Mimica v. Area Interstate Trucking, Inc., 1-92-2508

• Citation: 250 Ill.App.3d 423,620 N.E.2d 1328,190 Ill.Dec. 67
• Decision Date: 30 July 1993
• Docket Number: No. 1-92-2508,1-92-2508
• Parties: , 190 Ill.Dec. 67 Ognjen MIMICA, Plaintiff-Appellee, v. AREA INTERSTATE TRUCKING, INC., Defendant-Appellant.
• Court: United States Appellate Court of Illinois

Page 1328

620 N.E.2d 1328

250 Ill.App.3d 423, 190 Ill.Dec. 67

Ognjen MIMICA, Plaintiff-Appellee, v. AREA INTERSTATE TRUCKING, INC., Defendant-Appellant.

No. 1-92-2508.

Appellate Court of Illinois,

First District, Fifth Division.

July 30, 1993.

Fagel & Haber, Chicago (Steven J. Teplinsky and Alvin D. Meyers, of counsel), for defendant-appellant.

Greenberger, Krauss & Tenenbaum, Chartered, Chicago, for plaintiff-appellee.

Justice McNULTY delivered the opinion of the court:

Plaintiff Ognjen Mimica brought an action for monetary, declaratory and injunctive relief concerning the invention of a device called the Quality Control Carrier ("QCC"). The action challenged the validity of plaintiff's assignment to defendant of his rights in the patent application for the QCC. The court granted plaintiff's motion for declaratory judgment. This appeal is taken pursuant to Supreme Court Rule 304(a). (134 Ill.2d R. 304(a).) At issue is the propriety of the granting of declaratory judgment.

In the late summer of 1990, plaintiff invented a new kind of truck trailer which improves the safety and efficiency of transporting steel coils. At the time of the invention plaintiff was employed by defendant Area Interstate Trucking, Inc. (AIT) as general manager. AIT is in the business of transporting metal products. AIT recommended a law firm, Fitch, Even, Tabin & Flannery (Fitch Even) to prepare a patent application. On May 24, 1991, Fitch Even prepared and filed in Mimica's name a declaration for patent application with the United States Patent and Trademark Office. The application listed Mimica as the sole inventor of the QCC. A prototype of the QCC was developed at AIT's expense. AIT's patent attorney prepared a patent application for the QCC. AIT paid for the preparation of the patent application. AIT employees participated in building the prototype.

On June 6, 1991, AIT's president and principal shareholder, Richard Dickson, requested plaintiff to come to a meeting at Dickson's office in Homewood, Illinois. At that meeting the other AIT shareholders, Kelly and Trainer, were also present. During the meeting Dickson accused plaintiff of not being a "team player," and of disloyalty. Dickson demanded that all rights in the QCC be owned by AIT because its development was a team effort and Dickson demanded that plaintiff sign any documents necessary to accomplish the ownership transfer. Dickson made it clear to Mimica that unless he signed the documents he would not remain part of "the team." Dickson does not dispute that he threatened to terminate Mimica. Mimica asked for time to think about the matter. A meeting was scheduled for 7 a.m. the next morning. That evening Mimica called Dickson and they met at a restaurant in Tinley Park, Illinois, where Mimica agreed to assign all his rights in the Mimica application to AIT. On June 19, 1991, Dickson asked Mimica to come to his office to sign some documents. Dickson presented Mimica with a document entitled Assignment which purported to assign all of Mimica's rights in the Mimica patent application to AIT. Mimica signed the assignment but testified that he did so because he feared he would be fired if he refused. Later that day Mimica retained outside legal counsel, who wrote Dickson a letter declaring the assignment void. On July 1, 1991, Dickson terminated Mimica based upon Dickson's determination that the letter received from plaintiff's attorney declaring the assignment void illustrated that Mimica was not a team player.

On July 15, 1991, Mimica filed a verified complaint seeking injunctive relief, declaratory relief, (including a declaration that plaintiff was entitled to all right and title in the patent application) and money damages. On October 29, 1991, the trial court granted plaintiff's motion for declaratory judgment and ordered that "Plaintiff's assignment signed on June 19, 1991, which purportedly assigned his rights to the QCC, is null and void. Thus, Plaintiff Ognjen Mimica is the sole owner of all past, present and future rights of patent number 07/705,555 (the number of the QCC)." However, the court also granted AIT shop rights to the invention because the invention was developed and perfected in the employer's plant with its time, materials and appliances, and wholly at its expense. See Grip Nut Co. v. Sharp (7th Cir.1945), 150 F.2d 192, 196-97.

