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April 25, 1938

TALBOT et al.

The opinion of the court was delivered by: MCVICAR

Plaintiffs aver in their bill, that they are the owners of patent 1,890,421 for new and useful improvements in "Non Refillable Receptacles"; that defendant has infringed the same. They seek an injunction and an accounting. Defendant, in its answer, denies validity and infringement. It also sets up as a special defense therein, paragraphs A, B and C, wherein it avers that plaintiffs are estopped and barred by the decree of the Supreme Court of Pennsylvania, 322 Pa. 155, 185 A. 586; that the infringements complained of are within defendant's contractual rights, as previously adjudicated; that defendant is the assignee of all the right, title and interest of Talbot in any of the structures of which infringement is alleged and that the two plaintiffs are tenants in common of the aforesaid patent. The case was set down for hearing only on the special defenses set forth in said paragraphs A, B and C. The Court, after hearing, makes the following findings of fact and conclusions of law:

Findings of Fact.

 1. The plaintiff, Frank A. Talbot, is an alien and is a subject of the United Kingdom of Great Britain and Ireland, residing in the City of Baltimore in the State of Maryland. The plaintiff, William B. W. Mann, is a citizen and resident of the City of Baltimore and State of Maryland.

 2. The Quaker State Oil Refining Company, defendant, at the time of the bringing of this suit, was a corporation of the Commonwealth of Pennsylvania, having its principal office in the city of Oil City in said state. Since the bringing of this suit, all the capital stock, assets and liabilities of the Quaker State Oil Refining Company have been transferred to the Quaker State Oil Refining Corporation, a corporation of the State of Delaware, with an office and place of business in the city of Oil City, State of Pennsylvania. This corporation is the successor of all rights and liabilities of the Quaker State Oil Refining Company and has been substituted, by agreement of the parties, as the defendant herein.

 3. Jurisdiction was invoked under Section 48 of the Judicial Code because of the necessity of equitable relief for infringement by way of injunction.

 4. September 25, 1931, Frank A. Talbot, plaintiff, made an application (No. 565,155) for a patent for certain new and useful improvements in "Non Refillable Receptables." On the same date, Talbot assigned a one-half interest in said invention and the patent to be issued, to the defendant, William W. B. Mann, which assignment was recorded September 25, 1931.

 5.September 24, 1931, Talbot and Mann, plaintiffs, entered into an agreement for the development, promotion and sale of certain inventions, which agreement was recorded in the United States Patent Office September 25, 1931. This agreement covered the aforesaid application of Talbot, No. 565,155. The agreement provided that neither of said parties could sell his interest in any inventions or patents specified therein, which included the Talbot application aforesaid, without the consent of the other party.

 6. The defendant and its predecessors, for many years have manufactured, sold and distributed lubricating oils, grease and similar products. The oils which it sells are delivered in drums to which pumps may be attached to withdraw the oil. It had been injured by the substituting of cheaper and inferior oils for its genuine oils in its trademark drums. In the course of defendant's investigation, it came in contact with William B. W. Mann, one of the plaintiffs, an associate of Frank A. Talbot, the other plaintiff. Mann came to Oil City in August 1931, to interest defendant in a certain drum which he presented. He again visited defendant in September 1931. The type of drums presented by Mann were not acceptable to defendant. About December 16, 1931, Mann stated to defendant, that he and Talbot had exhausted their funds and could not afford to put any more money into the project. Defendant instructed Mann that it would take Talbot into its employ and let him adapt one of his devices to defendant's requirements. As a result of this instruction, on oral contract was made, whereby Talbot entered into the employ of defendant, December 29, 1931. Talbot was instructed by defendant what the requirements would be for drums which would be acceptable to defendant. With this understanding, Talbot proceeded to adapt the necessary appliances to defendant's needs the valve which Talbot and Mann had already developed. Defendant had no other purpose for employing Tablot than the special work outlined to him. Talbot remained in the employ of defendant from December 29, 1931 to June 7, 1932, when he was dismissed; his salary and expenses were paid by defendant. During the time that Talbot was in defendant's employ, he was in continuous touch with the company's officers and consulted with them. He made a device or drum which was acceptable to defendant on or about March 25, 1932.

 7. Defendant prepared applications for patents covering the structures made by Talbot during the course of his employment and requested Talbot to assign the legal title to it. This he refused to do, claiming them as his own.

 9.August 17, 1933, the Court of Common Pleas of Venango County entered a final decree on the bill aforesaid, which decree reads: "And now, August 17th, 1933, upon consideration of the foregoing case it is ordered, adjudged and decreed that the plaintiff has a shop right or a non-exclusive license as against the defendant to use any and all devices which the defendant might have had prior to entering into plaintiff's employ and which were incorporated into plaintiff's Exhibit No. 19. It is further adjudged and decreed that the plaintiff is the sole owner of and has exclusive right to all the patentable features and structures contained in or a part of the Claims shown in plaintiff's Exhibits 'A', 'B' and 'C' attached to the Bill of Complaint. It is further ordered and decreed that the above named defendant, his heirs and assigns, are hereby perpetually enjoined from interfering with or refusing to permit the plaintiff, its successors and assigns, from using in a proper manner any of the devices to which under this decree it has a shop right or non-exclusive license, and the defendant is hereby enjoined, commanded and directed to duly execute and deliver to plaintiff proper assignments or other methods of conveyance transferring and assigning to plaintiff the applications for Letters patent of the United States and all letters patent which may hereafter issue upon Exhibits 'A', 'B' and 'C' attached to the plaintiff's Bill of Complaint."

 10. An appeal was taken by Talbot from the decree aforesaid, to the Supreme Court of Pennsylvania (reported in 315 Pa. 517, 174 A. 99, 104), which on June 30, 1934, made the following order: "We will affirm the decree of the court below, except that part relating to a 'shop right.' The cause to be remanded and retained for further proceeding, if necessary." The Supreme Court held that the court below did not commit error when it held that all improvements or devices discovered by Talbot after December 29, 1931, are the property of the defendant. It further held, as to the ideas of Talbot which had been developed prior to December 29, 1931, that Talbot cannot now refuse their use in defendant's applications for patents, or refuse to make the necessary assignment to defendant of his right therein, for the purpose of securing the patents defendant had applied for.That defendant, by the terms of Talbot's employment, is entitled to this. It further held, that defendant was not entitled to so much of the appliances which Talbot had developed before he came to Oil City and which were used in the finished product of defendant as a shop right; that the true construction of the arrangement between Talbot and defendant is, that Talbot was to permit the use of these appliances by defendant in the finished product with such further improvements as might be necessary to complete defendant's requirement; that Talbot cannot now escape from the contract which he made and refuse to sell and assign to defendant, the exclusive use of those parts in the completed device which he had formerly developed. That if the appliances of Talbot made before December 29, 1931 are patentable, that Talbot was entitled to compensation therefor, but it would have to be first determined whether said appliances were patentable or not. That if these devices should not be patentable, which cannot be determined in this proceeding, defendant may use the appliances regardless to Talbot's claim, and until that question is determined, defendant may continue to use such appliances under its contract.

 11. Plaintiffs rely for infringement in this suit on the structure or device refered to as Exhibit No. 19 in the decree made by the Court of Common Pleas of Venango County. The right to the use of said structure or device is vested in the defendant by ...

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