94 F.Supp. 843 (S.D.Cal. 1950), 10930, Maurice A. Garbell, Inc. v. Consolidated Vultee Aircraft Corp.

Docket Nº:10930-Y.
Citation:94 F.Supp. 843
Case Date:December 07, 1950
Court:United States District Courts, 9th Circuit, Southern District of California

Page 843

94 F.Supp. 843 (S.D.Cal. 1950)

88 U.S.P.Q. 59

MAURICE A. GARBELL, Inc., et al.



No. 10930-Y.

United States District Court, S.D. California.

Dec. 7, 1950

Page 844

Lyon & Lyon, Frederick W. Lyon, Los Angeles, Cal., Sullivan, Roche, Johnson & Farraher, Theo. Roche, Jr., San Francisco, Cal., for the plaintiffs.

Robert B. Watts, San Diego, Cal., Fred Gerlach, Chicago, Ill., for the defendants.

YANKWICH, District Judge.

The above-entitled cause, heretofore tried, argued and submitted, is now decided as follows:

Judgment will be for the plaintiff that the patent for 'a fluid-foil lifting surface', covered by Letters Patent 2,441,758, issued May 18, 1948, is valid, and that the defendants have infringed Claims 1, 2, 3, 5, 6 and 12.

Injunction will issue against further infringement by the defendants and those under their control.

An accounting for profits and damages is ordered, and the matter is referred to Leslie S. Bowden, Esq. as special master to take such accounting.

Findings and interlocutory decree to be prepared by counsel for the plaintiff under Local Rule 7.

Costs to the plaintiff. No attorney's fees.


I. Patent Valid and Infringed

I am of the view that the patent for a 'fluid-foil lifting surface', covered by Letters Patent 2,441,758, issued May 18, 1948, is valid and that the claims in suit,- Claims 1, 2, 3, 5, 6, and 12,- are infringed by the defendants. I state the grounds briefly.

Whichever of these claims be taken as typical, it is quite evident that the invention it describes is not anticipated in the prior art, the literature in the field, or in the special constructions referred to in the records or the tailless plane model.

Garbell teaches an original method of wing construction consisting of a highly tapered wing, having a stall which has its inception over a large area inboard of the lateral control surface that spreads inwardly. The result is a special stall characteristic. (See Appendix A.) None of the references, such as Cronstedt, No. 1,546,644, Soldenhoff, No. 1,817,275, Sigrist, No. 1,839,349, and Focke, No. 1,890,079,- cited in the patent office,- or those relied on at the trial as anticipation or to prove the state of the art, such as Soldenhoff, No. 1,729,970, Callaudet, No. 1,493,928, and Hovgard, No. 2,165,482, and the others, would produce the stall characteristic of the wing constructed according to the teachings of the Garbell patent. And if we apply to them the test of identity of (1) means, (2) function, and (3) result, they are not anticipatory of the Garbell invention.

By the same token, the accused device (Model 240 wing) embodies all the elements of the construction taught by Garbell. Indeed, no evidence was offered on the part of the defendants to show absence of infringement or departure in the accused device from the teachings of the patent.

To the contrary, the bulk of the evidence and the voluminous record made by the defendants were directed at the claim of anticipation already disposed of and the claim of implied license arising from a free shop right, to which attention will be directed now.

II. No Shop Rights

The claim of free shop right and implied license is based upon the 'invention agreement' signed by the plaintiff at the beginning of his employment, on September 7, 1942. This agreement required the employee to disclose to the company, Consolidated Aircraft Corporation, all inventions made, developed, perfected, devised or conceived by the employee during his employment. The company agreed to pay to the employee the sum of $10, if it considered the invention or improvement of substantial value and patentable, and $40, upon the employee's executing an application for U.S. Letters Patent, together with an assignment to the Company. It was provided in Clause 6 of the Agreement:

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'If the Company shall fail to elect in writing that it desires to prosecute a patent application on any invention or improvement specified in paragraph 1 hereof within nine months following the complete disclosure thereof to the Company, then all rights of the Company in and to such invention or improvement shall revert to the Employee with the exception only that the Company shall have a free shop right with respect thereto.' Neither the sum of $10, nor the sum of $40 was paid. Letters Patent were applied for after the employment cased. No assignment of the Letters Patent was ever executed.

