Jamesbury Corp. v. Worcester Valve Co.

In 1940, Howard Freeman began working as an inventor for Rockwood Sprinkler Company (Rockwood), which manufactured various products, including ball valves. Freeman signed an employment contract with Rockwood under which he agreed to disclose and assign to Rockwood “any and all inventions” that he might make while employed at Rockwood relating to products manufactured by the company. Freeman went on to develop 19 patented inventions for Rockwood. Despite customer requests, Rockwood was unable to produce a double-seal ball valve. By the fall of 1953, Freeman believed that he could develop a double-seal ball valve but wished to do so through his own company. Freeman resigned from Rockwood on January 25, 1953. A few days later, Freeman’s new company, Jamesbury Corporation (Jamesbury) (defendant) had its inaugural meeting. Beginning on February 1 or 2, 1953, Freeman began to make drawings or sketches of his concepts for a double-seal ball valve. Freeman tested and perfected his invention with the assistance of a machine-shop worker, who was listed as a coinventor on the patent application filed by Jamesbury. In 1960, a patent on the invention (the ’666 patent) was issued to Jamesbury. Thereafter, Jamesbury sued Worcester Valve Co. for infringing the ’666 patent. By the time of the lawsuit, Rockwood had been acquired by E.W. Bliss Company (Bliss). Bliss intervened in the suit, claiming that it owned the ’666 patent because Freeman had actually made the invention while employed at Rockwood and that the invention therefore belonged to Bliss. Freeman asserted that he entirely conceived the invention after he left Rockwood. The trial court agreed with Jamesbury’s position that the invention was not made during Freeman’s employment at Rockwood. Bliss appealed.