1. An undisclosed invention does not need a patent to protect it
from disclosure by breach of trust. P.
279 U. S.
391.
2. O, being the inventor of a machine, employed B as a machinist
to construct it, B agreeing to keep secret the information
concerning the invention imparted to him by O and not to make use
of it for the benefit of himself or any other than O. B, in breach
of his trust, surreptitiously obtained a patent for the invention
as his own, and 0, in a suit in a state court, obtained a decree
holding B a trustee
ex maleficio of the invention and
patent, commanding him to assign the patent to O and forbidding him
to use, make or sell, etc., such machines or to transfer any rights
under the patent.
Held:
(1) That the suit was not one arising under the patent laws, and
was within the jurisdiction of the state court. P.
279 U. S.
390.
(2) That the decree of the state court was an estoppel against B
in a suit brought by him in the federal court to enjoin O from
infringing the patent. P.
279 U. S.
391.
29 F.2d 31 affirmed.
Certiorari, 278 U.S. 597, to review a decree of the circuit
court of appeals which affirmed a decree of the district court
refusing a preliminary injunction in a suit for infringement of a
patent, and dismissed the bill.
Page 279 U. S. 389
MR. JUSTICE HOLMES delivered the opinion of the Court.
In September, 1927, the respondents brought an action in the
Supreme Court of the New York in which they obtained a judgment
that the defendant, the petitioner, was trustee
ex
maleficio for Oppenheimer of an invention and letters patent
issued to the defendant; that the defendant deliver to the
plaintiffs an assignment of the letters patent and give up
instruments similar to the invention; that he be enjoined from
using, manufacturing, selling, etc., such instruments, and from
transferring any rights under the patent, and that he pay costs.
The judgment
Page 279 U. S. 390
was based on the facts alleged and found that Oppenheimer having
made the invention in question employed Becher as a machinist to
construct the invented machine and improvements made by Oppenheimer
from time to time, and that Becher agreed to keep secret and
confidential the information thus obtained, and not to use it for
the benefit of himself or of any other than Oppenheimer. It was
found further that, while engaged in making instruments for
Oppenheimer and after having learned from him all the facts,
Becher, without the knowledge of the plaintiffs and in violation of
his agreement and of the confidential relation existing, applied
for and obtained a patent of which Oppenheimer knew nothing until
after it had been issued, and while Becher was still making for him
the Oppenheimer machine.
The judgment was entered on July 5, 1928, and, at about the same
time, the present suit was brought in the District Court for the
Southern District of New York, in which the parties are reversed.
Becher sets up his patent, alleges infringement of it, and prays an
injunction. He also states the earlier proceedings in the state
court, and, although not in very distinct terms, seems to deny the
jurisdiction of that court inasmuch as the allegations of
Oppenheimer, if sustained, as they were, would show the Becher
patent to be invalid, a question, it is said, for the Patent Office
and the Court of the United States alone. An injunction was asked
restraining the defendants from further prosecuting their suit in
the state court. A preliminary injunction was denied by the
district court, and, on appeal, the decree was affirmed, and, the
appellant's counsel consenting if the Court decided that the state
court had jurisdiction, the bill was dismissed. 29 F.2d 31.
It is not denied that the jurisdiction of the courts of the
United States is exclusive in the case of suits arising under the
patent laws, but it was held below that the
Page 279 U. S. 391
suit in the state court did not arise under those laws. It is
plain that that suit had for its cause of action the breach of a
contract or wrongful disregard of confidential relations, both
matters independent of the patent law, and that the subject matter
of Oppenheimer's claim was an undisclosed invention which did not
need a patent to protect it from disclosure by breach of trust.
Irving Iron Works v. Kerlow Steel Flooring Co., 96 N.J.Eq.
702;
Du Pont de Nemours Powder Co. v. Masland,
244 U. S. 100.
Oppenheimer's right was independent of and prior to any arising out
of the patent law, and it seems a strange suggestion that the
assertion of that right can be removed from the cognizance of the
tribunals established to protect it by its opponent's going into
the patent office for a later title. It is said that to establish
Oppenheimer's claim is to invalidate Becher's patent. But, even if
mistakenly, the attempt was not to invalidate that patent, but to
get an assignment of it, and an assignment was decreed. Suits
against one who has received a patent of land to make him a trustee
for the plaintiff on the ground of some paramount equity are well
known. Again, even if the logical conclusion from the establishing
of Oppenheimer's claim is that Becher's patent is void, that is not
the effect of the judgment. Establishing a fact and giving a
specific effect to it by judgment are quite distinct. A judgment
in rem binds all the world, but the facts on which it
necessarily proceeds are not established against all the world,
Manson v. Williams, 213 U. S. 453,
213 U. S. 455,
and, conversely, establishing the facts is not equivalent to a
judgment
in rem.
That decrees validating or invalidating patents belong to the
courts of the United States does not give sacrosanctity to facts
that may be conclusive upon the question in issue. A fact is not
prevented from being proved in any case in which it is material by
the suggestion that,
Page 279 U. S. 392
if it is true, an important patent is void -- and, although
there is language here and there that seems to suggest it, we can
see no ground for giving less effect to proof of such a fact than
to any other. A party may go into a suit estopped as to a vital
fact by a covenant. We see no sufficient reason for denying that he
may be equally estopped by a judgment.
See Pratt v. Paris
Gaslight & Coke Co., 168 U. S. 255;
Smith & Egge Mfg. Co. v. Webster, 87 Conn. 74, 85.
Decree affirmed.