Appleton v. Bacon & North - 67 U.S. 699 (1862)
U.S. Supreme Court
Appleton v. Bacon & North, 67 U.S. 2 Black 699 699 (1862)
Appleton v. Bacon & North
67 U.S. (2 Black) 699
Parties engaging the services of an inventor under an agreement that he shall devote his ingenuity to the perfecting of a machine for their benefit can lay no claim to improvements conceived by him after the expiration of such agreement.
On the 7th of December, 1858, the appellants, Appleton, filed their bill in the Circuit Court of the United States for the District of Columbia for an injunction to restrain the defendant, Bacon, from using, selling or trading with, or otherwise employing a certain patent right for a new and improved mode of folding paper invented by defendant, North, which had been issued by the Patent Office to the defendant, Bacon, on the 10th of August, 1858. And also from constructing or authorizing to be constructed any machine or machines having or containing the said improvement &c. as aforesaid patented to him until the further order of the court; that he be decreed to surrender and deliver up the said letters patent to be cancelled, that they be declared void, and for general relief on the ground that the complainants were assignees of the invention, and the patent should have been issued to them, but the defendant, Bacon, had fraudulently procured it to be issued to himself.
The defendant North admitted all the facts stated in the bill.
The defendant Bacon denied all fraud and set up title in himself by reason of certain contracts alleged to have been made by North, the inventor, with a company called the American Book and Paper Folding Company, which he alleged had been assigned to him, and that North had recognized and was acting under the said assignments at the time he made the said improvements.
No replication was filled, but evidence was taken on both sides. North was examined as a witness by complainants under an agreement saving exceptions to his competency, and his testimony was by the court ruled to be inadmissible.
The court held that when part of the improvements were made by North, he was in the employment of Bacon under some agreement, either express or implied, and that all improvements made by him while so employed should be the property of Bacon. As to those improvements, they decreed that they rightfully belonged to Bacon, and as to those discovered after he went out of Bacon's employment, they belonged to the complainants.
From this decree cross-appeals were taken by the respective parties to the Supreme court.