in the letter which you have done me the honor to address to me, I add some
detaUs to my previous observations.
One of my patents bears the number 331,618; it relates to gun carriages; it Is
not very important because one can do without it ; but the second.
which is connected with the obturation of guns and breech mechanism Is of the
highest importance. V^Tithout my obturator the loading of a gun by the breech
is difficult and the service is rendered ineffectual. The metallic ring used in
Germany is far from having its value and imparts to the gun a considerable
inferiority. Thus all the makers of cannon are led to employ my iUTention,
either op^ily or in a disguised form, styled by them improvement. The War
and Navy Departments at New York, which are well acquainted with the ques-
tion, will certainly not contest the truth of my assertions ; they have under their
eyes, on trial, guns which speak for themselves.
This is not the first time that I have had to complain of my idea b^ng bor-
rowed without my knowledge in France or abroad. The English €k>vemm«it
particularly had taken up my system, and without my having demanded any-
thing had offered me twenty thousand pounds sterling to indemnify me. I
refused this offer, it is true, but because as a French officer I ought not to aid
DECISIONS OF UKITBD STATES COtJBTS IK PATENT OASES. 623
In the arming of a power which I do not consider as friendly. In part, de-
prived of my assistance, England has copied me badly and possesses but a .
In any case, I appeal to the sentiments of equity of the Government of the
United States, convinced that it will recognize easily the justice of my claim.
Pray accept, &c., &c., «
(Sgd.) Ck>lonel De Bange
United States Legation, Naval Attach£,
Paris, July 2nd, 1S91.
The naval attach^ at London suggested in a communication to Mr,
Reid, our Minister there, that Colonel De Bange's letter be forwarded
to the Navy Department. The Minister, however, referred it to the
Secretary of State.
De Bange sent the following letter to the Secretary of the Navy :
Versailles, near Paris, 16/8/91.
Coicmel De Bange to Monsieur Benjamin F. Tracy,
Secretary of the Navy at Waahinffton,
Mr. Secretary: Some months ago I addressed the United States Minister
at Paris, verbally and by writing, several remarks on the subject of loans which
I had made of my invention to the Departments of War and of the Navy:
finally, as I have undertaken to write to you directly, I now have the honor
to lay before you the following :
I had taken out Letters Patent, which treated of artillery In the United
States, one number, 801,220, relative to Tobturation of guns, and of principal
importance; the other number, 881,618, relative to the carriage.
Furthermore, I have seen at Paris many of your officers to whom I furnished
without reserve all the information which they have asked of me.
Under these circumstances I hope that if the Government has desired to
utilize my inventions, it will inform me; there has been no defect, and I have
learned from a reliable source that my systems was copied, unknown to me, by
the Departments of War and of the Navy, be it under the disguise of an im-
provemoit or be it openly.
I regret that this has occurred, but in any case I consider that an indemnity
is due me. If you will have the kindness to notify the Government of my claim,
I am confident that it will see that Justice is accorded me in the indemnity to
which I believe myself to be entitled.
Please accept, Mr. Secretary, the expression of sentiments of highest consider-
ation, with which I am
Tour obedient servant, De Binge.
This letter seems also to have been sent to the Department of State
and referred by it to the Secretary of the Navy, as appears from the
following letter of the Chief of the Bureau of Ordnance :
BuBEAU OF Ordnance, Auffuat 27, 189L
Respectfully returned to the honorable Secretary of the Navy.
The Bureau has not manufactured and is not using any gun carriages which
contain principles which could be held as infringing any claims secured in
United States PAent No. 881,618. The gas check which lias l>een adopted for
the naval gons of 6-in. caliber and upward resembles in certain features that
624 DECISIONS OF UNITED STATES COURTS IN PATENT CASES.
doscrihetl in T'nited States Patent No. 301.220, issued to Col. De Range. It also
differs from it materially In particulars which are original in this Bureau.
I am not in iwsition to give an opinion as to the question of infringement, knd
have to suggest that the applicant refer the matter to the Court of Claims.
