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.-

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--=----~ .... _......_ .. --= __ ... 

comr:_ ~ API-EALS, FOl1RTfl CIRClJIT 

- KOBER V. UNl'TED ST.ADS -- Bo. 5786 Decided Bew. 8, l.948 

PA.TEill'S ·--- ------ - __ ......... __ ""_ ... - --- ~_ .... ,,,. ¥-- ~ - ---~--.!'_ 

- 1. .lppeala to Circuit Courts at Appeal.a - weight given f.mUnga ~ 

District Court 

- ... - --·- - -- .:;. -- Finding ot district jWfge that employee waa assigned to develop 

apeoitic clevioaa 1a eupparted by' substantial evidence including emploJ'ee1s 

admissioDBJ appellate court auat accept tinding, since there ia no baaia 

tor holding that ~' who saw and heard witneaaaa and •• in ba'\ter 

position than appellate oourt to Pdge their credibilit7, •a clearq 

wrong in accepting eYidence relied on 'b7 employer. 

2. 1'itle ;:._ Empl079r and •plo)ree -- In general 

Title--Employer and •ployee--Shop right 

In absence of agreement fixing rights of parties, rights o£ empl.oy'ee 

in his invention. depend upon tacts, 1f ha made invention on own. initiative 

and on own time and resourcea, invention belongs to h:llll and empl07c has 

no rights in itJ if, while engaged in line ot f"Drk tor employ'ar, he 411V1sea 

or 1mprcrree method or inatrwnentallt7 for doing work, using ampl.0)"81"111 

propert7 and senicaa of ~her em.plO)"eaa to devel.op invantiog. and baa 

aasentect_ to _uae _of_ same by employer, invention is his property su.b;,ect 

to irrevocable license or shop right in •plo7er; it ha makes invention 

wli1le empl07ed to make investigations and conduct ex:perimant1 tor purpose 

ot making it, invention 1a ampl.oyer•s propert7J rules applT to empl.o:feea 

of Qoverment. 

3. Title -- Empl.O)"ar and •pl.O)"ee - In general 

Agreement between War Department and employee provides that irlTentiona 

mde b7 •Plo7•• while engaged in assigned work aball belong to Government 

if in opiDion ot Chiet' Signal Officer it i• :In public interest that it be 

o•ned 'b7' W~ Department and that otherwise it shall belong to emplOJ'•• subject 'to non-exclusive license to GoV'erm.ant; agreement. waa entered into 

by Government for lawtul and proper purpose and finds ample statutor.r 

aupportJ until Chief Signal. Officer makes determination aa to public 

interest, employee is entitled to inventions, mbject to license to Government, and to appJ.r for patenta; no a.ction (certificate o£ Secretary 

of nar to relieve employee from 1>D-7ing Patent Oi'f'ice teas, 35 tJ. S. C. 45) 

taken or allowed as matter or course to protect e~plojee'a ri;hta precludes Govern:ne~t :from assertion ot ri~hta unaar contract atter Chief 

Signal. O!ticer makes determination !or \'Mich co~tract proviaes; oOOd 

faith on part of Chief 51~ Officer in ID3king eetormina.tion is essential 

--- - . 

l:-~ 

~-

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- ... .,. T 

REF ID:A70811~~-

- - - - -

-- ._ --- -- ..... .............. ---:. 

--... 

~~ ~-::::-_- .... to vest title 1n GOTernment; his decision is reri.ewable tor tn.ud bad 

fait.b., or failure to exercise honest judgment, even it Child' Signal 

Otticer acts 1n. good taith, hia determination would be aat aside it ha 

•a• fraudulent.~ induced by false statements or other traudul.ent conduct 

of subordinates or others -..- - -:- - - - -- _...,_ - --- .... ---=-.:::..... 

4. Arbitratio!!-__ -..... - ....,.... - "'Et' - ---= _-::;,.--- _.. --........ - Award of arbitrator mq be impeactied tor fraudulent conduct 1n. ita 

procurement 

-

- - ----.-:::::- - - - - ---- ~---- ---- --- - -- .____ .....,___. 

Appeal from District Court tor Eastern District of Virginia 

- --- ---- ---- - Action bJ" United States against lli-lliam Iober for-J••iiznent-~- imrentiona From Judgment for plaintitt, defendant appeals Att'irmed. 

