The foregoing applies to the inventions covered by the two original applications for patents, but the invention of the cross-wire apparatus presents a somewhat different issue. It is true that the trip made to Florida by Mr. Martin in the winter and spring of 1930 was for the purpose of testing out, in a commercial way, the apparatus which had been devised, and that prior to going to Florida Mr. Martin had frequently been in contact with Mr. Neary, inquiring as to the time when this "pilot plant" would be ready to operate, and that it might be considered to have been under the original contract. However, the actual arrangements to go to Florida, and the fixing of compensation, appear to have been made in a letter by Mr. Martin to Mr. Case, and this, together with the latter's reply by telegram and letter, is inserted:
"520 Pine Street
"Roselle, New Jersey
"January 3, 1930
"Mr. A. H. Case, C/o U.S. Phosphoric Products Corporation 61 Broadway New York, N.Y.
"Dear Mr. Case: Mr. Neary has informed me that you would like to have me go to Tampa on a salary basis, rather than at my per diem of $50. I will superintend the experimental work and operation of the pilot plant at $700 per month and pay my own living and traveling expenses. It is my belief that not over three months will be required. It is my understanding that I will not be required to do work other than that connected with the phosphate concentration tests and that during temporary cessation in the work caused by breakdowns or by waiting for supplies I will not be required to remain at Tampa.
"If this arrangements meets with your approval, I am prepared to leave for Tampa within one week after hearing from you.
"Very truly yours,
R. B. Martin"
"Telegraphed Mr. Martin to come on these terms.
"January 8, 1930
"N309 16 NM - Tampa, Flo 8
"R. B. Martin 520 Pine Street Rosele, N.J.
"Referring your letter of January third terms proposed by you entirely satisfactory. Please report soon as possible.
"U.S. Phosphoric Products Corpn.
"A. H. Case"
"R. B. Martin
"520 Pine Street
"Roselle, New Jersey
"January 13, 1930
"Mr. A. H. Case, U.S. Phosphoric Products Corporation, Tampa, Florida.
"Dear Mr. Case. Responding to your telegram of January 8th, I have wired you as follows:
"'Enroute Tampa. Expert to arrive early part of next week.'
"Very truly yours,
"RBM -- M
[Signed] R. B. Martin"
The work in Florida was in continuance of the original contract, but, according to the contract made, did not contemplate more than the demonstration of what had already been invented. I am inclined to believe that it was not intended that further research or experiments should be made. The invention of the cross-wire attachment occurred during this demonstration, and while defendant was employed by the plaintiff for the purpose of developing a complete and efficient apparatus. Even though there was no express agreement at that time, the invention so devised is the property of the plaintiff company under the doctrine expressed in Standard Parts Company v. Peck, 264 U.S. 52, 44 S. Ct. 239, 68 L. Ed. 560, 32 A.L.R. 1033, supra.
There can be no question, under the evidence, but that Martin at the time he rendered these services in Florida in 1930 was actually the employee of the plaintiff.
I find as facts, as applied to the original agreement:
(1) That a valid contract was entered into between the plaintiff and the defendant for the services of defendant, in research and experiment for the accomplishment of a specific purpose, and that the results were to vest in the plaintiff.
(2) That, in any event, the defendant was an employee of the plaintiff, to make research and conduct experiments to accomplish a specific purpose, in the nature of the segregation of phosphate rock from gangue.
(3) That in this transaction the defendant was an employee of the plaintiff, and not an independent contractor or operator.
(4) That any conception of the process which may have occurred to the defendant prior to making the contract was not of a complete nature, never put in practice, and was developed to a workable point only after the defendant became an employee of the plaintiff.
As to the cross-wire invention:
(5) That the defendant's operations in Florida in 1930 were as an employee of the plaintiff.
(6) That, although the invention at this time was not accomplished directly under the original contract, the defendant was there to test out the other apparatus, and any new device created to accomplish the original purpose was created while in employment of plaintiff for that specific purpose.
As applicable matters of law, I find:
(1) The defendant, having entered into an agreement with the plaintiff under which the defendant conducted research work and created inventions, and the agreement providing that the result of the work was to belong to the employer, the plaintiff is entitled to have the two original applications for patents, filed as aforesaid, assigned to it. Hull v. Pitrat (C.C.S.D. Ohio W.D.) 45 F. 94. Appeal in Supreme Court dismissed by stipulation of counsel, see 145 U.S. 650, 12 S. Ct. 986, 36 L. Ed. 847; Conway v. White (C.C.A. 2) 292 F. 837; Conway v. White (C.C.A. 2) 9 F.2d 863; Triumph Electric Co. v. Thullen (C.C.A. 3) 235 F. 74, 75. See, also, 36 Cyc. 558. Wege v. Safe-Cabinet Co. (C.C.A. 6) 249 F. 696; No-Leak-O Piston Ring Co. v. Chandlee 53 App. D.C. 128, 289 F. 526.
(2) The defendant engaged for the specific purpose of making research and investigation to develop a phosphate rock separating process, as an employee of the plaintiff, if without a specific agreement as to the plaintiff being entitled to the result of the employment, his inventions would nevertheless vest in the plaintiff, who, under these circumstances, is entitled to have an assignment of the inventions evolved during such employment. Standard Parts Company v. Peck, 264 U.S. 52, 44 S. Ct. 239, 68 L. Ed. 560, 32 A.L.R. 1033, supra; Goodyear Tire & Rubber Co. v. Miller (C.C.A. 9) 22 F.2d 353.
The full consideration for the assignment has not yet been paid. What balance is due the defendant cannot be ascertained from the record. No tender has been made by the plaintiff, and such tender, before suit, was not required under the circumstances of this case, where the defendant, before issuance of the patent, revoked the power of attorney of Mr. Neary and denied the rights claimed by the plaintiff.However, some adjustment of this should be made before the assignment is completed, which may be taken up at the time the decree is signed.
Decree for specific performance will be entered in accordance with this memorandum.
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