American Circular Loom Co. v. Wilson
| Decision Date | 04 March 1908 |
| Parties | AMERICAN CIRCULAR LOOM CO. v. WILSON et al. |
| Court | United States State Supreme Judicial Court of Massachusetts Supreme Court |
Whipple Sears & Ogden (Sherman L. Whipple and Alexander Lincoln, of counsel), for appellants.
Charles F. Perkins and Anson M. Lyman, for appellee.
It is admitted that the defendant Emma M. Wilson received her assignments without giving any valuable consideration, and that her rights are no greater than those of her husband, the other defendant. The only questions accordingly to be considered are those which arise in determining the rights of the plaintiff against James S. Wilson, who will hereafter be called the defendant. Certain facts have been found by a master to whom the case was referred by the superior court and are set out in his report and supplementary report and in statements made by him in reference to 250 suggestions and requests for findings of fact and rulings of law made to the master by the parties; and some additional findings of fact were made by the judge who heard the arguments of counsel upon the exceptions to the master's report and upon the merits. These findings are stated in the elaborate order for a final decree made by that judge, and were made as inferences upon the facts reported by the master. The right and duty of the court to make such additional or different findings of fact, without hearing further evidence, by way of inference from the facts reported by the master, cannot be contested. Kennedy v. Welch, 83 N.E. 11; Young v. Winkley, 191 Mass. 570, 78 N.E. 377; Crane v. Brooks, 189 Mass. 228, 75 N.E. 710; Bacon v. Abbott, 137 Mass. 397, 399. This was done in Moore v. Rawson, 185 Mass. 264, 70 N.E. 64. And see the cases collected in 16 Cyc. 458. Nor is it material that the master's report does not appear to have been formally confirmed, though undoubtedly that would have been the regular procedure. It was accepted and acted upon by the court with certain additions and corrections, the material for which was found in the report itself. This was a practical confirmation of the report, as varied by the findings and rulings made by the court, especially when followed by the final refusal to recommit the report to the master. This view is confirmed by the fact that the final decree afterwards entered contains a recital that it was made 'upon a master's report and exceptions of the parties thereto and the master's supplementary report.' White v. Hampton, 10 Iowa, 238, 242; Johnson v. Meyer, 54 Ark. 437, 439, 16 S.W. 121. And the defendant very properly has not claimed that this court has not jurisdiction to pass upon the case presented here. It is plain that the contentions made are not by their nature for the exclusive cognizance of the federal courts. Binney v. Annan, 107 Mass. 94, 9 Am. Rep. 10; Desper v. Continental Water Meter Co., 137 Mass. 252, 254; Holt v. Silver, 169 Mass. 435, 455, 48 N.E. 837; Wade v. Lawder, 165 U.S. 624, 17 S.Ct. 425, 41 L.Ed. 851. We proceed to consider the merits of the case.
1. The plaintiff has not established its right to require an assignment of the tubing machine patent--the letters patent numbered 543,587, and dated July 30, 1895, upon a machine for making tubing. This was the invention of the defendant himself, made while he was employed by the plaintiff as the superintendent of its manufacturing department. The machine was designed to turn out the same product, a flexible covering and protection for electric wires, which the plaintiff was already producing under the Herrick patent, so called, for the use of which the plaintiff held an exclusive license; and it was a material improvement upon the previous mode of obtaining that product. One of the defendant's duties under his employment was to look after the plaintiff's machinery and to make improvements therein. The expenses of procuring the patent were paid by the plaintiff. Many machines embodying the invention and built under the patent have been constructed under the direction and supervision of the defendant at the expense of the plaintiff, and have been used by it in its business with his knowledge and consent; and the success of its business has largely depended upon its use of these machines. But these circumstances and the other facts which have been found do not show that the plaintiff is entitled to the property right in the invention itself and in the letters patent which secure that right. The invention and the patent thereon belong to the inventor, to whom the patent has been issued, unless he