MARI P FRIEDLA..NDER (LEROY BERDHEDI on the brief') both of Washington 

D C , tor appellant 

T HAYWARD BROWN, Washington, D C 

(B G 'Morison, lrallhington, D C , ana George R Humrickhouse, Alexandria, Va , on the brief J tor appellee 

Before PABDR, Chief' Judge, and SOFER and DO~E, Circuit Judgea 

- --- ------- - ---======---

PilICER Chief' Judge ------===-.=--.:: -=-= - -==-

Thia is an appeal f'rm a decree requiring the appel.lant 'lilliaa 

Kober to aasip to the United Statea all rights in certain inventions 

cOYered b7 applications tor pat.enta pending 111 the Pat.ent. Ottice, aerial 

Noa 5431 7'4 and 686,093 respective:Qr The District Judge found that 

tbe invention11 were made bJ' appellant while 'lie •• emplOJ'ad bT the 

United states and assigned to the duty of dnaloping electrical appll• 

ancaa of the sort covered bJ' the applications tor patents.. under a 

contract pro'liding that title to such inventions should be vested 1D 

the United States upon a determination b7 the Chief Signal Officer. which 

had been duq made, taat the public interest so required The District 

Judge held that tbe inventions belonged to the United states under the 

ezrreaa _!-arms of the co:itract!.. •aa •ell as .,,mar :_he-~~·~ la~"":- _ 

--- ~ - --- The facts are that appellant, a graduate engineer, •• emploj-ed 'bl' 

the Un1te4 States A.rtJrr, Signal Corps, Engineering l!aboratories, near 

Fort 11onmouth New Jersey, from JanUB.rT 1943 to Janua17 1947 In JanUS.l7 19431 before being assiP"Ded to laboratory- work involving research 

and development projects tie a.;reed to the provisions or "Patent lemorandum No )", w~icb is as follows 

2 

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r, .$3.. 

J Sil 

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---- - -

REF ID:A70811 

l - \ 

( l / 

/ ----7 ~..t -- "You are-'beTeby assigned to deve1op improvement in arts at 

nlue to tlie thief Signal Officer It is expected that this work 

m.a:r uwl:t ..... iD the diseovel"1' or patentable features, and 7our 

assipent to this work il!I for the particular ~pose ot vasti~ 

in the United States all right title and interest j;.o e.rq imen- e- tion tbat 7ou m~ make 1Mile engaged in the work assigned, it in 

the opinion or the Chief' Signal Officer the public interest demands that tlte invention be owned and controlled bl' the War De- - partment __ .:_ _ ~- - - :: =.. - -- - -~=~ 

- ~ -:._ - .::: - - - ---=:.~-=----

- ft.Acceptance or assignment to this work will constitute an 

agreement on 7our part to execute the papers required for complete 

.assignment of aey such invention to the United stat_u in case the 

Chiet Signal Officer decides that the .invention sl!Puld rem...ain. 

secret, or to execute the papers necessary for making application 

f'or patent and the assignment ot the patent to the United State1 

it aeorec1 la not necessary or is necessary only for a limited 

tjiiie _ In t_!ie case of an invention which the Chief" Signal Otficar 

.decj.dea •hould ~emain secret acceptance of this assignment also 

constitutes an agreement on your part that you will not disclose 

the invention to unauthorized persons until such time as you are 

informed in writing b.T the Director of the Signal Corps Ground 

Signal Service that the need for secrecy has ceased 

"The aasigmaent or the inTention to the United Statea auat 

be drafted in form to compJ.7 with requirements or law :relating 

to patent applications coming under this categOl"TJ ba.t such aaaign- m~l!_~ or instrument_ot transfer may i~a_proper case include 

suitable reservations to e~ble ;you to .?'etain or repossess your 

ce>mm.erc1al righta, .in whole or in part.,. if' and when the need 

.for secre:7_c~a•_!~=exi~ =- _ __ _ --=--- _ -- - --- - - -- --===---=-=- -----=--===--- 11.Thia no~ice ot assignment to dnelop improvements in arta ~r value to the Signal Corps shall not be construed aa divesting 

7ou-ot ownership ot anr invention made by' 7ou while engaged on 

thie work, other than those which in the opinion ot the Ohle!__ 

Signal.. Officer should be own-4 and confrolled b7 the War Depart• 

-ment to sateguard the public interest,, except that the United 

Statu shall be entitled .to a none:xcluaiye license to ~ and. 

all invent.ions made ~ 7ou in the course of the work assigned in 

_ tbi same war aa it thii special. assignment bad not been made " 

-=== ....:::;-----:--=:ril: ...::-:..- - -- =-=--- -- .-,'"!!'"-~--... r---

-(l) -"In Feb~aq or hrch 1943• app~ concelv~ ~- inve~i-o~ reiat:lng to an alter.Da.tfng current generator, and in .August 1944 an 

inventio~ d~signed to 11aintaiu within limitl!__!.he voltage output or & 

generator notwithstanding VB.17ing 1oad11 He contends that he was not 

assigned to the development or these device• under hill .contract 0£ 

emplo7J1ent but tbe District Judge baa found that he was ao assigned 

-

--= 

... ,.....1 

-.-\ 

7 iii M 

-~ 
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-

-~ REF ID:A70811 - ... 

