272 F. 464 | 3rd Cir. | 1921
This case concerns the relative . rights in a patent of an employer and an employee, where the latter makes an invention during his term of employment. This vexed question was the subject of litigation in this circuit, and its principles were discussed and determined by this court in Pressed Steel Car Co. v. Hansen, 137 Fed. 403, 71 C. C. A. 207, 2 L. R. A. (N. S.) 1172, where, in affirming the decision of the lower court, reported at 128 Fed. 444, this court held that, in the absence of an express contract or agreement to invent, the relation'of employer and employee did not vest the employer with the entire property right of an invention of the employee, and to the patent monopoly thereof, or to anything more than a shop right to use such invention. This decision was predicated on the earlier holdings of the Supreme Court of the United States, reported in Dalzell v. Dueber Mfg. Co., 149 U. S. 315, 13 Sup. Ct. 886, 37 L. Ed. 749, where, in a much stronger case then the present case, that court said :
“But a manufacturing corporation, which has employed a skilled workman, for a stated compensation, to take charge of its works, and to devote his time and services to devising and making improvements in articles there manufactured, is not entitled to a conveyance of patents obtained for inventions made by him while so employed, in the absence of express agreement to that effect. Hapgood v. Hewitt, 119 U. S. 226.”
The facts of the present case bring it within these rulings. Carey, the inventor, was a draughtsman employed by the Ingle Machine Company at a salary of $35 a week. His work consisted in making draw
Without entering into detail, we may say that as between Carey and the Ingle Machine Company, the invention never became the property of the Machine Company, and, having no title thereto when it went into bankruptcy, it follows that no title to the invention passed by the sale. There was no contract on Carey’s part to invent, and consequently the case, as we have said, falls within the principle of Pressed Steel Car Company v. Hansen, supra. That case has been followed in the great field of industrial and inventive activity in this circuit, it has made a workable and equitable patent relation between employer and employee, and we see no reason to depart from the principle therein laid down.
Adhering, as this court does, to the principles stated -by this court in that case, we are of opinion the court below erred in dismissing the plaintiff’s bill and in ordering the patent owner to make an assignment of this patent. As there is no question of infringement, and the Dandis Tool Company made, and now makes, no claim by reason of any shop right in the Ingle Machine Company, or that such shop right passed from that company, under the sale in bankruptcy, it follows that a decree of infringement should have been entered, with an accounting.
The decree of the court below is therefore set aside and the case remanded, with directions to the court to reinstate the plaintiff’s bill, to enter a decree of infringement, and proceed with the accounting.