Lhc consiunt. subject of barter uud 

f 
REF ID:A101383· 

DALZELL v. DUEBER MANU.FACTUlUNG CO. 315 

Statement of the Case. 

DALZELL v. DUEBER WATCH. CASE MANUFACTURING OO:MP ANY". 

SAME v. SA.ME . 

.Al'rEAL FROM TTIE CIRCUIT COUHT Olf THE UNITlW STATES FOB. 

nu:: SOUTlrnRN DlSTRIC'I' OF Ngw YORK. 

Noe. 213, 21-1. Argued April IS, IP,Jsn. -Declded.Mny IO, 1803. 

Au ornl ngreement for the sale and nssignment of the right to obtain a 

patent for 1111 Invention is not within the statnte of frnuds, nor within 

sc:ct.ion ·18:l8 of the He\'ised Stnt11tes rcrp1iring ns~i:;nmenl.s 11f p11tents to 

be In writing; 11iul may be spetilh.:all)' cnforted. in equity, upon s11flldcnt 

proof tlli.:reof. 

A rna1111fncturini; corporation, which hn;; employed a ;;killed workman, for 

n stated compens1ttio11, to tnkc eharge of il.s woi·ks, and 1.0 de\'tJte hi~ 

tl111c nml services to <)cvislng. nnd nmking i1111Ho1·cme11ts In nrticles I-here 

111 nn11fllct11red, is not entitled to a conveyailcc of patent:; obLUined for 

i111·u111.io11s 1111u.lc l~y .him wJlilc .so employed, in the nbseucc of express 

agreen1c11t to that elli.:c:t. 

Spccllh.: perfonnance l\'ill not be tlc:crecd in equi"ty, without clcnr and satisfllctory proof of the contrac.:t set for1:h iu t:hc bill. 

Where, nt the hcuring in equit:y upon n pica nnd a general replicntlou, t:he 

plc:u, 1L:; plendccl, is not suppor.t:ed hy l:hc t.csl:imony, iL must be overruled, 

nml the dcfc11dn11t ordered to 1rnswer the bill. 

T1rns1;; were two bills in equity, hem·d together in the 

CirCl1it Court, and a1:gued toget:her in this court. 

On j\farch 31, J.SSG, Allen C. Dalzell, a citizen ol' the State 

of New ·y ork, and the Fahys Watch Case Corn pany, a N cw 

York corporation, filed a. bill in equity against the Dueber 

·watch Case l\ianufac.turing Compa.ny, a corporation of Ohio, 

for the 'infringement of two patents for improvements in 

apparrttns fo1· ma.king cores for watch cases, granted to 

Dalzell, October 27, 1885, for the term of wbich he had, on 

January 21, 1886, granteci a. licens~, exclusive for thl'ee years, 

to the F~d1ys Company. 

To that bill the Duebef' Company, on June 4, 1886, filed 

t,he fol.lowing plea: "That prior to the grant of the said 
• 

REF ID:A101383 

:316 

Statement of the Case. 

letters patent upon which the hill o[ complaint is based, and 

prior to the application therefor, and prior to any alleged 

inverltion by said Dalzell of any part, feature or· conrbination 

described, shown or claimed in eitlrer· of· said letters patent, 

thli said defendant: being tl1en engaged in the manufacture of 

w~ttch cases in the city of .New1)0rt i11 the State of Kentuckv .. ' and the said Dalzell having been in its e111ploy as a tool-maker 

for a year· preceding, it, said defendant, at the request of sail! 

D:dzeU, reemployed said Dalzell at incl'.eased wages to aid in 

"experimenting tqion inventions upon 1nachinery and tools to 

be used in the manufacture uf various portions of watch cases; 

that said Dalzell did then and there agrne with said defendant, 

i.n consideration of said increased salary as aforesaid to be 

paid to. him, and which was p:tid to him by this defendant, 

to tlecfica.te his best efforts, skill and inventive talent and 

genius towards the perfecting ·and improvement of watch-case 

machinery and .such other devices as. this clefondant should 

direct and orde.r, and in experimenting under" the direction of 

this defendant for this purpose, and further a.greed that any 

in,·entions or irnpmvemcnts macle or contributed to by him, 

said Dalzell, shouid he pittentecl at the expense of this defendant, ~L1Hl for its bcndit cxcl usi \'Cly, a:nrl tb:lt said Dalzell 

should execute proper• 'deeds of assignment,, at the expense of 

this dcfonda:nt, to be lodged with the applieations for ;Lll such 

patents in the Un'itecl States I'atent Office, :111d s:lid patents 

were to be gr:a.ntecl :wd issued directly to this dufendant; that, 

in pursuance of said agreement, sa ill .Dalzell entered upon sttid 

ernploymen.t, and .while thus e1111iloyed a,t the factt!l'y of this 

defendant, and while using 'its tools and materials, and receiving such inci:eascd wages from it, as .aforesaid, the said alleged 

inventions were made; t;hat said patents were a;pplied for, 

wiJ.h the permission of this defendant, by the said Dalzell; 

and that all foes and expenses of every kind, necessary or 

. nsefnl for obtaining said patents; including as well Patent 

Ollice fees, as· fees paid the solicitor employed to attend lo the 

work incident to the procuring of sai'd j)<Ltents .and drawing 

s:i.:id. assignments to this defendant, were p;iid by this clefcncla-nt; a,nd tha.t, 11Mwithsta1Hling the foregoing, Sltid Dalzell did 

·~--~ ---~ - -------
,, 

REF·ID:A101383 

DALZEJ.Jl_, v. DUEHEH. :i\fAYCJEA.CTURING CO. 31T 

Statement of the Case. 

not sign the said deed:;i, although he had pi·omisecl so· to do,. 

but fraudulently and secretly procured the said patents to be 

crranted to hirnself; of all of which this defendant avers the 0 

complainant the Fahys 'Vatch Case Company ha.d notice, at. 

and prior to the alleged rnaJ{ing of the license by said Dalzell 

to it, moi·e particularly refcr1·cd to in the bill of complaint;· 

and defencl:Lnt twers that by reason of the premises the ti'tlein equity to si~id patents is in this defenchtnt." 

The plea., as required by Equity Huie 3l of this court, was 

upon a certificate of counsel that in his opinion it was well 

founded in point of law; and was supported by the atridavit 

of John C. Dueber, that he was the president of the Dueber 

Oompttny, that the plea was not interposed f;or defay, and that; 

it was true in point of fact. 

After a general replication had been filed and some proofs 

ta.ken in that case, including depositions of Dueber and of 

J)alzell, the Duebe1· Company, on .January li, 1887, Jiled a 

bill in equity against Dalzell and the Fahys Company, for the 

specific perforrn:u1ce of an oral ·contract of Dalzell to assign 

to t,he Dueber Company the rights to obtain patents for his 

inventions, and for an injunction against Dalzell and the FaJ1ys 

Comp:wy, and for further relief. 

This bill contained the following allegations: 

"That heretofore, to wit, prior to November I, 1884, the 

said de_fend:tnt Dalzell w,a:s in the employment of your orator, 

making and devising toolS to be used i_n the construct,ion of 

watch cases;. that on or a.bout said last-mentioned date, at the 

request of said .Dalzell, his wages were raised, in .consideration 

of a promise then made by said Dalzell to your orato1· that. 

in the future his services would be of great va.lue in the devising and perfecting of such tools; th:lt, in pursuance of st~id 

promise and contract, the sai<J Dalzell continued in tli"e employ 

of your orator, and wholly at its expense, to devise and construct various tools to be used in yom" orator:s watch-case 

factory in the manufacture of various· parts of watch cases; 

that said Dalzell was so employed for a grea.t length of time, 

to wit, a whole ye:u:, a large part of which time he was-assisted 

bJ.' rnrious work111er1_ ern ployed and paid by your orator to assist-

... 
REF ID:A101383 

318 OCTOBER TERM, 18!!2. 

Stntcmcnt of the Cnse. 

him, the said Dalzell, in constructing such tools and in the 

experiments incident thereto." 

"'That subsequenLly thereto, and when s:uid tools were cornj:Jlt~ted, said D:tlzell rnqnestcd yolll' orator to a.pply fo1· letters 

pate1\t for tl1e various i1ncentio11s embodied in :di o[ s~tid tools, 

for the use· :rnd bendi t of you 1· or:tt.or, rcpresen ting to your 

orator that lie, said Da.lzel I, had made val ua.ble d iscc>veries a.nu 

inventions while engaged in designing and constructing said 

tools, and further representing th:lt, if your ornto1· did not 

-secnn~ the exclusive 1·ight to said inventions !Jy letters patent, 

in all probability sorne of the workmen cr'nployed at your 

orator'"s factory, who were fa.mi-liar with tlrn said. inYentions 

a,nd the construction of said tools, might go to some other and 

rival watch-case compru1y, :tnd explain to it the construction 

of such tools, and rnake simihr tools for suclr other company, 

in which case your orntor would be without remedy." 

"That said J)alzell then ~tnd there, and as a ful'ther induceme1it to your orator to ha.ve letters patent applied for for said 

in\'entions, voluntarily offered to your· orator that, if your 

orator should permiL him, Dalzell, to apply for letters patent, 

and your orator pay aJl the expenses incident to obtaining 

such letters pa:tent, such letters patent might be taken for the 

benel'it of yom· <~t':Ltor, and that he, Dalzell, would not ask ot· 

rec1nil'C any further or other considcr:ttion for said inventions 

and such letters patent as might be grantee\ thereon, wliiclr 

propositio11 wa.s then and there accepted by your orator, and 

it was t.l1en folly a.greed between said parties that sa.icl Dalzell 

should immediately proceed, .through a, solicit01· oT his own 

selection, to prncure said patents for and in the name of }'Olli' 

oraLor, a,nd .tha.t you1· 01:;1tor should p:iy all bills that mi,ght be 

iiresented by s:tid Dalzell or such solicitor as might be selected 

to at.tend to the busin·ess of proeuring said patents." 

'l'h is bi 11 fmther alleged that Dalzell did, in pursuance of 

tlrnt agreement, select a solicitor and apply for the two patents 

mentioned in the bill for an infringement, and th~ee other 

patents; that, when some of the patents had "passed fol' 

'issue," the solicitor employed by Dalzell sent blank assign· 

ments tller.eof to the Dueber Company with a request that 
REF ID:A101383 

DALZELL v. DUEBER 1\tANUFACTUlUNG CO. 319 

Counsel for Appcllce. 

Dalzell sign them, and tbus transfer the legal title in tho 

irwentions to the Dueber Company, and enable tile patents 

to be granted dirnctly to it; that it exhibited tbcse assignments to Dalzell, .and requested him to sign them; tlutt D:Llwll t"cplied that he would postpof10 signing tl1em until all the 

patents had "passed for issue," and would then sign a)l togeLher, to all .which the Dueber Cornp;Lny assented; that Lhe 

I>neber Corupa.ny paid a.II the fees and expenses necessary or 

useful in obtaii1ing the patent~.; but that Dalzell fraudulently 

procured the patents. to be grn.nte.d to himself, and refused to 

assign thern to the Dueber Company, and, as that cornpany 

was informed and believed; c01weyed, wi,th the intention of 

defraucffng it, certain interests in and licenses under the patents 

to the Fahys Company, with knowledge.of the facts; ~1ml that 

Dalzell and the Fahys Company confederated and conspi'red 

to cheat :wd defraud the Dueber Company out of the patencs; 

and, in pursuance or' their conspiracy, filed their bilt aforesaid 

against the Dueber Company .. 

Annexed to this biLl was an "aHidavit of Dueber that he bad 

read it and knew the e0ntents thereof, and that the same was 

tl'lle of his own knowledge, except as to tl1e matter·s therein 

stated on information and belief; and that. as to those rnattet·s 

he believed .it to be trne. 

To this bill answers were filed by Dalzell and the Fahys' 

Company; denying the rna.tc6al allegations.; mrd :L general 

replication was. filed to these ;wswer,s. 

Hy stipuhttion of the parties, the evidence taken in each 

case was used in both. .A l'ter <L hearing on pleadings a.11d 

pi'oofs, the Cil'cui't Court disrnissed the bill of Dalzell and the 

Fa.bys Company; and entered a decree :lgainst them, as prayed 

for,- upon the bill ·of the Dueber Oo1111:>a.11y. 38 Fed. Rep. 597. 

Dalzell and the Fahys Company appealed from each decree. 

lffr. J. E Bow1nan and jJfr. Bamm1d lVetmo1:e for appellants .. 

JJfr. James JJfoore for appellee. 
REF ID:A10138'3 \ 

320 OCTOBEB '.l'ER1\l, 1892. 

Opinion of tlic Court. 

}fR. J usTICE GRAY, after stating the substance of the pleadings and decre.es, delivered the opinion of the court. 

The more importa;nt of these cases) and the first to be con" 

sidernd, is the bill in. equity of the Dueber \Vatch Case l\fan11-

factn1·ing Company to compel specific perfonnance by Dalzell 

of an oral agreement, alleged to ba\'e been made by him while 

in its employment, to assign to it the right to obtain patents 

fo1· his ilwentions in tools for making parts of watch cases. 

An oral agreement for the sale and assignment of the right 

to obtain a, pa.tent for an invention is not within the statute 

of frauds, nor within section 4898 of the Revised· Statutes requiring assignments of pa.tents to be in writing; and may be 

specifically enforced in equit.\t, upon su'fficient prnof thereof. 

8mnerby v. B·nnt?:n, llS J'\fass. 27_9; Oonld v. Bi:inks, S ·wend .. 

5G2 r Bn1·1· v . .De la, Veryne, 102 N . .Y. 415 ; Blakeney v. 

Goode, 30 Ohio St. 350. 

But :L manufacturing coi·poration, which. has employed a. 

skilled workman, for a. stated compensation, to take clrn,rge of 

its works, and to devote his time .and services to devising and 

making improvements in articles there manufactured; is not 

entitled to tL conveyance of patents obtained for inventions. 

made by him while so employed, in the absence of express. 

agl'Cement to that effect. l!rtpgooi.l v. Ff.eim:tt,. 119 U. S. 22G. 

Upon the question whether such a. contract was ever rnad~ 

by Dalzell, as is ·alleged in the bill of the Dueber Ooinpany,, 

the testimony of Dalzell a.nd of Duebe1', the president and 

principal stockholder of the Dueber Company, is in irreconcil-. 

able c·onf-lict. 

Dalzell was a skilled workman in the nianufacture of various. 

parts of watch cases, and '\cas employed by the Dueber Com-. 

pany, first for eight months as electropla.ter and gilder, and 

then fOI.' a year in its tool factory, at wages of twenty-firn 

dollars a week, from Febmary, 1883, until November, 1884; 

a;nd thenceforth at wages of thiHy dollai:s a week, until Jlti111-. 

ary rn, 1 SSG, when he lcTt their employment, and immed i:ttely 

entered the e1npk>y111ent of .the Fahys Con1pa.ny, iwd executed 

to that company a licerrse to use his patents. 
REF ID:A101383 

D.A.I ... ZELL v. DUJWEH i\[ANUJfACTUIUNG CO. 321 

Opinion of the Court. 

The matters principally relied on b)7 the Dueber Company, 

as proving the contract sought to be enforced, are a conversation between Dalzell and Dueber at the time of raising his 

,yn,gcs in November, 1884; another conversation between them 

in the spring of 1885 ; and oral promises said to have been 

made by Dalzell in the summer of lSS5, to assign to the 

Dueber Company his rights to obtain patents. It will be convenient to consider these matters suc<;iessively. 

The bill alleges that Dalzell's \vages were raised in November, 1884, a.t bis request, "and in consideration of tL promise 

then made by said Dalzell to" the Dueber Company "that in 

the fntnre his services would be of great value .in the devising and perfocti ng of ·such tools," and that2 "in pursuance of 

stlid promise and t.:ontract;" Dalzell continne<l in the company's 

employ, at its expense, and with the assistance of its workmen, 

to devise }[ml consti·uct such tools. 

Dueber's whole testimony on this point appears in the following question arnl fi.nswer: "Qu·. l'lease state the. circumstances which induced your company to increase l\fr. Da,JzelPs 

wages at the time they were increased. .i'\.ns. l\fr. Dalzell 

cc1me to me in the oflice, .and he says, 'nfr. Dueber, <1 year is 

now up since I worked for y.ou in this factory. I suppose yon 

are satisfied with the iniprovelilents I haYe 1nade, and I have 

come to have iny wages mised, and I wm show you that, if 

you raise my wttges, the improvements I will make this year 

will :justify you in doing so.' I asked him what wages he 

wanted ; he said ' thirty dollars per week,' and h(3 was pttid 

that until the time be lefa 'Vhen that yea;r was up; nothing 

1Yas said about wa:ges:" 

This testimony tends to show no more than that Dalzell ex" 

pressed a conftdent belief that, if his wages should be raised, 

the improvements which he would nuike during the. coming 

year would justify the increase. It has no tendency to prove 

any such promise or contract as alleged in the bill, or any other 

promise or contract on .Dalzell's part. So far, therefore, no 

contract is proved, even if full credit is gi:ven to Dneber's testimony. 

As to what took place in the. spring ·of 1885, the bill alleges 

,VOL. CXLIX-21 

\ 
• 

REF ID :A101383' 

322 OCTOBER TERM, 1892. 

Opiniou of the Court; 

that, subsequently to the aforesaid inte1·view, cc and when said 

tools were completed," DaJzell requested the company to apply, 

for its own use :ind benefit, fOI' ptttents for inventions which lie 

represented that he had made cc while engaged in designing 

and constructing said tools,'' and which, he suggested, might, 

if not. secured by letters patent, be made l~nown and explained by so1ne of the wol'kmen then employed there to ri\'al 

cornp:tnies; and, as a, further inducement to the company to 

h'LYe such patents applied for, voluntarily offered, if the company would permit him to. do so, and would pay all expenses 

of obt;Lining patents, to apply tl1crel'o.I', for the benefit of the 

company, and "not ask or require any further or other consideration for s:.tid inventions aJHl such lettel's patent as might be 

.granted thel'eon; ;, and tktt t.his proposition was cc then and 

there accepted by" the company, :qid "it was then fully 

agreed between s;1id parties:" that ])a;lzell should i'mmcdiately 

proceed, t.l1rough a solicitor of his ,01\'n selection, to procure 

.the patents in the name of the company, and the company 

:Should pa.y the necessary ex-p_enses. 

Upon this point, Dneber's testimony was as follows: "Qu, 

\Vho first suggested the idea of patenting these devices, ttnd 

when~ Ans: Mr. Dalzell, 'in tl1e sp1!ing of 1885. Qu. Please 

state all that took l>lace ~tt that ti me, Ans. Mr; Dalzell m~me 

. to me and said, ':Mr. Dueber, w_e have got a, very good thing 

here; let us, patent this for the benefit of the concern; we 

have so111e .men here; who may run a,wa,y attcl carry those ideas 

with them.' I objected at first; finally he says, 'If you will 

pay for getting them out, I don't want anything for them.' 

I then said, 'I.et us go O\'er to i\fr. :Layman to-morrow, and 

attend to it.' He said he knew a; more competen,t lawyer 

than that, that he would send for." Dneber also testified that, 

when Da,\zell first snggestcd taking out letters patent, Dueber 

told him: that he did not think tile improvements of sufficient 

value to :justify taking out patents and pfl;ying for ,them; and 

that "about all" that Dalzell replied was, ,-, We have a good 

many men here who m'ay cal'l'y off these 'ideas into othet shops, 

and I want to retaii1 them for this concern." 

All this testii.nony of Dueber was given in September, 1886, 

~-----~-------- -----'---
REF ID:A101383 

DALZELL v. DUEBER lYLANUFACTUHING CO. 323 

Opinion of Lite Court. 

before the filing of the bill for specific performance. Being 

recalled, aJter this bill had been filed, h.e testified, on crosscxamination, that he now considel'ed the inventions covere<l 

by the p;itents sued on as valuable, because the company had 

spent a great deal of money on them; a,ncl he declined 01• 

evaded giving any other 1·eason. 

Bearing in mind that the1·e was no proof wha,tever of anv 

previous agreement between the parties on the subject, the 

contract as alleged in the bill and testified to by Dueber, by 

which Dalzell is said to have voluntarily offered, with no othet· 

moti·ve tha.n to p!'e\'ent workmen from injuring the Dueb.er 

Company by communicating the inventions to rival compan'ies, 

and l'or no othel' conside1•a.tion than the payment by the Dueber Company of the expenses of obtaining pC1.tents, and without himseH receiving any consideration, benefit or reward, and 

without the bompa,ny's even binding itself, for..:t:1y fixed. time, 

to pay him the increased wages, of· to keep him in its sen1ice, 

is of itself highly improbable; and it may weil be doubted 

whether, if :;inch a contract were sat'isfactorily proved to have 

been made, a court of equity would not considei· it too unconscionable a one between employer and employed, to be specificaJly enforced ·in favor of the former against the latter. 

