Talbot v. Quaker-State Oil Refining Co.

• Citation: 104 F.2d 967
• Decision Date: 15 March 1939
• Docket Number: No. 6863.,6863.
• Parties: TALBOT et al. v. QUAKER-STATE OIL REFINING CO.
• Court: United States Courts of Appeals. United States Court of Appeals (3rd Circuit)

104 F.2d 967 (1939)

TALBOT et al. v. QUAKER-STATE OIL REFINING CO.

No. 6863.

Circuit Court of Appeals, Third Circuit.

March 15, 1939.

Walter B. Gibbons, of Philadelphia, Pa., and Robert E. Barry and Armand A. Cyr, both of Washington, D. C., for appellants.

J. Villard Frampton, of Oil City, Pa., and Charles R. Fenwick, of Washington, D. C. (Mason, Fenwick & Lawrence, of Washington, D. C., and Frampton & Courtney, of Oil City, Pa., of counsel), for appellee.

Before MARIS and CLARK, Circuit Judges, and KIRKPATRICK, District Judge.

KIRKPATRICK, District Judge.

The appellants, co-owners of a patent for a non-refillable drum for storing lubricating oil, brought this suit for infringement against the appellee. The Court below, sustaining a special defense, dismissed the bill upon the ground that a judgment of the Supreme Court of Pennsylvania to the effect that Talbot, one of the two appellants, had licensed the appellee was conclusive against the parties to this suit under the rule of res judicata; and that ruling presents the question for review.

The essential facts are as follows: In September, 1931, Talbot assigned to Mann, the other appellant, an undivided one-half interest in a number of pending patent applications, including one which subsequently issued as the patent which is the subject of this suit (No. 1,890,421), and at the same time he and Mann entered into a written agreement providing for the sale of the inventions, sharing profits, etc. Some three months later Talbot was employed by the appellee for the specific purpose of adapting his inventions to certain requirements which the appellee had made known to him.

The Court below held, and we agree, that Talbot as a joint owner had power to grant to the appellee, without the consent of Mann, the right to use the invention of the patent in suit, and that a provision in his contract with Mann by which it was agreed that neither would dispose of his share in any of the inventions without the written consent of the other did not affect the appellee in the absence of notice to it. If then, as a matter of fact, it was a part of Talbot's contract of employment that the appellee should have the right to use the patent in suit, this suit for infringement could not be maintained, since a license by one of two joint owners is a complete defense to an infringement suit.

This fact question — whether or not Talbot did license the appellee — was the determining issue of protracted litigation in the Pennsylvania Courts. That litigation originated with a bill in equity brought by the appellee against Talbot in the Court of Common Pleas of Venango County of Pennsylvania to establish its right to use the completed device developed by Talbot while in its employ. The right to use his prior inventions, to the extent that they were incorporated into the improved devices, was necessarily involved.

On appeal, the Supreme Court of Pennsylvania held in substance that Talbot's contract bound him to give the appellee the use of his pending applications, including the one now in suit, as well as improvements made by him while in the appellee's employ. As to the pending applications, there was an obligation upon the appellee to pay him reasonable compensation (the amount of which was not ascertained) in addition to his agreed salary. However, the Court held, if it should turn out that the device covered by the application in question was not for a patentable invention, no compensation would be due. The Court affirmed the decree of the County Court, thus finally adjudicating the contract, but remanded the cause for the determination of the compensation due.

The County Court construed this order as including a direction to determine the patentability of the invention, but, on a second appeal, the...