Moore v. American Barmag Corp.

• Citation: 710 F. Supp. 1050
• Decision Date: 07 March 1989
• Docket Number: No. C-C-87-228-P.,C-C-87-228-P.
• Court: U.S. District Court — Western District of North Carolina
• Parties: George Felix MOORE, Jr., Plaintiff, v. AMERICAN BARMAG CORPORATION, Barmag A.G., and Kay E. Schnaidt, Defendants.

710 F. Supp. 1050

George Felix MOORE, Jr., Plaintiff, v. AMERICAN BARMAG CORPORATION, Barmag A.G., and Kay E. Schnaidt, Defendants.

No. C-C-87-228-P.

United States District Court, W.D. North Carolina, Charlotte Division.

March 7, 1989.

Daniel E. McConnell, Charlotte, N.C., for plaintiff.

John J. Barnhardt, III, Bell, Seltzer, Park & Gibson, Charlotte, N.C., for defendants.

MEMORANDUM OF DECISION

ROBERT D. POTTER, Chief Judge.

THIS MATTER is before the Court on the following Motions:

(1) Defendants' Motion for Partial Reconsideration of Court's Order of September 2, 1988, filed September 29, 1988 and that Defendants be granted summary judgment; that the Barmag Defendants have a "shop right" in the Plaintiff's 538 patent.

(2) Motion by Defendants for Partial Summary Judgment filed September 29, 1988.

(3) Motion by Plaintiff for Sanctions under Rule 37 and Motion In Limine to preclude unspecified testimony, filed January 6, 1989.

(4) Plaintiff's Motion to Limit use of deposition of George Felix Moore, filed January 6, 1989.

(5) Defendants' Motion for Summary Judgment dismissing claims 4 through 10 of Amended Complaint, filed January 9, 1989.

These Motions came on for hearing before the undersigned at Charlotte, North Carolina on January 24, 1989. Plaintiff was represented by Daniel E. McConnell, Esquire. Defendants were represented by John J. Barnhardt, III, Esquire.

The Court will discuss and rule on each Motion.

Rule 56(c) of the Federal Rules of Civil Procedure establishes the standard of decision this Court must use when determining motions for summary judgment:

The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.

Recently, the United States Supreme Court has had several occasions to construe the summary judgment standard established in Rule 56. Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (antitrust conspiracy case); Anderson v. Liberty Lobby, 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (libel action); Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (asbestos related wrongful death action); Adickes v. S.H. Kress Co., 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1969) (alleged conspiracy to violate civil rights).

In Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986), the Supreme Court noted:

When the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts. In the language of the Rule, the non-moving party must come forward with "specific facts showing that there is a genuine issue for trial." Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no "genuine issue for trial."

Id. 106 S.Ct. at 1356 (emphasis in original; footnote and citations omitted; quoting Fed.R.Civ.P. 56).

Stated another way, it is the moving party's burden to show that there are no genuine issues of material fact and that it is entitled to judgment as a matter of law. If that burden has been met, then the nonmoving party must establish that there are indeed genuine issues of material fact; usually this is done by producing affidavits of persons with personal knowledge setting forth specific information to be offered at trial.

In Celotex Corporation v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986), the Supreme Court stated the following:

In our view, the plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which the party will bear the burden of proof at trial. In such a situation, there can be "no genuine issue as to any material fact," since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial.

Id. 106 S.Ct. at 2552-53; accord White v. Rockingham Radiologists, Ltd., 820 F.2d 98, 101 (4th Cir.1987). On the other hand, all reasonable favorable inferences from the pleadings and depositions are to be drawn in favor of the party opposing the motion for summary judgment. United States v. Diebold, 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962); White, 820 F.2d at 101; Ballinger v. North Carolina Agricultural Extension Serv., 815 F.2d 1001, 1004 (4th Cir.), cert. denied, ___ U.S. ___, 108 S.Ct. 232, 98 L.Ed.2d 191 (1987).

The mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; Rule 56 requires that there be no genuine issue of material fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). "The substantive law will identify which facts are material." Id. On a motion for summary judgment the Court must also consider the evidentiary burden each party will bear at trial. Id. 106 S.Ct. at 2511.

