Harsco Corp. v. Zlotnicki, 85-5149

• Decision Date: 23 January 1986
• Docket Number: No. 85-5149,85-5149
• Citation: 779 F.2d 906
• Parties: HARSCO CORP. v. Lucjan ZLOTNICKI, Appellant.
• Court: U.S. Court of Appeals — Third Circuit

Page 906

779 F.2d 906

228 U.S.P.Q. 439

HARSCO CORP. v. Lucjan ZLOTNICKI, Appellant.

No. 85-5149.

United States Court of Appeals, Third Circuit.

Argued Nov. 6, 1985.

Decided Dec. 17, 1985.

Rehearing and Rehearing In Banc Denied Jan. 23, 1986.

Lawrence Corson (Argued), Robert B.B. Schatz, Bruce M. Dolfman, Corson & Getson, Philadelphia, Pa., for appellant.

Thomas B. Kenworthy (Argued), Morgan, Lewis & Bockius, Philadelphia, Pa., for appellee.

Before SEITZ, WEIS and ROSENN, Circuit Judges.

OPINION OF THE COURT

ROSENN, Circuit Judge.

Harsco Corporation initiated an action in the United States District Court for the Middle District of Pennsylvania against Lucjan Zlotnicki, a former employee, seeking, inter alia, a declaratory judgment as to the ownership of an invention conceived and developed by Zlotnicki during his employment with Harsco. The district court granted summary judgment in favor of Harsco and denied Zlotnicki's motion for reconsideration. Zlotnicki appeals and we affirm. ¹

I.

The following undisputed facts are set out in Harsco's statement of material facts in the district court and Zlotnicki's statement in opposition thereto. In November 1981, Bowen-McLaughlin-York (BMY), a division of Harsco (also referred to collectively as "the Company"), hired Zlotnicki, then an adjunct professor at Spring Garden College, as a "staff engineer." At that time, the parties did not discuss the execution of an employment agreement, even though Harsco generally required each new employee to sign such an agreement. The standard agreement assigns Harsco patent rights to any inventions an employee conceives during and within the scope of employment. After commencing work for Harsco, Zlotnicki refused to sign the standard agreement because he objected to several provisions, including the assignment of rights to inventions without any added compensation therefor to the employee. He eventually signed the agreement on February 18, 1983, under circumstances that form the background of these proceedings.

In late July 1982 BMY decided to respond to a United States Army request for a proposal (RFP) to build an assault bridge. The RFP contained specifications for a longer assault bridge than had previously existed, and required a device capable of launching such a bridge. Harsco assigned Zlotnicki to a team structured to conceptualize the development of the needed "launcher." Defendant's assigned role in the early development process is a matter of dispute, but he did perform mathematical calculations that demonstrated that existing launchers were technically incapable of meeting the RFP requirements. Zlotnicki stated in his affidavit in opposition to Harsco's motion for summary judgment that he was fascinated by the problem and at home

my curiosity led me to play with some designs on my own, and as a result, I invented what I called the four-bar bridge launcher. I did this at home, with my tools, and used nothing that belonged to the Plaintiff. I made a design sketch, and I prepared a technical description with the intention of seeking a patent.

He then stated that upon returning to the plant following his weekend activity on his bridge-launcher he informed BMY that he had an idea and a sketch that he thought would produce a launcher capable of meeting the specifications of the RFP. After initially rejecting it, BMY accepted the design and the Army selected BMY to build a launch mechanism using Zlotnicki's design.

On February 8, 1983, Zlotnicki learned that Harsco planned to publicly circulate illustrations of his invention. He sent a memorandum to the BMY chief engineer, stating that the illustrations could not be released without his permission and that such circulation would invalidate his patent application.

Defendant met on February 11, 1983, with the BMY director of engineering and other BMY superiors. They told Zlotnicki that if he did not sign the standard employment agreement they would terminate his employment. Although he had an opportunity to consult with his attorney, Zlotnicki reluctantly signed the standard agreement on February 18, 1983. He attached a copy of his proposed alternate agreement to the executed Company standard agreement, but Harsco never signed the alternate agreement. Harsco bases its right to the launcher design primarily on the employment agreement.

In March, Zlotnicki filed a patent application for the launch mechanism. On March 23, 1983, Zlotnicki's attorney drafted a letter that he addressed to the United States Army and in which he advised it that the patent to the bridge-launcher mechanism was in dispute. The letter was never mailed, but Zlotnicki's attorney read it over the telephone to the president of BMY. On March 24, 1983, BMY invited the attorney to its headquarters. Upon his arrival, he learned that the Company had terminated Zlotnicki that afternoon and that a judge of the United States District Court for the Middle District of Pennsylvania was on the telephone to inform him of a temporary restraining order against Zlotnicki.