C(ttlwct1•t v. Robinson, 5 Pet. 2li4, 276; J[is8iss1jJj)i & N·is-

.y9nr1: Rwih"QCtrl y. C1·omwell, 91 U. S. 643; Pope 1Yf(wi,1f. Do. 

v. 001·m:nlly, 144 U. S. 224. 

i\foreover; Du.eber throughout manifests extreme ren:cliness 

to testify in favor of the theory which he is called to support, 

and much unwillingness to disclose or to remember any inconsistent or qualifying circumstances. The reco1:d shows that 

he ha~ at diffet'.ei1t times made oath to four ~liffcrnnt ve1·sio.ns 

of the contract: 

ist. On 'March lfi; 1886, when the Dueber Company 1ilecl a 

petition .in the supe1~ior court of Cincinnati against Dalzell to 

compel him to assi,gn his patents to it., Dueber made oath to 

the truth of: the statements in that petition, .one of which was 

"that, at the time of the making of application for s;~id patents, it was agreed, for a valuable, consideration 1Jefore that 

time paid, that ,said patents aml inv!3ntions. \'icre the property 

------ ---------------
REF ID:A101383 

324: OC'l'OBER 'l'EJU\f, 1892. 

Opinion of t.hc Court. 

of this plaintiff, and should be transferred to it immediately 

upon the issue there·of, and prior to the gran,t of the patents." 

2d. On June 4, 1886, he ma.de oa.th that the plea was true 

in point of fact, which stated that the whole contract, both 

for an increase of D:dze.ll's wages· and for his assignment to 

the Dueber Oompany of his rights to patents for his inventions, was made "prior to any alleged invention by sa:id 

Dalzell,'' and in consideration of an increase of wages to be. 

ther.eafter paid. 

3d. In September, 1886,. he testified that th~ increase of 

wages was made upon the mere statement of Dalzell that ho 

would show .that the improvements he would make during tho 

com.ing year would justify the increase; and that the subsequent contract to assign the patent rights was after the inventions had been made. 

4th. On Janua1y 17, 18'8·7, he made oath tQ the truth, of his 

own lrnowJedge, of this bill, which alleged that DaJzell's 

wages \vere raised ''in consideration of a promise" by Dalzell 

:: that iri the fotm~e his services would lie of great value in the 

devisirig a.net perfecting of sμch tools,'' ·and also alleged tha' 

the ag1~eernent to assign the patent rights was made after the 

inventi,ms. 

Dalzell, being called as a witness in his own behalf, directly 

cont1•adicted Duebei· in e\•ei'Y material particular; and testified that the real transaction was that, after his inventions 

ba:cl been made, and shown to Dueber, the. latter was so 

pleased with them tbat he, of his own accord, raised Daizcll's 

wages, and offered to fornish the money to cnal:5le him to take 

out patents. There is much eviden.ce in the record, which 

tends to. contradict .Dalzell in matters. aside from the interviews between hin1 and Dueber, and to impeach Dalzcll's credibility as a witness. But impcachi11g Dalzell does not prove 

that Dneher's testimony can be relied on. 

\Yh:Lt took place, or is said to have taken place, a.fter these 

interviews may be more briefly treated. 

·Whitney, the solicitor employed a;t Dalzcll's suggestion, 

applied for and o.btainccl the patents in Da:lzcll's name, and 

was paid his fees and the. expenses of applying for the patents 

---~- -,-

I 

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\ 

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11 

.I 

,( 

REF ID:A101383 

DALZELJ, v. DUEBER 1\fANUFAC'L'OTUNG CO. 325 

Ophlion of the Court. 

by the Dueber Company with Dalzell's knowledge. In the 

suinmcr of 1885, before the patents were issued, he sent blank 

assignments theh3of to the Dueber Comp:my to be signed by' 

])a.17.ell, which Moore, the genera.I manager of the company.: 

as well as Duebe1~, in the. absence of each other, asked Dalzell 

to sign. 

Upon what Dalzell then said, as upon nearly every matc1·in.l 

point in the case, the testimoi1y is conflicting. Dueber and 

:Moore testified, in accordance with the allegations in the hill, 

that Dalzell replied that he would not sign any of them until 

:dl the patents ha.cl "pas13ed for issue," and would then sign 

all together; But the manner in which they testified to this 

1

tocs n0t carry much weight. 1\ncl Dalze11 testified that he 

positively refused to assign the pa.tents until some nrrnngemcnt fot· compensating him h:~d l)een agreed uj1on. 

Parts of a. correspondeilcc of \\Thitney 'vith Dueber, ancl 

with Dalzell, during the summer of 18S5, were put in evidence, which imlicc1te that -Whitney, while· advising DaJzell as 

to his interests, sought to ingratiate himsel-f with the J~uebe1· 

Company. But they contain nothing to show :Lf1Y admission 

by Dalzell that he had agreed, or intended, to assign the patent rights to the Dueber Company, without first obta.ining 

some arrangement whereby he might be compensated for h.is 

i1H1entions. . The Circuit Court, in its opinion, after alluding to var_iou~ 

matters tending to throw piscredit on the testimony of each 

9f the prir1cip'al witnesses, said, "The case is ~me, on whidt 

different minds may well reach a contrary opinion of the 

merit.s." 38 Fed. Rep. 599. VY.e concur in that view; and it 

affonls of itself a strong reason why the ~peci'fic performance 

prayed for should not be ~lecreed. 

From the time of Lord 13.ardwicke, it has been the e~stab" 

lished rule that a court of chancery will not decree specific 

performance, unless tl10 agreement is "-certain, fair and just in 

all its parts." Bit~vton v. Li:yte·r, 3· Atk. 383', 385; Unden0,ood 

v. J-b:tclwox, 1 Yes. Sen. 279; F'ramk8 v. JllM't'i111., 1 Eden, 309, 

323. And the rule has been repeatedly affir·mcd tl.nd acted on 

by this court .. In Colwn v. Tlioni!j_JSon, Mr. Justice Washing-
REF ID:A101383 

326 OCTOBER TEH.1\f, 1892. 

Opinion of the Court. 

ton, speaking for the court, said: "The contract which is 

sought to be specifically executed ought not only to be 

pL"oved~ but the terms of it should be so precise as that neither 

party could reasonably misunderstand them. If the contract 

be vague or uncertain, or the evidence to establish it be insuflici·ent) a court of equity will not e..xe1·cise its extraordinary 

jurisdiction to enforce it, but will lea.v:e the party to bis leg;tl 

remedy." ·2 \·Vheat. 336, 341. So this court has sa,id that 

.chancery will not decree specific performance, " if it be doubtful whether an agreement has been concluded, or is a. mere 

negoti~ttion," nor "unless the proof: is clear· and satisfactory, 

both as to the existence of the agreement and as to its terms." 

Uar1· v. Duval, 14 Pet. 79, 83; 1F,lcker8on v. J.Vicke1won, 127 

U. S. 668, 676; 11enne~sy v. IVuohw01·th,, 128 lJ. S. +38, 4-42. 

l"or these reasons, we are of opinion th<Lt the contract set 

forth in the bill for specific performance lias not been so 

clearly and satisfactorily proved as to justify a decree for 

speci1ic performance of that contract; a.nd that the decree for 

the plaintiff on the bill of the Dueber Company must, therefore, be reversed, Mid the bill dismissed. · 

The decree sustain'ing the plea to the bill against the Dueber Company for an infringement, and ordering that. bill to 

be disri1issetl, is yet more. clearly erroneous; for none of the 

evidence intl'oduced by citbei· party tended to pt'.O\'e such a 

con.tract as was set up in that plea. The onl,y issue upon the 

pica and replication was. as to the sufficiency of the testimony 

to support .the plea as pleaded; and as the plea was not supported l;>y the testimony, it should be overruled, and the 

defendant ordered to answer the bill. 8tewl v. Cmtne, 4 

Cnwch, 403, 413; Flwley v . . Kittson, 120 U. S. 303, 315, 318; 

EcJuity H.uJc 34. 

It is proper to adq that the question ,whether the Dueber 

Company, by virtue of the 1•elations and transactions between 

it af1d Dalzell, bad the right, as by an implied license, to use 

Dalzell"s patents in its establishment, is not presented by 

cit.her of these records; but !nay be raised in the further proceedings upon the bi11 against the. Dueber Company for an 

iii fringcmen t. 

---------~ ~------ -----~---
F 

REF ·1n :A101383 

WADE v. CHICAGO, SPRINGFIELD &c. H.AlLIWAD. :327 

Syllabus . 

.Decrees 'reversed, ctnd cctses rmnam.ded to tlw Ci1·c·1iit Coiurt, 

w·itl~ di1·ections to (lisniis8 tlw Mll f 01· spem':ftc pmj'ormance, 

C/lnd to oven·itle tlie plea to tlie otlurr bill, and 01·de1· tlie 

clefen(Zctnt to answe·r 1:t. 

MR. J USTIOE B1mwER dissented. 

WADE v. CHICAGO, SPRINGFIE:LD AND ST. LOUIS 

RAILROAD COMP ANY. 

AJ\fERIOAN LOAN AND TRUST COMPANY v. WADE. 

APPEALS FROM THE Ot!{CUTT COURT OF THE UNITED STATES FOR 

THE SOUTHERN DISTRICT OF lLL!NOTS. 

Noe. 247, 248. Bubmllted April 21, 1893. - Decided M.ny JO, 18U3. 

The " aftcr-ntquircd property" clause .in a milroad mortgage covers not 

only legal 1u:qi1isitious, but also nll.equitnblc·rights and interests suhsequcntly acquired eitlte1' by or for the railroad company, the mortgagor. 

where negotiahle paper has been put in circulation, and there is. no inllrrn-

·ity or defence betw.een the 1rnteccdent parties thereto, a purchaser of 

such secnrities is entitled to recover thereon, as against the maker, the 

whole nrnount, "irrespective of what he ma.v hal'c paid therefor. 

A railroad company contr:ictcd with a, constrnction company· to hnil<l an<.I 

complete its mil road nn a line clesigniLt;cll on a· map ·of the· srtm<:, nnd to 

furnish and equip it, agreeing to pay for the same in stock and 111ortgage. 

bonds, to be issued from.time to time tts sections should he co111plcted. A 

mortgage was mnde of th1t road ailcl property then cxisti111; and after1yar<1s to· be acquired. Tlic, constrnct;ion company began work and complctCll ~small section, for which i.t received t;he stipulated pay in stock and 

bonds. [t parted with the latter for a gooll considcrntion, and the.Y 

eventually came by pnl'chasc i11to the possessio"n of W. N.o furth·er 

section was completed, but work was done at \'arions points on the line, 

and the construction company acquired for the milroad company rights 

of way through nea1;ly or quite the entire route. Stibsequently another 

railroad company ncq1iired these properties ,thrm~gh the construction 

company, and completed the road. H6lcl, that 'V., being.a bona .tide holder 

of the. bonds secnred by the first mortgage, who had purchased the bonds 

irf good faith, had through the mortgage a prior lien on the "'hol•! lirn: 

----- ~-----

,·. 
cj I 

REF ID:A10l383 

386 23 FEDERAL REPORTER, 2cl SEnrns 

tion w'as p'rior to 'that of Bruckman, but no 

inter.fore.nee was declared between thut and 

Bruckman. Instead of having split molsls, 

its molds arc' in a solid bed, and the baked 

cones arc extracted by hand, or by auy other 

means. · 

[3] If, in the light of Alexander 1\:lillbnrn 

Co. v. Davis-Boumonville Co., supra, these 

applications had been considered, they woultl 

not have affected the claim. of Bruckman to 

be the first inventor of the extraction mcthorl, which he showed and which the court 

fouud cu.titled h.im to be classed as n pioneer. 

Tho petition to file a supplemental bill in 

the nature of a bill of review is therefore denied. 

The alleged infringing machine of Denaro 

was in opern tiou in the city of Cambridge; 

and the lcarnc<l District Judge, in order to 

avail himsc1£ of a close inspection of this 

machino iu operation, adjourned the bearing to the factory where it was being operated, and some of the testimony wus tnken 

there. 

Although counsel have in great clctail 

pointed out other important particulars in 

which it is claimed infringement was proven, 

we content ourselves with considering agai11 

the iill'ention which Brucknw.n mncle. in the 

extraction of the baked cone from the molds 

without being touched by the hand. The 

infringing rnad1inc, as· did the first machine 

of Denaro held by this court to infri11ge, retains the core within the molds while they 

are being separated. Although in the second machine it is claimed that the slight raising of the core within the mold is simultaneous ·with the cr:rnkiug open of the mold, 

yet during_ the whole of the remainder of the 

opening of the mold, until the baked cone 

drops from it, the core remains suspc11ded 

within it, and assists, us does· the core in 

Brrnikman, in stripping the cone from the 

mold. It is entirely immaterial whether the 

core is rais~cl sinrnltaueously with the partial 

opening of the rnolcl, or whether this raising 

precedes that opening as in Br.uekman. 'l'he 

purpose for which this is done is the same in 

boLh,. namely, to free the core from the cone 

1vliich adheres to it, and then t.hc core is left 

suspended within the mold, to assist in stripping the cone from its sides as it is opened. 

Not only is the same resnlt accomplished in 

both, but the mca11s used are practically 

hl~Ll~. . 

[ 4] Error is assigned because the District 

Comt declined to receive in evidence certain 

depositions beari.Jlg upon the price of ice 

cream cones, both bc:fore and nftei• Bruckman's machine was put upon ihe market. As 

tho pat'cnt lmd been held by this court to be 

vulid1 these depositions were eoncctly excludud. 

The dcct"Co of the District Court is affirmed, with costs to the nppcllee. 

--~ 

HOUGHTON v. UNITED STATES. 

Circuit Court o[ Appc11ls, Fourth Circuit. 

January 10, 1928. 

No. 2G62. 

I. Master and servant ®=62-lnvention conceived and perfected by employee while discharging duties is property of employee. 

"'hc1·e :rn employee, while ilischnrgiug duties 

nssigucil to him in his department of sen·ice, 

conceiHs and pel'focts nn in,·ention, such in· 

ve11tio11 is property of employee. 

2. Master and servant <S=62-1 nvention resulting from Improvement by om ployee of method 

or instrument for doing work belongs to employee, subject to irrevocable license In employer. · 

"'here emp)oyee, while employed in certnin 

line of work. hnR devised nn improved method 

or instrumeu't for cloiug such work, using L>l'OP· 

e1'ty of employer nncl scl'\'iccs. of other employees, nml hils nssentecl to employer's use of 

same, in,·cntion is property of employee, sub· 

jcct to incvoc::tblc license on part of employer 

to use it. · -

3. Master and servant G=62-lnvention of 

fumigant for vessels by employee of Public 

Health Service held property of United States. 

'i-\'11Prn one wns employed as research chemist in Public lfoulf'h Scn·icc to· conduct experi- . 

ments for pnrrosc of combining n warning or 

irritant gns with hyclrocy:mic acid gns, theretofore used in fumigating Ycssel~, so ns to produ•:e gas which could be rc"'lil;v detP.ctecl nnd 

·~nfcly nsP.cl ns fumi;;nnt. lir.lrl. that invention of 

such cniployec, by coml)ining sud1 hydrocyanic 

ncid gns and cyanogen chloride gas, wns the 

property of the Unit~d States. 

4. Master and servant <&=62-Employer's right 

to Invention of employee Is based on nature 

of service in which employeo is engaged. 

The right of nn employer to itwention or 

emplo~·ec. clcpcndR, not on the terms. of nn original contract hiring him, but on the untl1rc of 

scn•icc in which employee is cngngccl nt time 

be makes ·invention, and :irises out. of rlntv which 

·employee O\\"C9 to employer with rcsi1cct to 

scrl'icc in which he is cng·aged. 

5. Master and servant €:=62-Employee, set to 

experimenting with view of making inventions. 

must disclose discoveries to employer, and re~ 

suits of efforts belong to employer. 

If nn employee is set to experimenting with 

view of making nn inYcntion, :rnd accepts llllY 

for such work, he must disclose to employer his 

discoveries in mnkini; experi1llents, nnd what he 

ac;complishes by e.xpel"imeuts belougs to cmplorer. 

• _J 
REF ID:Al01383 

HOUGHTON v. UNITED STATES 387. 

Z3 F.(!:d) 380 . 

6. Master and servant c<J:=62-That United 

States does not desire monopoly In Invention 

Is no ground for denying Its right to Invention 

of government employee. 

Where government employee wns assigned 

to conduct expel'imcnts for producing snfe fumi.-

gnnt for vessels, right of Unit.eel Stutes to employee's invention cnnuot be denied on ground 

thnt rule thnt inventions made by one employed 

to invent belong to employe.r will not be applied, 

becauAe the government does not desire n 

mo1iopoly. 

7, Master and servant €=62-Approval of gov. 

ernment employee's application for patent did 

not deprive United States of ownership of 

Invention. 

'Vhere government employee, assigned to 

the pnrticulnr tnsk of inveuting n sn fe fumigant 

for vessels, mnde such invention, United Stutes 

acquired ownership of such invention, rcgin·dle~s of nppro\•al of government officers of em-

-;byce's prcpnrntion of ap)llicntion for patent, 

c.!.!J('C uo subsequent recognition of right in emplo.vce, or eYcn n conveyance to him, would 

confer nny right on· him, or bind goYernment. 

Appeal from the District Court of tbe 

United Stntes for the District of Maryland, 

at Baltimore; Morris A. Soper, Judge. 

Suit by the United States against Harry 

W. Houghton. Decree for the United States 

(20 F.[2d] 434), and defendant nppeitls. 

Affirmed. 

Joseph William Hazell, of Washington, 

D. C. (ll'rancis B. Leech, of Washington, D. 

C., on tho b1icf), for appellant. 

Henry C. Workman, of Washington, 

D. C .. (F .. Gwynn Gardiner, of Washington, 

D. C., H. J. Galloway, Asst. Atty. Gen., and 

A. W. W. Woodcock, U. S. Atty., of J3a.lt.imore; Md., on the brief), for the United 

States. 

Before WAD DILL, PARKER, and 

NORTHCOTT, Circuit Judges. 

PARKER, Circuit Judge. This is an appeal from a decision that the United States is 

t.he equitable owner a.nd entitled to the assignment of a patent issued to the defendant 

Houghton, who;'when ho made the invention 

which is the subject thereof, was an employee 

of the Public Health Service in the Treasury 

Department. The facts are fully stated in 

tho opi11ion of the court below. U. S. v. 

Houghton (D. C.) 20 F. (2d) 434. Those 

necessary to an understanding of the questions involved in this appeal can be stated 

very b1i.efly. 

Houghton was a trained chemist holding 

a degree from a university. Ho was appointed assistant chemist in the office of Industrial 

Hygiene and Sanitation in the Public Health 

Service in June, 1920, at a salary of $2,-

500 per year, which in December of that 

yom· \vns increased to $3,000. Prior to his being designated to make tho experiments berGina.fter described, bis duties consisted chiefly 

in analyzing samples of dust from industrial 

plants. 

The patent granted Houghton covers a· 

fumigant gas produced by a combination of 

hydrocyn.nic acid gas With cyanogen chlo1;clo 

gas. Hydrocyanic acid gas had been used as 

a fumigant in disinfecting vessels in the ports 

of the United States for a number of years 

prior to tho granting of tho patent. Its use 

for this pru·posc, however, was fraught with 

considerable danger, on: account of the foci: 

that its presence could not readily be detected, and a very small amount of it would cause 

death. After Dr. Hugh S. Cumming was u.p~ 

pointed Surgeon General of tho Publio 

Health Service in 1920, and. at his direction, 

experiments were conducted for the purpose 

of combining a warning or irritant gas with 

this 11ydrocyanic acid gas, so as to produce a 

gas which could be readily .detected and thus 

safely used as a fumigant. 

