316 Mass. 240 | Mass. | 1944
The plaintiff manufactures an automatic wood heel edge setting machine known as the Howard machine upon which it bolds a patent, and leases the machines under license contracts to wood heel manufacturers.
The plaintiff’s wood heel edge setting machine was invented by one Howard in 1929, who assigned the patent to
Lawson had been employed prior to 1927 as a draftsman in an experimental machine shop maintained by the A. E. Little Company, and had worked on the Howard machine and had made some drawings for the patent application. He left the employ of the A. E. Little Company in 1927, and became an employee of the United Shoe Machinery Corporation as an inventor. His employment there terminated in September, 1932. He then worked on inventions for one Matson until Matson went out of business in July, 1933. Sometime thereafter, in 1933, Lawson became an employee of the plaintiff. Little, who owned all the stock of the plaintiff, testified that after a series of conversations with Lawson beginning in August or September, 1933, he hired Lawson on December 26, 1933; that Pope would not return the plaintiff’s drawings; that he told Lawson that he needed a man to make complete drawings of the machine, and all its parts; that he wanted that done first "and then — as a draftsman-inventor, and if we decide to install a shop of our own, supervise the work of making the parts, and we shall expect — I want you to be able to carry out any — willing to carry out any suggestions I make for other things,
The manufacture, leasing and servicing of the edge setting machine and the supplying of parts were practically all the business that the plaintiff did. It was desirable, therefore, that the plaintiff keep its machine up to date. After a wood heel is fashioned, a thin piece of leather called a top lift is attached to the bottom of the heel. Edge setting consists in finishing and polishing the round edge or periphery of this top lift and in rolling in the joint, making the surfaces of the heel and the edge of the top lift smooth and continuous. This work was done by the plaintiff’s machine by rotating and oscillating the heel against a heated iron. The plaintiff’s machine did not set or polish the straight edge or breast of the top lift. When the machine was invented, most of the wood heels were of the “Louis” type
The judge found that there was no express contract that Lawson should assign any patents, nor was he satisfied that Lawson was expressly employed as an inventor, but he found that it was understood that Lawson should study improvements and developments for the machine and that patentable inventions might result from the work that he was to do or the ideas that he might conceive; that Lawson, while employed for the purpose, among others, of developing and perfecting the plaintiff’s machine and if possible of combining with the operation of setting the periphery of the top lift the further operation of setting the breast of the top lift, conceived an idea for such a combination, and on his own time so far perfected it as to interest others to promise financial aid; and that this was accomplished by him before he left the plaintiff’s employment and when he knew that the
The principal contention of the defendants is that Lawson was employed as a mechanic draftsman and superintendent and that his general employment in these capacities would not support any implied obligation to make inventions and to assign the patents therefor to the plaintiff.
One by merely entering an employment requiring the performance of services of a noninventive nature does not lose his rights to any inventions that he may make during the employment, although the employment may have afforded the opportunity or occasion for the conception of an idea which may lead to a patent and the rendition of services in the course of his employment may have so enhanced his mechanical skill, scientific knowledge and inventive faculties as to enable him to develop and perfect the idea into a patentable article, and this is true even if the patent is for an improvement upon a device or process used by the employer or is of such great practical value as to supersede the devices or processes with which the employee became familiar during his employment. Public policy favors the exercise by an individual of his inventive powers and seeks to stimulate the exertion of such powers by granting him the exclusive use and enjoyment of the fruits of his endeavors for the period of seventeen years. The law looks upon an invention as the property of the one who conceived, developed and perfected it, and establishes, protects and enforces the inventor’s rights in his invention unless he has contracted away those rights. American Circular Loom Co. v. Wilson, 198 Mass. 182. American Stay Co. v. Delaney, 211 Mass. 229. Manton-Gaulin Manuf. Co. Inc. v. Colony, 255 Mass. 194. New Method Die & Cut-Out Co. Inc. v. Milton Bradley Co. 289 Mass. 277. George C. Miller & Co. Inc. v. Beagen, 293 Mass. 54. Hapgood v. Hewitt, 119 U. S. 226. Dalzell v. Dueber Watch Case Manuf. Co. 149 U. S. 315. United States v. Dubilier Condenser Corp. 289 U. S. 178. Pressed Steel Car Co. v. Hansen, 137 Fed. 403. State Board of Education v. Bourne, 150 Fla. 323. Gear Grinding Machine Co. v. Stuber, 282 Mich. 455.
