#### Shavor et al. *v.*The United States.

*On the Proofs.*

*The Post Office Department contracts with certain mmufactwrcs-s for “marlcmg-stamps toiih Norton’s attachment,” it being stated m the contract that the patent therefor is exclusively under their control. Subsequently Norton, on behalf of his assignees, the claimants, denies the manufacturers’right to the invention and applies to three successive Postmasters G-enen'al to purchase the patent. Nach declines for want of authority, but requests that the department be allowed to continue the use undisturbed, and that the owners loole to Congress for remuneration. To this the owners accede. Congress neglect to aet.*

Where the government is purchasing implements which infringe a patent right and it is- then agreed between the head of an executive department and the patentee that the former has not authority to purchase the *441patent, but that the latter shall allow the use of the invention in the government service, so long as he, the patentee, shall see fit, and leave the purchase and remuneration exclusively to the will and action of Congress, it is simply the case of an agent who at the request of an inventor trios and uses an invention subject to the ratification of his principal. Congress not having ratified the transaction no legal liability is incurred and no action lies.

*Mr. A. L. Merriman amd Mr. E. T. Merrick*for the claimants:

This is a claim brought by the claimants as assignees of an invention for post-marking and stamp canceling letters, for the use thereof by the government.

This principle was invented by Norton as early as the year 1853, he having filed his original caveat on the 13th of October, 1853; which caveat was, on the 11th of March, 1854,' so improved and changed in construction as to' cover the principles of the patent now in use in the Post Office Department, the patent therefor having issued on the 14th of April, 1863, and formally assigned to the claimants in accordance with an agreement before then made between the claimants and the patentee.

The question of the title is shown by the record as follows: Patent was issued to Marcus P. Norton April 14,1863, and his assignment to claimants, bearing date April 20,1863, although, as Norton testifies, the sale was made to claimants some time previous to the issue of the patent.

Was there any contract, express or implied, between the claimants and the United States in relation to the use of this patent ? It is not necessary here to discuss the question of the right of a party, whose property has been taken and used .tortiously, to waive the tort and proceed, as upon an implied contract, in assumpsit; for here there was no tort. The government did not make use of this invention by force, or against the wishes, or without the consent, of the claimants; on the contrary, the claimants, through their agent, not only consented to the use of the invention, but agreed that they would not interfere with either its use or manufacture by the government or the manufacturers. The department obtained the consent of claimants for the use of the invention prior to the making any contract for its manufacture; of this fact the proof is too strong to admit of a doubt. If, then, the matter had rested *442there, and upon. such consent the government had made use of this improvement, the law would imply a contract on the part of the government to pay for such use what the same is reasonably worth. If A obtains from B his horse or wagon for use, without any contract except his permission, there is an implied contract for compensation. If, on the other hand, A proceeds to the stable of B and takes his horse or wagon, without permission of its owner, such action is a tortious one, and the owner may pursue the proper remedies therefor. If there was no understanding or agreement with the claimants, should they agree not to trouble tbe department or the contractors with suits, what was the consideration for such arrangement? Why should they debar themselves from prosecuting the usual remedies in case of infringement of patents — that of enjoining the contractors from the manufacture of the stamps *1*It cannot be conceived that any sane men would, with the power in their hands of enjoining the manufacture of these stamps, and consequently their use by the government, for five or six *years*remain without making use of the remedy at hand, unless they were prevented from doing so by some agreement. They did, however, make such agreement, whereby they were precluded from such remedy; and the consideration of such agreement was, as stated by Norton, Skinner, and Davis, that they were to look to the government for compensation.

The course of the claimants and that of the Post Office Department are entirely consistent with each other, and can be explained in no other way than as being in accordance with the agreement between them. The department was anxious not only to have the use of the patent, but to own the title; and, therefore, as a matter of economy to the government, so frequently urged the purchase.

*Mr. F.*P. *Norton*(with whom was the *Assistant Attorney General)*for the defendants:

The United States resist the payment of this claim upon two grounds—

*First.*That there never was any contract made by any authorized agent of the government, by which the United States agreed to make compensation to the claimants for the use of said invention.

*Second.*That even if such agreement were made, it was unau-*443tborizecl and void, because tbe Postmaster General bad no authority under tbe law to make tbe contract upon wbicb tbe claimants rely in tbis action.