About the 1st of March, 1922, a board 

composed of thrco, members of the Pt1blio 

Health Service' 'was appointed to conduct in-

\'cstigations for the purpose of developing 

such a fumigant· gas, and· Houghton was 

named as a membe1• of the board. He was 

familiar with the results of tl1c experiments . 

and iuvhtigalions which had previously been 

conducted by or at the request of the Ff cal th 

Service; had. mil.de a sL1.1dy of the literal1.1rc on 

the subject at the direction o.f his superior in 

the service, and at the time of his appointment clearly understood that it was the special duty of the board to develop a fumigant 

or method of fumigation which would achieve 

the end desired. He also understood at that 

l~me that cyanogen chloride was one of the 

derivatives of cyanogen, which it was the 

duty of the board to investigate and consider 

in its attempt to solve the problem committed 

to it. 

Shortly after Houghton's appointment to 

the board, he was sent to the Ecigewood Arsenal Laboratory t-0 conduct experiments in 

the production of the gas, in collaboration 

with three employees of -the Chemical ·warfare Service. These cxperimenls were conducted, not only at the direction of the officials of the Public Health Service, but in 

ac.cordance with tbcii- advice and aloug the 

general lines indicated by previous study and 

:investigation. Houghton made reports during the progress of the experiments to bis 

immediate ·superior, Dr. Thompson, who wa.s 
1.L. 

o, REF ID:Al01383 

388 23 FEDERAL UEPORTER, 2d SERIES 

in charge of the office of Industrial Hygiene 

nnd Sanitation, and continuously received 

. orders from him for further experiments and 

investigations, the laboratory details of which 

were left to his judgment and that of the 

chemists of the Ghcmicnl Warfare Service 

who were co-opera ting with him. The experiments resulted in the production of the 

desired gus, whi.ch was a mixture of hydrocynnic ncid gaf:) and cyanogen chloride, tllrough 

a proper combination of sodium chlorate, 

'sodium cyanide, and dilute hydrochloric acid. 

'l'be method adopted for genera.ting the gas 

was suggested by Houghton, but the success 

of the method was clue in part to suggestiorui 

eontributecl by the chemists of the Chemical 

·warfare Service, who were at work with him 

··On the problem. 

P1:ior to the development of the desired 

gas, nothing was s:i.icl as to securing a patent, 

and the pntenti11g of tho gas or of the method 

of producing it seems not to have been considered. After the experiments had proved 

successful, however, this matter was discussed, 

and Houghton agreed with his three associates of the Chemical Warfare Service that 

a patent should be obtained, in which each 

should have a one-fourtli intcrnst, subject to 

a nonexclusive license on the pnrt of the government, and this agreement seems to ha.ve 

received the approval of bis superior in the 

office of Industrial Hygiene and Sanitation. 

He accordingly made arrru1gcments for filing 

an application for a patent through a patent 

attorney attached to the War Department; 

but before the application was filed he asked 

permission of the Surgeon General to apply 

for the patent, and the Surgeon General requested the opinion of the Solicitor of the 

Treasury Dcpa.rfment with regard to the matter. The opinion of tJ1e Solicitor of the 

Treasury was that the invention belonged 

to the .government; but, before it was received, Houghton hag proceeded to file the 

application, filing at the same time an assignment to the Secretary of the Treasury and 

bis snccessor,s in oflice, granting to them a 

nonexclusive license to make, use, and sell the 

gas which was the subject of the pnten"t applicnLion. The Surgeon General protested the 

granting of the patent, and the first application was finally abandoned. St1bseqnently 

- Houghton ·secured p.rivate patent attorneys 

and filed a new application, on which a patent was granted him over the protest of!ihe 

Surgeon General. Before the filing of the 

original application, the three chemists who 

had .collaborated with Houghton signed an 

instniment dedicating to the public their interest in tlic invention. A lit.tic over p. y~ar 

-~· .~. 

~. ..,., -

-~ 

later, and while the originnl application wns 

pending, Houghton consented to assign to the 

government, in trust for tho public, his interest in the patent to he issued, but later 

withdrew the consent. 

[1-3) It is clear, we-think, upon these facts, 

that the case presented is not the ordinary 

caso of an invention made by an employee, 

who, while discharging the duties assigned 

to him in his department of service, conceives 

and pci·fects nn invention. In such case the 

rule is tha~ the invention is the property of 

the employee. Hapgood v. Hewit.t, 119 U. S. 

226, 7 S. Ct. 193, 30 L. Ed. 369; Solomons v. 

U. S., 137 U. S. 342, 346, 11 S. Ct. 88, 34 L. 

]~cl. {iG7; Dalzell v. :Oueber Mfg. Co., 149 U. 

S. 315, 13 S. Ct. 886, 37 L. Ed. 749. Nm· is it 

o. case where the only claim of· the employer 

o.rises out; of the fact thii.t the employee, while 

employed in a certain line of work, has devised and improved a method or instrument 

for doing that work, using the property of his 

employer and the services of other employees 

to develop his invention, and has assented.to 

the employer's use of same. In such case 

the rule applies which Houghton seeks to invoke, vii. that the invention is the property 

of the e!'nployee, subject to an irrevocable 

license on the part of the employer to use it. 

McCJurg v. K.ingslnnd, 1 How. 202, 11 L. Ed. 

102; Solomons v. U. S., supra; Lane & 

Bodley Co. v. Locke, 150 U. S. 193, 14 S. Ct. 

78, 37 L. Ed. 1049; Gill v. U. S., 160 U. S. 

426, 16 S. Ct. 322, 40 L. Ed. 480. 

But the case here presented is that of an 

employee who maJres a discovery or invention 

while employed to- conduct experiment_s for 

the purpose of making it. Houghton did 

not conceive the idea of combining an irritant 

gas with hyclrocyanic acid gas, so as to produce a safe fumigant. That was the idea of 

Dr. Cumming, the Surgeon General, under 

whom he was working. He did not conceive 

the idea of using cyanogen chloride .gas as 

the irritant with the deadly gas. That idea 

had been advanced in a German periodical, 

aud cxpm:imerits and studies along that line 

had previously been conducted at the direction of the Health Service. All that he did 

was to t."lke the idea of the Sm·gcon General, 

upon which the Health Service had been cxperimcntiJlg, and conduct .experiments under 

its direction, for tbe purpose of determining 

how best to produce and combine the gases 

so as to achieve the result which the Surgeon 

General bad in mind. · For this he was relieved of other work and sent to the Edgewood Arsenal to make the experiments. His 

regular salary was paid to him while he was 

thus engaged, and, when he deduced from the 

~. 

__. ....... .-r"~c.,..,.:lmi~~"'""-·~~--•__:-~~:--~-~--Z--!lii:l.O" ...... ,._~'-""'~--"""'~----------~~~~~~~~~~ 
HOUGHTON .... UNITED s~~s ID :Al013R1sn 23 F.(:.ld) 380 

experiments the method to be followed in pro- clear that, if1the patentee be employed to inducing and combining the gases, he did mere- Vent or devise such improvements his patly that which he was being_ paid his snlary to en ts obtained therefor belong to his employdo. Under such circumsto.nces, we think there er, since in making such improvements he 

can be no doubt that his invention is the is mcl'Cly ·doing what he was hired to do. 

property of his employer, the United· States. Indeed, the Solomons Case might have been 

U.S. v. Solomons, suprn; Gill v. U.S., supro, deci~ell wholly upon that gromul, irrespec160 U. S. 426, 435, 436, 16 S. Ct. 322, 40 L. tive of the question of e,9toppel, since tho 

Ed. 480; Standard P1u'ls Co .. v. Peck, 264 finding was that Clark bad been assigned tho 

U. S. 52, 44 S. Ct. 239, 68 L. Ed. 560, 32 A. duty of devising a stamp, and it was undcrL. R. 1033. stood by everybody that· the scheme woulcl 

'l'he. rule applicable in such cases cannot proceed upon the assumption that lhe best 

be better stated than it was by J\ir. Justice stamp wl1ich he could devise would be adoptBrewer in the Solomons Case, supra, where ed and made a part of the revised scheme. 

be said (at page 346 [11 S. Ct. 89]) : In these consultations it was w1dcrstood that 

"An cmploye, performing all the duties he was acting in his official capacity as Chief 

assigned to him in his department of· service, of the Bureau of Engraving and Printing, 

may exercise his inventive faculties in any but it was not understood or intimated that 

direction he chooses, with the assurance that the stamp he wos to devise would be patented 

whatever invention he may thus conceive and or become bis personal property. In fact, 

perfect is his individual property. There he was em.ployed and paid to do the very 

is no difference between the government and t11ing which he did, viz. to devise an imany other employer in this respect. But proved stamp; and, having been employed 

this general rule is subject to these lirnita- for tluit purpose, the frnits of his i111Ventive 

tions. If one is employed tQ devise or per- slcill belonged as much to his employer as 

feet an instrument, or a means ·for accom- would the fruits of his mechanical skill." 

plishing a prescribed rcsu"it, he cannot, after (Italics ours.) 

successfully accomplishing the work for In the recent case of Standard Parts Co. 

which he was. employed, plead title thereto v. Peck, supra, the Supremo Court held that 

as against his employer. That which he has where an employee agreed to devote his time 

been employed and paid to accomplish be- to the development of a process and· machincomes, when accomplished, the property of cry, his invention belonged to his employer, 

his employer. Whatever rights as an individ- and reversed a holding by the Circuit Court 

ual lie may have bad in an·d to his inventive of Appeals that such contract did not of its 

powers, and that which they are able to ae- own force convey to the employer tl1e equieomplish, he has sold in advance to bis em- table title to the patentable inventions, but 

ployer." gave him a license only. It cited with apIt is true, as argued by. defendant, that in proval both the Solomons Case and the Gill 

the Solomons Case claim was made against Case as sustaining. the proposition deciderl, 

the government for use of the device. covered and apropos of the centcntion (also made 

by the patent, and it was hcl.d that the pat- here) that the expressions in those cases as 

entce was estopped to claim compensation to the equitable ownership of the patents by 

from the government under t1ie authority of the employer were mere dicta said: 

l\foClurg v. Kiugsland, supra; but in the "It is going very far to say that the dee- , 

Inter case. of Gill v. U. S., supra, M.r .. Justice Jaration of Solomons v. Unitecl States, rcBrown cites with approval the reasoning of pcatcd in subsequent. cases, and apparently 

the Solomons-Case, which we have quoted, constituting their grouuds of decision, may 

and says thot the case might have been decid- · be put aside or underrated-assigned the ined on that proposition alone, saying: conseqnence of dicta. It might he said that 

"There is no doubt whatever of the propo- there is persuasion in the repetition." 

sition, laid down in Solomons Case, that the The court further said (and this scorns to 

mere fact that a person is in the empl9y of us decisive of the question involved in tho 

the government does not preclude him from case at bar) : 

making improvements in 'the machines with "It cannot be contenclc.d that the invenwhich he is connected, and qbtaining patents tion of a specific thi~g cannot be made the 

therefor, as his individual property, · and subject of a bargain and pass in execution 

that in such case the government would have of it. And such, \ve·think, was the object and 

no more right to seize upon and appropriate effect of Peck's contract with the Hess-Ponsuch property, than any other proprietor tiac Spring & Axle Company. That com-· 

would have. On the other baud, it is equally pany hil.d a want in 1ts business-a 'problem' 
r I c REF ID:A101383 

3!)0 23 FIWERAL JU;PQHTim, 2d SEllrnS 

is Peck's word-and he testified thut 'Mr. 

Hess thought probably' that he (Peck) 'could 

be of some assistance to him (Hess) in working out' the 'problem,' and the 'thought' was 

nri.tnrnl. Ress bad previous acquaintance with 

Peck-bis inventive and other nl)ility-anrl 

apprnachcd him, lhe result being the contract 

of August 23, 1915. • • • By the "contract Peck engaged to 'devote bis lime to the 

development of 1l process and machinery' 

lllld was to i·cceive therefor a stated comi)cnsalion. Whose property was the 'process and 

machinery' to be when developed 9 Tile answer would seem to be inevitable and rcsistless--of him wlio e11g;igcd the services and 

paid for them. • • • " 

See, also, Good-year Tire & Rubber Co. 

v. lliillcr (C. C. A. !Jlh) 22 l".(2d) 353; 

1Vfogncl:ic Mfg. Co. v. Dings Magnetic Separator Co. (C. C . .A. 7th) 16 F.(2cl) 73!J; 

British Hciu forced Concrete Co. v. Lind, SG 

L. J. Cb. N. S. ,JSG, UG L. T. N. S. 24:3, 33 

Times L. R.170; Air Reduction Co. v. \Vnlkcr, 118 l\fisc. Rep. 827, 195 N. Y. S. 120; 

Wireless Specialty Apparatus Co. v. l\'lica 

Condenser Co., 239 1\tass. 158, .131 N. E. 307, 

16 A. JJ. R. 1170; Dental Vulc1mitc Co. v. 

'i.Y ct:herbec, Feel. Cas. No. 3,810. 

[4, 5] It is contended, however, that the rule 

which we have discnssed hns no application 

hr.re, because it is said tbnt clc:fcudant was not 

employed by the government as au inventor, 

or to invent the fumigant gas which is the 

sub;jcct of the patent, but 1~ercly to do ordi1iary work as a chemist, such as the aualyziug 

of <lust samples. The trouble with this argument is that it gives too rn11TOW a meaning to 

the word "employed." The dght of the em~ 

ploycr to the invention or discovery of the 

employee depends, not t1pon the terms of the 

original contract of hiring, but upon th_e nature of the sen~ice in which the employee is 

engaged at tJic lime ho makes tho discovery 

ot· i11vc11tion, anti arises, not out of the terms 

of the coutract of 11iriltg, but out of the cluty 

which t_llC employee owes to his employer 

with respect to the scr-vice in which he is engag-t:a". n matters 11ot in what cnpacity the 

employee may originally lrn"c been hired, 

if: he be set to cxpcrimc11ting with tho view 

of making an invention, and accepts pay for 

such work, it is his dnl-y to disclose to l1is employer wlrnt he discovers in. 1.uaking the experiments, and what he accomplishes by tl!e 

experiments belongs to the emi)loycr. During the period that he is SG engaged, he is 

"employed to invent," mtd the results of his 

efforts at invention belong to bis employer in 

the same way as would the product of his efforts in any other direction. In the Solomous Case, supra, Clark was not employed as 

nu inventor or to invent, but as Chief of tho 

BuL"Cau of Engraving nnd Printing. He devised the stmnp, which was the subject of the 

pa.tent, nt the request of a committee of Congress, 11ncl wn.s paid nothing for his efforts 

nt invention other thnn his rcgnla.r salary. 

In the cnse of British Reinforced Concrete 

Engineering Co. v. Lind, supra, the patentee 

Lind was employed as an assistant engineer, 

and made tlJC invention fot· which the patent 

was granted whep. djrected by his employer 

to desigu an appropriale lining fot· the heading of a coal wine. What we deem to be ihc 

correct rule wns well stated by Judge S.opcr 

in the court below as follows: 

"The brond principle is now laid down 

by .the Supreme Court, too clearly to be mis11nderst0od, that, when an cu1ployee ·mernly 

does what he is hired to do, his snccesses, as 

well as foilurns, belong to ills employer. Nor 

can it be said that one who willingly carries 

out the orders of hi!l employer is not engaged 

upon that which he is employed to do. An 

employee, who undcrt1tkes upon the tfo·ecti.on of his employer to solve a specific problem within the scope of his general ·employment, is as trnly employed and pa.id for the 

particular project as if it had peen described 

at the outset in the contract of employment." 

[6] Defendant contcucls that the rule to the 

effect that inventions made by one employed 

to invent belong to the employer is based 

upon the presmncd intention of the parties, 

and will not he applied where the employer, 

as in the case of the government, docs not desire a monopoly. \Ve think, however, that 

there is no sound basis for the distinction 

sought to be made. Even though the emp!oy-

_cr may not desire a monopoly on the l'i.ghts 

in the invcntiou, it m:i.y well be that he desires that it be tllJ·own open to the puhlie; 

:incl his desire to thns declical:e it to the public should not be thwarted because he does 

not desire monopolist,ic control. Let a case 

be supposer] of a charibtble foundation, 

which employs chemists and -physicians to 

study diseases, with a view of discovering 

,a cure for them, one of whose employees, in 

the course of experiments condnctcd for it, 

discovers a remedy which it is seeking, and 

for the discovery of which the expcl"irnents 

are conducted, am! procures a patent 011 it. 

Should such employee be allowed to withlwld 

the patent from the founrbtion for his own 

profit, merely because the fotindat.ion docs 

not desire to monopolize the remedy but to 

give the· benefit of the discovery to mankind'! 

To ask snob a question is to answer it; 

and yet we do not think that the principle in-
" 

REF ID:A101383 

LYBRAND v. ALLEN :rn F.(2d) ao1 391 

volvcd is different from that involved in the 

case at bar. If there be auy differeuce,•there 

would be loss reason in allowing an employee 

of the Public Health Service to withhold a 

patent from the government thnn in allowing 

an employee to withhold a patent from a privnt·o charitable organization. 'l'be Public 

Hen.1th Service represents the people of the 

U11itc\l States. Its interest is their intr;rest. 

Its investigations und discoveries nre made 

for their bc1rnfit. And although 110itber it 

nor they have any interest in monopolizing 

'i11\'entions which may he made in the course 

of its stmlies :ind cxpel'iments, both have un 

i11terest i11 seeing that these inventions nre 

11ot monopolized by an'y one. In the case of 

tho fmuignnt gas developed by the defendant 

while employed and pn.id by the government 

to develop it, they are interested, not only in 

tho use which the Health Service itself may 

mnke of it, bnt also rmd priurn:rily in having 

it supplied to the public as freely and clicaply as possible. It is unthinkable thnt, where 

It va)nnl1le UlStrurncnt in tho W:l.l' ngainst 

iliseasc is developed by n public agency 

through tho use of public funds, the public 

servants cmploycrl in its prodnction should 

be allowed to monopolize it for private gain 

and levy n h·ibute tipon the public which has 

pai.d for its production, upon merely grn11t.-

ing a nonexclusive license for it.s use to the 

gov~rnmcnta.I department in which they aro 

employed. w·e thi.uk, therefore, that the clisti.nction which complninan t seeks to. drnw in 

favor o:f employees of the government has 

no basis in reason. The nnthorilics hold that 

the ordinary rule is applicable in the case of 

s11ch employees. Solomons v. U. S. supra; 

Gill v. U. S., supra; note in 16 .A. L. R. at 

1196. 

[7) Finally, the contention is made that tho 

parties did not intend t:lrnt the government 

should have the right of ownership in the inveJ1tion, but that it should have a, mere nonexclusive license to make and use the gas under n patent to be seemed by defeur1a.nt, this 

contention being hnsed upon the fact that 

the Chief of !.he Office of Sa.nifati0n and Hygiene approved of dcfend:rnt's preparing the 

appiication for patent. 'l'hcro is manifestly 

nolhin.!! in this contention. In the first place; 

a.ltliough, as stated, the.re. bad been some tltlk 

as to ta.king out a patent which was appmved 

of by the C!pef of the Office of Sanitation 

and Hygien!'l, when the consent o:f the Surgeon Genci·al ·was sought to the application 

for patent, he opposed the application acting upon the nd\rice of the Solieitor General 

of tl10 Treasury that ti.te invention belonged 

to the government. In the second place, the 

invention was made before a patent was mentioned or app:trently thought of by any one. 

Upon t.he principles heretofore discussed, it 

was the p1;operty of the governmnt. No of-.-:::: 

flcial of the government was authori~ecl to 

give away any interest in it, noel no 11ubsequent recognition of a right in defendant, not 

even a conveyance to defendant., could have 

eonfc1Tcd any right upon him or been binding upon the go\•ernmcnt. 'l'he Floyd Acceptances, 7 Wa.LI. GGG, 19 L. Ji:d. 160; Wisconsin Cent. lt. Co. v. U. S., 16'1 U. S. 190, 

17 S. Ct. •15, 41 L. Ed. 399; Sutton v. U. S., 

256 U. S. 575, 441 S. Ct. 563, 65 L. Ed. 1009, 

19 A. L. R. 403. 

'l'hore was no cn·or, and the decree of the 

District Court is accordingly affil'mcd. 

.Affirmed. .._.-..;c .. ____ .,. ___ ,,. .. --

LYBRAND et al. v. ALLEN. 

Circuit Court· of Appcnls, ll~ourth Circuit. 

January 10, 1928. 

No. 2056. 

I. Mortgages <!);:::> 137-Conveyance subject to 

purchase-money mortgage conveys merely 

equity of redemption. 

