# Petition for Writ of Certiorari — Maurice A. Garbell, Inc. v. Consolidated Vultee Aircraft Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386417_1850%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1953 - **Citation:** 346 U.S. 873 ## Text Iu the Supreme Cr OF THE Anited States OctoBER TERM, 1953 No. 30 1 > Maurice A. GARBELL, INc., a corporation, and GARBELL RESEARCH FOUNDATION, a corporation, Petitioners, vs. CoNSsOLIDATED VULTEE ArrcraFr CoRPORA- TION, a corporation, and AMERICAN AIR- LINEs, INc., a corporation, Respondents. 4 PETITION FOR WRIT OF CERTIORARI to the United States Court of Appeals for the Ninth Circuit and BRIEF IN SUPPORT OF PETITION FOR WRIT OF CERTIORARI. Txueropore H. RocHe, 2000 Mills Tower, San Francisco 4, California, . Counsel for Petitioners. TxeEo. J. RocHE, Sutiivan, Rocke, JoHNsON & FARRAHER, 2000 Mills Tower, San Francisco 4, California, Of Counsel. Subject Index Page Petition for writ of certiorari. ............ cece cee cece eee 1 RMI, oo ck ae nok vaN b N45 Fee e ca) Who eee en ees aes 2 SUPINE oc ves Menencae ns Does Dance Bias . 0010' 0 cin 00 a dip nasiat oma & sake» 23 GI. TRO IAW 5 cccccciccieecrcnveuesbeee s4 00s dN EES scree 24 1. i tiding $6 gt 960 diiglined on appeal unless . 8 VII. The evidence ......... Se ee RES Da Nb ics ape dh 30 A. The evidence as to shop right....-.........+. eet ae 1. The invention here involved was devised and St wicca otraadinre. ot ment by Consolidated ............-- 30 2. hiaid slate Gaia We patenting ot said invention by Consolidated during Gar-* bell’s employment by it . eas RE neta heres 31 (a) The invention ..............50.008: sas oe (b) No development or change.............. 81 4. 5. Sussect Lypex (c) Proposals v. Final Plans .........--+++++ There was no reduction to practice of said invention by Consolidated during its employ- ment of Garbell of which he had notice or knowledge .......-scsseceereccereceeeeses (b) Model types .........---ceeeeeeeeeeees (d). The XB-A46 ....... cece ec eee reece tees (e) The Model 110 ..........seeeeeeeeeeees (£) Garbell reduced invention to practice be- fore employment ......-..---seeseeeees The employer’s cost question..............-: Inventor did not assent to or acquiesce in use of invention by employer............--- B. The evidence on the invention agreement as it per- tains to shop right............sseeeeeeeeeeeress i. The invention agreement did not operate upon or in any way affect the invention involved No disclosure was made by Garbell to Consoli- dated of said invention under the terms and provisions of said invention agreement....... (a) Garbell’s knowledge of patent procedure of Consolidated ..........60--eeeeeeees (b) Disclosures made by Garbell to Patent Department ..... 6s ceseeceeeneeeeeees (c) The alleged disclosure of the invention in i nes ioe canes 8 (d) Matther Gaskell nec Comelideted eonid- ered the paper to be a ‘‘disclosure’’ under Xp to Oomaolidated: 005. scecseeeseees VEIT. Conclusion... .cscccctccceeceesererececenereencesens 51 Table of Authorities Cited Adamson v. Gilliland, 242 U.S. 350, 37 S. Ct. 169.......... 25 Chesapeake & Ohio Railway Co. v. Martin, 283 U.S. 209, 51 8 Cbs OBS. . aoiccnkad inch» awrite aks ere pews same 26 Curtiss Aeroplane & Motor Corp. v. Janin (0.C.A, 2), 278 Fed. 454 ..... spk bE oo ALAR EAE ee 11, 44 Davis v. Schwartz, 155 U.S. 631, 15 S. Ct, 237............. 25 Ferree (E. H.) Co. v. United Shoe Machinery Corp., 290 U.S. Gh4, 54 SB. Ot, OB. Oa EE ieee 26 Foran v. Commissioner (C.C.A. 5), 165 Fed. (2d) 705..... 27 Garbell v. Consolidated Vultee Aircraft Corp., 94 Fed. Supp | NR RE ert AE NCE MARNE Dele AE PEN SIAR IEEE EE ea tr aMEs 2, 3, 22 Gill v. United States, 160 U.S. 426, 16 S. Ct. 322. ...... 18, 27, 28 Grace Bros. v. Commissioner (C.C.A. 9), 173 Fed. (2d) 170 27 Heywood-Wakefield Co. v. Small (C.C.A. 1), 87 Fed. (2d) 716 (cert. den. 301 U.S. 698) ...... 6. eee e eee eee eeeeee 28, 36 Massie v. Fruit Growers Express Co., 31 Fed. (2d) 463.... 36 San Francisco Assn. for Blind v. Industrial Aid for the Blind (C.C.A. 8), 152 Fed. (2d) 582..........-00-eeee 27 Solomons y. United States, 137 U.S. 342, 11 S. Ct. 88....... 