Defendant's appeal asks this court to reverse the parts of the order of October 28, 1991, declaring that the assignment of June 19, 1991, was null and void and declaring that plaintiff was the sole owner of all past, present and future rights of patent in the QCC without disturbing that part of the order which grants defendant shop rights in the invention. Plaintiff contends that defendant's notice of appeal is defective. A notice of appeal gives a reviewing court jurisdiction over only the judgments or parts thereof specified in the notice of appeal. (Myrda v. Coronet Insurance Co. (1991), 221 Ill.App.3d 482, 492, 164 Ill.Dec. 66, 72, 582 N.E.2d 274, 280.) When an appeal is taken from a specified judgment only, or from a part of a specified judgment, the court of review acquires no jurisdiction to review other judgments or parts thereof not so specified or not fairly to be inferred from the notice as intended for review on appeal. (Myrda, 221 Ill.App.3d at 492, 164 Ill.Dec. 66, 582 N.E.2d 274.) We find that the arguments raised in defendant's brief are not so inconsistent with the relief requested in the notice of appeal as to constitute a substantive defect in the notice of appeal. The appeal raises two issues: (1) whether the motion for declaratory judgment failed to meet the statutory requirements (Ill.Rev.Stat.1991, ch. 110, par. 2-701 now 735 ILCS 5/2-701 (West 1992)); and (2) whether defendant is entitled to a jury trial on the merits of plaintiff's request for a declaration of rights in the ownership of the patent application.

The general guidelines for determining whether the entry of a declaratory judgment is authorized are clear. There must be an actual controversy and it must appear that the judgment or order would terminate the controversy or some part of the dispute giving rise to the proceeding. (Ill.Rev.Stat.1991, ch. 110, par. 2-701 now 735 ILCS 5/2-701 (West 1992.) The granting or denying of declaratory relief rests within the sound discretion of the trial court, and the complaining party on appeal must show affirmatively an abuse of discretion. (Marlow v. American Suzuki Motor Corp. (1991), 222 Ill.App.3d 722, 165 Ill.Dec. 166, 584 N.E.2d 345.) The statute authorizing courts to enter declaratory judgments does not prescribe any particular form of prayer for the entry of such a judgment, and further provides that a declaratory judgment may be sought as an incident to or part of a pleading seeking other relief. Krebs v. Mini (1977), 53 Ill.App.3d 787, 791, 10 Ill.Dec. 673, 676-77, 368 N.E.2d 159, 162-63.

Defendant denies that the actual controversy requirement is satisfied here. It contends that the underlying facts and issues were premature. Its reliance, however, on Underground Contractors Association v. Chicago (1977), 66 Ill.2d 371, 5 Ill.Dec. 827, 362 N.E.2d 298, is misplaced. That case makes it clear that an actual controversy exists where a plaintiff alleges injury or a threat of injury to itself. (Underground Contractors, 66 Ill.2d at 375, 5 Ill.Dec. 827, 362 N.E.2d 298.) A wrong need not have been committed. Nor is it necessary that an injury have been inflicted. Rather the case must only present a "concrete dispute admitting of an immediate and definitive determination of the parties' rights." (Underground Contractors, 66 Ill.2d at 375, 5 Ill.Dec. 827, 362 N.E.2d 298.) Moreover, "the party seeking relief must possess a personal claim, status, or right which is capable of being affected." (Underground Contractors, 66 Ill.2d at 376, 5 Ill.Dec. 827, 362 N.E.2d 298.) In Underground Contractors the actual controversy requirement was not satisfied. There a trade association sought to have declared invalid certain bidding procedures intended to encourage the hiring of minorities by firms which bid on public works projects. The association was not a contractor and did not compete for public works contracts. Therefore the trade association was not in a position to allege the threat of injury to itself required to present an actual controversy. In contrast, here, the plaintiff alleges the threat of injury to his personal pecuniary interests in the patent application. If the assignment in question was found to be valid then the plaintiff would lose all rights in the patent application.

In an effort to show the absence of an actual controversy, defendant speculates as to what would happen should the United States Patent Office refuse to issue a patent on the QCC. It maintains that in that event "all of the litigation * * * will be for naught. The Court will have declared Plaintiff to be the sole owner of the rights to nothing. That is exactly what the 'actual controversy' requirement seeks to prevent." Our review of the cases persuades us that that is not what the actual controversy requirement seeks to prevent. Defendant's speculation ignores the fact that the actual controversy requirement is satisfied by a threat of injury alone. No actual injury need be incurred. Moreover, defendant's assertion that the declaratory relief may entitle plaintiff to "the rights to nothing" belies the aggressiveness with which it contests this relief.

Stone v. Omnicom Cable Television Inc. (1985), 131 Ill.App.3d 210, 86 Ill.Dec. 226, 475 N.E.2d 223, sheds further light on the proper application of the actual controversy requirement. There the court stated that "the condition of justiciability is satisfied where the mere existence of a claim, assertion or challenge to the plaintiff's legal interests portends the ripening seeds of litigation and casts doubt, insecurity and uncertainty upon the plaintiff's...