.... - 1 ---, ... .,,,.... .. ~ ---.....--;t""C=--- - -::-=....-[ - - ---- - --- -

--- ~- ------ - - - - - ::: E --- --~ =--:=-;..,...~ ~-:._ 

- - - - - --= - -=---=--"£: --.::::::.....-::.. 

and this finding ia supported b7' snbstantial evidence 1nclucling adlli11s 

made hr appellant himself' in statements f'iled by' him as a basis ot promotion in the goverllDlent service We must accept this f'indi?Jg, since 

there is no baaie ror holding that the judge who saw and heard the witnesses and was in better position than we are to ~udge their credibility, 

was clearl,y wrong in accepting the evidence relied on b7 the Govel'mlent 

In making applications for patent• on these inventions, appellant secured 

and f ilad certif icatea of the Sacret&.1'7 ot War that the iDYentiona were 

likel.7 to be used in the public interest and was relieved o.f the pa111ent 

of fees of the Patent 0.f!"ice under the Act o£ lay 3, 18S3, as amended, 3S tJ S C A -4S _ -- _ _ ~ _____ _ - -- -- - -= ---- - ,,,,,___ -

In 1946;~ppellantpr-;pared; doc~ent- showlng tiii.- t~e~ri=ofthe .fir.st of his patents; and this was used by hia mperior., a Colonel 

M07nahan, without his knowledge, in negotJ.ations with ot!"ioials or the 

General Electric CompSJ\T looking to the manufacture or the deYice tor __ the Government .Appellant protested against this disclosure and ~onsiderable- feeling was developed between biJll and Colonel MO)"D&b.a.n He 

was ordered to make a public apology for langtaage which he had used to 

Colonel Moynahan, and resigned his position rather than do so Demand 

was then made upon him that he either execute to the Government l:i.cansea 

authorising it to license others under the patents or make assignments 

to the Government -etaining licenses for himself which would authorize 

him to enter into 8.lJ1' commercial arrangements covering the patents that 

he might desire Upon his ref'usal to accede to this demand the Chief 

Signal Of'.ficer 0£ the United states 1'1ajor General S B Akin, made a 

:tinding that 1 in his opinion, the public interest demanded that the in- - vention E-.!scrj.b!_d_in appellant• 11 applica~ions be owned and cont.rolled 

b7 the War De.partment and enclosed papers of assignment for him to 

execute J!e _!"~£used to execute these and this autt was thereupon 

instituted to require him to aa15ign to tE-e Government hia rights under 

the patent applications _: : -..=-=-= ..=:... -

------- ~-- ----- At the hearing iilthe oourt below Ka~or G;neral Akin testiriad that 

be made the determination that it na in the public interest for the 

patents to be Oll'lled and controlled by' the iar Department on recommendations 

submitted by his technical advisers and on his personal knowledge of the 

facts 1n the case He stated that the racta laid before him were that 

the devices covered ~appellant's inventions were needed bT the armed. 

f orcea of the united states and that it waa desirable that the Govermaent 

own the patents in order to secure quantit7 production by priTate manufacturers and lower prices as a re11Ult ot such production He aaid that 

the knew nothing about the controversy that had arisen between appellant 

and Colonel llo7nahan or the reeling re81llting therefrom There is not 

the slightest evidence that General Akin acted otherwise than in entire 

good faith in making the determination or that any person who turnished 

information to him with regard to the matter 'Was actuated-9T improper 

motives Counse~or appellant complain that they were stopped in their 

examination of General Akin, but the record shows that thorough examination was permitted as to the facts which were before the General and that 
'- - .. ........ - ~-­

- -

----- ·REF ID: A70811 

.......... - - ~ 

--- - -

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-/'"(- - - --=:. - .:: - - -