The Bureau will note for the information of the applicant that there arfe no
funds appropriated or availahle for the paymrtif of any claim that might be
allowed by the Court of Claims, and that it will be necessary for the applicant
to go to Congres*5 for relief in the event of a decision being obtaln(M.l which will
warrant such action.
(Sgd.) WM. M. F0IX3EB.
Chief Bureau of Ordnance.
The Navy Department then addressed the Secretary of State as
Waf^hinffton, Seplewber 5, JH91,
Sir: I have the lionor to acknowledge the receii)t of your comumnication of
the 20th ultimo, inclosing copies of correspondence relating to a claim ot Colonel
De Bange, a retired otlicer of the French army» residing in Paris, France, who
alleges the use by this (tovernment of certain inventions patented by him in
guns and gun carriages.
In rt*i)Iy I have to state that the Chief of the Bureau of Ordnance, in this
Department, to whom the communication and accompanying papers were re-
ferred, rei)orts as follows:
The Bureau has not manufactured, and is not using, any gun carriages which
contain principles which could be held as infringing any claims described In
U. S. Patent No. :«l,r>18.
The gaschwk which has [n^n adopted for the naval guns of C-lnch caliber and
upward resembles in certain features th:it described in U. S. Patent iU>l,220.
issued to (^olonel De Bange. It also differs from it materially in particulars
which were original in this Buieau.
In view of the statement made by the Chief of the Bureau of Ordnance, there
apjjears to be no proper giound for tiie claim of Colonel De T^ange.
F. M. Kamsay.
Acting Secretary of the Xavy.
The honorable the Sechetary of State.
On January 81, 1894, the claimant, by its attorneys addres^:ed sub-
stantially similar letters to the Secretary of War and the Secretary
of the Navy, stating its claim for the use of its patented invention
and requesting payment for the use of it. The letters described and
extolled the device and stated that they '" deemed it expedient to take
a low average price and apply it to all guns/' They fixed such price
at $200 per gun.
The Secretary of the Navy, on February 10, 1894, in replying, re-
ferred to and quoted from the Department's letter of August 20, 1801,
As the status of the case has not been chanjjed Plnce the date of the Depart-
ment's letter above mentioned, and as the matter has been previously disiK>sed
of by the Department, no further consideration of the case appears to be
DECISIONS OP UNITED STATES COURTS IN PATENT CASES. 625
Tlie letter of the claimant's attorneys, however, was the subject of
a report and recommendation by the Chief of Bureau of Ordnance,
which resulted in the following letters :
Bureau of Ordnance, December 4, 1894.
Respectfully returned to the Department.
The gas check applied to puns constructed for the navy Is that illustrated in
United States Letters Patent No. 318,0f)3, of May 10, 1885, and so far as this
patent is valid no royalties should he paid. (See Court of Claims Reports,
p. 334, vol. 23, 1887-88.) If, however, as the Bureau believes to be the case,
the above-mentioned patent is only valid so far as it covers Improvements on
the De Bange patent (No. 301,220, of July 1, 1884), then, so far as the latter
Intent is valid, the within claim for royalties. In the Bureau's opinion, is a
proper one, and would be maintained by the courts.
It must be noted, however, that until recently there has been no authority of
law for the payment of royalties out of the naval appropriations, and the manu-
facture of most of the gas checks in question had been completed prior to the
legislation giving such authority. Moreover, the Bureau Is of opinion that the
Davis patent (No. 318,003, of May 19, 1885) covers real and important improve-
ments, without which it is doubtful if the De Bange system would have been
adopted for Ignited States naval guns, and consequently it will be necessary to
decide as to the relative values of the device in its original and improved forms.
The fact that practically the same gas check is in upo in all T'nited States army
guns of recent construction, and is being applied to guns now being made by the
Bethlehem Iron Company, under contract with the War Department, should also
be considered, since independent action on the part of tlie Na\T Department
might easily be against the interests of the Government.
It is therefore recommended that an investigation to be made in regard to the
De Bange patent, and if this patent is concluded to be valid that the War
Department be consulted as to whether a definite sum, to be fixed upon either
by a board or in some other way, should not be offered the claimants for the
right on the part of the Government to use the device in question on all its guns.
