Arachnid, Inc. v. Industrial Design Electronics Associates, Inc., 87-1346

• Decision Date: 16 December 1987
• Docket Number: No. 87-1346,87-1346
• Citation: 837 F.2d 1097
• Parties: Unpublished Disposition NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. ARACHNID, INC., Plaintiff-Appellee, v. INDUSTRIAL DESIGN ELECTRONICS ASSOCIATES, INC., Donald P. Devale, Bonita J. DeVale, Defendants, Kidde Recreation Products, Inc., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1097

837 F.2d 1097

Unpublished Disposition

NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

ARACHNID, INC., Plaintiff-Appellee, v. INDUSTRIAL DESIGN ELECTRONICS ASSOCIATES, INC., Donald P Devale, Bonita J. DeVale, Defendants, Kidde Recreation Products, Inc., Defendant-Appellant.

No. 87-1346.

United States Court of Appeals, Federal Circuit.

Dec. 16, 1987.

Before EDWARD S. SMITH, NIES, and ARCHER, Circuit Judges.

DECISION

NIES, Circuit Judge.

Kidde Recreation Products, Inc., appeals from the order of the United States District Court for the Western District of Wisconsin directing Kidde to assign title to United States Patent No. 4,516,781 ('781 patent) to Arachnid, Inc. A party may appeal an interlocutory order granting an injunction under 28 U.S.C. Sec. 1292(c)(1) (1982). In such an interlocutory appeal, we address only so much of the merits as necessary to review the order. 9 J. Moore, B. Ward & J. Lucas, Moore's Federal Practice p 110.25, at 269-70 (2d ed. 1986). We affirm.

OPINION

I

The appealed order rests upon a determination that the invention of the '781 patent was conceived under a contract between Arachnid and Kidde. Arachnid develops and manufactures electronically scored dart games. After experiencing problems with its games, Arachnid hired defendant Industrial Design Electronics Associates, Inc. (IDEA), whose president and vice-president were Donald and Bonita DeVale, respectively, to improve the games. In 1980, Arachnid and IDEA entered a "Consultant Engineering Personal Service Agreement," under which IDEA agreed to assign title to Arachnid for "[a]ny inventions conceived by IDEA or its employees ... in the course of the project." The contract was terminated on January 26, 1982, and employees of IDEA filed a patent application for a dart game using two microcomputers, rather than one as in Arachnid's games, on November 17, 1982. That application issued as the '781 patent. Kidde bought IDEA's assets, including the '781 patent, from a bankruptcy trustee in 1986. Alleging the IDEA conceived the dual microcomputer invention during its work under the contract, Arachnid sued for assignment of the '781 patent and for infringement of a second United States patent, No. 4,057,251, owned by Arachnid.

Following trial, a jury found that IDEA had conceived the invention while under contract to Arachnid. Judge Crabb viewed that jury finding as advisory on the equitable claim of entitlement to an injunction. Nevertheless, she agreed with the jury's finding and, accordingly, granted injunctive relief requiring Kidde to assign the '781 patent to Arachnid. Arachnid, Inc. v. Industrial Design Elecs. Assocs., Inc., No. 85-C-338-C (Order Entered Apr. 24, 1987). ^*

II

Kidde argues that the injunction must be set aside because the court's decision to treat the jury verdict as advisory constitutes reversible error. Assuming that were true, however, the jury's finding would also support the order. Thus, Kidde also attacks the jury's verdict on the ground of an improper instruction. That attack, if successful, would mean the jury's verdict would be set aside, carrying the order with it.

The trial court defined "conception" of an invention in its jury instruction as follows:

To conceive an invention means to complete the mental act of formulating the invention. It does not mean putting the invention into practice or building a working model. If you find that [Arachnid] has proven by a preponderance of the evidence that defendant IDEA had determined before January 26,...