18, 27 United States v. Dubilier Coennr Corp., 289 U.S. 178, 53 Sh Ce BOE EE AS ie tie eb 18, 28 United States v. Oregon State Medical Society, 343 U.S. 326, TD BCE BOO. sins sin np Sica Rise ttie Se meat Series vce sees 16, 26 United States v. United States Gypsum Company, 333 U.S. 364, 68 S. Ct. 525 .....--. eee ene Pi chnes cpedesenes ed 16, 17, 26 28 U.8.0.: Statutes Section 1254(1) ....... vepsengasesbrnutecteenssnses And you were always paid on these sug- — gestions ? : a 55 A. On most of them, of those that were given consideration, yes, and the payment was prompt.”’ (R. 283.) The testimony discloses that of the seven disclosures made by Garbell to Consolidated two of them were accepted by the company. These were the hydrofoil for airplanes and the high-speed air intake. ‘'There- after, the various payments called for by the Inven- tion Agreement were made, and eventually Garbell executed the assignments, etc., as called for by the agreement. In the case of the disclosure for an alleged invention for slotted armor plate, Consolidated did not accept the invention, notified Garbell to that ef- fect, and duly executed a release under date of Feb- ruary 24, 1944. (R. 316-322.) There is no question but that Garbell, on the one hand, and Consolidated, on the other, knew what was expected of each under the terms of the Invention Agreement, and the procedure which was to be fol- lowed, had been followed, and would be followed. (c) The alleged disclosure of the invention in suit. In December 1944, Garbell prepared a scientific paper for presentation to the Institute of Aeronauti- cal Sciences. Such paper was prepared upon the request of his superiors, T. P. Hall and Bayless, under direction that the subject-matter was to be on some scientific matter, but eliminating anything of military significance and likewise eliminating anything that would tend to disclose actual company activities. (R. 289-290, Garbell; R. 301, Bayless.) 56 In the conversation which T. P. Hall had with Garbell, he suggested that Garbell write about his wing. (R. 290.) The document in question, as prepared by Garbell and sent by Consolidated to the Institute of Aero- nautical Sciences as a technical paper, was introduced in evidence by appellants, as their Exhibit D, during their cross-examination of Garbell. In characterizing the paper so prepared by him, Garbell testified : “Q. (By Mr. Gerlach). Does Exhibit D con- tain a description and illustrations exemplifying your patent in suit? A. It contains a very broad scientific explana- tion of the basic principles. Q. It contains descriptions and it contains drawings which, to some extent, follow the draw- ings of your patent, do they not? A. Broadly speaking, yes.” (R. 269, Defts. Exh, D; R. 775.) “« If this Court will take but a moment to glance at Plaintiffs’ Exhibits 26 (R. 669-676; R. 320) and 27 (R. 677-683 ; R. 322), it will immediately observe that there is absolutely no similarity between actual dis- closures to the Patent Department of Consolidated and the scientific paper (Defendants’ Exhibit D, R. 775; R. 269). It is not, nor was it intended to be, a ‘‘disclosure’’ within the terms of the Invention Agreement. (a) Neither Garbell nor Consolidated considered the paper to be a ‘‘dis- aemare™. under the Invention Agreement. In séeking the proper interpretation to be placed 3 upon a contract, nero, or state of facts, the — 57 Courts have long looked toward the actions of the parties themselves with regard thereto, in order to give a practical construction to the matter upon which the Court has to reach a decision. Such procedure applied to this case gives abundant proof that neither Garbell nor Consolidated ever believed that the scien- tific paper prepared by Garbell at Consolidated’s re- quest was a disclosure of an invention under the Invention Agreement. As to Garbell. This Court will readily appreciate that, by reason of his talks with Consolidated’s Patent Department representatives and the many occasions during his employment Garbell submitted disclosures to Consoli- dated specifically acting under the Invention