W. T. Sampson,
Chief of Bureau of Ordnance,
The final action of the Xa^nr Department upon petitioner's claim
was communicated to the petitioner in a letter of the Secretary of the
Xavy, dated December 31, 1894, as follows:
Washington, December SI, IH04.
Gentlemen: The Department has carefuny considered the questions pie
sented in the brief filed by you, as well as in former corresijondence. relative to
the matter of the claim of the Soci(^tC» Anonyme des Anciens lOtablissements Call
for compensation for the use by the I'nited States of a gas check invented by
Col. Charles T. W. V. De Bange, of the French army.
It appears that the matter is now in such a condition that it will in all prob-
ability involve not only que«»tions arising under the patent issued to Colonel
De Bange, but also those growing out of the claims and affecting the rights of
other patentees. I'nder these circumstances the Department is of opinion that
the full consideration and determination of these questions can be more certainly
and equitably reached and the rights of all the parties concerne<l, as well as the
Government, more definitely ascertained and assured through the medium of a
Digitized by VjOOQIC
626 DECISIONS OF tJNITED STATBS OOUBTS IK PATENT CASES.
court of justice. It is therefore suggested that the necessary proceedings tor
the consideration and adjustment of the matter by the Court of Claims b«
Very respectfully, H. A. Hebbebt,
Messrs. Pollock & Maubo,
Attorneys at Law, Washington, D. 0.
The final action of the War Department was communicated to
claimant's attorneys in a letter dated January 14, 1895, in which the
language and suggestion of the Secretary of the Navy were adopted
It is not possible to review the arguments by which the claimant
asserts and the Government denies the sufficiency of the facts as we
have related them to constitute an implied contract between the
claimant and the Government. The ultimate contention of the Gov-
ernment is that. the mere use of the patentee's invention with his
knowledge does not create an implied contract in fact to pay for such
use, but —
there must be (1) a use of it with the patentee's assent, and there must aUo be
(2) an agreement or meeting of minds on the part of the patentee and on the
part of the user as to compensation for the use, even though the amount of the
compensation be not fixed.
These elements, it is insisted, were present in the Berdan case.
which we have seen was relied on by the Court of Claims ; they are,
it is further insisted; absent in the case at bar.
But these elements do not have to appear by the explicit declaration
of the parties. They may be collected from their conduct. The
alternative of a contract is important to be kept in mind. The officers
of the Government knew of the De Bange invention and were aware
of its great importance, and the purpose to deliberately take property
of another without the intention that he should be compensated — in
other words, to do plainly a wrongful act — cannot be imputed to
them without the most convincing proof. Such proof does not exist
in the present case. On the contrary, the record shows that compen-
sation was contemplated. There was doubt as to the extent of it be-
cause there was doubt as to how far the devices used were attributable
to or belonged to De Bange or whether they constituted an infringe-
ment of his patent, and therefore there was hesitancy and doubt, not
as to compensation, but as to the amount and extent of it.
We agree with the Court of Claims that there is resemblance be-
tween this case and the Berdan ease. In that case the Court had no
difficulty in adducing the assent of Berdan to the use of his invention.
The Court found more difficulty in inferring the assent of the Gov-
ernment. The Court said, by Mr. Justice Brewer:
While the findings are not specific and emphatic as to the assent of the Gov-
ernment to the terms of any contract, yet we think they are suflicient There
DECISIONS OF UNITED STATES COURTS IN PATENT CASES. 627
was certainly no denial of the.patoitee's rights to the invention; no assertion
on the part of the Government that the patoit was wrongfully issued ; no claim
of the right to use the invention regardless of the patent; no disregard of all
claims of the patentee, and no use in spite of protest or remonstrance. Nega-
tively, at least, the findings are clear. The Government used the invention with
the consent and express permission of the owner, and it did not, while so using
it, repudiate the title of such owner.
