This is a civil action which has for its objects: First, the impression of a trust ex maleficio upon a patent, the subject matter of which is an invention allegedly disclosed by the plaintiff to the defendant and wrongfully appropriated by the latter to its own use; second, the restraint of the further use and exploitation of the invention; and third, an accounting for illicit profits and a recovery for damages. The defendant urges, as a defense to the action, the failure of the plaintiff to apply for a patent, and the public use of the invention for a period of two years after its alleged disclosure.
This action is before the Court at this time on a motion for summary judgment filed by the defendant pursuant to Rule 56 of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c, and is submitted on the pleadings, the bill of particulars, and an affidavit. The motion is predicated solely upon the said affirmative defense which is stated in the defendant's answer. There is no genuine issue as to the facts, to wit, the failure of the plaintiff to apply for a patent, and the public use of the invention, but their legal consequence is disputed.The only question presented for decision is one of law, which must be decided in favor of the plaintiff.
It seems reasonably clear, not only from the answer, but from the brief filed in support of the present motion, that the defendant has misconceived the nature of the suit. The plaintiff asserts no right under the patent law, but asserts a right of property in his invention, a right clearly cognizable under the common law and independent of statute, which he alleges the defendant fraudulently appropriated to its own use, in breach of their contract and in violation of their trust relationship. The plaintiff, as the inventor, has a right independent of the patent law, to make, use, and vend his invention, and no statutory provision is, or ever has been, essential to this right. Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 35, 43 S. Ct. 254, 67 L. Ed. 516; Motion Picture Patents Co. v. Universal Film Co., 243 U.S. 502, 510, 37 S. Ct. 416, 61 L. Ed. 871, L.R.A.1917E, 1187, Ann.Cas.1918A, 959; Bauer & Cie v. O'Donnell, 229 U.S. 1, 10, 33 S. Ct. 616, 57 L. Ed. 1041, 50 L.R.A.,N.S., 1185, Ann.Cas.1915A, 150; Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 424, 28 S. Ct. 748, 52 L. Ed. 1122; Chemical Foundation v. General Aniline Works, 3 Cir., 99 F.2d 276, and other cases hereinafter cited. If, as the plaintiff alleges, the defendant fraudulently appropriated the invention to its own use (and there is no evidence to the contrary before the Court at this time), the right of the plaintiff to maintain this action is not open to question. The right of the inventor to invoke the protection of the court to enforce his right of property in the invention and to redress the wrong occasioned by its invasion has long been recognized. Becher v. Contoure Laboratories, 2 Cir., 29 F.2d 31, affirmed 279 U.S. 388, 49 S. Ct. 73 L. Ed. 752; Chesapeake & O. Ry. Co. v. Kaltenbach, 4 Cir., 95 F.2d 801; Hoeltke v. C.M. Kemp Mfg. Co., 4 Cir., 80 F.2d 912; Booth v. Stutz Motor Car Co., 7 Cir., 56 F.2d 962; Id., 7 Cir., 24 F.2d 415; Allen-Qualley Co. v. Shellmar Products Co., D.C., 31 F.2d 293, affirmed, 7 Cir., 36 F.2d 623; Smoley v. New Jersey Zinc Co., D.C., 24 F.Supp. 294, affirmed, 3 Cir., 106 F.2d 314; Irving Iron Works v. Kerlow Steel Flooring Co., 96 N.J.Eq. 702, 126 A. 291.