Agree- ment, he was thoroughly and completely familiar with what was required of him by way of form of sub- mission of an idea, drawing, etc., and that he was required to be as specific as possible with relation to every phase of any such disclosure. Likewise, Gar- bell was thoroughly familiar with the steps, prelim- inary or otherwise, which Consolidated took with reference to a disclosure made to it under the Inven- tion Agreement by an employee; and that this would result in patent studies, search of prior art, and conferences with Consolidated’s Patent Department. In this particular instance, he was requested by his employer to prepare a scientific paper, to be a contribution on Consolidated’s behalf to the annual meeting of the Institute of Aeronautical Sciences. Pursuant to his instructions not to use anything of 58 a military nature or write about a subject which was involved with or as a company project, and following the suggestion of his superior that he write about his (Garbell’s) wing, the paper in question was prepared in December of 1944. While Garbell knew that this was not a paper prepared for a disclosure of an invention, he did realize that for the first time he was releasing for presentation to the public enough material and data concerning his invention, all of which might easily and detrimentally affect any application for a patent which he might thereafter make. Having in mind that during the two preceding years of employment he had become thoroughly familiar with the dangers of public release of patent- able ideas, Garbell knew that he should take some steps to protect himself. Therefore, with the ‘sole purpose in mind of protecting his patent rights, he transmitted a copy of the paper, as prepared, to D. A. Hall, a patent engineer of Consolidated, accompany- ing the same with an interoffice memorandum in which he stated that he was making an official dis- closure (patentwise) of invention. Considering the — circumstances which then existed, and the conditions — under which the paper was prepared, the language 3 of his memorandum to Hall would, to Garbell’s mind, — act as a red flag to Consolidated and direct their — attention to the fact that he had exclusive property rights in the invention described in the paper. : Nothing further was done by Garbell, nor was there anything required of him to be done. He had . protected his rights in an invention which he had 59 at all times possessed long before entering his employ- ment with Consolidated. As to Consolidated. First of all, there is, of course, the fact that Con- solidated requested the preparation of the paper, not as an invention disclosure and not with that thought in mind, but so that the company would have a paper presented on its behalf at the next meeeting of the Institute of Aeronautical Sciences. It is apparent that, with T. P. Hall’s suggestion to Garbell that the article be written concerning Garbell’s wing, Con- solidated knew that the wing was not a company project nor involved as such. A copy of the paper, with its memorandum of transmittal, which, in effect, put Consolidated upon notice, was received by D. A. Hall, a patent engineer of Consolidated. Thereafter not one step under the Invention Agreement was taken by Consolidated. We have listed the procedure to be followed under the In- vention Agreement (supra, p. 52), and that pro- cedure was followed in all cases, not only with rela- tion to all ideas which Garbell had submitted under that agreement, but it was the regular, usual and adopted practice that was followed in every case, according to the testimony of Consolidated’s patent attorney, Jason. (R. 351-359.), Garbell’s written memorandum to Consolidated transmitting the copy of the paper in question bears date December 9, 1944. Under the Invention Agree- ment, a docket number is given a submission of inven- tion by an employee, and he is advised thereof by 60 letter within thirty days after the submission of the idea. The records of Consolidated show that it as- signed a docket number to the scientific paper on or about January 24, 1946 (R. 354, Jason), which is over a year after it