Tbe solution of tbe first of these propositions rests mainly upon tbe facts wbicb have been developed in tbe investigation of tbis case. Tbe claimants seek to establish tbe fact that a contract *was*made by tbe United States to make compensation for tbe use of tbis invention by tbe testimony, first, of tbe inventor of tbe instrument, who acted, subsequent to bis assignment of it to these claimants, as then agent; be testifies that be assented to tbe use of tbis invention by tbe contractors of tbe Post Office Department for tbe furnishing of stamps, but that there was.never any arrangement made as to tbe amount to be paid for such use, or tbe time when payments, if any, were to be made. It would seem from bis testimony that tbe question of compensation to be made for tbe use of tbis instrument was to be left entirely to Congress.

It is submitted that tbe court will fail to find in tbe record presented in tbis case such an agreement for tbe payment of tbis instrument as will enable it to render any judgment against tbe United States in favor of these claimants. Tbe only person who bad sufficient legal authority to bind tbe United States to make payment for tbe use of tbis invention-was tbe Postmaster General; and be testifies not only that be did not make any contract with these claimants himself, but that be .did not authorize any person in bis behalf to make such contract.

Nott, J.,

delivered tbe opinion of tbe court:

Tbis action is brought to recover tbe sum of $250,000, for tbe use in tbe Post Office Department of Norton’s patent right for tbe cancellation of postage stamps, and tbe postmarking of letters.

Tbe case presents some of the gravest questions of law, going to tbe jurisdiction of tbe court, to tbe powers of tbe Executive Departments, to tbe evidence, and to tbe measure of damages that have ever been brought before tbe court. It has also been three times elaborately argued: once upon demurrer, wbicb tbe court'with grave doubts overruled; again at tbe former trial, when four judges were equally divided; and *444finally when, it was re-tried before a full bench. Yet it now goes off upon a single finding of fact.

The action is brought upon a contract whereof the claimants, in their amended petition, proffer this averment:

> *"*Petitioners further state that in the month of March, 1863, or thereabouts, the Postmaster General, being desirous of using the said invention in his department, obtained the consent of petitioners thereto, *cmd promised petitioners to pay for such use its fair cmd reasonable value;*and thereupon, with the consent and agreement of petitioners that the *government*should be permitted to use such invention, the said Postmaster General adopted the said invention into use, and has constantly used such invention in his said department from the first day of April, A. D. 1863, until the present time. Petitioners further state, that *such agreement has been, at different and various times since such*date, *repeated by the said Postmaster General cmd Ms successors in office,*upon and for the consideration that petitioners would permit the government to use the same, and not embarrass or prevent its use as aforesaid by legal proceedings.”

This court finds as a matter of fact that no such contract was ever entered into by the claimants and the defendants, but that, on the contrary, it was expressly agreed between the claimants •and the agents of the defendants that the Postmaster General had no authority to purchase the patent right or its use; and that the claimants were to allow its use in the postal service so long as they, the claimants, saw fit, leaving the matter of remuneration exclusively to the will and action of Congress.

The evidence upon which this finding rests is the testimony of the three Postmasters General, under whom the invention has been used. The first, Postmaster General Blair, says:

> *"*There was no contract with these parties, or with anybody else, entered into by me, by which the department was engaged to pay them, or pay anybody else for the use of the patent right in the instrument. On the contrary, when an objection was made, either at that time or subsequently to the use of the instrument furnished by the contractors, on the claim that they did not own the patent right, my reply was that such claims must take the ordinary course of law, and proceedings must be instituted against those who were making the instruments and selling them to ns, and the rights settled by the courts in that form of action; that I would not undertake to decide whether *445anybody’s patent was invaded by any parties wbo were selling the department stamps or locks, or any instrument that we were called on to use in the course of our business.”

And upon his cross-examination, he was asked: “Was not the result of your negotiations or talk with the owners of this patent that they should not interfere with the manufacture of stamps by the contractor, and should look to the government for compensation, provided they first established their claim to the patent by suit at law ? ”

And he answered: “ My recollection is that I declined altogether to interfere between the contractor and the claimant to the patent, and contemplated no responsibility on the part of the government to any one, save the contractor, for the use of the instrument, in any event.

“ I do not recollect whom my talk was with. I have no recollection of ever seeing Mr. Norton; all that I recollect was that such a claim was made about the time of making this contract, and that I was explicit in taking the ground above stated in reference to it.”

