228 F. 762 | E.D. Pa. | 1916
This case is ruled by Marble Co. v. Ripley, 77 U. S. 339, 19 L. Ed. 955, upon the basis of the finding of this court, affirmed by the Circuit Court of Appeals in Thullen v. Triumph Electric Co., 227 Fed. 837, - C. C. A. ---. We are asked to dispose of it, and sustain or dismiss the bill of complaint, according as it may be found that the plaintiff is or is not entitled to the specific relief prayed; the plaintiff having expressly waived its right in this suit to any other relief, or to have the cause transferred to the law side of the court.
There is no dispute of any merit over the main facts, and no necessity for any special findings as to them. Ignoring the other features of its business, the plaintiff is a manufacturer of electric motors. The defendant is an electrical engineer. The parties entered into a contract, evidenced by an exchange of letters. The only features of the contract with which we arc now concerned are these:
The defendant was to enter the employ of the plaintiff, in charge of the engineering department of its plant, and if in the course of his employment he invented any design in the line of the manufacturing business conducted by plaintiff, for which letters patent were issued, the patent was to be the property of the plaintiff. The expense attending the invention and the grant of letters patent was to be met by the plaintiff. The defendant entered the employ of plaintiff in
As nearly as one not versed in the science of electrical engineering, nor familiar with its terminology, can grasp or express the controller idea involved in the invention, it is that of a controller system, as distinguished from a controller existing as a separate and individual-unit. -The defendant in his contract of employment had retained as his property anything of which he might be the inventor outside of the line manufactured by the plaintiff. Thinking the invention above referred to to be one the right to which belonged to him, he paid the plaintiff for the timé and material expended in the experimental work of developing and testing the inventive idea, and at his own expense applied for and subsequently was granted letters patent covering the invention. Tetters patent were applied for December, 1912,. and issued August 19, 1913.
Another feature of the contract of employment was that the defendant was to receive a compensation based upon a yearly salary rate. The plaintiff construed the employment as one at will, and discharged, defendant from its employ, paying him to a time between the date of the application for and the grant of the letters patent. The defendant brought his action for breach of contract on the theory that his employment was by the year. The court held the employment to be at will and rendered judgment for the defendant in that action which judgment was, on appeal, affirmed by the Circuit Court of Appeals. Thullen v. Triumph Electric Co., supra.
Subsequently the plaintiff in the present proceedings filed its bill of complaint. The sole question involved, as already stated, is the right of the plaintiff to the equitable remedy of a decree for specific performance of the contract to assign this patent. The language of- the contract is as follows:
“In the event of.any design being capable of being made the subject-matter of a patent application, such application and patent shall be assigned to the company, they paying the necessary attorney and patent-office fees.”
“It is understood that this does not apply to any patentable design, you [the .defendant] may discover, not applicable to the line manufactured by this company [the plaintiff].”
The letters patent bear the number- 1,070,638, and the invention is described in the application -as relating—
“to systems for automatically controlling electric motors and has particular reference to the control of electrically driven feed carriages for friction or other saws.”
Another consideration, already adverted to, is that it is not enough that the legal right is in the plaintiff and that he might be able to recover damages for a breach of the contract. It must appear that it was the intendment of the defendant that the plaintiff should have the right. When a contract is so drawn that a court of law will construe it in plaintiff’s favor and. permit a recovery in damages for its breach, and yet it does not appear that the defendant had in contemplation that he was contracting away what the plaintiff may at law successfully claim, this particular form of equitable remedy may be withheld, and the plaintiff be remitted to his right to recover damages. It is because of this it has been said that the breach by the defendant must have in it an element somewhat akin to the unconscionable. A broad contract
Independently of the stipulation made by plaintiff, these considerations (except the one denying plaintiff to have any claim to the invention) would lead only to the conclusion of refusing a decree for specific performance. Equity, having taken jurisdiction of the case, might give other relief, as by proceeding to an award of damages, or the cause might be transferred to tire law side of the court. Under the stipulation, however, the bill should be dismissed, with costs to defendant, and a decree to this effect may be submitted.
The former disposition made of the case was for the purpose of enabling plaintiff to ask for other relief. As this has now been expressly waived in this proceeding, and for the further reason that the former ruling was in part based upon a mistaken view of one feature of the facts, the opinion handed down is withdrawn. Special findings of certain minor facts and of the conclusions reached are submitted herewith.
Trial Hearing on Bill, Answer, and Proofs.
Findings of Fact.
(1) Payment for the labor employed and materials used in the experimental work of developing the defendant’s invention was made in the bona fide belief on the part of the defendant that the invention did not relate to plaintiff’s line of manufacture. Such payment was made, however, without the knowledge on the part of plaintiff that it related to the invention involved in this proceeding. As soon as knowledge of the invention came to the plaintiff, it was promptly claimed to be its property.
(2) The invention referred to was not in the contemplation of the defendant as one of the inventions which under the contract of the parties became the property of the plaintiff.
Conclusions.
(1) The contract of employment between the parties was terminable at will.
(2) The plaintiff is not entitled to the relief of the awarding of the remedy of specific performance or to a decree that the letters patent be assigned to it by defendant.
(3) Under the stipulation made by plaintiff, the bill of complaint should be dismissed, with costs to defendant.