give plaintiff the first opportunity to purchase the patent rights. In this case as in the other cases the plaintiff made a complete disclosure of his idea, and the fact that the idea was already patented seems immaterial.
Plaintiff contends that it was unnecessary for him to disclose to the defendant exactly how his process of rectification should be accomplished. His point is that the gist of the Smoley invention was in the idea that the practice existing in the alcohol and petroleum industries of effecting fine degrees of separation of mixtures of liquids by distillation and rectification in a rectifying column, involving continuous condensation and refluxing of liquid countercurrent to rising vapors, could be applied to the separation of mixtures of metals.
Plaintiff's argument amounts to no more than an assertion that the application of a new function to an old art may amount to invention. Indeed, the case of Hobbs v. Beach, 180 U.S. 383, 21 S. Ct. 409, 45 L. Ed. 586, indicates that this contention is by no means without foundation. In that case it was urged that the plaintiff's patented machine was anticipated by the prior art. Substantially, the only thing plaintiff had added to the prior art was a new function. The court stated that it involved invention to see that the prior art was adaptable to the work of plaintiff's device and that plaintiff's invention consisted rather in the idea that such a change could be made than in the making of the necessary adjustment. This case is not dispositive of the instant case unless Smoley's idea was inventive, and it was not inventive unless it was novel.
New Jersey Zinc Co. v. Singmaster et al., D.C., 4 F.Supp. 967, affirmed as to principal issue in 2 Cir., 71 F.2d 277, certiorari denied, 293 U.S. 591, 55 S. Ct. 106, 79 L. Ed. 685, involves a case where the defendant agreed to assign to plaintiff all "patentable ideas" conceived by him while in the employ of plaintiff, and in which the court ordered an assignment of the patent perfected after the termination of the employment contract, but which was derived from an idea conceived during employment. The case does not stand for the proposition that an employer may have an assignment of a patent in such a case where only the idea was conceived during employment, because the court specifically found that the defendant made an admission in writing that he had conceived the idea upon which the patent was based, and the means to perfect it while in plaintiff's employ.
A further condition to recovery is that the idea disclosed must be novel. Flanigan v. Ditto, Inc., 7 Cir., 84 F.2d 490, 495. A duty not to use an idea already known cannot be created by virtue of the fact that one makes a confidential disclosure of that idea. Masland v. Du Pont de Nemours Powder Co., 3 Cir., 224 F. 689, 693, reversed on other grounds, 244 U.S. 100, 37 S. Ct. 575, 61 L. Ed. 1016. If the rule were not so restricted it is obvious that by disclosing an idea under delusions of confidence, the person making the disclosure could thereafter prevent the confidante from subsequently making use of it, even though the idea was well-known prior to the date of the disclosure and open to the use of all others in the world.
If these cases are controlling it must first be decided whether Smoley made an adequate disclosure of a novel idea in confidence to the employees of the defendant as alleged.
The evidence is conflicting. On the one side we have Smoley who categorically states that he discussed his new idea with the employees of defendant. On the other side we have the employees with whom Smoley states he discussed the idea, but who emphatically deny that Smoley mentioned the rectification of cadmium, zinc and lead. The case, therefore, resolves itself into a determination of what actually took place, or more precisely, what probably occurred.
Smoley by his own testimony never progressed further than a conception of the idea of rectification supplemented by his calculations and research. His idea is destitute of any practical tests. Furthermore, he testified that as a result of his calculations he became "more certain" that zinc and cadmium could be separated. He recalled that he told Holstein that he wished to "explore further" his idea. These assertions coupled with the fact that his idea was not substantiated by practical tests induce the court to believe that he was to a great extent theorizing at the time he made his trip to New York, Washington and Palmerton, Pennsylvania.
It appears that the defendant's employees were thinking about rectification of metals as early as 1924, but were unable to make any progress with the idea until 1931, and then the evolution of its perfection was by slow and almost imperceptible stages. Cyr testified and his notes introduced into evidence indicate that he was experimenting with rectification in 1926 on a small scale.The theory of rectification became more pronounced in 1927 when defendant was experimenting with the vertical retort and the "lead eliminator", but this speculation notwithstanding Smoley's visit in 1928 did not materialize until 1931, when the reflux condensers were applied to the old horizontal retorts and used in separating lead from zinc. And even then a considerable period of time elapsed and many experiments were made before the same process could be used in the separation of cadmium from zinc. This slow process in which the patents in suit were perfected leads the court to believe that Smoley's alleged disclosure of 1928 is insufficient. A complete disclosure of a workable idea would have enabled defendant to perfect its method much sooner.
Some weight must be given to the Johnston article published in March of 1918 which stated that cadmium could not be eliminated from zinc without large losses of zinc except by the use of a fractionating column. Smoley contends that the author was not thinking about a rectifying column, because a fractionating and rectifying column were not the same thing in 1918. It is admitted, however, that they are the same thing today, and defendant has introduced persuasive evidence that the two were synonymous in 1918. Furthermore, it has been shown by a collection of papers written by Smoley in February of 1923 while in the employ of defendant's research department that Smoley was familiar with this article written by Johnston. There is grave question but what this knowledge of Johnston's theory constituted the substance of Smoley's thoughts and ideas on the subject in 1928. It is possible that consciously or subconsciously Smoley utilized this and crystallized it into what he has persuaded himself now is his own original thought and idea.
The court is of the opinion that the mere idea that rectification could be applied to the separation of metals was not novel to the defendants in 1928, and that plaintiff has failed in his proof.
It seems more probable that Smoley at the time he made his visits to New York, Washington and Palmerton, Pennsylvania was chiefly concerned with obtaining the financial support of the defendant in aid of his doctorate from Massachusetts Institute of Technology in exchange for his research work on some problem rather than the specific problem of rectification of metals. This supposition is buttressed by the facts that no mention of his idea concerning rectification of metals was made in the Technical Department Conference of June 11, 1928 or in the letter mailed to Smoley on June 25, 1928, declining the offer of his services. These records indicate only that Smoley's proposal to work on some zinc problem would not be accepted. This conclusion is even more convincingly supported by the fact that Smoley abandoned this idea of rectification that "flashed in his mind" in the spring of 1928 in favor of another problem upon which to work in conjunction with his doctoral thesis. Had this idea been so revolutionary it is inconceivable that he should have held it in abeyance for so long a period of time.
In summary the court finds that whatever idea Smoley had about rectification in 1928 it was premature and had not reached a reasonable certitude at the time of his visit with the employees of defendant. Furthermore, there was no novelty in this idea to the defendant.
A decree will be entered dismissing the complaint.
The issues raised by the complaint and answer having been met squarely, the relief prayed for in the counterclaim is otherwise granted and the same is, therefore, dismissed.
This memorandum is designed to meet the requirements of Equity Rule 70 1/2, 28 U.S.C.A. following section 723, with regard to the filing of findings of fact and conclusions of law.