On appeal from Superior Court of New Jersey, Chancery Division, Bergen County, Docket No. C-73-07.
NOT FOR PUBLICATION WITHOUT THE APPROVAL OF THE APPELLATE DIVISION
Before Judges Carchman, Lihotz and Ashrafi.
In this employment dispute, plaintiff appeals from the Chancery Division's denial of his motion for summary judgment and grant of summary judgment to defendant. We affirm summary judgment in favor of defendant dismissing counts one and six of plaintiff's amended complaint, but remand to the Chancery Division either to provide additional reasons for dismissal of the other counts or to conduct further proceedings as to those claims.
In reviewing a grant of summary judgment, an appellate court applies the same standard under Rule 4:46-2(c) that governs the trial court. See Liberty Surplus Ins. Corp. v. Nowell Amoroso, P.A., 189 N.J. 436, 445-46 (2007). The court must "consider whether the competent evidential materials presented, when viewed in the light most favorable to the non-moving party, are sufficient to permit a rational factfinder to resolve the alleged disputed issue in favor of the non-moving party." Brill v. Guardian Life Ins. Co. of Am., 142 N.J. 520, 540 (1995). On this appeal, we review the facts most favorably to plaintiff.
Plaintiff Robert Saccomanno is an electrical engineer who has been employed for more than twenty-five years by defendant Honeywell International, Inc. or its corporate predecessors. He brought a lawsuit against his employer to invalidate the terms of an invention assignment agreement he signed when he began his employment. He also sought to rescind a 2002 assignment to Honeywell of his invention for ultraviolet disinfection of fluids, that invention having a value of millions of dollars.
Plaintiff commenced employment at Bendix Corporation in 1984, shortly after graduating from college. At that time, he signed a pre-invention assignment agreement. The agreement remained part of plaintiff's contract through the time of this litigation and is at the center of the parties' dispute. It states:
Employee Agreement Re: Inventions and Information
I agree that, in accepting or continuing employment with . . . The Bendix Corporation . . . I bind myself to the following obligations as part of my consideration to the Corporation for the salary or wages paid to me by the Corporation and for my being permitted access to information pertaining to the business of the Corporation.
(A) I hereby assign and agree to assign, without further compensation, to The Bendix Corporation, or its designee, my entire right, title and interest in and to each invention, technological innovation and copyrightable work, including all rights to obtain, perfect and enforce patents, copyrights and other proprietary interests therein, which, I either individually or jointly with others, conceive, develop or create during the period of my employment, whether or not during working hours, and which either (a) is within the scope of the Corporation's business or investigations to which my employment relates or gives me access, or (b) is aided by the use of time, materials, facilities or information paid for or provided by the Corporation, . . . I agree to disclose promptly to the Corporation each such invention, innovation and copyrightable work, and to perform all reasonable acts requested by the Corporation to assist it, at its expense, in obtaining and enforcing its property rights therein, including the execution of formal assignments and of patent applications. [(Emphasis added.)]
Plaintiff began his career at Bendix as a design engineer developing test equipment for F-16 flight control computers. Over the years, Bendix went through several corporate mergers and acquisitions until Honeywell acquired the company in 1999 and became plaintiff's employer. Plaintiff, too, advanced in his career by internal transfers and promotions, and he eventually joined the aerospace intellectual property enforcement sub-team of Honeywell.
During his tenure with Bendix, Honeywell, and the intervening corporate entities, plaintiff developed twenty-seven patents, and he currently has additional patents pending. One of his patents involved a mirror arrangement for a fiber optic illuminator for use in an avionics display application. In November 2000, plaintiff disclosed to Honeywell an invention that used the mirrors in novel ways other than those used directly in the aviation industry, one of which was for ultraviolet disinfection of fluids.
While patent applications for two of these inventions were pending in the United States Patent Office (USPTO), plaintiff was advised by a consultant that his suggested approach for water disinfection was too costly. Plaintiff then created a simpler approach, and he discussed the new approach with Honeywell's patent counsel. Patent counsel told plaintiff the idea was "too simple and not patentable." Plaintiff submitted an invention disclosure form to Honeywell, covering both the simpler approach and a more complex version of his ideas. In October 2001, Honeywell filed a provisional patent application for the more complex version.
Plaintiff then began to build, in his own basement, a prototype for the simpler version of his ultraviolet disinfection invention. Plaintiff estimates that he spent $2,000 of his own money and about 300 hours of his own time working on this undertaking at home. He acknowledges also spending $5,000 of Honeywell's money on the project at that time but claims he did ...