One may be hired for the specific purpose of making a particular invention or a series of inventions in some special branch of a business. The employee is ordinarily paid wages while he is engaged in preparing drawings, making researches, conducting experiments and performing whatever other things he deems necessary to accomplish the purpose of his employment. If the employee fails to reach his goal the loss falls upon the employer, but if he succeeds in accomplishing the prescribed result then the invention belongs to the employer even though the terms of employment contain no express provision dealing with the ownership of whatever inventions may be developed. If the employer contemplates the discovery of an invention and enters into a contract with another to endeavor to make the invention for the benefit of the employer and the contract, construed in the light of the attending circumstances, shows that the employee must have reasonably understood that such inventions as resulted from his performance of the contract should belong to the employer, then the employee is under an implied obligation to assign any patents acquired by him for said inventions to his employer. Solomons v. United States, 137 U. S. 342. Standard Parts Co. v. Peck, 264 U. S. 52. Magnetic Manuf. Co. v. Dings Magnetic Separator Co. 16 Fed. (2d) 739. Goodyear Tire & Rubber Co. v. Miller, 22 Fed. (2d) 353. Houghton v. United States, 23 Fed. (2d) 386, affirming 20 Fed. (2d) 434. St. Louis & O’Fallon Coal Co. v. Dinwiddie, 53 Fed. (2d) 655, affirmed Dinwiddie v. St. Louis & O’Fallon Coal Co. 64 Fed.
Even though- Lawson was not expressly employed as an inventor, he was hired for the specific purpose of developing and perfecting the plaintiff’s edge setting machine. That apparently was Lawson’s principal work after the plaintiff had succeeded in building its own machines and putting them on the market. Little and Liberty knew that the change in the style of wooden heels from the Louis to the Cuban type would create a demand by the wood heel manufacturers for an edge setting machine that would set the breast of the Cuban heel. Lawson attempted to work out an attachment for the plaintiff’s machine that would set the breast, and also attempted to work out a machine that would accomplish this by having the iron travel around the heel. He reported to Little that both propositions were not feasible. Lawson had previously assigned to the plaintiff another improvement on the machine which he had invented. If Lawson succeeded in increasing the efficiency of the plaintiff’s machine and in improving it so that it would set the breasts of Cuban heels, then the benefit of this work, the performance of which was one of the purposes for which he was hired and paid, would accrue to the plaintiff; and if an invention resulted from the execution of this work, then it could properly be found that an implied term of his employment was that he should assign to the plaintiff any patents that might result from this work. We think that the judge, in view of his finding as to the nature of Lawson’s work and the granting of relief to the plaintiff, has in effect found that Lawson was under an implied obligation to assign the patent to the plaintiff and we draw the same inference from his findings. Distasio v. Surrette Storage Battery Co., ante, 133, 135. It follows that an implied obligation to assign the patent to the plaintiff arose out of Lawson’s employment.
The judge found that Lawson conceived the idea of a machine which would set all the edges of the top lift by having an iron rotate about a stationary heel; that it appeared from Lawson’s affidavit that “he invented his machine, made drawings of it and explained it to others in May, 1937”; that he completed his drawing on June 30, 1937, and showed the drawing to a patent attorney; that neither the idea nor the drawing was developed completely enough on August 20, 1937, to permit the construction of the machine; and that the idea for the construction of the new machine at the time Lawson left the plaintiff’s employment on August 28, 1937, “was sufficiently definite in his mind and in the minds of others that it was workable and practical and capable of development to make it possible to secure financial backing for its development.” We think these findings bring the case within the decisions last cited if Lawson may be said to have made the invention while in the plaintiff’s employment.
