124 C. Cls.

PATENTS-Continued

tiffs, the special plea being based on the ground
that the licensing system of the plaintiffs with
respect to the two patents in suit was a misuse of
the patent monopoly contrary to public policy and
law, and in violation of the anti-trust laws; it is
held that, because of misuse of the patents shown
by the evidence adduced, the sole remaining plain-
tiff, Radcliffe Morris Urquhart, is not entitled to
recover. Urquhart, 441.

V. The patents in suit deal with the production of
mechanical foam, patent No. 2,106,043, relating
both to a foam-producing mechanism and a method
of producing mechanical foam, and patent No.
2,198,585 relating to a method of producing me-
chanical foam. Id.

VI. Modern fire fighting technique has demonstrated
that a very efficient method for fighting oil or
gasoline fires is to cover the burning material with
a blanket of foam either a "chemical foam" or a
"mechanical foam." In the mechanical foam
type, to which the patents in suit are directed,
bubbles of gas or air are entrained by physical
agitation of a fire fighting fluid to which a foam-
forming material is added. Id.

VII. The owners of the Urquhart patents have not com-
mercially manufactured or sold foam producers or
foam stabilizers for mechanical foam but instead
have depended upon the issuance of licenses for
the promotion of the two patents in suit and for
compensation therefrom. Two different license
plans were formulated, each of which involved the
licensing of the unpatented foam-forming material.
Under one plan the plaintiffs entered into license
agreements with certain appointed manufacturers
on a royalty basis. The other licensing plan was
a direct license to the ultimate user and was known
as a "consumer's license." Id.

124 C. Cls.

PATENTS-Continued

VIII. On a comparison of the royalty rates in the two
different licensing plans, and the specific provisions
of each plan, it is concluded that it would obviously
be adverse to the interest of an appointed manu-
facturer to negotiate a direct license between a
consumer and the Urquharts, and there is no
evidence that any consumer license for use of the
two patents in suit was ever requested from the
Urquharts or ever executed. Id.

IX. It is concluded that by their licensing plans involving
different royalty rates, the Urquharts have created
two different classes of customers, one favored over
the other in the purchase of unpatented materials;
and that they have enlarged the monopoly of the
patents beyond their legal scope by channeling
trade in unpatented materials through their ap-
pointed manufacturers. Further, at no time under
the direct consumer license would it have been
possible for a purchaser who desired to buy un-
patented stabilizer from a competitor of the
Urquharts' appointed manufacturer to do so except
on royalty terms less favorable to the purchaser.
Id.

X. An Act of Congress is not retroactive in its applica-
tion unless it is so provided in the Act. Strategical
Demolition, 492.

Statutes 261.

XI. In a suit by plaintiff corporation, owner of the
patent in suit, where it was alleged in the petition
that one of the four inventors of the patent was
in the employ of the Government at the time of
the invention, it was held (119 C. Cls. 291) that
the statutory disqualification (28 U. S. C. 1498)
was applicable and the petition was dismissed on
defendant's motion. C. Cls. No. 49967. Id.
United States 97.

XII. Where at the plaintiff's instigation there was intro-
duced in the House of Representatives a bill, H.
R. 3975, which, if it had been enacted in the form
in which it was introduced, would have changed
the law as laid down by the United States Court
of Claims in its decision (119 C. Cls. 291) a verse

124 C. Cls.

PATENTS-Continued

to the plaintiff, and would have permitted those
joint patentees who were not employees of the
Government at the time of an invention, or their
assignee, to sue, although one or more of their co-
patentees were such employees; and where, after
amendment, the bill as enacted July 17, 1952 (66
Stat. 757), did not affect at all the law as applied
by the Court of Claims in its former decision; it
is held that in accordance with the accepted rules
of construction the statute must be given only
prospective operation.
Id.

United States 94.

XIII. The legislative history of the Act of July 17, 1952
(66 Stat. 757; 122 C. Cls. XXVII) does not sustain
plaintiff's contention that the statute gave Gov-
ernment employee-inventors remedies for rights
which they possessed before its enactment. The
1952 Act made new law and created rights in a
class of persons who, if the law had not been
changed, would have had no rights. Id.

United States 94.