\\'lien lan1l is eonyeycd, and a mortgage 

executed to secure the purchase price, the 

practical effect of the transaction is to convey 

merely the equity of redemption. 

2. Bankruptcy e=>l88(9)i-Mortgage and note 

executed by bankrupt f.or land conveyed by his 

father In carrying out plan of securing fa· 

ther's creditgrs, held valid as respects bankrupt and his trustee. 

\Vhere bankrupt's father, being in financial 

dillicullies and owning consillernble rcttlty, 

ndoptcd the nlnn of: conveying separate 1111rccls 

of: l:u1d to b:inkrnpt nt nn ngrecc! price and 

taking notes nml mor_tgnges therefor, which he 

h.v111)luccatcd with his ,·nrious creditors us sccurit:~-. for existing nnd future in"dehteclneRs, held 

that, in the nhscncc of fraud or b:ul faith, n 

note an.cl mortgage so executed. by hnnkrnpt 

was \"Uli<l. nnd neither bankrupt nor his trustee could retain the property nnd at the same time rcpudinte mortgage. 

3. Bankruptcy e=:>2 I 7 (I )-B.urden was on 

mortgagor's bankruptcy trustee to show 

mortgage was· paid or released. 

Burden w:iis on mortgagor's bankruptcy 

.trustee, suing to enjoin mortgage foreclosure 

action in state court, to show that mortgage 

Imel been paid or released. 

4. Bankruptcy e=>2 I 7 (I )-Evidence held not 

to sustain burden on mortgagor's bankruptcy 

trustee of proving that mortgage had been 

paid or released. 

In bunk rupt:c;y trustee's suit to enjoin mortgage foreclosure nctiou in state court, brought 

by subsequent holde1• of mortgage, eYillcnce 

held not to sustain bu rel en on trustee of show· 

ing thnt mortgage executed by bankrupt bud 

been paid or released. 
:: 

· ....... 

• .I" 

. . 

' ·.~<,_ 

o· 

1~ 

REF ID:A101383 

.-~------·-•''---------~---"'------'----~. 

~-

li8 OCTOBER TERM, 1932. 

Syllabus. 289 U.S. 

deemed to accrue frorn property of someone other than 

Douglas Smith. The case is pla.inly distinguishable from 

Hoeper v. Tax Com1m:ss·ion,. 284 U.S. 20G, on which respondents rely, for there the n,tteinpt. was to tax income 

arising from property always owned by one other than the 

taxpayer, who had never had title to or control over either 

the property or the income from it. The measure of control of corpus a:ncl income ret,ainecl by the grant.or was 

sufficient to justify the attribution of the income of the 

trust to him. The enactment does not violate the Fifth 

Amendment. 

A contrary decision would make evasion of the tax a 

simple matter. There being no legally significant distinction between the trustee and a stranger to the trust 

as joint holder with the gran tor of a power to revoke; if 

the contention of the respondents were accepted it w;oulcl 

.)Je easy to select a friend or relative as co-holder of such 

a, pO\ver and so place large amounts of pr.incipal and income accrlting therefrom beyond the reach of taxation 

upon the grantor while he retained to all intents arid purposes control of both. Congress had .power, in order to 

make 'the system of i11'come taxation con.:iplete and consistent and to prevent facile evasion of the law, to make 

provisior1 by § 219 (g) for taxation of trust income to the 

grant.or in the circumstances here c1isclosed. Compare 

Taj t v. Bowers, 278 U:S. 470, 482, 483; Tyler v. United 

States, supra, at p. 505.. Judgment reversed. 

UNITED STATES v. DUBILIER CONDENSER 

CORP. 

CirnTIORARI TO THE cmCUJT qiURT OF APPEALS FOR Tl-IE 

THIRD CIHCUIT 

Nos. 316, 317, u.ncl 318. Argued .Tnniiary 13, 16; 1933.-Decided 

April 10, 193:3 

1. One who is employed to i11vent; is bound by contractual oblig::ition 

to assign the patent for the invention to his employer. P. 187. 

---, - -·----------
REF ID:A101383 

., U.S. v. DUBILIER CONDENSER CORP. . 179 

178 Argument for the United States. 

·' 2. Where the contr:ict or employment doe~ not cont.emplate invention, 

but an invention is made by the employee during the hours of his 

employment and with the aid of the employer's materials and appliances, the right of patent. belongs t.o Lhc employee, ~rnd the 

employer's interest in the invention is limited to a. non-exclusive 

r,ight. to practice it-a "shop-righV' P. 188. 

3. These principles are settled ns respects private employment :rnd 

they ·11pply also as between the United States and its employees. 

P. 189. 

4. No servant of t,he United Stat.es has by sta.tute been disqualified 

from applying for and receiving a patent for his invei1!iion, save 

officers all(! employees <:if the Patent Ollice during the period for 

~ which they hold their appointments, P. 189. 

\.__ __ ) 5. Scient.ists employed by the Unifod Stat.cs in the Radio Section of 

the Electric Division of the Bureau of Stantla.rds, while assigned to 

research com:erning use of radio in airplanes, m:1de discoveries concerning the use of alternating current in broadcast; receiving.·sets-a 

subject not wit.bin their assignment and not being investigated by 

the Sect;ion; and, having wit,h Lhe consent or their superior perfected their invent;ions in t.he Buren.u laboratory, obta.incd patents. 

Held, upol\ 1,hc facts, that there was no employment, to invent. and 

no bn8is for implying a conf;racf; to assign _to t.hc United States, or 

a. trust in its fn\'Or, save as to sho1H·ights. P. 198. 

6. The proposition t;Jrnt, anyone who is employed by Lhe United St:i t,cs 

for scientific research should be forbidden to o.bt.ain a. pa.tent for 

what; he i1wcnts if; a.t variance with the policy heretofore eviclcm:ecl 

by Congress. P. ,Hl9. 

7·. I'f public policy demands s11Ch .a prohibition, Congress, and noL t.hc 

courtH, must, dccla.rc it. Pp. ~97, 208. 

59 F. (2d) ::i87, affirmed. 

(..--....._ ) 

\J CERTJORART, 287 U.S. 588, to review the affirma.nce of 

decrees dismissing the, bills in three suits b1:ought by the 

United States to compel the exclusive licer1see under certain patents to assign all its right, title and interest rn 

them to the United States, and for an accounting. 

Solicitor General Thacher, with whom Assistant Al-. 

torney General Rugg and 111essrs. Alexander HoltzojJ, 

Paul D. Nliller~ and H. Brian Holland were on the brief, 

for the United States. 

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0 

,Q 

REF ID:Al01383 

180 OCTOBER TERM, 1932. 

Argument for 1.he" United SLa.tcs. 280 U.S. 

This Court has held that if one is expressly hired for 

the purpose of making a specific invention, or is designated or directed to develop su~h invention, the pa.tent 

rights arising out of such invention become the property 

of the ernploye1;. The ratio dei'idend·i of this holding is 

that in making the invention the ernployee is rnerely 

doin·g what he was hired to do, h:wing contrn:cted in advance for the perfoFmancc of work of an-inventive charn,cter, and therefore the fruits of his work belong to the 

employer. 

The same result should follow if an employee, instead 

of being hired or being assigned to rnake a specific invention, is hired for the purpose of doing inventive work in a 0 

particulrnr field. If in such event the crnployee makes an 

invention within tha.t field, he has only done that which 

he was hired to do and accordingly the patent l"ights to 

such invention arc t.hc property of the employer. 

The emplqymenL of Lowell and Dunmore included the 

duty to exercise their inventive faculties within the general field to which they were assigned. It is not disputed 

that they were i f1. the actual performance of their employment while engaged in the research which led to the 

inventions in question. Their clLlties were not confined 

to the solution of specially designat;ecl problems, but they 

were c;:xj)cctcd to and did follow " leads" uncovered during Lhe progress of their work. The inventions in questi'on represented a natural and progressive development 

of the work which they were pur~uing under the direction of !their superiors, anti which they systematically 

described in their official reports. 

Essentially the purpose of industrial research is to apply to industry lhe discoveries of sci(:!ncc. \Vhen one is 

employed for scienJific research to meet the needs of a 

rapidly advancing industrial art, such as radio, his mn~ 

ployment necessarily includes the duty to employ his 

------------- ------~--
REF ID:A101383 

U.S. v. DUBTLTER CONDENSER CORP. 181 

l 'iS Argument; for the U11it;cd SLat,us. 

talent in devising new and useful appliances for the improvcrnen t .of the· art. If, in this process, discovery and 

application to useful purposes rise to the level of invention, the invention is the fruit of the ernployment. 

There is no basis for the holding that because "reh" I ". . " . ·. searc anc rnvent10n are not synonymous, the ·research work of Lowell and Dunmore clicl not; include the 

duty to make inventions. The. research work in which 

they \Vere engaged had for its express purpose the improvement of the radio art by invent;ion. 

In the efr:icient conduct of rnoclern research labora.tories 

1 it is necessary to permit scien.tists to exercise initiative 

and freedom in the solutio·n of particular problems and in 

follo.wing suggestio11s or leads arising out of a specific 

task. Discoveries and inventions seldorn ct\.11 be anticipated and, ht:')nce, it is often impossible to assign the 

development of a particular inve·ntion as a. task to be 

performed. 

Research work regularly resulting in numerous invention·s is continually being carried on in laboratories coie,

1 ducted qy governmental agencie_s. lt is aga.inst public~ 

interest that private individuals shi)ulcl collect royalties r 

for the use of invei'1Lions developed at public cost. 1 

The rule adopted by the counts below, i'f allowed to 

sta.nd, would tend to demoralize the Bureau of Standards as a center for scientific a.ncl inclust1:ial research. 

The experience of privat,e industry shows Lhat invention is. not discouraged where the ernploycr retains property rights to the inventions of employees engaged in 

inventive work. 

The Act of March 3, 1883, as amend.eel by the Act of 

April 30,° 1928, does not express the entire governmental 

policy with regard to patent rights 011 inventions or government employees. Its obvious purpose was to accord 

the privilege of obtaining patents witho.ut charge. to. go.v-

---~·_J 
l 

I 

I 

I 

I: 

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/.1. 

I 

I 

I 

I 

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I 

1 •' 

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i I 

';/ 

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I• 

I• 

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I I• 

I I 

0 

·O 

REF ID:A101383 

182 OCTOBER TERM, 1932. 

Opinion of the Court. 289 U.S. 

ernment employees who 111ight make an invention under 

such circumstailces that the Government would have 

neither title to the patent nor a license under it. 

Mr . .Tames H. Haighes, Jr., with ·whom Messrs. E. 

JEnnalls Berl and John B. Brady were on the brief, for 

respondent. 

lVIR. JusT1cm .RoBEiiTS delivered the oprn10n of the 

Court.· 

Th roe suif;s were brought in the District Court for Delawa.ro against tho respondent as exclusive licensee under 

three separate patents issued to Francis \V. Dunmore and 

Percival D. Lowell. Tho bills recite that the inventions 

wore made while the patentees were employed in the radio 

laboratories of the Bureau of Standards, and .. aretherefore, 

in equity, ·the property of the United States .. The pr:ayers 

a.re for a declaration that the respondent is a truste,e for 

the Government, and, as such, 1:equired to assign to the 

United States all its i'ight, title and interest in tho pa.tents; 

for an accounting of all moneys received as licensee, and 

for general 1~elief. The District Court consolidated the 

cases for trial, and after a hearing dismissed the bills.1 

The. Court of Appeals for tho Third .Circuit affirmed the 

decree.~ 

The courts below con'currecl in findings which are not 

challenged and, in summary, are: 

The Bureau of Standards is a sLihclivision of the Department of Commerce." Its functions consist in the 

custody of standards; the co111parison of ~tancla1•ds used 

in scientific investigations,. engineering, manufacturing, 

commerce1 

.and educational 1nstitutions with those 'adopted 

1 49 F. (2d} :mG. 

'59 F. (2cl) 381. 3 !Sec Act; of March 3, 1901, :n Slat. 1449; Act of February 14, 190:3, 

§ 4, 32 Slat. 820. 

[ } ·--... ~.itl,_· ~--- ------ ~"~--
REF l_D:Al01383 

lJ.$. v. DUBILIJ1:R CONl)ENSER CORP. 183 

178 Opinion of the Court. 

or recognized by the Government; the construction of 

. standards, their inult~iples or subdivisions; the test.ing and 

calibration of standard mcasll ring apparatus; the solution 

of problcrns which arise in connection with standards; and 

the physical properties of materinJs. In 1915 the Bureau 

was also charged by Congress with lihe cluf·,y of invcstigaf ion nnd standardization of rnethods and instruments ernploycd in radio comrnunicn.l;iuu, for which special n.ppropriations were rnade:' Jn recent y1~:u:s ii. has been engngccl 

in research and tesLing wo1·k of various kinds for the benefit of privale industries, other departments of the Govern1nen t, and the general public." 

The Bure~w is composed of divisions, each charged with 

a specified field of activil1y, one of which is the electrical 

division. These .are further subdivided in'to sectio11s. 

One section of the electrical division is f:he radio section. 

Jn 1921 and 1922 the employees in the laboratory of this 

section numbered approximately l1wenty rnen doiug technical work, and sorne clra.ftsrncn a.ncl mechauics. The 

twenty were e11gnged in licsl;ing radio apparatus and rnethods ttnd in rndio research work. They were subcliviclecl 

into ten groups, qach group having a. chief. The work of 

each group was defined in 0utli11cs by the chief or alternate chief of the sbcliio11. 

Dunmore and Lowell were ernployecl in the radio section an cl engaged in research a.nd testing in the laboratory. In the outlines of laboratory work the subject of 

"airplane radio" was ar>signer:I to the group of which 

Dunmore was chief and Lowell a member. The subject 

of " raG!io receiving sebs " was assigned to a.group of which 

J. L. Preston was chief, but to which neiLher Lowell nor 

Dunmore belorfged. 

•Act; of Man:h 4, 1015, 38 St.nli. 104.t; Act; of May 29, 1920, 41 

Stuj;. 684; Ad of JVlarch 3, rn21, •11 Stat;. 1:30:3. 

• '.l'he fees ch:1.rgcd cover merely the cost of t.ltn ~wn·ir:c rendered, 

:ts provided iu the Act .of June :JO, JU::t!, ·§ i.l12, •17 Stal,. '110. 
0 

0 

I 

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REF ID:Al01383 

184 OCTOBER TERM, 1932. 

Opin'ion of t;hc Cou~'L. 289 U.S. 

In iVfay, 1921, the Air Corps of the Army and the Bureau of Standards entered into an arrangement whereby 

the b:Lt:er undertook the prosecution of forty-four research 

projects for lhe benefit of the Air Corps. To pay the cost 

of such work, th~ Corps transferred at1d allocated to the 

Bureau the sum of $267,500. Projects Nos. 37 to 42, inclusive, relating to the use of radio in conneq'tion with 

aircraft, were assigned to the. radio section and $25,000 

was allocated to pay the cost of the work. Project No. 

38 was styled " visual indicator for radio signals," and 

suggested the construction of n modification of what was 

known as an "Eckhart recorder." Project No. 42 was 

s,tyled "airship bomb control and marine torpedo controlY Both were r>roblerns of design merely, 

In the summer of 1921 Dunmore, as chief of the group 

to which "airplane radio" problems had been assigned, 

\vithout further instructions from his superi9rs, picked 

out for himself one of these navy problerns, that of opera.ting a relay for remote control of bombs on airships and 

torpedoes in the sea, " as one of particular interest and 

having perhaps a rather easy solution, and worked on it." 

In St;)pternber he solved it. 

In the midst of aircraft investigations and numerous 

routine pr:oblenis of the section, Dunmore was wrestling 

in his own mind, impelled thereto solely by his own scientific curiosity, with the subject of substituting houselighting a.lter•nating crn:rent for direct battery current in 

radio apparatus. He obtained .a relay for opera.ting a. 

telegraph instrume1Jt which was in no way related to the 

remote control relay devised for aircraft use. The conception 0f the application of altemating purrent concerned 

particu'brly broadcast reception. This idea was conceived by Dunmore August 3, 1921, and he reduced the 

inveniiion to practice December 16,. 1921. Early in 1922 

he advised his superior of his invention and spent addi-
REF ID:A101383 

U.S. v. DUBTLIEll CONDENSER CORP. 185 

178 Opinion of the Comt. 

tional time in perfecting the details. February 27, 1922 

he filed an application for a patent. 

In the fall of 1921 both Dunmore :rncl Lowell were considering the problem of applying alternating current to 

broadcast receiving sets. This project was not involved 

in or suggested by the problems with which the radio section was then dealing and wqs not assigned by any su:... 

perior as a task to be sol vecl by ei !her of these employees. 

It was independent of their work and voluntarily assumed. 

While performing their regular tasks they experimented 

U

,..---.._ a.t the la:boratory in clevisii1g apparatus for operating 

a. radio receiving set by alternati11g current with the hum 

incident thereto eliminated. The invention was cornpleted 

on December 10, 1921. Before its completion no instruc-

·tions were received from and no conversations relative 

to the invention were held by these emi)loyees with the 

head of the radio section, or with any superior. 

They a:lso conceived the idea .0f energ1zing a. clyna,rriic 

type of loud speaker from an alterna.ting ·current houselighting circuit, and reduced the invention to practice on 

January 25; 1922. March 21, 1922, they filed an application for a "power amplifier." The conception embodied 

in this patent was devised by the patentees wibhout suggestion, .instruction, or assignmeat from any superior. 

Dunmore and Lowell were permitted by their chief, 

(

""' after the discoveries had been brot.1gh_t to his attention, 

_) to pursue their work in the laboratory and to perifcct the 

devices embodying their inventions. No. one advised 

them prior to the filing of applications for patents that 

they would be expected to assign the patents to the 

United States or to grant the Government exclusive 

rights thereunder. 

The respondent concedes that the United States may 

practice the inventions withoul; payment of rqyalty., but 

asserts that aU others are excluded, during the lifo of the 

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. I. 
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0 

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REF ID:Al01383 

186 OCTOBER TERM, 1932. 

Opinio·n of the Court. 289 U.S. 

patents, from using them without the respondent'.s consent. The petitioner insists that the circumstances require a. declaration either that the Government has sole 

and e.xclusive property in the inventions or that they 

have been dedicated to the public so that ,anyone may use 

them. 

First. By Article I, § 8, clause 8 of the Constitution, 

Congress is given power to promote the progress of science 

and the useful arts by securing for fonitecl times to inventors the exclusive rights to their respective discoveries. 

R.S. 4886 as amended: (U.S. Code, Title 35, § 31) is 

the last of a series of sta_tu tes which since 1793 have 

implemented the constitutional provision. 

Though often so characterized, a patent is not, accurately speaking, a monopoly, for it is not created by the 

executive authority at the expense and to the prejudice 

of all the community except the grantee of the patent. 

Seynwur v. Osborne, 11 Wall. 516, 533.- The term monopoly con notes the giving of a.n exclusive privilege for 

buying, selling, working or using a thing which the public freely enjoy.eel prior to the grant.0 Thus a monopoly 

Lakes something from the people. An invento1·· deprives 

Lhe public of ;nothing which it enjoy~cl before his discovery, but giv9s something of value to the community by 

adding to the sum of human knowledge. U11:ile_d States 

v. Bell Telepho•ne Co., 167 U.S. 224, .239; Paper Bag 

Patent Ca,c;e, 210 U.S. 405, 424; Btoolcs v . .Jenkins, _3 McLean 432, 437; Parker v .. Haworth, 4 McLean 370, 372; 

Allen v. Hunter, 6 McLean 303, 395-306; Attorney General v .. Run~f ord Chemical W arks, 2 Bann. & Arel. 298, 

302. He may keep his invention secret aml reap its 

fruits indefinitely. Tn c_onsideration of its disclosure and 

the cm1sequent benefit to the community, the pa.tent is 

granted. An exclusive enjoyment is guaranteed him for 

• \-Vebswr's Now lnt.crnat.ional Dictionary: "Monopoly." 
REF ID:A101383 ~-----------~-------

U.S. v. DUBILIER CONDENSER CORP. 187 

178 Opinion uf the Court. 

seventeen years, but upon the expiration of that period, 

the knowledge of the invention enures to the people, who 

are thus enabled without restriction to practice it and 

jJrofit by its use. Kendall v. Winsor, 21 How. 322, 327; 

Un?.ted States v. Bell Telephone Co., suvra, p. 239. To 

this end the law requfres such disclosure to be made in 

the application for patent that others skilled in the a.rt 

\Yia,y understand the inven t:ion a:ncl how to put it to use.7 

-~~ ~ patent is property a1:1d tit.le to it can pass only _by 

ass1gnment. If not yet issued a:n agreement to assign 

,QA when issued, if v,a.licl as a contract, will be specifically 

enforced. The respective rights and obligations of employer and employee, touching an invention conceived 

by the 'latter, spring from the contract of employment. 