Like comment may be made of the. facts in the case at bar. It is
true that the letter of William F. Folger, Chief of the Bureau of Ord-
nance, stated that while the gas check used by the Government resem-
bled in certain features De Bange's gas check, it differed from it
materially in particulars which were original in the Bureau. But
this was not a denial of the use or the utility of De Bange's inven-
tion. Whether there was infringement the officer did not decide, but
suggested that the "applicant refer the matter to the CJourt of
Claims." Subsequently the Acting Secretary of the Navy did deny
infringement. But that position was abandoned and the Secretaries
of War and the Navy —
suggested that the necessary proceedings for the consideration of the adjust-
ment of the matter by the Court of Claims be instituted.
There were parallel circumstances in the Berdan case.
The invention of Berdan was an "extractor-ejector" for use in
breech-loading rifles, and that which was used by the Government
was devised by one of its employees. There was a difference between
it and Berdan's device, but the officers of the Government doubted
if the difference was material, and concluded that it was a matter
for the courts to decide. It is true there was no assertion of right
against the Berdan device in consequence of the difference between
it and the device used by the Government as, it may be said, there
was in the case at bar by the letter of Admiral Ramsey of September
3, 1891. But the position taken in that letter was, as we have seen,
abandoned, and it was declared that so far as the De Bange patent
was valid its claim for royalties was, in the opinion of the Bureau of
Ordnance, a proper one and would be sustained by the courts. This
was in 1894. Prior to that time and afterward the Government con-
tinued to use the device. We think the Court of Claims had juris-
The Government contends that it has not infringed the De Bange
patent. Infringement is a question of fact, and as an aid to its
solution courts are furnished usually with an expert comparison of the
contending devices, their identity or difference of construction and
modes of operation. This record is destitute of such testimony.
The Government contends for the very narrow construction of the
patent based on its claims and the prior art The only proof of the
prior art, however, is a reference to thirteen or fourteen patents by
628 DECISIONS OF UNITED STATES GOUBTS IN PATENT CASES.
number and patentee, some of which are English, some French and
some American. The only explanation of them is in the argument
of counsel and an exhibition of the pia tents. It is verj' doubtful if
we may take notice of even the American patents; more doubtful if
we may of the foreign ones. We, however, have considered counsel's
explanation of them. They reveal nothing material to be considered
that the findings of the Court of Claims do not show of the prior
art and the progiess from its failure to the success of the De Bange
invention, a success, it may be conceded, that availed itself of all
that the prior art demonstrated, but went beyond it to the fulfilment
that it had not achieved.
The necessity of a gas check to the success of breech-loading gims
all could sec, and what a device, to be successful, must do; but the
world struggled a long time with the problem, and that problem
was to find something which would stand the intense heat generated
and the great force caused b}^ the explosion of the powder in a high
power gun and the backward escape of the resultant gas under the
enormous pressure exerted, and this not in one service of the gun,
but in many services. The exjM^riments are detailed in the findings.
Metallic cups were tried and paper cups. As early as 1858 india-
rubber was suggested. Its elasticity, it was thought, would afford
all that was necessary for a complete automatic obturation, the gas
by its expansion " to seal its own escape."
Eubber had some success when constructed in rings of varying
degrees of suppleness and hardness, and seemed to have settled the
problem. But defects subsequently developed and experiments con-
tinued for something better and which would fulfil all the conditions.
Then soap obturators were tried, and finally Colonel De Bange's in-
vention of tallow and asbestos. If our purpose was speculative, not
practical, we might pause to wonder how such substances could pro-
duce such results under the conditions to which they are subjected,
and by wondering we express in a way the quality of the invention.
We are told by the findings of the Court of Claims that a gas check —
Is subject to a pressure of from 30.000 to 40.000 iK)unds per square Inch, to
very high temperatures, to the effects of corrosive gases, and the effects of rapid
and violent shoclcs.
We need not, however, dwell longer on the excellence of the in-
vention. The Government has testified to its excellence by using it
in the guns intended for the national defense.
But it is contended that the claim of the patent is for a specific
combination of elements and that that combination of elements is
not tised by the Government.
This contention is ba.sed upon what is considered to be the proper
construction of claim 1 of the patent, a strict construction being
urged of it — indeed, as we understand the argument, the claim must
Digitized by VjOOQIC
DECISIONS OF UNITED STATES COURTS IN PATENT CASES. 629
be confined to the specific forms of its elements, giving the widest
latitude to imitation.
