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November 30, 1945


The opinion of the court was delivered by: BYERS

Two defendant's motions are here presented, in connection with the Report of the Special Master filed August 7, 1945, which motions were heard November 7, 1945.

The case went to trial as an inquest by reason of defendant's failure to attend, although by answer filed November 10, 1941, he had pleaded matters concerning the nature of his employment by plaintiff, and his acquisition of knowledge of matters comprehended in the term trade secrets, etc., which could have been appropriately illuminated by his own testimony, and perhaps that of others.

 An interlocutory judgment dated December 2, 1943, declared that the defendant had breached the terms of his written contract of employment by the plaintiff (dated January 4, 1937) in that he had become versed in certain of plaintiff's trade secrets, as contemplated by the contract, but, in violation of its terms, he had imparted them to others; and that in so doing he had contributorily infringed two of the plaintiff's patents, in that he had designed, helped to erect, and helped to operate certain machines for manufacturing slide fasteners.

 It is recited in the interlocutory decree, that those matters which were trade secrets at the time defendant entered plaintiff's employ, in September of 1936, were thereafter largely embodied in the following letters patents:

 Wintritz, No. 2,201,068, granted May 14, 1940;

 Ulrich, No. 2,221,740, granted November 12, 1940. The said decree provided for an injunction, and for an accounting of profits, etc., and damages to be established before a Special Master therein named, to wit: Thomas J. Byrne, Esq. The report of the latter sets forth that the gains, profits and advantages, on the part of the defendant, demonstrated by the evidence submitted to him, amounted in all to $ 17,882,91, namely: From Lamar Slide Fastener Corp. $ 16,556.62 " Hared Fastener Co. 962.00 " Peak Construction Co. 364.29 $ 17882.91 ////////////////////////--

 That any damages sustained by plaintiff (i.e., loss of business) because of the manufacture and sale of slide fasteners by Lamar (above) were not proved.

 The defendant objects to the Master's Report, in that a patent infringement suit brought by this plaintiff against said Lamar Corporation, involving the Wintritz patent, resulted in a consent decree for plaintiff and the granting of a license to Lamar, and the payment by it to the plaintiff of an agreed sum ($ 15,000.00) as consideration for a general release running to it alone; that such release bars any recovery from this defendant, who must be deemed to be a joint tort-feasor with Lamar.

 The defendant seeks to resettle the interlocutory decree and findings, because the contract of employment set forth in the complaint herein is illegal and void, and against public policy, in view of the restrictions which its terms imposed upon the defendant, and therefore no recovery for its breach by him can be justified.

 The first contention requires consideration of the nature of the defendant's participation in the Lamar infringement, and the consequences arising from the outcome of the suit against that company, so far as the general release is concerned.

 That Tibony was properly adjudged to have been a contributory infringer to the Lamar infringement, is not now disputed, but since the adjudication to that effect was upon his default, the subject has been reexamined in light of the generally accepted definition, that contributory infringement is 'the intentional aiding of one person by another in the unlawful making, or selling, or using of the patented invention'. Henry v. A. B. Dick Co. 224 U.S. 1, at page 33, 32 S. Ct. 364, 373, 56 L. Ed. 645, Ann.Cas. 1913D, 880.

 Clearly the conduct of Tibony in designing and helping to build the Lamar machines is aptly described in the foregoing language, and precedent for so holding is found in Risdon Iron & Locomotive Works v. Trent; C.C., 92 F. 375.

 The question of whether his preparation of the designs and assistance in erecting the machines became merged in the making and use of the machines by Lamar, so that there resulted but one body of infringement, composed of diverse elements, does not rise to any level of importance.

 Assuming, for argument only, that the plaintiff could have joined Tibony as a defendant in the Lamar suit -- depending upon his precise relationship to that enterprise -- (Cf. Hart Steel Co. v. Railroad Supply Co.; 224 U.S. 294, 37 S. Ct. 506, 61 L.Ed 1148; American Machinery Co. v. Everedy Mach. Co., D.C., 35 F.2d 526, at page 528), but having elected not to do so, it does not follow that Tibony cannot be held separately for his contributory infringement, in this action. No decision is cited by defendant for the proposition that a patentee is required to pursue his remedy ...

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