While the evidence shows that the invention was discussed at different times with various executives of the defendants, not only did they not assert any right thereto, but from the very beginning they considered it impractical, and so stated to the plaintiff. And, in one instance, at least, the statement of impracticability was admittedly stated in not very genteel language. The fullest disclosure of the patented invention made to the head of the defendants' Patent Department, on March 2, 1945, and passed through channels, bears the final rejection in a pencilled notation, 'Not (interested) at this time'. And that notation, like the 'damned spot' in Macbeth, will not 'out', for all adjurations. For it spells rejection of the invention, which, later, without permission, the company used, and which now, after the Patent Office, in proceedings which were pending from July 16, 1946, to March 18, 1949,-twenty-two months- found patentability, and on which it allowed fourteen broad claims, including the claims in suit, they would appropriate, under the claim of 'free shop right'. But their rejection of the invention was unconditional and unequivocal. The first attempt to process the invention through the Company's own channels did not occur until months after the plaintiff had left their employ, and was without notice to him. Under the circumstances, we have as complete a rejection of the invention as confronted the Court in Pointer v. Six Wheel Corporation, 9 Cir., 1950, 177 F.2d 153.

It should be added, and I so find, that the conclusive evidence is that the invention was conceived before the plaintiff entered the defendants' employ in 1942, that it was complete at the time, containing all the elements which later were embodied in the claims in suit, and that nothing was added to the conception or practical carrying out of the invention by anything that was done by the plaintiff during his employment by the defendants.

So that, while the evidence in the case shows complete rejection of the invention when it was disclosed, there is the added fact that it was not,- in the language of the invention agreement,- 'made, developed, perfected, devised or conceived' during the employment. So no rights can be claimed under any of the clauses of the 'invention agreement', especially the implied license clause (Paragraph 6).

It is significant that in the correspondence with the defendants, after the application was filed, the representative of the Company, in speaking in retrospect of their antecedent rejections, stated their view that the invention which they now would claim, they did not deem patentable at the time. The letter of G. T. Gerlach, their patent director, dated August 15, 1946, thus sums up the conclusions reached as to the disclosure contained in the paper dated December 19, 1944:

'On December 19, 1944, during your employment at CVAC, you submitted a copy of your paper 'Effective Control of Stalling Characteristics of Highly Tapered and Swept-back Wings' to the Patent Department of this company, as a Disclosure of Invention under the terms of the CVAC Agreement executed by you on September 7, 1942.

'Our investigation of this matter indicated (a) that it did not contain material of a patentable nature, and (b) the stall control techniques set forth in the article were well known and amply disclosed in many prior patents. A copy of our Search Report is attached. In view of this, a decision was reached to inactivate the disclosure from the standpoint of CVAC's filing a patent application, and our file indicates

Page 846

that you were verbally informed of this decision'. (Emphasis added.)

So the pattern which this lawsuit discloses as to the relation between the plaintiff and the defendants with regard to the invention is this: An employee being rebuffed at all times in his attempts to interest his employer in an outside invention conceived and perfected before employment, the employer rejecting the ideas as impracticable, asserting no rights to them, under the invention contract during the period of employment, taking no steps to acquire them under a separate contractual arrangement (in fact, rejecting the offer to acquire them as an outside invention, although acquiring such outside inventions from others), and then, after his judgment has proved faulty and the Patent Office has seen invention over the prior art in the proffered invention, endeavoring to assert rights thereto.

Both accepted legal principles and the sound ethical norms which should dominate the relation of employer and employee command a rejection of this belated claim.

Hence the ruling above made.

Findings of Fact


That at all of the times herein mentioned, Maurice A. Garbell, Inc., was, and still is, a corporation organized and...

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