Appeal from the District Court of the United States for the District of Delaware; John P. Nields, Judge.
Before WOOLLEY and DAVIS, Circuit Judges, and JOHNSON, District Judge.
The Bureau of Standards is a sub-division of the Department of Commerce and is maintained by the United States for scientific and engineering research. Although originally organized for the purpose of testing and maintaining standards of measurements and solving cognate problems in the interest of the general public, there has been delegated to it from time to time by acts of the Congress additional duties of making scientific research in specific fields. Various departments of the government are authorized to transfer funds to the Bureau of Standards for the purpose of carrying on scientific investigations in which they are particularly interested, as also does the Bureau carry on research in various projects of special interest to private industries, sometimes without cost and other times at their expense. Among its enlarged powers is that of "investigation and standardization of methods and instruments employed in radio communication." 38 Stat. 1044, § 1. To this end it set up a "radio section." In this section Percival D. Lowell and Francis W. Dunmore were employed as laboratory assistants and associate physicists and were engaged in carrying on investigation, research and experimentation in such problems relating to radio and wireless as might be requested by other departments of the government and be assigned to them by their superiors.
In the course of their employment Lowell and Dunmore were members of the "Airplane Radio" group to which were submitted numerous research projects for the benefit of the Air Corps. The subject of "Radio Receiving Sets" was given to a group of which Lowell and Dunmore were not members. At the time in question these two employees were assigned to work on Airplane Project No. 38 for a "visual indicator for radio signals" and Project No. 42 for "airship bomb control and marine torpedo control by radio." Both projects required the design of a radio relay operated by direct current, that is of a mechanism for use on an airplane to receive the output from a radio receiver and to relay it to a coil on the airplane, which would operate either a visual indicator or a trigger; such trigger in turn to release a bomb on a pilotless plane or a marine torpedo. In the midst of these problems, Lowell and Dunmore, impelled solely by their own scientific curiosity and moving outside the scope of the particular work to which they had been assigned, directed their minds to the problem of substituting house lighting alternating current for direct battery current in different branches of radio apparatus, which is discussed at length in Dubilier Condenser Corporation v. Radio Corporation of America (D.C.) 34 F.2d 450; Id. (C.C.A.) 59 F.2d 305; Id. (C.C.A.) 59 F.2d 309. After developing this idea, which was not related to the remote control relay devised for aircraft use, these employees appesred in the Patent Office.
Lowell and Dunmore, claiming to have invented a radio receiving apparatus whose principal characteristic was the elimination of hum, were awarded letters patent No. 1,455,141; Dunmore, claiming to have invented a signal receiving system, was awarded letters patent No. 1,635,117; and, again, both together, claiming to have invented a power amplifier, were awarded letters patent No. 1,606,212.
The patentees assigned these letters patent to the Dubilier Condenser Corporation. The government, realizing of course that, by force of the Act of June 25, 1910 (chapter 423, 36 Stat. 851), as amended by Act of July 1, 1918 (chapter 114, 40 Stat. 705 [35 USCA § 68]), it had limited licenses under these patents in the nature of shoprights to use the apparatus and system invented by the patentees during their employment, but conceiving that it had the higher rights of full ownership in the inventions and title to letters patent, asserted them by these three suits instituted on bills of complaint which are alike except in their references to the different letters patent, praying in each instance that it be decreed the full owner of the invention and that the defendant be directed to assign to it all its rights, title and interest in the letters patent.The government averred as the basis of its property rights that in the course of their employment there were assigned to Lowell and Dunmore for investigation and research the problems of developing a radio receiving set, a signal receiving system and a power amplifier capable of operation by house lighting alternating current so that the use of electric batteries in such apparatus might be eliminated. (These are the precise subjects matter of the patents.) Pursuant to these instructions they, in the performance of their duties, proceeded to carry on studies, research, investigation and experimentation in those problems, and did work at the radio laboratory of the Bureau of Standards with apparatus and material which were the property of the United States, during their usual hours of employment, which resulted in the inventions and letters patent in question
When the cases came on for hearing before the District Court, the government, first adhering to, and introducing evidence to prove, the straight averments of its bills that Lowell and Dunmore were in each instance specifically assigned to work out the respective scientific problems and that, in consequence, their inventive achievements belonged to it, their employer, somewhat stepped aside from its former stand in the bills and took a position, outside the bills, that failing proof of assignment to the respective tasks the results of the labors of Lowell and Dunmore "in the general field of (their) work" were equally its property and therefore called for a decree for a formal assignment of the patents. The District Court, holding against the government on both its theories, entered decrees dismissing the bills. 49 F.2d 306. The government appealed. We shall dispose of the three appeals in one opinion.
The government on these appeals takes the same alternative positions it took in the court below on its elaimed right of property in the inventions of its employees, as affected by their assignment or lack of assignment to particular problems out of which grew the inventions, and formulates and stresses as its main contention this question:
"Whether the title to patents granted on inventions made by technical research employees of the Bureau of Standards, at the Government laboratories, principally during the regular hours of employment, with the use of Government-owned material, and with the assistance of Government mechanics and draftsmen, the inventions relating to matters comprised within the general field of the patentees' work, although the specific problem had not been thought of or included in the assignment of duties, is vested in the United States as employer of the inventors."
This statement of the main question, if involving any uncertainty of meaning, is made clear by the government's later statement that:
"It does not matter whether Lowell and Dunmore were specifically assigned to do the work which resulted in the inventions in suit. Admittedly the work was within the general field of their employment, for their duties were to do research and development work in radio."
In arguing this question the government admits on the threshold that it was the employer of the inventors and that its property rights in their inventions were those of an employer. Accordingly, it approaches, step by step, the broad right claimed in its main question through the law of the subject ...