Friedman v. Washburn Co.

• Decision Date: 12 June 1946
• Docket Number: No. 8965.,8965.
• Citation: 155 F.2d 959
• Parties: FRIEDMAN v. WASHBURN CO.
• Court: U.S. Court of Appeals — Seventh Circuit

155 F.2d 959 (1946)

FRIEDMAN v. WASHBURN CO.

No. 8965.

Circuit Court of Appeals, Seventh Circuit.

June 12, 1946.

Maxwell E. Sparrow, of New York City, and Harold R. Nettles, of Freeport, Ill., for appellant.

Andrew F. Wintercorn, of Rockford, Ill., and Irvin H. Fathchild, of Chicago, Ill., for appellee.

Before SPARKS, KERNER and MINTON, Circuit Judges.

SPARKS, Circuit Judge.

This cause is presented to us for a second time, this appeal being from a judgment on the merits of the cause, dismissing the complaint, and directing the fullest allowance of costs permissible.

This court had earlier reversed a judgment of the District Court dismissing appellant's complaint on defendant's motion for judgment on the pleadings. 7 Cir., 145 F.2d 715. The theory on which the dismissed complaint was based was that appellant was entitled to have appellee declared a trustee ex maleficio of a patent alleged to have been wrongly applied for and issued to an employee of appellee on an invention in fact conceived by appellant and confidentially disclosed to another employee of appellee, and to have that patent assigned to himself, with an accounting for profits. We held that the complaint did not state a cause of action under the patent laws since if the facts were true as alleged by appellant, the patent was void, under the ruling in Kennedy v. Hazelton, 128 U.S. 667, 9 S. Ct. 202, 32 L.Ed. 576. However, we further held that, while the bill of complaint was inartistically drafted, it did set up sufficient allegations to state a cause of action for misappropriation of an invention confidentially disclosed to appellee, and that if those allegations could be supported by sufficient evidence, appellant might be entitled to some relief for such misappropriation, having in mind the further teaching of the Kennedy case, supra, and other cases cited, that even though a bill to compel assignment of a void patent and for an accounting for profits would not lie, a plaintiff might be entitled to maintain an action to recover damages.

The device involved in this lawsuit, which appellant asserted was invented by himself and which was the subject of patent No. 2,241,229, subsequently applied for by an employee of appellee, Chester Williams, and, on his assignment, issued to appellee, was a strainer having a one-piece frame made of a thermoplastic material to which was permanently attached a wire mesh bowl. Appellant contends that on February 5, 1938, he made complete disclosure of this strainer to appellee, and also of the method of permanently attaching the bowl to the frame by compression under heat. Appellee contends that the disclosures all related to a strainer then being developed by appellant consisting of a one-piece frame for use with a number of removable metal bowls of different size meshes. Appellant had already made application for patent on this device on January 11, 1938, shortly before the interview, and patent No. 2,174,577 was issued thereon, October 3, 1939.

Appellant testified that he had called upon an officer of appellee, one Tomajan, on February 5, 1938, "to interest the Washburn Company to enter with me taking over the strainers, either on a royalty basis or outright purchase, or to make the strainers for me." He stated that he took with him several samples of strainers, one a metal one and one plastic, and that before he showed anything to Tomajan he asked him to keep it all confidential because the patent had not yet issued, to which Tomajan agreed. He also showed him, and left with him, the drawings of the metal strainer and a copy of the patent application for the removable bowl strainer and a sample of the plastic handle to be used in connection therewith. He asserted, and his testimony was corroborated by that of a cousin who had worked with him in the development of his strainers, that before he called upon Tomajan he had experimented with thermoplastic frames, inserting metal bowls therein and permanently attaching them by means of compression under heat. She stated that he had made up several samples to take along with him for the interview.

Appellant's principal witness, Tomajan, testified that all he and appellant had talked about was the removable bowl strainer which the latter was developing and wanted assistance for in producing and marketing. He denied that anything had been said about the plastic-frame strainer with the permanently attached metal bowl. His testimony was corroborated by that of another employee, one Hood, who had his office in the same room with Tomajan and who, both testified, was present during the interview with appellant, although the latter stated that Tomajan was alone when he talked to him.

On February 10, 1938, Tomajan wrote appellant a letter upon which the latter strongly relies.¹ He argues that the statement that "the plastic frame strainer is one that we feel would present difficulties" effectively discouraged him from going on with it and that he was thereby precluded from developing his own invention while appellee secretly took up the concept and reduced it to successful practice. Appellee, on the contrary, contends that the letter itself indicates that the "plastic frame strainer" referred to was the removable-bowl one involved in the patent application, and that this interpretation is corroborated by the evidence of the cousin who received the package and identified the strainers therein contained as "one one-piece metal and one thermoplastic with removable cup."

We think a fair reading of all the evidence, both oral and documentary, supports appellee's contentions as to the interview and as to the letter. Apart from the conflict in the evidence which the trial court resolved adversely to appellant, we think other facts disclosed by the record sustain the decision. It appears to us significant that although appellant and his witness both testified that they made up several samples of the plastic frame with the bowl permanently attached, none of these samples survived for appellant to use as exhibits in his cause, although he introduced numerous exhibits in support of his contentions. An examination of two of these exhibits relied upon as examples of appellant's conception of a rigid frame with, in one case a mirror, and in the other, a strainer bowl, permanently attached thereto, discloses that both were made some time after the interview, bearing legends embossed in the handle that indicate that they were made up after appellant's removable bowl strainer went into production, a time fixed by other evidence as after August 10, 1938. In fact, it appears to us, that the only plastic exhibits that may have been in existence at the time of the interview are the frame for use with the removable bowl, and one introduced by appellee, a plastic handle strainer attached to a metal ring carrying the bowl. Tomajan stated that appellee had been using plastic handles since 1929.

We also consider it quite significant that while appellant now asserts that he was experimenting with plastic some time before the interview with Tomajan, and had before then succeeded in...