.... _ - -r 

~ - r the cOurt merely declined to permit examination to altow that he had 

made a mistake While counsel stated general.11' that they proposed to 

show that fraud was perpetrated upon the General in securing hi• determination, this appears to be mere bra.tum tulmen, with no specific 

quea_!ion or otter or proof' to ~pport the sta~ement __ -~-- _ 

-.,___ 

........ -

-..... ~_--

- :_ {2) - Upon these facts, we think that the judgment appealed from 

was c1ear]¥ correct In the absence or agreement tixing the rights ot 

the parties the rights or an employee in an 1nventio\\ which he baa made 

are .subJeat to different rultts dependent upon the facts U he ha1 made 

the invention on his om initiative and on his own tille and resources, 

the 1nvent1on belongs t-o him and the empl07er has no -rights in it It 

irhile engaged in a certain line or work tor his employer he has devised - oi:_improveda method or instrumentality tor doing the work, using the 

property or the employer and the services of other empJ.oyees to develop 

his invention and bas assented to the use of same by the employer, the 

invention is hia property subject to an irrevocable license or shop right; in the employer It he makes an invention while employed to lll&.ke 

investigations and conduct experiments for the purpose of making it, 

the invention is the property or the employer, who is entitled to the 

fruits ot the labor £or which he contracted These rules appq to employees of the Government as well as to those of private persons See 

United States v Dubilier Condenser Corporation 289 U S 178 (17 USPQ 

154) -and Houghton v United states 4 Cir , 23 F 2d 386, where this 

court discussed the matter fully with citation of the applicable authori- - ties In the case at bar however, these l'lllea need not be considered _ axeept as furnishing background tor the agreement of the p~1e1_heretoto~e _qu!!ted which deala tulq with the matter Th.! ettect o.t._that agreement, aside from the prOYisions for secrec7, is to provide that &D3' 

invelltion made by appellant while engaged 1n the work to which he ha• 

been assigned shall belong to the UnitedcStatea, if' in tne opinion ot 

the Chief Signal 0.ft'~c~_it i• iQ the public interest that it be owned 

and oon~r~lied by the War Depart!!ent otherwise it shall belong -to 

appe1l.ant subject to a non exclusive license on the part of ~he United 

States The determination b)" General Ald.q_tulf'illed the condition of 

the contract and vested title to the invention in the Unit.eel Sta'te11- - ==-~- - -= -=-- ~ ---===- ---=-............... ----=-=-===~ .t'~ --

- --=:<3) ... ;;Ji:ntqueailon• the va11ditT" or-tne contraat on =tn• -:groind =-- lacldn ill ,tatutor.r f'oundation. I1' it were held inYalldt -i= ;!Jd__!lot _help appellant ata the ~~e:!ci -.o:ci: i~e:ii~:::tled to the invention on the ground bat appe n: d i - - erii1 - a-for the purpose of con.ducting investigations an mak ng ·~ _ .tp ~· tr --hich it ws anticipated that patentable inventions wd _ _ 

=::-!:~t o;ew do not thfnk;-however, that-the cont;Tact iJS invQ!id _On the 

conf..rari it is a. reasonable agreement entered into b7 the I:r:; ~ent for' a. lawf'Ul and proper purpose and !inda ample support t ~ 

statutes See Act ot Augiist 29, 1916 c 418 sec i ~f-:~ t 631.· 

10 t1 s c A 122.31 Act or July 2 1942 c 477, sec ' -μ a 

;::-

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632 _. 

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- - --- -- - - - - - - - - s:-- -~- -= ........ ~----·==-~-

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Itia argued that the contract, proparJ.,' construed, doea not auth- - t. "" · 

orize an; determination b7 the Chief' Signal otf'icer •except to insure ._ military secrecy or to saf'eguard the public interest in a militar1 WB.J'' ----, 

I\ is perfectly clear from. a reading or the contract, however, that the 

prov.isions as to secreC)" are entireq separate a.nd distinct tro11 those - relating to the determination that the public interest requires -o.ner; 

-- ...s::-

ship and control b7 the war department ~e provision o:t paragraph two 

ot the contract upon which appellant relies, relating to a determination 

bY' the Chid Signal Officer that the invention ahou1d remain secret, provides .ror an assignment 1D such case of the invention as distinguished 

from the patent Thia is followed bJ' a provision requiring the aaa~­

ment ot the patent~ "it aecrec7 is not necea18.17 or is necesaar.r ?Or - onJ3 a limited time' The paragraph closes with a requirement that the 

invention be not disclosed until the need £or aecrec7 haa expired The 

third paragraph relates to form of assignments or patents 8.8 lo which -- - --- aecrec7 is required, but provides that reservations or rights ma7 be 

made .nin a proper case• to be asserted when need or secrec1 baa expired. 