has made either an assignment of his right or a valid and enforceable agreement for such an assignment, even though it was his duty to use his skill and inventive ability to further the interests of his employer by devising improvements generally in the appliances and machinery used in the employer's business. This was assumed in Burton v. Burton Stock Car Co., 171 Mass. 437, 50 N.E. 1029, and in Hopedale Mach. Co. v. Entwistle, 133 Mass. 433. It is the settled doctrine of the federal courts. Dalzell v. Dueber Mfg. Co., 149 U.S. 315, 13 S.Ct. 886, 37 L.Ed. 749; Hapgood v. Hewitt, 119 U.S. 226, 7 S.Ct. 193, 30 L.Ed. 369; Sendelbach v. Gillette, 22 App. D. C. 168; Pressed Steel Car Co. v. Hansen, 137 F. 403, 71 C. C. A. 207, 2 L. R. A. (N. S.) 1172; Barber v. National Carbon Co., 129 F. 370, 64 C. C. A. 40, 5 L. R. A. (N. S.) 1154; Whitney v. Graves, Fed. Cas. No. 17,577; Barry v. Crane Bros. Mfg. Co. (C. C.) 22 F. 396, 398. It was said by Gray, J., in Dalzell v. Dueber Mfg. Co., 149 U.S. 315, 13 S.Ct. 886, 37 L.Ed. 749: 'A manufacturing corporation which has employed a skilled workman for a stated compensation to take charge of his work and to devote his time and services to devising and making improvements in articles there manufactured is not entitled to a conveyance of patents obtained by him for inventions made while so employed, in the absence of express agreement to that effect.' And Gray, Circuit Judge, in an elaborate opinion in Pressed Steel Car Co. v. Hansen, 137 F. 403, 71 C. C. A. 207, 2 L. R. A. (N. S.) 1172, decided in 1905, after a careful examination of the previous decisions, says: The same principle has been maintained in other states. Eustis Mfg. Co. v. Eustis, 51 N. J. Eq. 565, 27 A. 439; Fuller & Johnson Mfg. Co. v. Bartlett, 68 Wis. 73, 31 N.W. 747, 60 Am. Rep. 838; Joliet Mfg. Co. v. Dice, 105 Ill. 649. It has been enforced between partners. Belcher v. Whittemore, 134 Mass. 330; Burr v. De la Vergne, 102 N.Y. 415, 7 N.E. 366; Slemmer's Appeal, 58 Pa. 155, 164, 98 Am. Dec. 248. How far the rule will be held to be applicable where it appears that by the express terms of the hiring the employé was to exercise his inventive faculties with reference to the specific inventions in question for the sole benefit of his employer, we need not now consider, for that question does not arise in this case. See Gill v. United States, 160 U.S. 426, 435, 16 S.Ct. 322, 40 L.Ed. 480; Solomons v. United States, 137 U.S. 342, 11 S.Ct. 88, 34 L.Ed. 667; Hapgood v. Hewitt (C. C.) 11 F. 422, 11 Biss. 184; Annin v. Wren, 44 Hun (N. Y.) 352; Connolly Mfg. Co. v. Wattles, 49 N. J. Eq. 92, 23 A. 123. Cases in which there was an express agreement that the invention should become the property of the employer stand of course upon a different footing; but even such agreements have been construed somewhat strictly against the employer. Hildreth v. Duff (C. C.) 143 F. 139; Bonsack Machine Co. v. Hulse (C. C.) 57 F. 519; Id., 65 Fed. 864, 13 C. C. A. 180; Wright v. Vocalion Organ Co., 148 F. 209, 79 C. C. A. 183; Joliet Mfg. Co. v. Dice, 105 Ill. 649. There was in this case no express agreement for an assignment of the patent, or that the invention should become the property of the plaintiff; and the facts do not authorize the inference that the parties had any understanding to that effect. The defendant was not employed to give partial form to an invention or conception which was the property of his employer, as in Gallagher v. Hastings, 21 App. D. C. 88. Nor was there as to this invention, under the circumstances shown, any breach of confidence on the part of the defendant or any violation of the duty which he owed to the plaintiff such as to enable the latter to hold him as a constructive trustee for its benefit.
It follows from what has been said that the plaintiff's thirty-third, thirty-fourth, sixty-sixth, seventieth seventy-first, and eightieth exceptions to the master's report were all properly overruled. So far as they were material to the case, they could not have been sustained. Nor does it sufficiently appear that the master ought to have been required to report the evidence applicable to any of them. The plaintiff's rights seem to have been fully protected. We cannot find that the evidence referred to in the eightieth and eighty-first exceptions bore at all upon what we deem the vital issues in the case. What was said by this court in Long v. Athol, 195 Mass. 497, 82 N.E. 665, as to exceptions to the admission of evidence by a master, is peculiarly applicable here. The plaintiff...
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