Barber v. National Carbon Co.

• Decision Date: 04 May 1904
• Docket Number: 1,143.
• Citation: 129 F. 370
• Parties: BARBER v. NATIONAL CARBON CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

129 F. 370

BARBER v. NATIONAL CARBON CO. et al.

No. 1,143.

United States Court of Appeals, Sixth Circuit.

May 4, 1904

This is a bill alleging infringement of letters patent No. 523,099 issued to the complainant, Clarence M. Barber, July 17, 1894. The patent is both for a process and an apparatus for electroplating.

The defendants filed a plea in the following words and figures:

'In the Circuit Court of the United States, Northern District of Ohio, Eastern Division.

'Clarence M. Barber, Complainant, v. The National Carbon Company, et al., Defendants. In Equity.

'The defendants, the National Carbon Company, Washington H. Lawrence, Benjamin F. Miles, Webb C. Hayes, Harvey E. Hackenberg, John H. Osborn, Myron T. Herrick, and James Parmelee, by protestation, and not acknowledging or confessing all or any part of the matters and things in said bill of complaint mentioned to be true in such manner and form as therein set forth, for their joint and several plea thereto say: Said National Carbon Company is a corporation duly organized and existing, and engaged in the business of manufacturing carbons, and that the other defendants herein are officers and directors of said National Carbon Company, excepting said John H. Osborn.

That, in the manufacture of carbons, one of the important processes consists in electroplating, and that an economical apparatus and process for electroplating is very useful and essential to the proper and successful conduct of said business of manufacturing carbons. That in the fall of 1889 the said National Carbon Company, being engaged in such manufacture, and being desirous of cheapening and improving the process of manufacturing, employed the complainant herein, Clarence M. Barber-- he claiming at that time to be, and the defendant company employing him by reason of such claim upon his part, a skilled mechanical engineer-- and it paid to him a salary for his services of forty dollars per week. These defendants say that said Barber was so employed for the express purpose of giving to the company the benefit and advantages of his mechanical and inventive skill in cheapening and improving, among other processes used by said company, that of electroplating, and to assist the officers and employes in making such inventions. Defendants say that complainant accepted said employment for the purpose above stated, and agreed to give his time, skill, and attention and inventive ability to the service of said defendant company in and about the cheapening and improving of the process of electroplating and other processes in the manufacture of carbons. That on or about June 1, 1893, this defendant increased the wages of complainant to $3,000 per year, which it paid to him until he severed his connection with the company on or about April, 1894. These defendants further say that said complainant, while so employed, devoted a large part of his time to experiments in the line of devising and perfecting a process for cheapening and improving the system of electroplating; that, for that purpose, he was furnished with all needed assistance by the said carbon company, and with all such material as he desired to use for such purpose; that he was specially employed to devise and perfect processes in the manufacture of carbons, and particularly the process of electroplating, among others; that his skill, ability, and services in that direction were paid for by the defendant carbon company, and his inventive ability, time, and skill had been sold to and purchased by the defendant company, so far as the same pertained to the process of electroplating, and other processes for cheapening and perfecting the manufacture of carbons. These defendants say that said complainant devised the alleged patented invention while in the employment of the said defendant carbon company; that his employment was expressly in the line of such devising, inventing, and improving; that the defendant company furnished the material, tools, and everything necessary to enable him to make such invention; that the same was in the line of his employment, and that improvements and inventions claimed by the complainant to have been patented, as in the bill set forth, belong the National Carbon Company; that said defendant is entitled to the perpetual use of the same, and that, by reason of the facts hereinbefore stated, and by reason of the employment of said complainant by the defendant carbon company, and the character of said employment, complainant is not entitled to any relief prayed for in said bill of complaint, but that said defendant carbon company is entitled and has the right to the perpetual use, in its business, for its purposes, of the improvements and claimed inventions of the complainant in his bill set forth. All of which matters and things the defendants aver to be true, and plead the same to said bill, and ask the judgment of the court whether they shall be required to make further answer.

