Fullman v. Steel City Electric Co.
| Decision Date | 01 December 1924 |
| Docket Number | No. 3096.,3096. |
| Citation | 2 F.2d 4 |
| Parties | FULLMAN v. STEEL CITY ELECTRIC CO. |
| Court | U.S. Court of Appeals — Third Circuit |
Winter & Brown and Reed, Smith, Shaw & McClay, all of Pittsburgh, Pa. (Frederick W. Winter, George D. Wick, and Paul N. Critchlow, all of Pittsburgh, Pa., of counsel), for appellant.
Patterson, Crawford, Miller & Arensberg, of Pittsburgh, Pa. (Green & McCallister, of Pittsburgh, Pa., of counsel, and C. F. C. Arensberg and E. W. McCallister, both of Pittsburgh, Pa., on the brief), for appellee.
Before WOOLLEY and DAVIS, Circuit Judges, and RELLSTAB, District Judge.
This suit was brought by James M. G. Fullman, plaintiff, charging that the defendant infringed letters patent No. 1,251,497, issued to him January 1, 1918, for the improvement in floor outlet boxes. The defendant admitted the manufacture, use, and sale of the boxes, but alleged that it owned the invention and the letters patent, and filed a counterclaim or cross-bill, wherein it prayed that the court decree that the invention and patent belonged to it, that it order the plaintiff to assign them to it, and dismiss the bill. The case was tried to the court, which entered a final decree in accordance with the prayer of the counterclaim. From this decree the plaintiff has appealed to this court.
The plaintiff prior to 1904 had been manufacturing adjustable outlet boxes, under his patent No. 899,381, applied for May 6, 1902, and issued April 11, 1904. In or about the year 1903, the plaintiff became involved in financial difficulties and sold his business to the defendant, which was incorporated at that time for the purpose of purchasing it. Fullman acquired about one-third of the stock of the new corporation, became its general manager, and conducted its business, from that time until March 15, 1913, under a license which he had granted to it under his first patent. About the year 1907 the need of a nonadjustable floor outlet box was recognized. This type of box was invented by the plaintiff, and was covered by the patent in suit, which was applied for November 17, 1908. The patent not being issued, the application was renewed June 13, 1916, and the patent was finally issued January 1, 1918. The nonadjustable box was put upon the market in May, 1908. From that time until the plaintiff, as general manager, severed his connection with the defendant, it manufactured and sold, under his management, the nonadjustable boxes, and has continued to do so since he left.
As if to prevent such controversies as have resulted in this litigation, the parties hereto entered into an agreement on May 1, 1907, wherein it was provided that, if plaintiff should make, conceive, or develop any invention while thus employed by the defendant company, it should "be his sole and exclusive property." But the agreement further provided that:
"Nevertheless, should the said Fullman voluntarily invent and develop and perfect any invention during working hours, upon being requested by any officer or the board of directors of the said company to improve, develop, or perfect any current methods of manufacture, apparatus, device, or article then being used or manufactured, or for which arrangements have been made for the manufacture or use by the said company, expending the moneys and materials of said Steel City Electric Company in such development, improvement, or perfection, all such inventions and improvements so perfected and developed, and all letters patent that may be obtained therefor, shall be the property of the said Steel City Electric Company, its successors and assigns, and the said Fullman agrees to do every act and thing requisite to vest said patent or patents in said Steel City Electric Company, without any other or additional consideration to the said Fullman than herein expressed."
The real question, therefore, is the ownership of the invention and letters patent. This must be determined from what was done under the agreement. The defendant contends that the nonadjustable boxes were voluntarily invented and developed during working hours, upon the request and at the expense of the defendant, and therefore...
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