One emrloyed to make an in ven Lion, who succeeds, duri11g his term of service, in accomplishing tha.t task, is 

bound to assign to his .employer any patent obtained. 

The reason is that he has only produced that which he 

was employee~ to invent, His invention is the precise 

subject of the contract of employment. A ter.m of the 

agreement necessarily is that what he is paid to produce 

belongs to his paymaster. Standard Parts Co. v. Peck, 

204 U.S. 52. On the other ha:nd, if t:hc employ.ment be 

general, albeit it cover a field of labor .and effort in the 

performance of which the employee ·conceived the inven-

(

-, tion for which he obta.ined a patent, the contract is not 

. .J so broadly construed as to require an assignment of the 

patent. Hapgood v. H eivitt? 119 U.S. 226; Dalzell v .. 

Dueber Watch Case Jl1fg. Co. 149 U.S. 315. In the 

latter case it was said [p. 320]: 

" But a manufacturing corporation, which has employed a skilled workman, for a sta.ted compensation, to 

take charge of its works, and to devote his time and services to devising an~t making improvernents in articles 

7 U.S. Code, TiL. 35, § 33 . 

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REF ID:A101383 

188 OCTOBER TERM, 1932. 

Opinio~ of the Court. 289 U.S. 

there manufactured, is not entitled to a conveyance of 

pa.tents obta.inecl for inventions made by him while so 

employed, in t.he absence of express agreement to that 

effect." 

The reluctance of courts to imply or infer an agreement 

by the employee to assign his pa.tent .is cl uc to a recognition of the peculiar nature of the act of invention, which 

consists neither in finding out the laws of nature, nor in 

f n.1itful research as to the operation ·of natural laws, but 

in discovering how those laws may be utilized or appliecJ 

for some beneficial purvose, by a process, a device or a 

machine. It is the result of an inventive act, the birth of 

an i~lca and its reduction to practice; the product of original thought; a concept demonstrated to be true by f>ractical application or embodiment in tangible form. Clark 

Thredd Co. v. lVillimant·ic Linen Co., 140 u.s: 481, 489; 

S.Y'mington Co. v. National Castings Co., 250 1J.S. 383, 

386; Pyrene Mfg,. Co. v. Boyce, 292 Fed. 480, 481. 

Though the mental concept is embodied or realized in 

a mechanism or a. physical or chemica.J aggregate, the emboclimcn tis not the invention and is not the subject of a 

patent. This distinction between the idea. and its applicat:ion in practice is the basis of the rule that employment 

merely to design or to construct or to de\'.ise methods of 

manufacture is not the same as emiJloyment to invent. 

Recognition of the nature of the act of invention also defines the lin1its of the sp-callccl shop-right, which ~hortly 

stated, is that where a. servant, dut·ing his hours of emr>loyment, working with his master's materials ar\d appliances, conceives a.ncl pGrfocts an invention for \\(hich he 

obtains μ_, patent, he must accord his rnai:;tcr ·a. non-exclusive right to practice the invention .. JYlcChtrg V. Kings-

· land, I How .. 202; Solomons v. United States,. 137 U,S. 

342; La:i.ie & Bodley Co. v. Loch;e, 150 U.S. 193. This is an 

application of equitable principles. Since the scrva-nt 

uses. his master's time, facilities a!'icl ma.terials to attain a 

I 

i 

I ~ 
C> 

REF ID:A101383 

U.S. v. DUBILfER CONDENSER CORP. 189 

178 Opinion of the Court. 

concrete result, the latter is in equity entitled to use tha.t 

which embodies his own property and to duplicate it as 

often as he may find occasion to employ similar appliances 

in his business, But the employer in such a case has no 

equity.to demand a conveyance of the invention, which is 

the original conccptioi1 of the employee alone, in which · 

the employer had no pa.rt. This remains the pn>pcrty of 

him who conceived it, together with the right conferred 

by the patent, to exclude all others t.ha.n the employer '. 

from the accruing bcnefi ts. These principles a.re settled \ 

as respects priva,f:c employment. . . ~ .J 

Second. Docs the character of the service call for cldforcnt rules as to the relative r1ghts of the United States a.ncl 

its employees? 

The title of a, patentee is subject to no superior right of 

the Government. The grant of letters pa.font is not, as 

in England, a matter of grace or favor, so that conditions 

may be annexed a:t the pleasure of the executive. To the 

laws passed by the Congress, and to them alone, 1na.y we 

look for guidhncc as to the extent and 'the limitations of 

the respective rights of the invent0r and the public. Attorney G.eneral v. Rumford Chem1:cal 1Yorks, s~wa, at pp. 

303-4. And this court has held that the Constitution 

evinces no public policy which requires the hold.er of a, 

patent to cede t,he use or benefit of the invention to the 

United States, even though the discovery concerns matters which can properly be used only by the Government; 

as, for example·, munitions of war. .Tames v. Ca:mpbell, 

104 U.S. 356, 358. Holhster v. Benechct Jvlfg. Co., 113 

U.S: 59, 67. 

No servant of the United St.ates has by statute been disquaiifi.ccl from applying for and receiving a. patent for his 

invention, save officers and employees of the Patent Office 

during the perio:cl for which they hold their appointmcnts~ 8 

'H..S. 480; U.S. Code, Tit. 35, § 4. 

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REF ID:A101383 

190 OCTOBER TERM, 1932. 

Opinion of lhc Court •. 289 U.S. 

This being so, this court has applied the rules enforced 

as between private employers and their servants to the 

relation between the Government and its officers and 

employees. 

Unded States v. Burns, 12 Wall. 246, was a suit in the 

Court of Claims by an army officer.as assignee of a patent 

obhi.:inecl by ano1,her such officer fot; a military tent, to recover royalty under a conti":1ct made by the Secretary of 

\Var for the use of the tents. The court said, in affirming 

~L judgment for the plaintiff [p. 252]: 

"If an officer in the military service, not specially employed to ·make experiments with a vfow lo suggest im.-

provem.ents, clevises .a new and valuable improvement in 

~;rrns, tents, or any other kind of war material, he is 

entitled to the benefit of it, and to letters-patent for the 

improvement from the United States, equally with any 

other citizen not engaged in such service; and the govern-· 

ment cannot, after the patent. is issued, make use of the 

improvernqnt any more tlrnn a private individual, without 

license of the inventor or making compensation to him." 

In Un:i:te.d SLMe,s v. Palmer, 128 U,S. 262, Palmer, a lieutenant in the army, pa.tented certa.in improvements i'n infantry accoutrements. An army board recommended 

their use and the Secretary of War confirmed the recommendation. Th.e United States manufactured and purchased a. large number of the articles. Palmer brought 

suit in the Court of Claims for a sum alleged to-be a fair 

·~u1cl reasonable royalty. From a judgment for tl~e plain~ 

tiff the United State::; appealed. This court, in affirming, 

said [p. 270] .: 

"It \vas a.t one time some\vha.t doubted 'Yhether the 

government might not be entitled to the use and benefit 

of every pa.tented invention, by analogy to the El1glish 

law which reserves. this right to the crown. But that 
REF ID:A101383 

U.S. v. DUBILIER CONDENSER CORP. 191 

178 Opinion of the Court. 

notion no longer exists. It was ignored m the case of 

Burns." 

These principles were recognized in later cases involving the relative rights of' the Government and its employees in instances where the subject-inaU.er of the 

patent was useful to the public generally. \Vhile these 

did not involve a, claim to a:n assignment of the pafont, 

the court reiterated the views earlier announced. 

In Solomons v. U·m:ted Stales, 1:3i U.S. ~H2, 346, it was 

said: 

"The government has no more power t'0 appropriate a 

man's property invested in a patent than it has to take 

his property invested in real estate; nor does the mere 

fact that an inventor 1:s at the time of h·1".s invention in the 

employ of the government transfer to it any title to, or 

interest in it. An employe, performing all the duties assigned to him in his department of service, may exercise 

his inventive faclllties in any direction he chooses, with 

the assurance tha,t whatever invention he may thus conceive ai1d perfect is his individual property. There is 

no dif]erence between the government a:nd any other emz~loyer in this respect." 

And in Gill v .. United States, 160 U.S. 426, 435: 

" There is no doubt whatever of the proposition laid 

down in Solomons case, that the mere fact that a person 

is in the employ of the government does not preclude him 

from malcing improvemei1ts in the machines with which 

he is connected, and obtaining patents therefoc, as his 

individual property, and tha.t in s.uch case the -government would ha.ve no more right to seize upon a.ncl appropriate such property, than any other proprietor would . 

h ave. . .. . " . , 

The distinction between an employment to make an · 

invention and a general employment in the course of 

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REF ID:A101383 

192 OCTOBEll TERM, 1932. 

OJ)inion of Lhe Court. 289 U.S. 

which the servant conceives a.n invention has been recognized by the executive department of the Government. 

A lieutenttnt in the navy pa.tented an anchor while he was · 

on duty in the Bureau of Equipment and Recruiting, 

which was charged with the duty of furnishing anchors 

for the navy; he was not while attached to the bureau 

specially employed to make experiments with a view to 

suggesting improvements to anchors or assigned: the duty 

of making or improving. The Attorney Genera.1 ·advised 

tha.t as the invention end not relate to a matter as to w'hich 

the lieutenant was specially directed to experiment with 

a view to suggesting improvements, he was entitled to 

compensation frorn the Government for the use of his 

invention in addition to his salary or pay as a navy 

officer. 0 

A sin1ilar ruling was made with respect to an en.sign 

who obtaiilecl a pa.tent for improvements in "B.L.R. ordnance'' .a:ncl who offered to sell the improvements, or the 

right to use them, to the Govern lnen t. It was held that 

the navy might properly make a. contract with him to this 

encl. 10 

The United States is entitled, in t.he .sa.lne way and to 

the same extent as a privale employer, to shop-rights, 

that is, the free and non-exclusivo use of a patent which 

results frnm effort of its employee in hl.s working hom:s 

and with material belonging to the Government. Solomons v. United States, supm, pp. ·340--7; NI cAleer v. 

United Slates, 150 U.S. 424.;. Gill v. United States, suvra. 

The statutes, decisions and administrative p1'actice 

n·ega.te the existence of a duty binding one in the service 

.of the Government diffef·ent froni the obligation of one in 

private eri1ployment. 

· •• 0 19 Opinion;; Att.orncy-Gcncral, 407. 

'

0 20 Opinions At;tomcy-Gcneral, :320. And compnrc Report. Judge 

Advocat.e General of the Navy,. HJOl, p. G; DigesL, Opinions .Judge 

Aclv0eate Gencr~tl of t.he Army, 1!112-]9::IO, p. 2;)7; Opinions, .Judge. 

Advocate General of the Army, 1918, Vol. 2, pp. 529, 988, 106(1. 

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REF ID:A101383 

U.S. v. DUBILIER CONDENSBR CORP. 193 

178 Opinion of the Court. 

Third. When the United States filed its biJis it recognized the Jaw as heretofore declared; realized tha.t it must 

Jike a.ny other employer, if it desired an assignment of the 

respondent's rights, prove a con tract;ual obligation on the 

part of Lowell and Dunmore to assign the pa.tents to the 

Government. The averrnents clearly disclose t,his. The 

bill in No. 316 is typical. After reciting that the employees were labor~ttory apprentice and associate physicist, 

and labonttory assistant and associate physicist, rcspect;i vely, and that one of their duties was "to carry on investigation research and expcrfr11entation in such problems relating to racho and wireless as m.1:aht be assianed lo 

them, by their superiors," it is charged "in the course of 

his employment as aforesaid, there was as.signed to said 

Lowell by his superiors. in said radio section, for investiaation and research, the problem of developing a radio 

receiving set capable of opera.tio!'1 by alternating current .... " 

Thus the Government understood that respondent 

could be deprived of rights under the patent$ only by 

proof that Dunmore and Lowell were employed to devise the inventions. The findings of the courts below 

show how . far the proofs fell short: of sustaining these 

averments. 

The Government is consequently driyen to the con-.. 

tention that though the emp.loyees were not specifica.lly 

assigned the task of rnakihg the inventions {as in Standard Parts Co. v. feclc, 81.tpra}, still, as the clisceveries were 

"within the genera.I field of their 1'esearch and friventive 

work," the United States is entitled to an assignment of 

the patents. The courts below expressly found that Dunmore and Lowell did not .agree to exercise their inventive 

faculties in their work, and that invention was not within 

its scope. !n this connection it is to be remembered that 

the written evidence of their ep1ploy1nent does not mention res~arch, much less invention; that never wa-s there 

Hi4!'i0°-3:l-J:I 

.... ·c. 
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REF ID:A101383 

194 OCTOBER TERM, lf.i32. 

Opinion of t.he Court .. 289 U.S. 

a word sa.icl to either of them, prior to their discoveries, 

concerning invention or patents or their duties 01; obli-

-gations respecting these matters; that as shown by the 

record$ of the pa.tent office, employees of l.hc Bureau of 

St:anclarcls and other departments had, while so employed, 

received numerous. patents and enjoyed the exclusive 

rights obtained as against all priva.t:e persons without let 

or- hindrance fro111 the Government.' r In no proper 

11 No exhaust;ive examin:i.1ion of the oflici:1l records has been attempted. lt is sufficient., however, for present' purposes, to call 

a,ttei1tion to the followi"ng insta.nces. 

Dr. Frederick A .. 1\olsl.er was· employed. in I.he r:1dio sect.ion,. Bureau 

of Standards, from Dece\nber, 1912, until about, March l, Hl21. He 

a.j'lplied for the following patents: No. l,009,3(i!:i, for radio apparatus, 

ilpplicatibn dated November 2U, 1920. No. 1,447,lf\5, for radio 

method m}d apparat.us, :1ppllcaliion dated .January :30, 1'91'9. No. 

J,:311,654, for radio 1\1cthQd a-net apparatus, :1pplic:it.ion dnted March 

25, 191 ti_ No. I ,:)94,5ti0, frff· apparn 1~11s for tr:rnsmit.tin_g r:1cli:1nt, energy, 

applicatfon da.tecl November 24, 1910. The Pat.cut Office records 

show assignments of t,hcsc p:1Lenli;; to Fcder:tl Telegraph Compa,ny, 

San Francisco, CaL, of which Dr. Kolst,er is now president. He testiM 

fied tlmt these arc all subject; to a non-exchisi.ve license in the United 

States to use and practice t,he same. 

Buften McCollum was a.n employee of t;he B11rca11 of Standards bct,ween 1911 and }:!)24. On the dates mentioned he filed the following 

applications for patents, ";hich were issued to him. No. 1,035,:373, 

alternating current, induct.ion mot.or, March 11, 1912. No. l,156,364, 

induct.ion motor, February 25, l!Jl 5.. No. 1 ,22G;rnn, alternating current induction mot.or, Atigust 2, HJ15. No. 1,724,40~, method and 

apparatus for det,ermining- 1.he, slope of subsurface rock boundaries, 

October 24, 19'.2:3. No. f,724,720, mcLhod and apparatus for ~tudying subsurface contours, 01;tober 12 ,1923'. The last; two inventions 

were assigned to :McCollum Geologic~il Explorations, Inc., a Delaware corporation. 

Herbert, B. Brooks, while :1.11 ·employee -Of the Bureau bct,ween 1012 

.and 1930, filed, November I, 1019, an applicaGion on which patent, 

No. 1 ,357,197, for an electric l,ransformcr, was issued. 

William \V. Coblentz, ~n cmploye9 of the- -Bureau of Sl.anchirds 

from mm, and s1iill such at. the date of the trial, on the dates ment:ionedl filed applications on which pa:tents issued as follows: No. 

&" 

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r-,.,,_ lJ 

REF ID:A101383 

U.S. v. DUBILIER CONDgNSEH. CORP. 195 

178 Opinion of the Court. 

sense may it be said thaf; the contract of e1nployrnent contemplated invention; everything that Dunmore and Lowell knew negatived t.he theory tha,t they were employee! 

to invent; t.hey knew, on the contrary, tha.t the past and 

then present practice was tha.t the employees of t.he Bureau \vere allowed to take paten ts on their inventions and 

have the benefits thereby conferred save as to use by the 

I A 18,:362, ror clecf.ric:tl resistance, Sep I.ember 22, .1920. No. 1,4.58,Hi.'.i, 

s.v::.:l;em or electrical cont;rol, September 22, 1920. No. l,45Uj0(iJ, opt;ical 

111er.hocl for producing p1;1ls:iti11g elecl;ric current, August; G, .ID20. No. 

l,5fi:3,.557, opt;ic:il means for recl.ifying alternating cmnmts, Scpf;cmbcr 

JS; 1!12:3. The Palent Office records ~holl' that :i.11 of f.licse stand in 

the n:1me of Coblentz, but :.ire subject to a. license Lo the United 

St::ttes of Amerie::t. 

August. Hund, ll'ho was an employee or t.he J3111'eau from 1022 to 

Hl27, on the elates mentioned filed :tpplications on which lel.ters patent 

issued: No. l ,G4D,828, met.hod or preparing Piezo-electric plates, September :30, 1925. No. 1,688,713, Piezo-elect,ric-crystal oscillaf;or system, May JO, 1027. No. 1,688,714, Piezo-clccLric-cryst:1l appar:1L11s, 

nfo.y J 2, 1927. No. 1,648,llSD, condenser transmit,f.cr, April JO, 102!:i. 

All of these ·pa f,ent.s arc shown of Tecorcl t;o have been :1ssigned to 

\Vircd H.:1dio, lnc., :1 corporat;ion. 

Paul R .. Heyl :111cl'Lyman .T. Briggs, while employees of the Bureau, 

filed an application .Tamia11' ll, ]!)22, for patent; No. J,G6(l,7.51, 011 

inductor compass, and assigned the same to the Aeronn.ut;ic::d lnstrn" 

ment Company of Pil;tsbu1·gh, Pennsylvania .. 

C. W. Burrows was an employee of the Bureau of Sfi:rnda.rds bet wnen 1 !ll2 and mm. While such employee he filed :ipplica t;io1is. on 

i;hc d:dcs inenlioned fot pal,ent.'l, which were issi10cl: No. 1.:~22,40.5, 

Or;tober 4, . .1917, method ancl apparat;us for testing magnetizable 

objects by mngnet;ic leakage; assigned to Magneti'c Analysis Corporali0n, Long lsl:tncl City, N.Y. No. l,:32D,57S, relay, March J:3, l!HS;. 

exclusive license jss11ed to nlake, use and sell for the field of railway 

sig1i-aling and train control, to Union Switch & Signal Company, 

Swissvale, Pa. No. 1,4.59,970, method of and a.pphraLus for testing 

rnagneLiz:1hle objects, July 2.5, 1917; assigned to M·agnetic Annlysis. 

Corporation, Long Jsl:rncl Cit,y, N.Y. 

John A. Willoughby, :i.n employee of the Bureau of Standards befiwecn 1918 nnd 1922, while so employed, 011 June 26, 1919, :tpplied 

for and was· granted a, pateut, No. 1,555,345, for a loop antenna. 
0 

REF ID:A101383 

196 OCTOBER TERM, 1932. 

Opinion or the Court. 289 U.S. 

United States. The circumstances preclude the implication of any agreement to assign their inventions or 

paten Ls. 

The record affords even less basis for inferring a contract 

on t.he part of the iriventors to refrain from patenting 

their discoveries than for finding an agreement to assign 

them. 

The bills aver that the inventions and patents arc held 

in trust fo1• the United States, a.ncl that the court should 

so declare. It is claimed !;hat as the work of the Bureau, 

including all that Dunmore .a.ncl Lowdl did, was in the 

public in forest, these public servants ha:cl dedicated the 

offspring of their brains to the public, and so held their 

pa.tents in trust for the common weal, represented here 

i11 a corporate capacity by the United States. The pat-

.entecs, we arc told, should surrender the patents for cancellation, and the respondent. must also give up its rights 

under the patents. 

