
    Joseph Annin, Resp’t, v. George Wren and William C. Wren, App’lts.
    
      (Supreme Court, General Term, Second Department,
    
    
      Filed May 9, 1887).
    
    1. Patents of one employed to invent belong to employee.
    The special service of .inventing, under a special employment to invent, gives the master the servant’s inventions which result from that service.
    2. Same—Jtjbisdiction of state coubt.
    While W. 0. Wren was drawing a salary for his services in inventing wheelbarrows and trucks for the plaintiff, he secretly made application for letters patent on an invention in trucks, and assigned the rights to the letters to George Wren, who knew plaintiff’s rights and the circumstances on which they were based. George obtained the letters in his own name, and this suit was brought to compel him to assign the same to plaintiff. Held, that the state court had jurisdiction to adjudge the matter of the plaintiff's right to this invention; that it was a question of title to a patent under a contract; that the United States courts had no jurisdiction merely by reason of the subject-matter.
    Appeal from a judgment requiring defendant, George Wren, to assign to plaintiff certain letters patent issued on application of defendant, W. C. Wren, covering an invention which equitably belonged to the plaintiff, on the ground that they had been thus disposed of with intent to cheat and defraud plaintiff out of his equitable rights.
    
      Isaac S. Gatlin, for app’lts; John L. Hill, for resp’t.
   Barnard, P. J.

The proof returned with the case shows that the plaintiff, in 1883 and subsequently, was engaged in the manufacture of iron trucks ana wheelbarrows of sheet iron with iron handles.

This business he had commenced in 1881, and there had been an interval of cessation on account of his ill health. He had expended about $1,000 in developing improvements in them so as to make them of commercial value. In February, 1883, he employed the defendant George Wren at a weekly salary of eighteen dollars, “to apply himself personally to the development of this business,” “to develop the truck and wheelbarrow business, they went under that name with us.”

In the early part of the employment the defendant George Wren was employed upon the wheelbarrows. After being thus employed about a fortnight, he went to developing trucks. Wren and the plaintiff were in constant consultation about the business. Wren was a skillful draughtsman and he made drawings of the proposed improvements. Patterns were made of iron therefrom, so as to manufacture the wheelbarrows and trucks. The design was to get patents for the improvement and engage outside capital in the enterprise, and the patents were expressly to be in the name of the plaintiff.

Considering the relation of the parties and the nature of the employment, it would equitably follow that the patents should belong to the plaintiff, if any were obtained as the result of the joint development of the parties.

The plaintiff was in the business of manufacture, and he employed the defendant George Wren to aid him in devising improvements so as to aid the business. It would be most unreasonable for the employee, under these circumstances, to patent the improvements, and thus destroy the right of the plaintiff to use the result of his and Wren’s invention.

The agreement but carries out what would be the result without it, from the evidence. The defendant George Wren says that the truck inventions were separate and outside of the arrangement. The finding is against this claim, and this accords with the probabilities resulting from the employment. The plaintiff’s business included both, and the subsequent conversation in respect to additional compensation in respect to the truck, from the profits of their sale, has no relevancy to the question as to the title to the patents. In 1884 George Wren made application for a patent for truck improvements and assigned the same to the defendant William C. Wren, who obtained a patent therefor in his own name. This patent equitably belongs to the plaintiff. It was the result of investigation under the employment, and by the agreement belonged to the plaintiff. Burr v. De La Verne, 102 N. Y., 415; 2 N. Y. State Rep., 414.

The assignment to the defendant William C. Wren by his brother was made with the intent to deprive the plaintiff of his title thereto under the agreement. The case is voluminous and an examination of the evidence shows abundant evidence to support this finding.

It was taken with full knowledge of plaintiff’s claim, and could have had no object beyond removing the title from the-defendant, William Wren.

The point is not sustained which questions the authority of this court to pass upon the question presented.

While the validity of an infringement of a patent is not within the jurisdiction of the state courts, questions of title to a patent under contracts, have frequently been entertained. Dewitt v Elmira Co., 66 N. Y., 459; Continental Store Service Co. v. Clark, 100 id., 365.

The judgment should therefore be affirmed, with costs.

Pratt and Dykman, J concur.

Pratt, J.

