Rotary Lift Company v. Clayton, Civ. A. No. 51-485.

• Decision Date: 27 September 1954
• Docket Number: Civ. A. No. 51-485.
• Citation: 127 F. Supp. 176
• Parties: ROTARY LIFT COMPANY v. A. Wiley CLAYTON.
• Court: U.S. District Court — District of Massachusetts

127 F. Supp. 176

ROTARY LIFT COMPANY v. A. Wiley CLAYTON.

Civ. A. No. 51-485.

United States District Court, D. Massachusetts.

September 27, 1954.

W. R. Hulbert, Hector M. Holmes (of Fish, Richardson & Neave), Boston, Mass., Albin C. Ahlberg, Ahlberg, Wupper & Gradolph, Chicago, Ill., for plaintiff.

Stuart Macmillan and Samuel F. Clapp (of Haussermann, Davison & Shattuck), George C. Cutler, Jr., Ralph F. Tuller, Boston, Mass., for defendant.

McCARTHY, District Judge.

The plaintiff, Rotary Lift Company, is a corporation organized and existing under and by virtue of the laws of the State of Delaware. The defendant, A. Wiley Clayton, is a citizen of the State of Tennessee. At the time of the institution of this action, he was a student at the Massachusetts Institute of Technology in Cambridge, Massachusetts. The matter in controversy exceeds the sum of $3,000, exclusive of interest and costs.

This is a suit for specific performance to compel the signing of an application for a patent together with an assignment of such patent application. By way of counterclaim the defendant seeks the rescission of an "employee's agreement for assignment of inventions". The facts are as follows:

The plaintiff is engaged in the manufacture and sale of automobile lifts, freight and passenger elevators and other equipment. The defendant was employed by the Company on June 1, 1942, and it is clear that he left its employ on September 9, 1949.

Clayton is a graduate of a technical high school in Memphis, Tennessee. After graduation, and before entering Rotary Lift's employ, he worked in the waste control department of Firestone Tire & Rubber Company at Memphis. His first assignment at the Rotary Lift Company was as a draftsman and operator of a blueprint machine at a salary of $90 a month. From time to time thereafter it was increased until in 1949 his wage reached $335 a month. Besides operating the blueprint machine, Clayton prepared drawings or sketches under the supervision of older employees in the engineering department. Later he was sent out with employees in the service department to investigate difficulties which developed in elevator equipment manufactured by the Company and installed by a distributor who held a franchise for the sale of its equipment. During the last two years of employment his work consisted largely of the preparation of drawings and illustrations for the service manual and catalogues published by the company. He was not engaged in research or design activities at any time, nor was he working on technical drafting projects primarily.

Among the installations of elevators by the company was one at the Convent of the Good Shepherd at Memphis which was the subject of service difficulties. The elevator was equipped with a "P53 control valve", a valve which had been designed by John W. Harrison, then the company's chief engineer, and Lawrence Jaseph, the Chief Design Engineer. Clayton told Harrison that he believed that the trouble was attributable to the faulty design of the valve rather than poor workmanship in the factory as Harrison had contended. Harrison remained unconvinced. He forbade Clayton to work on designs and instructed him to stick to his regularly assigned duties.

Clayton then began to devote his spare evenings to the problem. He built a model by-pass valve, prepared a sketch of his idea, and delivered it to Harrison. Harrison spoke disparagingly of its value.

In March of 1949, Harrison placed upon Clayton's desk the "Employee's Agreement for Assignment of Inventions" which read as follows:

"In part consideration of my employment by Rotary Lift Company of Memphis, Tennessee, and of wages and salary to be paid by that company to me, I ............... Wiley Clayton ............ hereby agree promptly to disclose to that Company, in any manner it may prescribe, inventions conceived or developed by me during the entire term of my employment by that Company and for a period of one year thereafter, and which inventions relate in any way to any business in which that Company is or may become interested during the terms of my employment; and for the same consideration I hereby grant and agree formally to convey to Rotary Lift Company, its successors, and assigns, the entire right, to each and all such inventions and in and to all patent rights thereto, and I further agree, without charge to that Company, but at its request and at its expense, promptly to sign, acknowledge and deliver to that Company, or to any agent it may designate, all applications for patent, assignments and such other papers and to perform such other acts as that Company may deem necessary or expedient to obtain domestic and foreign patents on such inventions and to vest title thereto in Rotary Lift Company, its

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