The plaintiff, John W. Clerke, is the inventor of a threadless pipe coupling of considerable value. On September 10, 1947, he made application for a patent which was granted during the pendency of the litigation. Both parties claim title to the patent and an adjudication of their respective rights is sought.
The pretrial order limited the issues as follows:
"a. The extent of the interests of the plaintiff and the defendant in the invention and its profits;
"b. The damages suffered by either party as a result of the assertions of the respective claims of interest of the adverse party;
"c. Whether the plaintiff took the items of machinery and chattels as set forth in the counterclaim, or any of them; and
"d. As to those items or chattels and machinery which the plaintiff has in his possession, in whom is the title or the right to possession."
No serious attempt was made by either party to offer proof of damage. And, with the exception of a Logan lathe, to which reference will hereafter be made, the chattels mentioned in issues (c) and (d) have been surrendered to the defendant
or are no longer in dispute, so that there remains for determination the extent of the interest of the respective parties in the invention in suit.
Generally speaking, an invention and the resultant patent is the property of the one who conceives and perfects it. And the law will protect the inventor's rights, unless by contract, express or implied, he has bargained away those rights.
The mere fact that an invention was conceived and developed while the inventor was employed by another does not give to the employer any right in or title to the invention. To establish a claim in the absence of an express contract, the employer must show that the inventor was engaged specifically to exercise his inventive faculties for the employer's benefit. Or he must establish the fact that the invention was conceived and developed during working hours with the aid of fellow employees and with the use of the employer's machinery and materials. In the first case, the invention belongs to the employer. In the second instance, the employer has shop rights, i.e. , an irrevocable but non-exclusive right to use the invention. Solomons v. United States , 137 U.S. 342 (1890); United States v. Dubilier Condenser Corp. , 289 U.S. 178 (1933); Marcalus Manufacturing Co. v. Sullivan , 142 N.J. Eq. 434 (Ch. 1948); International Pulverizing Corp. v. Kidwell , 7 N.J. Super. 345 (Ch. Div. 1950).
The trial of this case took 34 trial days. The record is voluminous and is supplemented by 239 exhibits. It is difficult, therefore, to keep the statement of facts within reasonable bounds.
The plaintiff, John W. Clerke, may be described as a mechanical genius. His formal education was somewhat meager but his practical experience, especially in the automobile and airplane industries, has been wide. Over the course of the years Clerke has been a prolific inventor, having about 100 inventions to his credit.
The defendant Beck is a consulting mechanical engineer. After graduating from college he spent some years in the employ of a utility company in the South. Since then he has been
a consulting engineer in New York, save for a short period when he was employed by the New York Park Department.
The two men met in 1939. Clerke at that time was employed by an airplane manufacturer on Long Island, and Beck was engaged in some capacity with the Kincaid Company in New York. During the course of the next two years the acquaintanceship ripened. Beck became a fairly frequent visitor at the Clerke home. Clerke had a shop in the basement of his home, where he worked on his various devices. Here they discussed their mutual interests. Beck described a flame-thrower and muffler of his design, and Clerke told Beck of a welding helmet and various other projects which he had conceived.
In 1941 their paths separated. Clerke went to Baltimore to work in an airplane factory, and Beck became engaged in the production of flame-throwers for the Army, at the plant of the Beattie Manufacturing Company in Little Falls, New Jersey.
The position of Beck in the flame-thrower program was the subject of conflicting testimony. The contract under which the venture was operated was between the Beattie Manufacturing Company on the one hand and a corporation known as Beck Chemical Equipment Corporation on the other. Mr. Brennan, of the Beattie Company, testified that Beck was at the Beattie plant as the representative of the Beck Corporation. Beck, on the other hand, insisted that the venture with Beattie was his private operation and that the Beck Chemical Equipment Corporation was simply his alter ego, used by him for his own convenience. Beck's version of the situation, however, would seem to be incorrect. He and his associates in the Beck Chemical Equipment Corporation became embroiled in ...