XIV. In the enactment of the 1952 Act Congress refused
to change the law, as laid down by the Court of
Claims, that an invention by four persons is an
invention by each of the four and that none of
them or their assignees can recover for the use by
the Government of the patent if one or more of
the inventors was in the employ of the Govern-
ment in the capacity specified in the statute.
Under the former statute any employment at all
by the Government put the employee's patent
outside the scope of the Government's consent to
be sued. Under the 1952 statute only specified
kinds of Government employment do so. Id.

XV. In plaintiff's suit for alleged breach of an agreement,
commonly called a royalty adjustment agreement,
whereby the defendant was granted a non-exclusive
right and license, for the consideration and under
the terms specified therein, to use plaintiff's inven-
tions, defendant's motion is granted and the case
is remanded and referred to the commissioner for
further proof. Davis Airfoils, Inc., 499.
Courts

466.

124 C. Cls.

PATENTS-Continued

XVI. Upon the original hearing before the commissioner,
at which the defendant claimed it had not breached
the agreement and interposed the further defense,
under paragraph 13 of the agreement, that the
patents in suit were invalid, plaintiff's objection
that the defendant as a licensee could not question
the validity of the patents under the license agree-
ment, was overruled by the commissioner, and his
ruling is sustained by the court where it is shown
that the defendant, in said agreement, expressly
reserved the right, in the circumstances presented
in the instant case, to question the validity of the
patents covered by the agreement and to submit
evidence in support of such claim of invalidity. Id.
Patents

129 (3).

XVII. It is the general rule, well established by the decisions
of the courts with respect to patent licenses, that
a licensee waives his right to attack validity of the
patent except where the right is expressly re-
served. Id.

XVIII. It is held that in the instant case a proper showing
has been made by the defendant of newly dis-
covered evidence not available for submission at
the hearing before the commissioner. In view of
this showing the case is remanded for the taking
of further evidence as to the validity of claim 13
of patent No. 1,942,688 and such rebuttal evidence
as may be offered. The case is not to be opened
for further proof as to any other phase or claim
with respect to the agreement in suit or the
patents covered thereby. Id.

Courts 466.

See also Report To Congress VII, VIII, IX, X, XI, XII, XIII,
XIV, XV; Taxes I, II, III, IV, V, VI, VII, VIII.

PAY AND ALLOWANCES.

I. Where plaintiff sues for $100 per month additional
pay for the period September 1, 1947, to August
26, 1948, under the provisions of the Army-Navy-
Public Health Service Medical Officer Procure-
ment Act of August 5, 1947 (61 Stat. 776); it is
held that plaintiff is not entitled to recover.
Kinney, 142.

Army and Navy 13 (8).

124 C. Cls.

PAY AND ALLOWANCES-Continued

II. After service in the Army as a private and honorable
discharge therefrom, plaintiff completed his edu-
cation and received his degree of Doctor of Dental
Surgery. On August 6, 1946, he was commis-
sioned as first lieutenant in the Dental Corps of
the Army of the United States. On November 18,
1946, plaintiff executed a "Category 8 Classifica-
tion" indicating his election to continue on ex-
tended active duty for a period of 24 months, and
was serving in that capacity at the time of the
enactment of the Act under which he claims,
which became effective September 1, 1947. On
September 15, 1947, plaintiff made application for
the additional compensation of $100 per month
provided for by the Act, stating again that he
wished to remain on active duty until November
1948. The application was denied on the ground
that in order to qualify for the additional com-
pensation of $100 per month "volunteer officers
must volunteer and be accepted for extended
active duty for one year or more subsequent to
the passage of the Act." Id.

Army and Navy 13 (8).

III. The incentive pay provided by the Act was to be
made to medical and dental officers who should,
during the five-year period immediately following
the effective date of the Act, volunteer and be
accepted for extended active duty for one year or
longer. Where plaintiff had volunteered for two
years of service and was accepted prior to the
effective date of the Act which offered the induce-
ment bonus; it is held that plaintiff does not come
within the provisions of the Act. Id.

Army and Navy 13 (8).

IV. Plaintiff's service, for which he had volunteered
prior to the passage of the incentive pay act, was
part of the previous contract with the Govern-
ment and he was paid the regular compensation
for the period of his volunteer service. He did
not volunteer for any extended service and he did
not actually serve one year after the passage of
the act. Id.

V. Where plaintiff sues for $100 per month incentive

pay for the period September 1, 1947, to June 30,