The trust mmnot be express. Every fact in the case 

negatives the existence of one. Nor can it arise ex malefiC'io. The employees' conduct was not fraudulent in any 

1:espect. They promptly disclosed their inventions. Their 

superiors encouraged them to proceed in perfecting and 

applying the discoveries. Their .note books and reports 

disclosed the work they were doing, and there is not a 

syllable to suggest. their use of time or material was 

clandestine or improper. No word was spoken regarding 

any claim of title by the Gove1'nment until after a.pplicati0ns for patents were filed. And, as we have seen, no such 

trust has, been spelJecl out of the relation of master and 

servant, even in the cases whm:e the employee ha.s perfected his invention by the use of his employer's time and 

mate1iials. The cases rccogn1zing the doctrine of shop 

rights may be said to fix a trust upon the c1nployee in 

favor of his master as respects the use of tJ10 invention 
REF ID:A101383 ~--------------~ 

U.S. v. DUBILIER CONDENSER CORP. 197 

178 Opinion of ·1,he Court 

by the latter, but they do not affect the title to the patent 

a.ncl the exclusive rights conferred by it against the public. 

The Government's position in reality is, and must be, 

tJrnt a public policy, t9 be declared by a court, forbids one· 

employed by the United Suites, for scientific research, to 

obtain a patent for what he invents, though neither the 

Constltution nor any statute so declares. 

Where shall the courts set the limits of the doctrine'? 

For, confessedly, it. must be limited. The field of research 

is as broad as tlrnt of science itself. If the petitioner is 

-:--'\ entitled to a cancellation of the patents in this case, 

~,,_j would it be so entitled if the employees had done their 

work a,t home, in their own time and with their .own 

:tppliances and materials'? 'Vhat is to be sa.icl of an invention evolved as the result of the solution of a problem in a 

realm apart from that to which the employee is assigned 

by his offici~tl superiors'? We have seen tha.t the Bureau 

has numerous divisions. It is entirely possible that an 

employee.in one division nrny make an invention falling 

within t.he work of .some other division. Indeed this 

case presents that exact situation, for the inventions in 

question had to do with radio reception, a nmtter assigned 

to :L group of which Dunmore and Lowell were not members. Did the mere fact of their employment by the 

Bureau require these employees to cede to the public 

.:~ every device they might conceive? 

\ ... ..J Is the doctrine to be applied only where the employment is in a burem1 devoted to scientific investiga.tion wo 

bono publico? Unless it is to be so circumscribed, the 

statements of this court in Un:ited States v. Burns, su,pra, 

Solomons v. United States, suvra, and Oill v. United 

States, supra, must be held for na.ugh t. 

Again, wha.t are to be defined as bureaus devoted 

entirely to scientific research? It is common knowledge 

that many in the Department of Agriculture conduct i·e-

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I 

REF ID:Al01383 

198 OCTOBER TERIVI, ] n:n 

Opinion of t,hc Court. 289 U.S. 

searches and investiga.tions; that di visions of the \Var 

and N a.vy Departments do the like; and doubtless thei·e 

are many other bureaus a.ncl sections in va.rious departments of government where employees are set the task 

of solving problems all of which involve more or less of 

science. Shall the field of the scientist be distinguished 

from the art of a. skilled mechanic? Is it conceivable 

that one working on a forrnula.fot· a drug OI' an antiseptic 

in the Department of Agriculture. stands in a. different 

class. from a machinist in an arsenal'? Is the distinction 

to be that where the government. department is, so to 

speak, a business clepadment operating a. business activity 

of the government, the employee has the same rights as 

one in private employment, whereas if his work be for :i 

bureau interested more imrticularly in what may be 

termed scientific research he is upon notice that whatever he invents in the field of activity of the burea.u, 

broadly defined, belongs to the pl!blic and is unpa.ten table'? Illustrations of the difficulties which would attend 

an attempt to define the poEcy for which the Government 

co~1tcnds might be multiplied indefinitely. 

~ - --- The courts· ought not to declare any such policy; its 

forn'lulation belongs solely to the Congress. Will pennission to an employee- to enjoy pa.tent rights as ag[l.inst all 

others ~han the Government tencL to the improvement of 

the public service by a.ttracting a higher class of employees? Is there in fact greater benefit to the people 

1n a dedication to the public of inventions conceived by 

officers of government, than in their expfoita.tion under 

patents by priva.te industry? Should certain classes of invention be treated in one Wa.y and other classes differently'? These are not lega1 questions, which courts are 

competent to answel:. They are practical questions, ancl 

the decision as to what will accomplish the gi·eatest good 

for the inventor, the Government and the public rests 
REF ID:A101383 

U.S. v. DUBILIER CONDENSER CORP. 199 

] 78 Opinion of the Court. 

with the Congress.~.1We should not read into the patent 

Ja.ws limitations and conditions which the legislature has 

not expressed. 

'5 Fourth. Mo1:eover, we aJ·e of opinion Congre8s has approved a policy at variance with the petitioner's contentions~ This is demonstrated by examination of two sta.tutes, with their legislative histo1y, and the hearings and 

clebafos respecting proposed legisla t:io11 which failed of 

passage. 

Since 1883 there has been in force an act'" which 

provides: 

"The Secretary of the Interior [now tlrn Secreta.iy of 

Commerce, Act of February 14, 1903, c. 552, § 12, 32 

Stat. 830] and the Con1111issioncr of Pa.tents are· autho1:-

izecl to grant any officer of the government, except officers 

and employees of the Patent Office, a patent for any invention of the classes mentioned in section. forty eight 

hundred and eighty six of the Revised Sta.lutes, when 

such inyention is used Or to bei used in the public service, 

·without the pa.yment of any fee.: Provided, That the applica.nt in his npplication sha.Jl state that the i11v:ention 

described therein,. if pa.tented, may be used by the gosrernmen t or any of its officers or employees in the pr:osecution of work for the government, or by any ether person 

in the United Sta.tes, without the payment to him of 

~'Lny royalty thereon, which stipulation shn:.Jl be incluclecl 

in the patent." 

This law was evidently ii1tended to encourage govern1ncnt employees to obtain patents, by relie,'.ing them of 

lhe pa.yment of the usual fees. The conclifion upon 

which the privilege was accorded is stated as the grant 

of free use by the go'[crnment, "its. officers or employees 

in the prosecution of work for the government, or by any 

"Act of lVfarch 3, 1883, c. 14:3, 22 Stat. 625. 

.~·. <-:. 

IL._-------~-----------·------------------
0 

0 

REF ID:A101383 

200 OCTOBER TERM., 1932. 

Opinion of the Court. 289 U.S. 

other pers01t in the United States." For some time the 

effect of the italiciz;ecl phrase was a matter of doubt. 

In 1910 ·the Judge Aclvoca.te General of the Army rendered an opinion to the effect that one taking a pa.tent 

pursuant to the a:ct threw his invention "open to public 

and private use in the United States." 13 It was later realized that this view made such a pa.tent a contradiction in 

terms, foi· it secured no exclusive right to anyone. In 

1918 the Judge Advocate Genernl gave a well-reasoned 

opinion 1'

1• holding that if the statute were construed to 

involve a dedication to the public, the so-called patent 

would at most. amount to a publica.tion or prior reference. 

He concluded that the intent of the act was that the free 

use of the imiention extericlecl only to the Government or 

those .doing 'work for it. A similar construction was 

adopted in an opinion of the Attorney General.rn Several federal courts referred to the statute and in dicta 

indicrltccl disagreement with the views expressed in these 

later opinions.'" 

'['he depar.trnents of government; were anxious to have 

the situation cleared, a.nd r:epeateclly requested that the 

act be amended. Pursuant to the recomrnenda.tions of 

the \Var Departme11t an amenclmei1t was enacted April 

30, 1928. 11 The proviso was changed to read: 

"Provided, That the applica.nt in hi's application sha.11 

state that the invention described therein, if pa.tented, 

"See Squier v. Ame1'ican 'l'. <C: 'l'. Co,, 21 F .. (2d) 747, 748. 

11 November 30, 1918.; Opinions of .Judge Advocate General, 1918, 

Vol. 2, p. 1029. 

'" :32 Opinions Attorney General, 145. 10 Sec Squier v. Americfln '!'el. & 'l'cl. Co., 7 F. (2d) 831, 21 F. (2d) 

'747; I1 azrill·ine Corporation v. Electric Scrv.ice Ji:11.gineeri11g Corp., 

1$ F. (2d) 652; Hazeltine Corvora.lion v. A. W. Grebe & Co., 21 F. 

(2d) (i43; Selden Co. v. National Aniline & Chemical Co., 48 F. (2d) 

270. 11 45 Stat. 467, 468. 
0 

0 

REF ID:A101383 

U.S. v. DUBILIER CONDENSER CORP. 201 

178 Opinion of 'the Court. 

may be manufactured or used by or for the Government 

for governmenta.I purposes without the payment to him 

of any royalty .thereon, which stipula.tion shall be included 

jn the patent." 

The legislative history of the amendment clearly discloses the purpose to save to the employee his right to 

exclude the public.18 In the report of the Senate Committee on Pa.tents submitted with the amendment, the 

object of the bill was said to be the protection of the interests of .the· Government, primarily by securing patents 

on inventions ma(le by officel's and employees, presently 

useful in the interest of the national defense or those 

which may prove useful in the intei·est of national defense 

in the future; and secondarily, to encourage the patentl.ng 

of inventions by officers and employees of the Government with the view to future protection of the Government against suits for infringement of patents. The 

committee stated tha.t the bill ha.cl the approval of the 

Commissioner of Patents ahd was introduced at the request of the Secretary of War. Appended to the rep01t 

is a 'copy of a letter of the Secreta.ry of War addressed to 

the committees of both Houses staiing that the language 

of tlrn legislation t.hen existing was susceptible of two interpretations contra.ry to each other. The letter quoted 

the proviso of the se.ction as it then stood, and continued: 

"It is clear that a lit.era.I construction of this proviso 

would work a declica.tion to the public of eve1;y patent 

taken out under the act. If the proviso must be construed literally we would have a. situation wherein all the 

patents taken out under the act would be nullified by the 

'"Report No. 871, 70th Cong., 1st Scss.,. House of Repi·esentatives, 

to accompany H.R. 6103; Report No. 765, 70th Cong., 1st Sess., 

Senate, to accompany H.R. Gld3; Cong. Rec., House of Rcpresentn-

.fiivcs, March Hl, 1928," 70Lh Cong., lst .Sess., p. 5013; Cong. Rec~, 

Senate; A1:>ril 24, 1928, 70th Cong., 1st Sess., p. 7066. 

.... ·~ 

___________________ , ________ -- ---------~--
0 

0 

REF ID:A101383 

202 OCTOBER TERM, 19:32. 

Opinion or the Court. 289 U.S. 

very terms of the act under 'Yhich they were granted, for 

the reason that a. patent which does not carry wit,h it the 

limited monopoly referred to in the Constitution is in 

reality not a pa.tent at all. The only value that a patent 

has is the right that it extends to the patentee to exclude 

all others from making, using, or selling the invention 

for a certain period of years. A patent that is dedicated 

k1 the public is virtually the san1e as a pa.tent that has 

expired." 

After referring to the interpretation of the .Judge Aclvoca.te Genera.I and the Al,t:orney General and mentioning thnt no satisfactory adjudication of the questioa had 

been afforded by the comts, the letter went on to state: 

"Because of the ambiguity referred to and the unsettled condition that has arisen therefrom, it has become 

the policy of the War Department to advise all its personnel who desire to file .applications for letters patent, 

to clo so under the general law ancl pay the required 

patent-office fee in each case." 

And ad cl eel: 

"If the prnpbsecl legislation is enacted into law, Government officers and employees may unhesitatingly avail 

themselv.es of the l'.>enefits of the act with full assunince 

.that. in so doing their patent is not cleclica.tecl to the public 

by opcratio11 of law. The War Department has been 

favoring legislation a.long the lines of the proposed bill 

for the past five or six years." 

\Vhen the bill came up for passage in the House a 

colloquy occurred which clearly clisclosecl the purpose of 

the [l;rncnclrnent. 1a . The intent was that a. government 

"'Co11g. H.eG., 70th Cong., lst; Sess., Vol. 69, Pnrt 5, p. 5013: 

".Mr. L:1C:11ai·dia. Mr. Speaker, reserving the right to object, is not 

1,hc proviso too bro:1cl'? Suppose an employee of the Government invc11ts some improvement which is very valuable, is he compelled to 

~ive the Government. free use of it? 

"lVJ r. Vestal [\\'ho reported t.he bill for Urn Commil;tec and was 

i11 chai'gc of i~], lf he is employed by lhe Oo\'cmmc11(, and lhe i11-
REF ID:A101383 

U.S. v. DUBTLIER COND"GNSEH. CORP. 203 

178 Opinion of 1J1e Court. 

employee who in the course of his ernployrnellt conceives 

an in ven tiou should afford the Govern rnen L free use 

thereof, but should be protected in his right to exclude 

all others. If Dunmore and Lowell, who tendered the 

Goven:llnent a. non-exclusive license without royalty, and 

alw:JYS understood that the Government might use their 

inventions freely, had proceeded under the act of 1883, 

they would have retained their rights as aga.inst all but 

the United States. This is clear from the executive interpretation of the act. But for greater ·securiLy they purr''°' ·sued the very course 1;hcn advised by the law officers of 

U lihe Government. . It would be surprising if they thus 

lost all rights as patentees; especially so, sinc.e Congress 

has now confirmed 1ilrn soundness of the vimvs held. by 

the law officers of the Government. 

0 

ve11tion is made while working in his cnpacit.y ns nn ngcnt. of the 

Government. If Lhe hend of the bureau r;r;rl.ifius i.his invention will 

be used by the dovernment;, thc11 t,he Governrnc11t, of co11rse gl!ls it 

wi thou I; the p:1y111en I; of :rny roya.li.y. 

"1'dr. L:1C:ua,1:dia. The 1;a:111.e 118 a foclory rullf? 

"Mr. Vcst,al. Yes; but lite ·111.11.n who /,u/.:e8 uni. /,/1e 'fJO/,rm./. /rn.1· !t:is 

r;om:m.cnial ri(!hl.8 ot1/.side. 

".Mr. LaGuardia. 011tside of th.r, Cr'ouc1:11.11wui.? 

"l\fr. Vestal. Ye~. 

"l\fr. JJ:1G11a.rdia.. But l;he cust01n is, :rnd · wil;ho11I; lhis bill; the 

C:overnmcnl; has the right; to the use of I.he improvement; without payment if it is invented in Government, t.imc :111cl in Governmcnl, work. 

"l\1r. Vestal,. Thal. is corrcd.; and then 011 top of t.h:1L, mny I s:1y 

1,hat a numl)er of insl.a11ces h:wc occurred ll'hr:rc :i-11 employee of t.he 

C:overnme1it., in'st.e:1d of t.aking out. a patent; had some u11e el:=:e take 

nut the paten!; and the Government has been involved in :i number 

of suil.s. There is .now $<500,000,000 worth of such cfaims in the 

Court;_ of Cl:1ims." 

It. 1i,ill be noted from the last; statmnen(; of l:he .ge11llcuu11 i11 charg<~ 

of Lhc bill tha I, Congress was concerned with q11cst;ions of policy in t.he 

adoption of the :Hnchdmcnt. These, as suited :ibovc, arc questions 

of business poli1;y a11d business judgmcnL-what, is l;o the bc~t advan1.age of 1.he Govcrn1ne11L and the public. They arc nol; (1ucst;io11s :1s to 

which Lhc courts oughL to i11vadc lhc province ur l11c· Co11grcs~. 

•••• rr.. 

I 

( 

I 

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0 

I 0 

I 

·' 

'' 

REF ID:Al01383 

204 OCTOBER TERM, 19:32. 

Opinion of Llie C()urt;, 289 U.S .. 

Until the year 1910 the Court of C1aims was without 

jurisdiction to award cornpensation to the owner of a 

patent for unauthorized use by the. United. States or its 

agents. Its power extended only to the tria.l of claims 

based upon an express or implied contract for such use." 0 

In that year Congress enlarged the jui·isdiction to ,embrace the fon:ner class of clairns.~ 1 In giving consent to 

be sued, the restriction was imposed that it should not 

extend to owners of patents obtained by employees of the 

Govei'nment while in the service. From this it is inferred that Congress recognized no right in such patentees 

to exclude the public from practicing the invention. But 

"~Sec Belk1u171 v. Schild, l!il U.S. 10, 16; Eager v. Unilcd States, 

35 Gt. Cls. 556. 21 Act, of .lune 25, 1!)10, .'36 Stnt. 851: (Sec Crozier v. Krupp, 224 

U.S .. 200.) 

"'l1hat. whcnc1'.cr nn invention described in and covered by :t 

pntcnt of the United States shall hereafter be used by l.!10 United 

States without; liucnsc of .the o.11:ncr thereof or lawfit.l i·if!ht to use the 

so.·11w. such owner may recover rcnsonablc compensat.ion for such use 

by suit in t,ho Court of Claims: Provfrled, huwcvcr, That said Court of 

Cfaims sh:11l not entertain a .suit; or reward [sic] ,compensation under 

t.hc provisions of i.his Act where the claim for compensation is based 

on the use by Lhe United St;ates of :my article heretofore owned, lea.sed, 

used by, or in the possession of t.hc United States: Provided f11rlhcr, 

Thnt in any s11ch suit the United States ma:y avail itself of ~iny a.ncl 

:11! defenses, general or s11ccial, which might be pleaded by a. defendant in an act.ion for infringement, as set fort,h in TiUe Sixt,}· of the 

Revised Stat11t.cs, or otherwise: And provided. further, Th:tL the benefits of this Act shall not inure to any patci\tcc, who, when he makes 

such claim is in the em1?loymcnt or service of t.he C:ovc;·nment of the 

United States; or the assignee of any such patentee; nor shall this 

Act apply to any device discovered or invented by such employee 

during the time of .his employment or service.~' 

The Act was amended in respects immaterial to the present question, July 1, 1918, 40 Stat. 705. See Willicnn Crmnv & Sons Cu. v. 

Curtis 'Piwbine Co., 246 U.S. 28; llic.hmond Screw Anchor Co. v. 

United 8lat1:.~. 275 U.S. 3:31, 343. As amended it appears in U .S.C., 

Tit. 35, § 68. 
' . 

() 

REF ID:A101383 

U.S. v. DUBILIER CONDENSElt CORP. 205 

178 Opinion of the Court. 

an examination of the legisla.tive record completely refutes the contention. 

The House Committee in reporting the bill, after referring to the law as laid down in the ·Solomons case, sa.id: 

"The United Sta·tes in such a. case has an implied license 

to use the patent without compensa.tion, for the reason 

that the inventor used the time or. the money or the material of the United States in perfecting his )nvention. 

The use by t,110 United States of such a patented invention 

wit;hout any authority frorn the owner thereof is a. lawful 

use under existing law, and we have inserted the words 

'or lawful right to use the same' in order to ma.kc it plain 

tha.t. \VC do not inte1id to make .any ch::wge in existing 

law in this respect,. and do not intend to give the owner of 

such a patent a.ny claim aga.inst the United Sta .tes for its 

use." 22 From this it is cle~w tha.t Congress had no purpose to declare a policy at va·riance with the decisions of 

this court. 

The execl!tive clepa.rtments ha.ve advoca.t.ecl legislation 

regulating the taking of patents by government employees 

and the administration by government agencies of the 

patents so obtained. In 1919 and 1920 a bill sponsored 

by the Interior Department was introduced. It provided 

for the voluntary assignment or license by any governrnen t employee, to the Federal Tracie Commission, of a 

patent applied for by him, and the licensing of manufacturers by the Commission, the license fees to be paid into 

the Treasury and such part of them as the President 

might deem equitable to b'e turned over to the patentee. 23 

In the hearings. and reports upon this measure stress was 

laid not only upon the fact that action by an employee 

thereunder would be voluntary, but that the inventor 

would be protected at least to som·e extent in his private 

"House Report 1288, 61st Cong., 2cl .Sess. 

""S. 5265, 65th Cong. 3cl Sess.; S. 3223, 66th Cong., 2cl Scss.; 

H.H. 9932, 66th Cong., 2d Sess.; H.R. 11984, 66th Cong., :3d Sess. 

•" • • ~ "• I 
0 

0 

REF ID:A101383 

20() OCTOBER TERM, 1932. 

Opinion of t,he Court. 289 U.S. 

right of exclusion. It was recognized that the Government could not compel an assignment, was incapable of 

taking such assignment or administering the pa.tent, a.ncl 

that it bad shop-rights in a, patent perfected by the use of 

government material and in government working time. 

Not;hing contained in the bill itself or·in the hemings or 

reports inclica.tes any intent; to change the existing and 

well understood rights "of government employees who obtain patents for their inventions made while in the ser·vice. 