On March 31, 1983, Harsco filed its complaint seeking a declaratory judgment as to ownership of the invention and injunctive relief against disclosures of confidential information by Zlotnicki. Harsco claimed the invention under both the signed employment agreement and the common law right of an employer to its employees' inventions. On May 4, 1983, the court issued a preliminary injunction in favor of Harsco. The court based its order on a provisional finding that Harsco owned the launch mechanism because of the common law right of an employer to inventions created in the course of employment by an employee assigned to solve a specific mechanical problem. The court did not rely on the employment contract.

On May 26, 1983, Harsco moved for summary judgment based on its common law right to the invention. The court denied plaintiff's motion because it found that there was an unresolved issue of material fact regarding the precise problem Harsco had assigned Zlotnicki to resolve.

Several months later, Harsco filed a second motion for summary judgment, this one based upon the standard employment agreement. By memorandum and order of October 24, 1984, the district court held that the legal issues raised by Harsco's last motion were appropriate for summary judgment. The court set a briefing schedule and Zlotnicki filed a brief in opposition to the motion, but submitted no additional affidavit or other evidence. On November 8, 1984, Zlotnicki filed a motion for partial summary judgment based on the unenforceability of the employment agreement. The court granted Harsco's motion for summary judgment and denied Zlotnicki's motion. Judgment was entered on November 27, 1984.

On December 6, 1984, Zlotnicki filed a motion for reconsideration which he later supported with a lengthy affidavit. He did not, as required by local Rule 603 of the district court, state why the evidence contained in the affidavit could not have been presented prior to summary judgment. By memorandum and order entered February 13, 1985, the court denied the motion for reconsideration. Zlotnicki appealed.

II.

Zlotnicki argues that the district court erred in denying his motion for reconsideration of the summary judgment order. Our review of the district court's denial of the motion is limited to determining whether the trial court abused its discretion. Slater v. KFC Corporation, 621 F.2d 932, 933 (8th Cir.1980). The purpose of a motion for reconsideration is to correct manifest errors of law or fact or to present newly discovered evidence. Keene Corp. v. International Fidelity Insurance Co., 561 F.Supp. 656, 665 (N.D.Ill.1983). Where evidence is not newly discovered, a party may not submit that evidence in support of a motion for reconsideration. DeLong Corp. v. Raymond International Inc., 622 F.2d 1135, 1139-40 (3d Cir.1980). When Zlotnicki moved that the district court reconsider its summary judgment order, he argued that the court had erred, but he submitted no new evidence. He filed only his own affidavit containing evidence that was available prior to the summary judgment. The district court appropriately did not consider the affidavit in its disposition of the motion for reconsideration and merely reviewed its summary judgment for error. Therefore, we now address the district court's action in granting the underlying summary judgment.

Our standard of review is whether the district court erred as a matter of Pennsylvania law in interpreting and applying the employment agreement and entering summary judgment for the plaintiff. In re Japanese Electronic Products Antitrust Litigation, 723 F.2d 238, 257 (3d Cir.1983), cert. granted in part sub nom. Matsushita Electric Industrial Co. v. Zenith Radio Corp., --- U.S. ----, 105 S.Ct. 1863, 85 L.Ed.2d 157 (U.S.1985). There is no dispute between the parties that Pennsylvania law governs and we independently review the district court's reading of Pennsylvania law. See William B. Tanner, Inc. v. WIOO, Inc., 528 F.2d 262, 266 (3d Cir.1975). Zlotnicki argues that summary judgment was inappropriate because the agreement was unenforceable both for lack of consideration and because he signed it under duress. He also argues that the district court erred in applying the employment agreement to an invention conceived over six months prior to the execution of the agreement. We turn to this contention first.

A.

In his brief in opposition to plaintiff's motion for summary judgment, Zlotnicki stated that when he executed the agreement, he did not intend its scope to reach the launcher. The district court refused to consider Zlotnicki's subjective reading of the agreement and held that the agreement applied retroactively because its first paragraph contains the language "during employment."

On appeal Zlotnicki relies on Rotary Lift Co. v. Clayton, 127 F.Supp. 176 (D.Mass.1954), to support his prospective reading of the agreement. His reliance...