The second, Postmaster General Dennison, in his testimony, says: “My attention being called to an alleged conversation between myself, as Postmaster General, and Mr. Marcus P. Norton, set forth on page 4 of claimant’s testimony in this case, I have to say that I cannot recall specifically any conversation with Mr. Norton on this subject; but do remember of having one or more conversations with some person or persons representing the *'*Norton patent.’ The conversation, as stated by Mr. Norton, I do not think ever could have taken place in the form or to the effect of his statements. I have no recollection, and don’t think it possible from my habits, of saying anything or intending to say anything to impose any obligation on the Post Office Department, or on the part of the government to pay anything for the use of the stamps beyond or outside of the then existing agreement between the department and Fairbanks & Co. It is not improbable, but quite probable, that I expressed a hope that Congress would treat Mr. Norton, or his assignees, liberally for the invention, and I so expressed myself in effect in my letters to the Committee on Post Offices and Post Eoads of the Senate, as hereinbefore referred to.”

And upon his cross-examination, he adds: “ I cannot say, *446therefore, whether in any conversation with Mr. Norton, or his assignee, he complained of the delay of Congress in acting upon his petition or claim, but I have little doubt that complaint in some form was made to me, but I have no recollection of saying or intending to say anything to quiet the complaints by holding out to Mr. Norton, or his assignee, any consideration therefor. I regarded the whole subject of the patent as practically in the hands of Congress, I, as Postmaster General, having no authority to treat on the subject, or to say or do anything except in pursuance of the contract already referred to, made between my predecessor, Montgomery Blair, and Fairbanks & Co.”

“ So far as my official action related to the Post Office Department proper, I had no purpose of changing in any way the existing contract with Fairbanks & Co. during the term of the contract; but, as officially related to Congress, I was prepared to suggest, and did suggest the purchase of the patent by Congress, and a full settlement with Mr. Norton, or his assignee, of all matters relating thereto.”

The third, Postmaster General Bandall, also sworn as a witness in the case, testifies:

> “ I said there was no money under my control appropriated for the purpose to pay him either for the patent or for its use, and that I could not make any distinct arrangement with him about it, as our contract was only with the party who furnished the stamps; that I had no authority to make any arrangement with him about it. I told him that while he could interfere with the contractor, and so embarrass the department, that I hoped he would not do it; that I had no doubt Congress, under proper representations, would pay him for the use of his stamps. I told him I woidd myself urge it upon the committees that the stamp had been of great use to the department; had been a great saving, and that the department could not get along without the use of it, without incurring great additional expenses ; that Congress ought to make a liberal appropriation for the use of that patent, and I would do everything in my power to aid him in getting compensation in that way. That is the substance of the several conversations with him on that point.”

> *"*By the Solicitor for the United States:

> “Question. I now call your attention to the testimony of Marcus P. Norton, page 4 of claimant’s testimony, and to the following clause*:*That if the complainants would permit the *447continued manufacture of tbe stamps for tbe government, tbe government would pay for tbe use of tbe invention and improvement a fair, just, and liberal compensation.’ Please state whether you ever made such an agreement.

> *"*Answer. I never made any agreement at all. I said that I hoped be would not interfere with tbe manufacture of these stamps; that I bad no doubt tbe government would mate to him liberal compensation for tbe use- of it, and that I would urge tbe same upon tbe committees, and presumed that be would be compensated.”

Against this most clear and positive testimony there is nothing brought except a slightly different version of tbe conversa-' tions given by Assistant Postmaster General Skinner, who uses tbe word “ government” for tbe word “ Congress,” and tbe somewhat colored, though unintentionally colored, statement of tbe inventor, who was acting as tbe agent of tbe claimants. Tbe weight of evidence seems to us overpoweringly in favor of tbe defendants, and tbe case to be simply that of an agent who at tbe request of an, inventor has tried and used an invention subject to tbe ratification of bis principal, who, in this case, is Congress.

It may be added, for tbe better understanding of this evidence, that tbe stamps used by tbe Post Office Department were manufactured chiefly by Messrs. Fairbanks & Co., of New York, a large and well-known manufacturing bouse, under a contract bearing date tbe 18th of April, 18C3, which contract was founded upon, and expressly included as a part of itself, this proposal:

“ In accordance with tbe inclosed advertisement, we propose to furnish for tbe use of tbe post offices of tbe United States, for four years from first of April next, marking stamps *with Norton’s attachment for canceling the postage stamps at the same time the marlcing stamp is*applied, *letters patent for which home been issued, and wlvich patent is excUisively wider our*control.”

Tbe judgment of tbe court is that tbe petition be dismissed.

Casey, Cb. J., and Peck, J., dissented on tbe facts.