The measure failed of passage. 

In 1923 the President sent to t.he Congress the report 

0f an interdepartmental patents-board created by executive order to study the question of patents within the 

government service and to recommend regulations establishing a policy to be followed in respect thereof. The 

report adverted to the fact that in the absence of a. con~ 

tract providing otherwise a pa.tent taken out by a government employee, and any invention developed by one 

in the public service, is the sole property of the inventor . 

. The .committee recommended strongly against public 

dedica.tion of such an invention, saying that this in effect 

voids a patent, and, if this were not so, "there is little 

incentive for a.nyone to take up a patent and spend time, 

effort, am! money ... oh its commercial development 

wiLhout at least some measure of protection against 

others free to take the patent as developed by him and 

compete in its use. In such a case one of the chief objects of the patent law would be defeated." 2

·

1 In full 

accord is the statement on behalf of the Department of 

the Interior in a memorandun\ furnished with respoct to 

the bill introduced in 1919. 26 

With respect to a po1icy of permitting the patentee to 

take a patent and control it in his own interest (subject, 

"Sen. Doc. No. 83', 68th Cong., 1st Sess., p. 3. 

''"Hearings, Senate Patent; Committee, 66th Cong., 2d Sess., .January 23, 1920, p. 11. 

...__ _______ - ---------
() 

REF ID:A101383 

U.S. v. DUBILTER CONDENSER CORP. 207 

178 Opinion of 1he Court .. 

• 

of course, to Ure Government's right of use, if :u1y) the 

committee said : l 

" ... it must not be lost sight of that in general 

it is the constitutional right of every patentee to exploit 

his patent as he may desire, however expedient it may ' 

appear to endeavor to modify this right in the interest 

of the public when the patentee is in the Government 

service." 20 

Concerning a requirement Llrnt all patents obtajnecl by 

government employees be assigned to the United States 

or its agent, the committee said: 

" ... it would, on the one hand, render difficult securing the best so1't of technical men for the service and, 

·on the other, would influence technical workers to resign 

in order to exploit inventions which they might evolve 

and suppress while still in the service. There has always \ 

l;>een more or less of .a tendency for able men in the 

service to do this, particula.rly in view of the comparative meagen1ess of Government salaries; thus the Government has suffered loss among its most capable class 

of workers." 21 

The committee recommended legislation to create an 

In terclepart;men tal Paten ts Board; and further that the 

la.w make it part of the express terms of en:iployment, 

having the effect of a contract, that any patent application made or patent granted for an invention clisc9verecl 

or developed during the period of government service a.ncl 

incident to the line of officia1 clutie~, which ill the judgment of the board should, in the interest of the national 

defense, or otherwise in the public. interest, be controlled 

by the Government, should upon demand by the board 

be assigned by the employee to an agent of the Gov.ernment. The recommended measures were not adopted. 

,., Sen . .Doc. No. S:3, 6Sth Cong., lst Sess., }l. :3. 

"'/lJid., p. 4. 

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' .-··"" 
0 

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REF ID:Al01383 

208 OCTOBER TERM, 1932. 

Opinion of the Court. 289 U.S. 

Fifth. Congress has refrained from imposing upon 

government servants a contract obligation of the sort 

above described. At least one department has attempted 

to do so by regulation.~8 Since the record in this. case 

discloses that the Bureau of Standards had no such regulation, 1t is unnecessary to consider whethe1· the. va,rious 

departments have power to impose such a contract upon 

employees without authorization by act of Cong1~ess. 

The question is more difficult under our form of government than under that of Grea,t Brihtin, where such departmental rcgula,Lions seem to ,settle the rnatter. 20 

All of this legisla.tive history emphasizes what we have 

stated-that the courts are incompetent to answer the 

difficult question wheLher the pa.tentee is to be allowed 

his exclusive right or cornpellecl to dedicate his invention 

to the public. I~ is si.1ggestecl. that .the election rests with 

the :wthoritative officers of the Government. Under 

what power, express or implied, may such officers, by administrative fiat, determine the nature and extent of 

rights exercised under a charter grantee! a patentee pursuant to constit,utional and legisla;tive provisions? Apa.rt 

from the fact that express auth01'1.ty 'is nowhere to be 

found, the question arises, who are the authoritative officers whose determination shall bind the United States 

and the patentee? The Government's position· comes to 

this-that the courts may not reexamine the exercise of 

an authority by some officer, not named, purporting to 

deprive the patentee of the rights conferred upon him 

by law; Nothing would be settled by such .a holding, 

except that the cleter.mina.tion of the. reciprocal rights and 

obligations of the Governmet1t a.nd it~ employee a.$ re-

""See Annual Report; Depa rtmcn t of Agriculture, for 1907, p. 775. 

See Selden Co. v. National Aniline &: Chemical Co., 48 F. (2cl) 

270, 27:3. 

""Queen's Jlcgulawons (Addenda 1895, 1st February); Ch. 11 

Instructions for Oflicers in General, pp. 15-16.. 
0. '· .... , 

REF ID:A101383 

U.S. v. DUBILIER CONDENSER CORP. 209 

178 ST0N1,, J., dissenting. 

spects inventions are to be acljudi.ca.tecl, without review, 

by an unspecified department head or bureau chief. 

Hitherto both the executive and the legisJa.t.ive branches 

of the Government have concurred in what we consider 

the cor.rect view,-tha.t any such declaration of policy 

must come from Congress a.ncl that no power to declare 

it is vested in administrative officers .. 

The decrees are Affirmed. 

l\1H. JusTIGE S·roNE, dissenting. 

I think the decrees should be reversed. 

The Court's conclusion that the employment of Dunmore and Lowell did not contemplate that they should 

exercise inventive faculties in their service to the government, and that both courts below so found, seems to 

render superfluous much that is said in the opinion. For 

it has not been contended, and I certainly do not contend, 

that if such. "'ere the fact there would be any fou nclaLion 

fbr the claim asserted by the government. But I t,hink 

tJrn record does not support the Court's conclusion of 

fact. I am also unable to agref! wiLh the reasoning of the 

opinion, although on my view of the facts it woLJlcl lead 

to the reversal of the decree below. which I fa.vor. 1

When originally organized 1 as ~subdivision of the Department of Commerce, the functions of l.he Bureau of 

Standards consisted principally of Lhe custody, comparison, construction, testing and c::i.libraLion of standards ancl 

the solution of problems arising in connection with standards. But in the course of its investigation of st_anclarcls 

of quality and performance it has gra:cluaUy expanded into 

a laboratory for research of the broadest cluwactcr in 

va.rious branches ()f science and industry and particularly 

1 Act. or March 3, 1901, 31 SLat. 1449; A:ct of February 14, 1903, 

§ 4, :32 Stat. 825, 820. For an account or t.he origin and development, oT I.he Bureau and its predecessor, sec Weber, The Bureau or 

St.andards, 1-75. 

Hi450°-aa-H 

.... =-t 

.. I 
0 

•l·. ' . 

REF ID:A101383 

210 OCTOBER TERM, 1932. 

STONE, J., dissenting. 289 U.S. 

in the field of engineering.~ \Vork of this nature is carried on for other government clepartments,3 the general 

p\1blic 4 and private industries." It is almost entirely 

supported by public funds/' and is maintained in the pub· 

2 Much of the expansion of the Bureau's :lctivities in this· direction 

took place during t,he wft.r. See Aunual Rcpor1; of the Director, 

Bureau of St;andards, for 1019, p. 25; War Work of the Bureau of 

St.::t11df1rds (}!)21), Misc. Public:it;ions of the Bureau of St.andatds No. 

•IG. The scope of f,he Burcau'ss<!icntific work is reve:·ilecl by the annual 

rcport5 .of the Dircetor. See also t;he bibliography of Bureau publications for the years 1901-l!J25, Circular of the Bureau of Strn1dards 

No. 24 (1925). 

•The Act, of .1\fa.y 29, 1920, 41 Stat;. (i:_n, 6831 684, permit;tcd other 

departments to t.ransfcr funds to t,hc J3\1rcau of Strn1dards for such 

puq)oscs, t.hough even before I.hat t;ime it was one of the 1n:1jor 

functions of the Bureau to be of assist;ance to other branches of 1.hc 

service. Sec e.g. Annual Reports of the Director for 1915, 1916, 

1917, p. 16'; Annual Report for 1918,. p. 18; compare Annual Report 

for 1921, p. 2.5; for 1922, p. 10. 

•The consuming public is direct;ly benefited not only by the 

Burea11~s work in improving the standards of quality and pcrformanQc of industry, but, also by the assistance "'hich it lends to governmental bodies, sf;at;e and city. See Ann11:1l H.eport,s of the. Director 

for HH5, 19Hi, 1917,, p. 14; Annual Jleport for 1918, p. rn; National 

Bmcau of Standards, Tts Fimctions ,and Ac1;ivity, Circula.r of the 

Bmcau of St;ai1dards, No. 1 (Hl25), pp. 28, :33. 

° Co<.iper;ll.ion \yith private indusf,ry has beei1 the major method 

relied upon to nh1ke t;he ~1ccomplishments of the Bureau clfoctive. 

Seo Annual Report for 1922, p. 7; Ann11nl Report for 1923~ p. 3. A 

system of research nssociates permits indust,rial groups. to maintain 

then n.t t,he Burc~tll for r.esea.I"ch of mutual concern. The plan has 

facilit:Lted coopernt;ion. See Anm1al Jleport for 1923,. p. 4; Annual 

Report for 1924, p. 35; Annual' Heport for 1925, p. 38J Annun.1 Rcriorts for J92G, 1\J28, HJ29, rn:3l, rn:3f.!, p. l; H.ese:uch Associates nt 

'the 13urC:lu of Standards, Hureau Circ1il:ir No. 296 ( 1926). For :1 

list; of cooperating organizations as of December 1, 1926, .see Misc. 

Publicatiions No. !16 (Hl27). 0 No fees h:Lve beei\ charged except to cover. I.he cost of t,est,ing, but 

the Act of .June :30, 1932, c. 314, § :312, 47 St::i'.t. 410, directs t,hat "for 

:Lil c01i1parismis, calibrntions, tests .or invest,igations, performed '' by 

the Bureau except those performed for lhe Go:venunent of lhe :United 
() 

REF ID:A101383 

U.S. v. DUBILIER CONDENSER CORP. 211 

178 STONE, .J., clissemmg. 

lie interest. In 1915, as the impo1iance of radio to the 

governm~nt and to the public increased, Congress approp1"1ated funds 1 to the Bureau " for investiga.tion and 

standardization of methods and instruments employed in 

radio communication." Sirniln.r an nu al appropriations 

.have been made since and public funds were allotted by 

Acts of July 1, 1916, c. 209, 39 Stat. 262, 324 and October 

6, 1917, c. 79, 40 Sta.t. 345, 375, for the constrnction of a 

fireproof laboratory building " to provide additional space 

to be used for research and testing in radio cominunication," as well as "space and faciljties for coopera.tive research and experimental work in radio communication" 

by other departments of the government. Thus, the cone! uct of research and scientific investigation in t.he field of 

radio has been a. duty imposed by law upon the Bureau of 

Standa..rds since 1915. 

Radio research has been conducted in the Radio Section of the Electric Division of the Bureau. In 1921 and 

1922, ·when Dunmore and Lowell made the inventi'ons in 

controversy, they were employed in this section as members of the scientific sta.f:I. They were not, of course, 

engaged to invent; in the sense in which a ca.rpenter is 

employed to build a. chest, but they were employed to 

conduct scientific investigations in a laboratory devoted 

principally to appljed rather than pure science with full 

knowledge a.ncl expectation of all concerned th::vt their 

investigations might normally lead, as they did, to invention. The Bureau was as much devotee! to. the advancement of the radio art by invention as by discovery which 

falls short of it. Hence, invention i'n .the field of radio 

was a goal intirna.tely related t.o and embraced within the 

purposes of the work of the scientific spaff. 

Stn.tes or a State, "a fee sufficient in each case to compcnsa te t.he .... 

.Bureau ... for the ent.irc cost of 1ihe services rendered shall be 

charged .... ~' . 

'Act of March ~' i915, e. -141, 38 Stat. 997, 1044. 

' ..... -~ 

----___ ___j.__ __ 
, I 

0 

d 

L . 

I 

. ,~ -

REF ID:A101383 

212 OCTOBER TERM, 1932. 

81'0NB, ,J., clisscnt;i11g. 289 U.S. 

Both courts below found that Dunmore and Lowell 

weFe impelled to make these inventions "solely by their 

own scientific curiosity." They undoubtedly proceeded 

upon their own initiative beyond the specific problems 

upon which they were authorized or chrectecl to work by 

their superiors in the Bureau, who did not activ.ely supervise their work in its inventive stages. But the evidence 

leaves no doubt tha.t in an they did tihey were following 

the established. practice of the Section. For members of 

the research staff were expected a.ncl encouraged to follow 

their own scientific _impulses in pursuing their researches 

and discoveries to the point of useful applica.tion, whether 

they involved invention or not,. and even though they did 

not vela.le to the immediate pi·oblem in hand. After the 

inventions had been c011ceivecl they were disclosed by the 

inventors to their chief and they devoted considerable 

tirne to perfecting them, with his express approval. All 

the work was carrie.cl on by them in the government laboral.ory with the use of government materials and facilities, during the hours for \\\hieh they received a government; salary. Its progress was reccn•decl throughout in 

weekly nnd monthly reports which they were required to 

file, [~S well. as in their laboratory notebooks. It seems 

clear that in thus exercising their inventive powers .in the 

purs.liit of ideas reaching beyond their Sf)ecific assignments) the i11ventors were discharging the duties expected 

of scien.tists employed in the lab01~a.tory; Dunmore as well 

as his supervisors, testified tha:t such was their conception 

of the nature of the work. The conclusion is iri·esistible 

that thei1: scientific curiosity was precisely what gave the 

inventors value as reseai•ch workers; the government employed it and gave it free rein in performing the broad 

duty of the Bureau of advancing the radio art by discovery and invention. 

The courts below did .not find that there was any .agreement between the government and. the inventors as to 
.() ....... 

\ 

REF ID:A101383 

U.S. v . .DUBTLIER CON.DENSE.R COHP. 213 

178 S'i'C>NE, .I., disscnt;i11g. 

their relative rights in the patents tuid there was no evidence to support such a finding. They did not find, and 

upon the facts in evidence and within the range of judicial notice, they could not find thn.t the work done by 

Dunmore and Lowell leading to the inventions in controversy was not within the scope of their crnployrnent. 

Such a finding was unnecessary to support the decisions 

below, which proceeded on the theory relied on by t.hc respondent here, that in the absence of an express contract 

'to assign it, an employer is entitled to the full benefit of 

the patent granted to an employee, only when it is for 

a, particular invention which tl1c employee was specifically hired or clircctecl to make. The bare references by 

the comt below to the obvious facts that "research " and 

" in vcntioi1 " are ·not synonymous, and tha.t a 11 research 

work in the Bmeau is not concerned with invention, fa:ll 

far short of a fi11cling that the work in the .Bureau clicl not 

c011template invention at all. Those references were directed to a different encl, to the establishment of what 

is conceded here, that Dunmore and Lowell were not spec£flcally hired or directed to make l;he inventions because 

in doing so they proceeded beyond the assign men ts given 

them by their superiors. .The court's conception of the 

lnw, applied to this ultimate fact, led inevitabl'y to its 

st.atccl conciusion that the claim of the government is 

without support in reason or authority "unless we should 

r~ regard a. gm1cral c1.nployrncnt for rcsea.rch wor.'k as synony-

\__j 11roils with a particular employment (or assign men L) for 

inventive work." 

The opinion of this Court apparently rejects the· distinction between specific employment or ~lssignment and 

general employment to invent, adopted by the comt IJ,clow and supported by authority, in favor of the broade1• 

positim'l urged by the government that wherever the 

employee's duties involve the exercise· of inventive powers, the employer is entitled to an assignment of the pat-

._:J -------------~----~-· _.... . 

=-----------~....,-~~~-
~,;sq .. 

0 

REF ID:A101383 

214 OCTOBER TERM, 19:32. 

STONE, .J., disscnt.i'ng. 280 U.S. 

mH on any invention rn:icle in the scope of the general 

employment. As I view the facts, I think such a n:1le, 

to which t,h·is Court has not hitherto given explicit support, would require a decree in favor of the governn1ent. 

lt would also require a decree in favor of a privalic employer, on the ground stated by the coul't that as the employee "has only produced what he is ernployecr to invent," a specifically enfHrcible "term of t.lw agreement 

necessarily is that what he is paid to produce belongs to 

his paymaster." A theory of decision so rnechanicaJ is 

not forced upon us by precedent and cannot, l thinl~, be 

su pportecl. 

·what the erl1ployee agrees to assign to fois employer is 

always a. question of fact. It~ cannot be said tha.t merely 

because an employee agrees to invent, he also agrees to 

assign a,ny pa.tent secured for the invention. Accordingly, if an assignment is ordered in such a case it is no 

more to be explained and supported as the specific enforccmerlt of an agreement to trai1sfer property in the 

patent than is the shop-right. which equity likewise decrees, 

where the employment does not contemplate invention. 

All !;he varying and conflicting language of the books 

cannot obscure the reality that in any case where the 

rights of the efnployer to t.he invention are not fixed by 

express contract, and no agre.ement in fact i:nay fairly 

be implied, equity determines a.ft.er the event what they 

shall be. In thus adjudicating in inv1:tmn the consequences of the employment, rel:i.tJonship, equity must 

reooiteile the conHictlng clairn.s of the employee wh0 has 

evolved the idea and the employer who has paid him for 

his time and supplied the nrnterials utilized in experin1en· 

tation and construction. A task so clelica.te cannot be 

performed by accepting tJrn formula advanced by the petitioner a.ny more than by adopting that urged by the 

respondent, tho.ugh both are not without support in the 
r~·~ 

\....._/ 

0 

REF ID:A101383 

U.S. v, DUBTLIER CONDENSER CORP. 215 

178 

opinions of this Court. Compare Hcip(;ood v .. HewiU, 

119 U.S. 226; Dalzell v. Dneber Mfg. Co., 149 U.S. ·3l:j; 

Solom.ons v. Un:ited Slciles, 137 U.S. 342, 346; G-ill, v. 

Un1:ted Stnles, 160 U.S. 426, 435; Standard Parts Co. v. 

Peck, 264 U.S. 52. 

Where th1~ ernployrncnt docs not contemplate the exercise of inventive talent f;hc poliey of the pa.Lent laws to 

sf;irnulat.e invcntir0n by ~nvarding Lhe benefits. of the monopoly t.o the invento1· n.nr:I not: to sorneoue else leads t.o a 

ready compromise: a shop-right gives the employer an 

adequate share in the unant.icipatecl boon. 8 HcqJgood v. 

Hewitt, su7Jra.; Lane & Bodley Co. v. Doc/;;e, 150 U.S. 193; 

Dalzell v. Dueber 111/rJ. Co., supra.; Pressed Steel Car Co. 

y. H a.nsen, 137 FccL 403; A,,111.dyco Cor]J. v. Ur(j11Jwrl, '39 

F, (2cl) 943, aff'cl 51 F. (2cl) 1072; fnr;le v. Landis Tool 

Co., 272 Feel. 464; sec Beecroft & Blackm.mi v. Rooney, 

268 Feel. 545, 549~ 

I 

But where, as in this case, the employment contemplates 

invention, the adequacy of s_uch a. compromise is mo1;c 

doubtful not because iJ contravenes an agreement for an 

assignment, which ma.y not exist1 but because, arguably, 

as the patent is the frt1it of the very work which the employee is hired to do and for which he is paid, it should 

no more be withheld from the employ.er, in equity and 

good conscience, than the product of any other service 

which the employee engages to render. This result has 

been reached where the contract was to devise a means 

for solving a defined problem, 8t(wula:rd Parts Co .. v. Peck, 

....... r I 

- su,pra., and the deci'13ion has beef1 thought to establish the 

employer's right wherever the employee is hired or assigned to evolve a, process or mechanism for meeting a 

specific need. Magnetic 1l1fg.. Co. v. Dh1.gs 11ia.unet1:c 

Separator Co., 16 F. (2d) 739; Goodyear Tire & R.vhber 

•Sec the cnscs c;ollcClcd in ~m Columbia ],,aw Rev. l l 72; :rn H:1 rn1 rd 

La \1' Rev. 4GS. 