The fillU paragraph makes clear that by a •proper case is meant a case 

in which the Chier Sia~ Officer ha.a not determined that the patent 

should be •owned and controlled by the war department to safeguard the 

public interest n That paragraph aakes it equalq clear, when considered 

with the first paragraph that such a determination b7 the Chief' Signal 

Officer vests the right to such invention 1D the United States 

And we do not think that the rights or the United States were in a111 

wa7 prejudiced by the fact that appellant was allowed to app~ for patents __ with_ assignl'lent or licenses to the Government or that certll'icatea ot the 

.Secreta1'1' of ~ar were filed to permit this to be done-.ithout payment ot 

Patent O!tice fees, ae allowed by the Act or 1883, as amended Until the 

Chief S~:na.l. Of'ficer made hi• determination with respect to the-ptt.blic 

interest, appellant was entitled to his inventions, subject to this license, 

and to appl.T ror patents to protect same and no action taken or allowed 

aa a matter of course for the protection of rights which were undoubted11' 

his until action bJr' the Chief Signal Officer should be held to preclude 

-

...._ = --

.I..-..=--

- -- - r- = 

the Government f'rom assertion of rights under the contract after the Chief' 

Signa1 Officer made the determination for which the contract provides - - --- --

See Houghton v United. states, supraJ Grand Trunk Western Raila7 v 

United States 252 U S ll2J Wisconsin Central R. Co v United States 

164 'U s 190 =---- ~ - ----- - - - - - _-:..::a,.. .i%::.._ 

-::::--we _quite - agree -ii.th appellant that good faith on the part or the 

Chiet Signal Otticer 1n making the determination £or which the contract 

prov.idea was essential to vest title to the inventions in the United States, 

and that his decision would be reviewable for fraud, bad f'aitli or f'ailnre 

to exerci~e an honest judgment United States v Gleason l7S U S SSS 

Xihlberg v United States 97 U S 39S There is noth~ng in the record 

however, upon which to base a contention of fraud, bad faith""'br failure 

to exercise an honest judgrrent, nor is there any basis ror saying that 

evidence to this ettect was excluded As statea above general charges 

6 
= 

I Z» "i I==::;;;:-

1 

r_ , 

J 

- ---~---

- -=-~- - -- - o:r fraud -ware made in the argument 0£ counsel., but there wa11 no tender 

of proot which would justify sending the case back There was no pre• 

tense or compliance with the requirement of rule 43(e) of the Rules ot 

Civil Procedure, which provides --~ --'¢" .. - - -- - ------- •In action tried b7 & jury-, it an obiection to a question propounde~to a witness is sustained by the court the examining 

attorne,y ma,- make a specific otter ot what he expects to prove 

by the answer of the witness The court may require the offer 

to be made out of the hearing ot the jU17 The court JllB.1' add 

sucn other or further statement as clearl7 shows the character ot 

the evidenee - the form in which it was ottered the objection 

made1 and the ruling thereon In actions tried without a j1117 - -the same procedure ma;y be followed, except that the court upon 

request shall take and report the evidence in full unless it 

olearlT appears that the evidence is not admissible on &fr1' ground. 

or-that th_!_ 'lr!_iLn~_s iB privileged " _ - - - _ _ -- -----=--==--- '- - -- - -- --- - -- - --- --Even thou.ghthe-Chier- of the -Signal Corp• acted in good faith, hi• 

- .tt.. 

L

---

-=- ::. 

'=-- --

~ -

determination vould be set aside U' it were shown to have been frauduiantl,y 

induced b7 false statements or other .rraudl..l.ent conauct on the part of his 

subordinates or othere ~-t:. •• 4:.'.he a-M ~ an (.Ll .uobit.rator might be 

impeached tor fraudulent conduct in its procurement but there is no 

evidence or offer of evidence of this sort It was not competent,~o~tn,.._....----~~--;i!'::-__- course, r~ 'h111 trail court to substitute its judgment for t.i-.&. 'U ~ 

Chief of the Signa.i. ~ ... _. .. .,. enter into an inquiry as to .,.hether or not _ he had 111ade a mistake or judgmeu.... --..... ~~what the judge re:f'used to 

do and then waa_EC?_Otfe:r of 8f1Y' specif!c -=-===-~.Jmsta.in the cha.:s::rggoa--------J~-~-== - - - - -- -- - -- --..,....=----~~ 

or fraud_-:...-- - ~ - - - - - -- -:.. - -=.. __ _ 

~.::: ---

- ---= -___.:;-

----- - - -

=-=-=--- - -= 

-_...,.___ - ---

-- - -; - -=---=-- ( - -~-- -- - --=== ---=-..=---=----=- :::; -=---

7