The National Carbon Company, 'By W. H. Lawrence, President.'

To this the complainant filed a replication. Evidence was taken, and the case heard upon the issue thus presented by the plea, whereupon the court below dismissed the bill, finding that the defendants had not infringed, other than by the use of the process in seven electrotype machines made according to the claims of the patent, and that, under the evidence, the defendants were entitled to a general license to use the process and machine in connection with their business as manufacturers of carbons.

R. S. Taylor, for appellant.

Squire, Sanders & Dempsey, and Frederick P. Fish, for appellees.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

LURTON Circuit Judge, after making the foregoing statement, .

The discussion has largely turned over the proper interpretation of the plea. The appellant insists that it is a good plea of title to the 'inventions' made by Barber, and that an agreement to give one's time, skill, and inventive ability is, in legal effect, an agreement that the fruit of his inventions shall become the property of his employer. By this method of reasoning it is sought to secure a holding that the plea is a good plea of title, notwithstanding the absence of any averment that there was an 'agreement' that the company should have title to his inventions, or to any patent that he might obtain for them. In short, a distinction is made between an employment under which one agrees 'to use his best efforts and devote his knowledge and skill in devising and making improvements' in an article made by his employer, and an agreement by which the employe 'agrees to give his time, skill, and attention and inventive ability' to the service of his employer in and about cheapening and improving the process used in his business. In the case first put, which is precisely the case stated in Hapgood's bill, as reported in Hapgood v. Hewitt, 119 U.S. 226, 229, 7 Sup.Ct. 193, 197, 30 L.Ed. 369, the bill was held bad, the court saying:

'There is nothing set forth in the bill as to any agreement between the corporation and Hewitt that the former was to have the title to his inventions, or to any patent that he might obtain for them. The utmost that can be made out of the allegations is that the corporation was to have a license or right to use the inventions in making plows. It is not averred that anything passed between the parties as to a patent. We are not referred to any case which sustains the view that, on such facts as are alleged in the bill, the title to the invention or patent for it passed.'

There is some room for the distinction insisted upon in the decision of District Judge Graham in Hapgood v. Hewitt (C.C.) 11 F. 422, and the statement by the Supreme Court in the same case (119 U.S. 233, 7 Sup.Ct. 193, 30 L.Ed. 369) that they concurred in the views of the Circuit Court, although that general statement is followed later by the paragraph set out above.

Whiting v. Graves, 3 Ban.& A. 222, Fed. Cas. No. 17,577, and Wilkens v. Spafford, 3 Ban.& A. 274, Fed. Cas. No. 17,659, both hold that only a license, exclusive or otherwise, according to the terms of agreement, would result from a contract for the inventive ability of a workman. We do not find it important to decide the question thus mooted. If it be concluded that it is not essential that there shall be an express agreement that the employer is to have the title to the inventions of the workman, or to any patent he may obtain for them, if the contract provided that the employer should have the benefit of the employe's inventive faculties, it does not necessarily follow that this plea is to be construed as other than a plea of license. We are not required to assume, as a necessary conclusion from the fact that Barber is averred to have agreed to give the company his 'time, services, and inventive ability,' that the pleader intends to assert title. The plea is to be construed by looking to all of its averments, and from the whole document determine whether the defense, from the facts stated and the conclusions drawn, is that of license or title. To stand narrowly upon an inference that the title is claimed from the contract to give the company the benefit of his inventive abilities will be to ignore other facts, and, more than all, to ignore the conclusion which the pleader himself drew from the facts he had stated.

The business of the carbon company was not the making or selling of machinery or mechanism for any purpose. They were engaged in making carbons. The plea then avers that Barber agreed to give his 'skill, attention, and inventive ability to the service of said defendant company in and about the cheapening and improving of the process of electroplating, and other processes in the manufacture of...