This is a suit to compel defendant, George Wren, to assign certain letters patent for an invention In hand trucks, issued to him as assignee of W. C. Wren (the alleged inventor, who made application for patent and assigned the right to the letters to said George, his brother). Plaintiff alleges that the invention became his property as the result of a contract, by which W. 0. Wren entered his employment for the special and limited service of inventing wheelbarrows and trucks. The learned trial judge found the special employment and service, and that the invention was perfected during the service; he adjudged that plaintiff was the owner of the property in the invention as the result of an understanding—a part of the contract of employment of or service—that he should be the owner of all inventions made by W. 0. Wren while in the service.

We think this conclusion was clearly right on the merits, Plaintiff had been striving to invent wheelbarrows and hand trucks since 1880. W. C. Wren had assisted him in inventing a wheelbarrow. Overtaken by sickness, he had to give up his plans until about the beginning of 1883, when he resumed his efforts to invent wheelbarrows and trucks, with the purpose of manufacturing and selling them to the trade, provided he succeeded in inventing something that would sell. He had not yet succeeded in perfecting anything.

This work of inventing was the matter in hand in February, 1883. Both parties so understood it. This work of inventing was what plaintiff called “ developing the wheelbarrow business,” that being a phrase covering the work of inventing both wheelbarrows and trucks. This was also clearly understood by both the contracting parties. The invention was perfected during that service. W. C. Wren well knew that Annin expected and believed that his invenventions would be Annin’s property, and knowingly suffered him to remain in that belief, and on that understanding drew and appropriated his salary at eighteen dollars per week, from about the middle of February, 1883, to the end of that year.

About election of 1883, they had a dispute whether or not the "truck invention was Annin’s property, and about some other matters. They submitted it to arbitrators who awarded that all the inventions belonged to Annin. This award covered the truck invention as part of the dispute. Defendant George Wren assisted W. C. Wren in all this and never intimated any personal interest in the truck invention. W. C. Wren accepted and professed acquiesence in this award and induced Annin to rely on his acquiesence, and while relying thereon continued to pay him his salary. But meantime, after the award and acquiesence, while drawing the salary and professing faithful service, W. 0. Wren secretly made application for letters patent and assigned the rights to the letters to George, who all the while well knew Annin’s rights and the circumstances on which they were based. George then obtained the letters in his own name.

The special service of inventing, under a special employment to invent, gives the master the servant’s invention which results from that service. Simond’s Manuel of Patent [Law Ed., 1883], pp. 203, 204. This is also the principle of that part of the decision of Burr v. De La Vergne (102 N. Y., 415; 2 N. Y. State Rep., 414), which relates to the inventions made by De La Vergne alone. The same is true of Annin v. Binney (9 Am. Rep., 10; 107 Mass., 94). Rone of the patent cases are inconsistent with the principle above indicated. Even in Hopgood v. Hewett (11 Fed. Rep., 422; lately affirmed 119 U. S. Rep.) Judge Gresham excepts the case of a special employment to invent. The special service of inventing is the entire scope of the employment. There is no room left within the employment for inventing on his own hook. The servant has no right to think or invent for himself on this particular subject matter in hand. He must get out of such a relation before he can claim the product of his work under such an employment. He cannot carry off both his salary and the only valuable product of his work under such an employment leaving his master with his useless models, the results of his uselessly spent money on tools, machinery, time, labor of self and employees, with only a license or shop right which is not assignable or useful in any way save to himself. Such a resMt would necessarily defeat the whole purpose of the contract and the contracting parties. The cases resulting in mere license were those of general employment; at all events they were not special employments for the limited services of inventing. Plaintiff was so careful to confine this man to this particular work that he made special arrangements with him when he did anything else.

There is no ground for doubting the jurisdiction of this court to adjudge this matter of Annin’s right to this invention as a piece of property wrongfully diverted from him to George Wren, on the theory of a violation of trust relations, and obligations, Hat Sweat Co. v. Reinoehl, 102 N. Y., 167; 1 N. Y. State Rep. 340; S. S. Co. v. Clark, 100 N. Y., 365. See, also, 47 N. Y., 444, 662; 66 id., 459; 1 Am. Rep., 10, 552; 107 Mass., 94; 28 Wis., 594.

_ The federal courts have held that they have no jurisdiction in such cases unless by reason of the citizenship of parties. 99 U. S., 547; 10 How., 99; 20 id., 56; 16 Otto, 613; 1 Clif. 288, 1 Holeness, 317; 4 Blatch. 63; 6 id., 356; id., 565.

The judgment was confined to the power indicated by~ Cont. S. S. Co. v. Clark, 100 N. Y., 335.

The judgment should be affirmed with costs.  