It is worth noting that in Anderson v. Liberty Lobby, Inc. the court held:

There is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.

Id. Thus, the summary judgment standard is similar to the standard used when determining a motion for a directed verdict or a motion for judgment notwithstanding the verdict. Wilson v. Popp Yarn Corp., 680 F.Supp. 208, 210 & n. 1 (W.D.N.C.1988) (citing Anderson, 106 S.Ct. at 2511-12). The test is whether a reasonable, rational trier of fact, on the basis of the evidence presented, could return a verdict for the party opposing the motion. Id.

Summary judgment is not a disfavored procedural shortcut; instead, it is a useful method for disposing of issues, or even cases, in a just, speedy, and inexpensive way.

MOTION FOR PARTIAL RECONSIDERATION OF COURT'S ORDER OF SEPTEMBER 2, 1988, FILED SEPTEMBER 29, 1988

In the Court's Order, filed September 2, 1988, 693 F.Supp. 399 the Court denied Defendants' Motion for Summary Judgment on the issues as to: (1) whether Plaintiff must assign his patent to his employer, American Barmag Corporation ("ABC"); and (2) if Plaintiff is not required to assign his patent, whether Defendant ABC is entitled to a non-exclusive license to practice the invention under the "shop right" doctrine.

In Defendants' Motion for Partial Reconsideration filed September 29, 1988, Defendants limited their Motion for Reconsideration to the Court's denial of summary judgment on the "shop right" ground asserted by Defendants.

The background of this dispute and the essential facts are outlined in the Court's Order, filed September 2, 1988, denying Defendants' Motion for Summary Judgment. Since that Order, the Court has been made aware of the fact that the machine at Collins and Aikman (C & A) on which Plaintiff made improvements was owned by Defendants.

Defendants assert that they provided help and services which were of significant value and vital to reducing the invention to practice. Specifically, Defendants point to evidence that:

(1) Moore was employed by ABC as a salaried service engineer and was sent by ABC to C & A to address a problem on a Barmag machine, and that while in a motel paid for by his employer he had an idea for a modification of the machine which would speed the overfeed on the machine.

(2) Moore made several trips to C & A at ABC's expense to test the modified yarn path and reduce it to practice on one of the machines.

(3) Moore prepared drawings and an invention disclosure form for the invention during ordinary working hours at his desk at ABC's office in Charlotte. ABC provided the time, instructions, and administrative assistance to Moore in completing the form.

(4) Barmag's patent counsel conducted a prior art search and prepared and filed a U.S. Patent application, and prosecuted it until Moore refused to execute a formal assignment of the application to Barmag.

Plaintiff, in opposition to Defendants' Motion, points to evidence that:

(1) While at C & A, Moore had an idea for modification of a machine that would avoid the overfeed limitation inherent in the Barmag design for the T-80 machine. The next day Moore went to C & A and modified the machine with labor and materials furnished by C & A and demonstrated the operation of the machine at C & A.

(2) When Moore returned to ABC he asked his superior about compensation for his invention and was informed that compensation may be available, although ABC had no policy for such compensation.

(3) After learning that compensation may be available, Moore disclosed his invention to ABC. Thereafter, he refused to assign his rights to ABC.

DISCUSSION

Perhaps the most often cited case on shop right is United States v. Dubilier Condenser Corp., 289 U.S. 178, 53 S.Ct. 554, 77 L.Ed. 1114 (1933). Among other leading cases from which the Court may determine the rules governing "shop right" are Solomons v. United States, 137 U.S. 342, 346, 11 S.Ct. 88, 89, 34 L.Ed. 667; McClurg, et al. v. Kingsland, et al., 42 U.S. (1 How.) 202, 11 L.Ed. 102; Gill v. U.S., 160 U.S. 426, 16 S.Ct. 322, 40 L.Ed. 480 (1896); Wommack v. Durham Pecan Company, Inc., 715 F.2d 962 (5th Cir.1983); Hobbs v. United States, 376 F.2d 488 (5th Cir.1967); Mechmetals Corp. v. Telex Computer Products, 709 F.2d 1287, 1292-93 (9th Cir.1983).

The following principles have been established by the courts:

(1) If a person employed in the manufactory of another, while receiving

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