------ --~--- - - ----- ..~ pd 
I ' 

', 

i 

REF ID:A101383 

216 OCTOBER TERM, 1D32. 

STONE, .J., dissen11ing. 289 U.S, 

Co. v. Miller, 22 F. (2cl) :353, 356; Houghton v. United 

States, 23 F. (2cl) 386. But the court below and others 

have thought (Pressed Steel Car Co. v. Hansen, supra.; 

Ho'tlghton v. United States, wpra; 1bndyco Corp. v. Urquhart, supra), as the respondent argues, tha.t only in cases 

where the employment or assignment is thus specific may 

the employer demand all the benefits of the employee's 

invention. The basis of such a limitation is not articulate 

in the cases. There is at ieast a: question whether its 

applicatioil may not be attributed, in some instances, to 

the readier implication of an actual promise to assign the 

pa.tent, where the duty is to invent a specific thing (see 

Pressed Steel Co.r Co. v. Ha.nsen, supra, 415), or, in any 

case, to the reluctance of equity logically to extend, in 

this field, the principle that the right to claim the service 

includes the right to claim its product. The latter alternative may find support in the policy of the patent laws 

to secure to the inventor the fruits of his inventive genius, 

in the hardship which may be involved in imposing a duty 

to assign all inventions, see Dalzell v. Dueber Mfg. Co., 

su7Jra, 323, cf. Aspinwall 111/ g. Co. v. Gill, 32 Feel. 697, 

700, and in a possible inequality in bargaining power of 

employer and employee. But compare Goodyear 'l'fre & 

Rubber Co. v~ JJ!lill'cr, SU]Jiti, 3.55; 1-folse v. Bons~ck Mach. 

Co;, 65 Feel. 864, 868; see .30 Columbia Law Rev. 1172, 

1176-8. There is no reason for cleten'nining now Lhe 

weight which should be accorded these objections to complete control of the invention by the employer, in cases 

of ordinary emplqyment for private purposes. Once it 

is 1:ecognizecl, as it rnust be, that the function of the 

Court in every case is to determine whether the employee 

may, in equity a.ncl good conscience retain the benefits of 

the patent, it is. apparent tlrn.t the present case turns upon 

considerations which distinguish it frorn any which has 

th us far been cleciclecl. 
~ 

u 

REF ID:A101383 

U.S. v. DUBILlER CONDENSER CORP. 217 

J78 &rONM, .J., di~scn!.ing. 

The inventors were not only employed to engage in 

work which unmistakably required them to exercise their 

inventive genius as occasion arose; they were a ptirt or a 

public enterprise. It was devoted to the improverne11t of 

the art of radio commu nicRtion for the benefit of the 

people of the United States, carried on in a government 

laboratory, maintained by public funds. Considerations 

which might favor the employee where the interest of 

the employer is only in private,gain are therefore of slight 

significance; the policy doniinating the research in the 

Bureau, as the :inventors knew; was that of the government to further the interests of the public by advancing 

the radio art. For the work to be successful, the government must be free to use the results for the benefit of 

the public in the most effective way. A patent monopoly 

in lndiyidual employees, carrying with it the power to 

suppress the invention, or at least to exclude others from 

using it, would destroy this freedom; a shop-right in the 

government \voulcl not confer it. For these employees, in 

the circumstances, to attempt to withhold from the public and from the government the full benefit; of the inventions which it has paid them to produce, appears to 

me so unconscionable and inequitable as to demand the 

interposition of a, court exer:cising chancery powers. A 

court which habitually enjoins a mortgagor fron'l. acquiring and setting up a. tax title adversely to the mortgagee, 

Middletown Savi11,gs Bankv. Bacharach, 46·ComL513, 524; 

Cha:mberlain v. Fo.rbes, 126 Mich. 86; 85 N.W. 253; 

Wan:ng v. Nat'i"onal Sav:ings & 'l'rusl Co., 138 JVIcl. 36i; 

114 Atl. 57; see 2 Jones on Mortg<.tges (8th eel.), § 841, 

should find no difficulty in enjoining these ernployees and 

the respondent claiming under them from asserting, under 

the patent laws, rights -which wot!Icl defea.t the very object of their employment. The capacity of equitable doctrine for growth and of courts of-equity to n10ulcl it to 

... ,. ~ 

.· 
0 

REF ID:A101383 

218 OCTOBER TERM, 1932. 

STONE, .L, dissei1ting;. 289U:S .. 

new situations, was not exhausted with the establishment 

of the employer's shop-right. See Essex Trust Co, v. Enwrig/tl-, 214 Mass. 507; 102 N.E. 441; 111.e'irihard v. Salm.on, 249 N.Y. 458; 164 N.E. 545. 

Jf1 in tb.e a.p1)ljca.tion of familiar principles to the situaticin presen tecl here, we must advance somewhat beyond 

the decided cases, I see nothing revolutionary in the step. 

We need noli be cleterl'ed by fear of the necessity, inescapable in the development of the law, of setting limjts to 

the doctrine we apply, as the nee.cl arises. That Pl'Ospect 

does no.t require us to shut our eyes to the -obvious con., 

sequences of the decree which has been rendered here. 

The result is repugnant to common notions -of justice and 

to policy as well, and the case must turn upon these considerations if we abamlon the illusion Lhat equi.ty is ca.lied 

upon merely to enforce a. contract, albeit, one that is 

"implied." The case would be more dramatic if the inven.ti'ons pmducecl at public expense were important to 

fhe preserva.tion of human life, or the public health, or 

the agricultural resources. of the country. The principle 

is foe same here, though th.e in ven Lions a.re of importa.11ce 

only in the furtherance of human happiness. In enlisting their scientific talent ancl cu riosit,y in the performance 

of the public service in which t.he Bureau was engaged, 

Dunmore a.ncl Lowell necessarily renounced Lhe prospect 

of deriving from their work commercial rewards incompatible with it.'' Hei1ce, there is nothing oppressive or 

•It h:is been s~1.id 'tha.t, many scien1,ists in the employ of the governnum t reg:Hil the acceptance of paLent. rights lea.ding; t.o commercial 

rewards in :iny case as'. au abasement, of their work. Hearings on Ex-

. ploit:ition of Inventions by Government El11ployees, Senate Committee 

011 Patents, G5Lh Cong., :3d Sess. (Hl19), pp. Hi, 17; see also t,hc 

Hearings before Lhe same Committee, January 23, 1920, 66th Cong., 

2d Sess. (l !120), p. 5. The opinion of tJ1e Court at;tributes importance to t,he fact, seemi'ngly irrelevant, that other employees of the 

Bure_au h:ive iu some iusta11ces in the past taken out patents on their 
CJ 

REF ID:Al01383 

U:S. v. DUBILIER CONDENSER CORP. 219 

.178 STONE, ·~ .. di;;sent.ing . 

unconscionable in requiring them or their licensee to surrend'er their pa.tents at the instance of the United States, 

as there probably would be if the inventions had not been 

rnacle wjt;hin the scope of their ernployment or i'f the employment did not con tern plate irtventjon at all. 

The issue raised here is unafTected by legislation. Undoubtedly the power rests with Congress to enact n. rule 

of decision for determining the ownership nrn:I control of 

patents on inventions made by government; employees in 

the course of their employment. But I find no basis for 

sa.y.ing that Congress 11as clone so or that it has manifested 

any affirmative policy for the disposition of cases of this 

kind, which is at vaifance with the considerations which 

a'r.·e con trolling here. 

The Act of June 25, 1910, 36 Stat. SM, ns amended 

July 1, l9:J-8, 4.0 Stat. 704, 705, permitted pa.tent;ees Lo sue 

t;be government in the Court of Claims for the urnLuthorizecl u~e of their pat;ents. It wa~ in effect an eminent 

dorna.in statute by which just compensation wa:s secured 

to the patentee, whose pa.tent had been used by the government.. See R1:chmond Screw 1tnchor Co. v .. Un;iled 

Slates, 275 U.S. 331. This statute excluded government 

employees from the benefits of the Act in order, as the 

House Committee Report explicitly poil1ts out, to le::i.ve 

unaff ectecl the shop-rights of the government. See H.ll. 

Report No. 1288, Glst Cong. 3cl Sess. A sta()ut;e th.i.1s 

innmti·ons which, so f:ir as appears, 1,he government; hns not, prevented 

i,hcm from cnjoyin);.. The ein;umsl:a:nces under ll"hich those im'cnt;ions were made do not. appear. But even if I.hey \\'ere 'the same as 

I.hose in t.be present case there is no b::isis for contending t.hat; bcca11sc 

1,hc g_overnrnent stiw fit not to assert. its 1:igbts in other c:ises it, has 

lost them in I.his. 1\foreover, there is 110 uecessary incol1l3istcncy, in 

t.he governmenL's posit.ion if if, conel11ded in t.hosc cases that, the 

public interest; would he ~crved best, by pern1it:t,ing I.he employees 

to exploit their invenCions themselves, .and adopi.ecl a eontra.ry 

conclusion here. 

•' ad 
0 

REF ID:A101383 

220 OCTOBER TERM, 1932. 

SToNi.;, .J., dissenting. 28!J U.S. 

aimed a.t protecting in every case the minirnum rights of 

the government can hardly be taken to deny other and 

greater rights growing out of the special equity of cases 

like the present. 

The Act of April 30, 1928, 45 Stat. 467, 468, amending 

an earlier statute of 1883 (22 Stat. 625), so as to permit 

a, patent to be issued to a. government employee without; 

payment of fees, for any invention which the head of a 

department or independent bureau certifies "is used or 

liable to be used in the public service," and which the 

application specifics may, if pa.tented, "be 1nanufacturecl 

and used by or for the Government for governmental purposes without the payment of ... any royalty/' was 

passed, it is true, with the general purpose of encouraging 

government employees to take out patents on their inventions. But this purpose was not, as the opin~on of the 

Court suggests, born of a Congressional intent that a 

government. employee who conc(!ives an invention in the 

course of his emplo)rment should he protected in his 

right to exclude all others but the government from using 

it. Congress was concerned neither with enlai~ging nor 

with narrowing the relative rights of the government and 

its employees.to This is apparent from the language of 

the· statute that the patent shall be issued without a fee 

"subject to existing law,'; as well as from the records of 

its legislative history. 11 

'"Throughout the various spcctilat;ions in committee as to what 

those rights were, it was generally agreed that. they were. intended 

to remain unchanged by the bill. Sec Hen.rings before the Rouse 

Commit.tee on Patents, &8th Cong., 2d Sess., on H.R. 32G7 and llt!o:3 

(1925); Hearings 6efore the same Comrnit;tee; 70th Cong., 1st Sess. 

(1928), especially a1; pp. 8-J:3. The discussion on the floor of the 

House, referred 1.o in the opinion of the Court, (see note 19) does not 

indicate the contrary. _ 10 In addition to tl1e hearings cited supra, note 10, sec H.R. Report 

No. 1506, ·68th Cong., 2d Sess.; H.R. llcpor:t No. 871, Senate Report 
0 

REF ID:A101383 

U.S. v. DUBILIER CONDENSER CORP. 221 

178 STONE, J., dissenting. 

The purpose of Congress in facilitating the patenting 

of inventions by government employees was to protect 

the existing right of the goyernrnent to use all devices 

invented in the service, whether or not the patentee was 

employed to use his inventive powers. Experience had 

shown that this shop-right was jeopardized unless the 

employee applied for a patent, since without the disclosure incident to the a.pplica.tion the government was 

frequently hampered in its defense of claims by oJhers 

asserting priority of inventio11. But doubt which had 

arisen whether an application for a patent under the 

Act of 1883 did not operate to cleclica.te th_e pa.te_nt to 

the public)'~ a.ncl reluctance to pa.y the fees otherwise 

required, had lee! government employees to neglect to 

male .a.pplica.tions, even when they 'vere entitled to the 

benefits of the mol1opoly subject only to the government's 

right of use. This doubt the amendment removed. It 

can hardly be contended that in removing it in orc1er 

to a.id the government in the protection of its shopright, 

Congress declared a policy that it should have no grea.tcr 

right to control a patei'it procured either under this 

special sta.t.ute or under the genera.I pa.tent la,vs by fraucl 

or any c:ither type of inequitable concl1:1ct. Had Sl!Ch a 

policy been clecla.recl, it is difficult to see on what basis 

,,;e could award the gbvernment a. remedy, as it seems 

to be agreed we would, if Dunmore ::incl Lowell had been 

specifically employed to make the inventions. There is 

nothing to indicate that Congress adopted one policy for 

such a case a.nd a contrary one for this. 

No. 765, 70Lh Cong,, 1st, Sess. The bill w:-is originally :-i compnnion 

proposal to the Fcclernl Trade Commission bill discussed i1if ra., not;e 

13. See the references given there. 

" See Selden Co. v. National. Aniline <(; Chemical Co., 48 F. (2d) 

270, 272; Squier v. American 'l'elepho1Je & Telearaph Co., 7 F. (2d) 

s:H, 832, nffirmcd 21 F. (2d) 747. 

'--------~~---------~--

j 
0 

0 

REF ID:A101383 

222 OCTOBER T:l!.atM, 1932. 

SToN "' .r ., disscn t:iog. 289U.S. 

Other legis]a.t.ion proposed but not enact;ed, 1

" reqtlires 

but a word. Even had Congress expressly rejected a 

bill purporting Lo enact in to law the rule of decision 

which I think applicable here, its failure to act could 

not .be n,cconled the force of law. But no such legisla.-

t.ion has been proposed to Congress, anci that which was 

suggested may have been and p1:obably wus clefmitecl for 

rea,sons u neonnGctecl wi Lh the issue presented in this 

case. The legislative record docs show, as the opinion 

of the Court states, that it is a cliJJicult question which 

has been the subject of consiclern.tion a.t least since the 

war, whet.her the public interest is best served by the 

"The bill referred to in Lhe opin;on of I.he Court• was one sponsored 

by the executive depaitments to endow the Federal Trade Commission with the power to accept nssignmcnts of pn.tcnts from gover11mcnt 

cm11loyces a.ml adminisl.cr t.hem in the public interest. It passed the 

Senate on one occasion and t;he House on anot;her but, failed to become 

:L l:1w. (S. 52u5, o5t,h Cong., 3cl Scss,, S. ~~223, 66th Cong., 1st Scss., 

H.IL 9fH2,. GGth Cong., 1st Scss., H.H .. 1Hl84, (i(it,h Cong., 3d Sess.) 

ln t.he course of hc;i.rings :rncl clelxi.tes many points of view were exprcs~ccl. Sec. Hearings on Exploitation of Invcnl;ions by Government 

Employees, Senate Commit.Lee on Patents, Gpt.b Cong., 3d Scss. 

(lDlD); Hearing before l;hc s:unc Commit.tee, GGt,h Cong., 2d Scss. 

(Hl20); Scnat.c llcpor:t, No. 'I05, H.H .. H.cport No. 5D.'J, (i(it,h Cong., 2d 

Scss" 1:ecommcndi11g p:1ssagc. See ~,f.l Cong. Rec., 2300, 2421, 2430, 

::mus, 4082, 4771, 8350, s:3GO, S'IS~:l, 8400; 60 ib·icl. 356; Conl'erence Heport., H.B .. No. 1204, Sen. Doc. No. :37D, 6(il;h Cong., 3d Scss. And 

sec 60 Coi1g. llcc., 2890, 3229, :3264-32G9, .35:37, DifTercnccs were 

sl•rnsscd in !illC purposes and needs or difTcrcnt. agencies of t.hc Government.. Sec cspeci,111,y Hc:Hings. (JQHJ), s·u7Jrn, pp. 22, 24.-5. The need 

of commcrci:il · inccnt,ivcs to privntc exploiters, :1s w.cll as t.hc general 

dcsir:1bilit.y pf. such ·cxploii:[iliion were admil,t;cd, but, t.hc .dangers. were 

recognized as well. }t wns l;l1nughl, t;hal; the public interest would 

best be served by tbc csli:iblishmcnt of a single agency for government; 

control, with the poll'.cr to clcl.ermine upon some compc11sation for the 

invcn·l,nL 

1\l'l.cr t.hc clca f,h nf I.his bill in t;hc· ScnaA.c, Fcbrnary 21, HJ21, the 

subject wtu; again. corn;iclercd by [!.11 In tcrclcpart,mcntal Boa rel cs tab-
0 

0 

REF ID:A101383 

U.S. v. DUBJLJER. CONDENSEH. CORP. 223 

178 Huorrns, C. J., dissc1iting. 

cleclica.tion of an invention to the public or by its exploitation with patent protection under license from the 

government or the inventor. But the difficulty of resolving the question does not justify a. decree which does 

answer it in favor of permitting government employees 

such as these to exploit their inventions without restriction, rnther than one which would require the cancellation of their patents or their assignment to the United 

Sta.tcs. 

The decrees sliould be reversed. 

1\1n. JusTJCE CARDOZO concurs in t.his opinion. 

MH. GHrEF .Jus'ricF. Humrns, disscnt.ing: 

I agree with Mt\ Justice Stone's ::umlysis of the facts 

showing the na.ture of the employment of Dunmore and 

Lowell .. a.i~d wit11 his conclusions as to the legal effect 

lishccl by executive order of President lfarcling, August 0, Hl22. Its 

report w:1s transmitted to Congress by President, Coolidge,, in December, 1023. Sen. Doc. No. 83, GSth Cong., Ist Scss. The;: Board found 

1,lrnt; t;hcre had never been :rny gr,neral government;a.I policy established 

with rcf:ipcct to invent,ions, t.ha.t whet.her public dedication, p1'ivatc 

cxploit,ation or governmental cont;rol and :id111i11isl;ration is dcsirahlc, 

depends largely on the na'.tmc of the invention. Accordingly, legisb.-

1.ion was recommended csk1blishing a pcrm:1nent lnl:erdepart:mental 

Patents Board wit;h the power to demand :1:;signmcnls of pal:cnts 011 

those invcnt;ions therca.ft.er developed in t.he service which "in I.he 

interest of t;hc national defense, or othern'ise in the p11bliG int.crest" 

:;lwuld be controlled by the Go\'ennnent. Nu action w:1s Lakeu upon 

I.his j)J'Oj10S:ll. 

Since I.hat. time the Director of t;he Burc:111 of Sl;andards has recommended t,hat, a "uniform,. cq11itable policy of procedure" be defined 

for t;hc gO\'Cl'llment, by legislat.ion. (An1111:1'1° Hcporl> for lD2:\ p. 'JO.) 

In the Hcport; for lD:H .it; is ;;aid (p. 4()) t,h:tl> Uic "patent poliGy of 

!;his Burc:rn has always been t.hat patentable clevic·cs del'Clopcd by 

employees paid out of public funds belong l.n I.he p11blii;," and the 

Report, for J!)32 adds (p. 40) ''if not, so dedic:iled directly, I.he vested 

rights should be held by the Government." 

·~-- .. 
0 

,, 

I 

0 

1 

REF ID:Al01383 

224 OCTOBER TERM, 1932. 

Opinion of the Court. 289U.S. 

of that employment. As the people of the United States· 

should have the unrestricted benefit of the inventions in 

such a.case, I t.hink that the appropriate remedy would be 

to cancel the paten ts. 

UNITED STATES v. DARBY 

APPEAL FRO.l\ol 'l'HE DISTRICT COURT OF THE UNTTED STATES 

FOR ·nm b.l S'.l'lUC'l' 01" MARYLAND 

No. 653. Argued March 14, 1933.-Decided April 10, HJ:3:3 

Under· RS., § 5209, ns amencled, wbich makes it, a crime for an 

officer of a Federal Reserve Bank, or of any member bank, to rnakL• 

any fa:lse entry in its books wit;h intent to defraud, the entry of a 

name appearing on a discounted note as that of co•.maker, is a 

fa.lse entry i'f made with knowledge that the name is a· forgery. 

P. 226. 

2 F.Supp. :378, reversed. 

APPEAL from a juclgmerit quashing an indictment. 

Mr. Whitney North Seymmir argued the cause, and 

.Solicitor General Thacher and Ivlessrs. Paul D. Miller and 

Williarn H. Ra'insey filed a brief, on behalf of the United 

States. 

Mt. Liicien 11. Mercim· for appellee. 

MR. JUSTICE CARDOZO delivered the opinion of the 

Court~ 

The case involves 'the construction of a statute of the 

·united States which makes it a crime £or an officer or 

employee of a federal reserve bank, or of any member 

ba1).k; to make any entry ii1 its books with intent to defrau.d. R.S. § .5209 as amended by the Act of Septem-