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July 25, 1932


The opinion of the court was delivered by: AVIS

The bill in this case prays for the assignment and transfer of the right, title, and interest of defendant in certain inventions of defendant, which, it is alleged, belong to the plaintiff, because of a certain claimed contract of employment between the parties, plaintiff and defendant. Plaintiff alleges and claims it has proven that the defendant, a consulting engineer with inventive ability, was employed by it in research work to recover phosphate rock from other mineral with which it commingled, so as to make such recovery profitable, and to avoid the processes then in use by other parties, upon which patents had been issued, which patent processes could not be used by the plaintiff without infringement.

The question involved is one of contract. The plaintiff claims rights to all discoveries and inventions of the defendant, while he was in the employ of the plaintiff, under what is termed by plaintiff as an express contract, and under which the result of the work of the defendant was to belong to his employer, the plaintiff in this suit. The plaintiff secondly claims that, if there was not an express contract, the evidence shows that the defendant was employed by the plaintiff to develop a process and machinery which would accomplish the purpose desired, and that the result of such investigation vests in the plaintiff, the employer, the title to the patents issued, or to be issued thereon, under the doctrine established in the case of Standard Parts Company v. Peck, 264, U.S. 52, 56 44 S. Ct. 239, 68 L. Ed. 560, 32 A.L.R. 1033.

 Considerable time was taken at the trial in developing the facts with relation to the various processes in use for separating phosphate rock, but, as I view the case, it is not necessary for me to discuss any of these processes, as the question involved is whether an express contract was made, entitling the plaintiff to the result of work of the defendant, or, in the alternative, whether the employment was of such a nature, regardless of any express contract to that effect, to vest plaintiff with title to the processes of invention.

 The inventions involved, coming out of the original investigation, are represented by two patent applications, prepared by John F. Neary, patent attorney for the plaintiff, resulting from conferences with, and information from, the defendant, which have been filed in the Patent Office, and have, respectively, serial numbers 394739 and 394740, and the cross-wire invention was submitted to Mr. Neary, but before completion of the application the defendant revoked the power of attorney. The evidence shows, however, that subsequently an application embodying this cross-wire invention was filed in the Patent Office.

 The plaintiff's claim of express contract is based upon sundry telegrams and letters, offered in evidence, and the testimony of witnesses as to verbal conversations with the defendant.

 As hereinbefore stated, Mr. Martin was a consulting engineer, and it appears, as such, he was at times engaged, prior to the negotiations leading up to his alleged employment by the plaintiff, in research work on the method of recovery of minerals from crude ores containing gangue.

 Mr. Neary represented the plaintiff and conducted the negotiations with Mr. Martin.

 Without referring specifically to any of the evidence pertaining to his authority, I am satisfied that within the scope of the matters entrusted to him any contracts or agreements made by him with Mr. Martin were valid and binding upon the plaintiff.

 Some time in the fall of 1928, Mr. Martin had requested Mr. Neary to obtain for Martin some phosphate rock that could be used in experiments he was then conducting. This was forwarded, and Neary, on December 17, 1928, wrote to Martin, requesting information as to the result of Martin's experiments. On December 21, 1928, Martin answered this letter, requesting other ores.

 Subsequently, and after consultation between Mr. Neary and his clients, the negotiation between the parties was initiated by a telegram, from Neary to the defendant, who was then in Florida, which read as follows:

 "Western Union

 "Day Letter

 January 25, 1929

 "R. B. Martin, General Delivery, Welaka, Florida

 "Have you become involved with Bierman or the Cyanamid Company or any other interest in your flotation work? Stop If not, are you willing to undertake some research work on phosphate rock for my client on a per diem basis, the result of the work to belong to the employer. Stop If so, what would you charge per diem? Stop If terms can be agreed upon they want you to start work while in Florida.

 "John F. Neary"

 Subsequent to this telegram, correspondence was had between the parties by telegraph and mail, copies thereof being here inserted:

 "Western Union

 "1929 Jan 27 PM 6 12

 "JHA 196 73 NL -- PALATKA FLO 27

 "John F. Neary --

 "43 Exchange Place New York NY --

 "Thank you for your wire Have no arrangement with Cyanamid Company or Bierman Stop Hesitate at this time to undertake research on per diem basis as magnitude of their problem unknown quantity and solution of it might involve much time for this reason would prefer to examine conditions before undertaking work and suggest you arrange for me to make such examination while in Florida and I will report to you with my recommendations.

 "R. B. Martin"

 "R. B. Martin

 "520 Pine Street

 "Roselle, New Jersey

 "Welaka, Florida

 "January 27, 1929

 "Mr. John F. Neary, 43 Exchange Place, New York City.

 "Dear Mr. Neary: I am enclosing a confirmation of the night letter I am sending you today.

 "You will readily appreciate my difficulty in fixing some equitable per diem fee without a knowledge of their conditions. I am willing to undertake an examination on any basis you might arrange.

 "With kindest regards, I am

 "Sincerely yours,

 "RBM -- M

 R. B. Martin"

 "Western Union

 "Night Letter

 "January 29, 1929

 "R. B. Martin, Palatka Florida

 "Your wire twenty-seventh. Believe no difficulty will arise out of magnitude of problem or time for working. Stop We can arrange to fit it in with other requirements. Stop Suggest you meet Mr. Case of Phosphoric Company at Tampa about February eleventh. He will be at Tampa for about a month after that time. Stop Write me at once your itinerary so I can arrange with Case for time of meeting at Tampa. Stop Acknowledge receipt by wire.

 "John F. Neary"

 "R. B. Martin

 "520 Pine ...

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