The patent answers the contention. Describing his invention, De
Range calls it " certain new and useful improvements in breech-load-
ing guns." Specifying the improvements, he says that they —
apply to breech-loading guns which employ a screw-plug having its threads
Further specifying, he adds:
I have devised a system of packing placed in advjiuee of the plug, and which
Is expanded by the force of the explosion of the powder to make a tight joint
to prevent the leakage of gjis.
He declares the drawings form a part of the specification and rep-
resent what he considers the best means of carrying out the inven-
tion. It is only necessary to give Figures 1, 2, 6 and 7.
They are described in the patent as follows:
Fig. 1 is a central longitudinal section. The strong lines show the parts
ready for firing. The dotted lines show the transverse lever in a position for
conveniently operating to turn the screw-plug. Fig. 2 is a rear view showing
the parts locked. Fig. 3 is a corresponding view showing the parts unlocked.
♦ * * Figs. G and 7 represent the i>;ieklug-riug detached. Fig. 6 is a face
view, and Fig. 7 a section in the plane of the axis.
The specification then proceeds as follows:
A liberal hole in the line of the axis of the screw-pUig B carries a stout
sliding pin, N, a*t the extreme front of which is a stout head, N'. The portion
of the body adjacent to the head X' is slightly enlarged. The head N' is
adapted to receive the force of the innvdor at th(^ discharge. At the moment of
the discharge this head moves backward, compressing a relatively soft and
expansible packing-ring, M, behind it. Certain portions of this ring will be
distinguished, when necessary, by additional marks, as M' M". The body M'
of this packing is of asbestos saturated with tallow, and affords a sufficiently
yielding mass with the required capacity for enduring heat and for with-
standing the very strong compressive force to which it is subjected by tlie
discharge. It is inclosed between two thin shells, M* M*, of copper, one fitting
the body M' on the inner end the other on the outer side, and nearly incasing the
entire pncking. Both the body M' and the coi)per ^I^ are then inclosed between
two strong shells of brass, M^ M'. The entire packing thus made is adapted to
maintain its form, but to allow a small amount of radial expansion sufficient
to pack the joint tightly against the escape of gas. This expansion is due to
two causes — the tai^ring form of the front end of the pin N, which acts on
630 DECISIONS OF UNITED STATES COURTS IN PATENT CASES.
the interior of the packing, and the powerful compression received from the
head N'. The expansion from one or both causes in sufficient to press the
exterior of the copper M' tightly against the interior of the gun, thus effectu-
ally preventing any leakage of gas.
Claim 1 is the important one and is as follows:
1. The partially-threaded plug B. headed pin N N', extending through said
plug, and yielding packing M, arranged between the head N' and the inner
end of the plug, in combination with each other and with the gun A, arranged
as shown, to allow the pin to l>e driven rearward and compress the packing, as
It will be observed, therefore, that De Bange declared that what he
devised was a " system of packing " which by the force of the explo-
sion of the powder is expanded to make a tight joint to prevent the
leakage of gas. The mechanical parts are but aids to this result, se-
curing in place the packing and enabling its qualities to operate,
enabling it to maintam its form but to allow radial expansion suffi-
cient " to pack the joint tightly against the escape of gas." This ex-
pansion has also the effect of pressing " the copper (M*)" against the
interior of the gun and cooperates to prevent the leakage of gas.
That this packing constitutes the very essence of the invention is
declared in all of the literature on the subject and recognized in all
of the Government publications. The Government now contends for
a limitation of it, and insists that it consists of ^' a yielding packing
M," exactly as described, although the description is declared by De
Bange to represent " the best means of carrying out his invention,"
and he declares also that '^ modifications could be used in the forms
We cannot therefore assent to the contenticwi of the Government,
and in rejecting it we do not render " the claim elastic and indefinite
where it should be certain." We preserve that which was declared
to be and which has always been recognized to be the invention, and
by those competent to declare, whose duty is was to cqmprdiend and