Dill Mfg. Co. v. Goff

• Decision Date: 12 February 1942
• Docket Number: No. 8792.,8792.
• Citation: 125 F.2d 676
• Parties: DILL MFG. CO. v. GOFF et al.
• Court: U.S. Court of Appeals — Sixth Circuit

125 F.2d 676 (1942)

DILL MFG. CO. v. GOFF et al.

No. 8792.

Circuit Court of Appeals, Sixth Circuit.

February 12, 1942.

A. J. Hudson, of Cleveland, Ohio (Kwis, Hudson & Kent, and W. E. Williams, all of Cleveland, Ohio, on the brief), for appellant.

Albert L. Ely, of Cleveland, Ohio, and C. G. Roetzel, of Akron, Ohio (Ely & Frye, of Cleveland, Ohio, and Wise, Roetzel & Maxon, of Akron, Ohio, on the brief), for appellees.

Before SIMONS, ALLEN, and MARTIN, Circuit Judges.

SIMONS, Circuit Judge.

Goff is an inventor who conceived and secured patent No. 2,119,623 upon an invention relating to rubber valve stems for tires. The appellant Dill, asserting equitable ownership of the patent on the ground that it was conceived by Goff while in its employ, sued Goff, and the Ohio Injector Company, his assignee, for infringement, seeking an injunction, damages, and the assignment to it of the patent. The District Court, ascertaining that the parties were all citizens and residents of Ohio, and that no meritorious issue as to validity or infringement was involved, dismissed the bill for lack of jurisdiction, on the ground that no federal question under the patent laws was presented for determination.

The bill recites that Goff entered the employ of the appellant on June 1, 1935; that an important part of his employment was developing, devising, and inventing rubber valve stems, and methods and processes whereby they could be employed in connection with inner tubes for motor vehicle tires; that under the terms of his employment he was to apply all his experience and knowledge to this activity; that all inventions made by him while thus employed should be the property of the appellant, and that any letters patent which might issue, should be assigned to it. The bill recites that Goff made the invention which is the subject matter of patent No. 2,119,623, while in the employ of the appellant; that he applied for patent thereon, in his own name, without the knowledge of the appellant; that though he had assigned other patents to it while in its employ, he refused, upon demand, to assign this patent, but assigned it, instead, to the Ohio Injector Company, and that both appellees are infringing. The bill further asserts that by virtue of the employment contract, Dill is not only the equitable owner of the patent, but is advised that it is also the legal owner thereof and that there is a cloud upon its title by reason of Goff's failure to assign and his assignment to the Ohio Company. The appellant therefore prays for a preliminary injunction restraining infringement; an accounting from the defendant in respect to profits and damages by reason of infringement; a decree that it is the equitable and legal owner of the invention, and requiring the defendants to execute to it suitable documents of title to remove the cloud, and to deliver to it the letters patent covering the invention.

The defendants, in answer, admit Goff's employment by Dill, but categorically deny that he agreed that inventions made by him while employed by Dill, should belong to Dill and be assigned to it. They assert that Goff was first employed by Dill in 1929 as a serviceman, but that thereafter Goff was engaged in a sales capacity outside the plant of the appellant, and so continued until May, 1935, when his employment was terminated; that in June, 1935, he was reemployed, assigned to saleswork, and continued therein until his employment was finally terminated in May, 1938. They admit that Goff, while working in the plant of the appellant, made certain inventions relating to tire valves, which he voluntarily assigned to Dill, but assert that the invention here involved was made late in 1936 upon Goff's own time and at his own expense and subsequent to the time that he was employed in the Dill plant. They admit that he applied for a patent thereon, which was granted on June 7, 1938, and that this was assigned to the Ohio Injector Company. Other allegations in the bill are denied.

After the bill was filed, a motion to dismiss, made by the defendants on the ground that the court had no jurisdiction over the controversy, was overruled. Later, upon the case being called for hearing, a colloquy occurred between the court and counsel, wherein it was agreed that no issue of either validity or infringement was involved, and that the only issue in respect to which there was controversy, was that relating to the ownership of the patent, and that the primary question was whether equitable title thereto resided in the plaintiff. Thereupon, the injunction sought was denied and the bill dismissed.

Insofar as decision below may have been rested upon the admissions of counsel that the sole issue raised by the pleadings related to title, it is now contended that the admissions were ineffective to so narrow the controversy because appellant's counsel had no authority to make them, and the determination of the motion to dismiss should have been based solely upon the pleadings. It is asserted that the bill, as framed, presents a suit for infringement of a patent, sufficiently asserts title thereto in the plaintiff, and the answer denies infringement so that a controversy is presented cognizable by the Federal Court under the patent laws.

No issue of infringement is raised by the pleadings. It is true that the defendants deny all allegations not admitted or qualified, but the defendants allege ownership of the patent and deny plaintiff's title. Certainly, one cannot infringe his own patent any more than he may challenge its validity, and denial of infringement, coupled with assertion of title, is not tantamount to a denial of infringement if adverse title is established.

The sole question in the case is one of jurisdiction, and this must be determined upon an appraisal of the nature of the appellant's case. It has chosen to bring its suit as one for patent infringement, with the usual prayers for injunction, damages, and profits. It finds itself, therefore, obliged, by §§ 67 and 70 of United States Code Annotated, Title 35, to allege title to the patent. Being neither the patentee, assignee, nor grantee, and having no record title of any kind or description, it asserts equitable ownership derived from an executory oral contract of employment with the inventor. But the execution of the agreement, and the obligation of the inventor to assign the patent alleged to be contained therein, are denied. It is clear, therefore, that until there has been an adjudication of ownership in the plaintiff there can be no recovery of damages or profits because of infringement, and no right to injunctional process. The suit, in its primary aspect, may...