The defendants contend that Lawson had not made any invention up to the time he quit his employment. No new machine had been constructed or put in operation at that time, but he had worked at his home and prepared a drawing of the proposed machine. Of course there is a distinction between the conception of an idea and the reduction of the idea into practice. The idea is only the starting point, and it does not become an invention until it is developed and perfected and becomes embodied in some tangible form which becomes some novel and useful device or process. Lamson v. Martin, 159 Mass. 557. T. H. Symington Co. v. National Malleable Castings Co. 250 U. S. 383. United States v. Dubilier Condenser Corp. 289 U. S. 178. Lawson had progressed far beyond a mere mental concept of the new machine. He had prepared a drawing which was sufficient to satisfy his own patent attorney and the attorney of Porter that it would not be an infringement of the plaintiff’s machine and to induce Porter to invest in the project
The defendants make various other contentions which may be briefly discussed. When Lawson left the employment of the United Shoe Machinery Corporation in September, 1932, he was restricted by a contract made with that company from making any inventions of shoe machinery for others within the period of two years after he quit his employment with the company. The defendants urge that the contract asserted by the plaintiff to have been made with Lawson in 1933 was illegal as it was a breach, as both Lawson and the plaintiff knew, of Lawson’s contract with the United Shoe Machinery Corporation. The short answer to this contention is that illegality is not pleaded by the defendants and the illegality was not of such a nature that the court of
We find nothing in the record indicating any error in the finding that the plaintiff was not guilty of laches. Westhampton Reservoir Recreation Corp. v. Hodder, 307 Mass. 288, 291. Fortier v. H. P. Hood & Sons, Inc. 307 Mass. 292, 301.
The defendants finally contend that the plaintiff, having previously contended that two of its employees, Bratt and Liberty, had invented the new machine, is estopped from contending that it was invented by Lawson. Lawson filed an application for a patent on March 16, 1938, and Bratt and Liberty filed their applications on January 12, 1939. The patent office issued a declaration of interference in reference to the two edge setting machines mentioned in the applications. The question then was one of priority between rival inventors. Bratt and Liberty filed a preliminary statement giving the date of their first drawing as July 1, 1937, but Lawson filed an affidavit giving the date as to when he made drawings and disclosed the invention to others as May 21, 1937. After this affidavit was filed, Bratt and Liberty offered no other evidence in the interference proceedings which then terminated on September 8, 1941, and Lawson was granted a patent on June 16, 1942. The evidence would justify a finding that the plaintiff never knew that Lawson had invented the machine while he was in its employ or at a date prior to that urged by Bratt and Liberty as the time they made the invention. The judge could find that the plaintiff was ignorant of the date of Lawson’s invention, and did not mislead the defendants or induce them to change their positions. The defendants knew from the beginning when Lawson discovered the invention. One who has been shown to have mistaken his remedy, when facts in possession of a defendant are disclosed, is not thereby barred from availing himself of the proper remedy. The question of estoppel is ordinarily a question of fact, and the finding
The decree ordered, in so far as it would grant relief under the fifth prayer of the bill, enjoining the defendants “from manufacturing, marketing, selling, leasing, renting or in any way exploiting any invention, device, improvement, machine or attachment for setting the edges or breasts of heels for shoes,” was too broad and was beyond the scope of the bill. Pickard v. Clancy, 225 Mass. 89. Matter of Lyon, 301 Mass. 30. Blair’s Foodland Inc. v. Shuman’s Foodland, Inc. 311 Mass. 172. The order must be modified by striking out the granting of any relief under the fifth prayer of the bill and as modified must be affirmed.
Ordered accordingly.