had received the paper and months after Garbell had terminated his employment with Consolidated. Consolidated, between December 20, 1944 and Jan- uary 24, 1946, had, obviously, taken no steps concern- ing this matter. Once the docket number was given this paper, nothing further was done except to mark it ‘‘Inactivated”. Not a communication was sent to Garbell. Garbell had not appeared at the Patent De- partment. (R. 360.) Mr. Jason, Consolidated’s assistant patent director, testified that ‘‘no report of any kind was ever sent to Dr. Garbell either of the submission of that idea to the Patent Department or to advise him that the Patent Department was processing that matter”. (R. 363.) To further highlight this matter, the record dis- closes that on March 26, 1947, and April 7, 1947, the Patent Department of Consolidated wrote Garbell, at his then address, advising hinn that the company was inactivating Garbell’s disclosure of high-speed air intake, made on November 17, 1944. (R. 365; Plain- tiffs’ Exhibits 31 and 32, R. 692,693.) —- Consolidated did not advance any claim of shop right or license at the time that it received the scien- tific paper, which it now contends is a disclosure under the Invention Agreement, nor did it advance s such a claim at any time until after Garbell had | 61 advised it that it was using his invention, in the fall of 1946. i On August 5, 1946, Garbell wrote to Consolidated concerning the use by them of his invention and notifying Consolidated that application for letters patent was pending. (R. 638, Plaintiffs’ Exhibit 17; R. 218.) On August 9, 1946, Consolidated answered said letter, stating, in part, as follows: ‘‘We will accept a copy of the patent ap- plication to which you refer for the purpose of a disclosure, on the basis that in so doing the disclosure is made to us without obligation ** *’’ (R. 641, Plaintiffs’ Exhibit 18; R. 219.) It is perfectly apparent that Consolidated was asking for the first time for an official disclosure and was not making any claim of shop right. In answer to Consolidated’s letter, Garbell, on August 12, 1946, wrote Consolidated and referred them to his paper appearing in the February 1946 issue of the Journal of the Aeronautical Sciences, as a document which stated the basie principles under- lying his invention. (R. 639, Plaintiffs’ Exhibit 17; R. 218.) It is to be noted that this was the publication of the scientific paper prepared for that purpose by Garbell in December 1944, while with Consolidated. Following receipt of Garbell’s letter under date of August 12, 1946, and just referred to, Consoli- dated, for the first time, took the position that the scientifie paper written in December 1944 constituted a disclosure of invention under the terms of the In- vention Agreement and that it had a shop right. 62 Just before Garbell left the employ of Consoli- dated, in October 1945, he had a conversation with D. A. Hall above referred to, who was the patent engitieer to whom Garbell had sent the copy of the scientific paper nine or ten months before. During that conversation, no mention was made to Garbell of the matter now before the Court, and no shop right or other right was even intimated. (R. 449.) One last fact concerning the acts of Consolidated is called to the attention of the Court, as it sums up the entire matter. Under direct examination, Garbell testified : “Q. At any time did they inform you that they intended to use this invention of yours? A. No. Q. They never led you into the opinion they intended to use it? A. No. Q. Did they completely reject this invention at all times? . A. Yes, in each case. The Court. During any of those conversations, was anything ever said to you regarding shop rights, regardless of the merit, such as, ‘If it is any good, it is ours, anyway’? The Witness. No. The Court. Was any such claim made during these conversations ? The Witness. No. The Court. When did you hear for the first time that shop rights were being claimed ? The Witness. After I directed my correspond- ence to the company, immediately following ap- plication. 63 The Court. Filing of your application.’”’ (R. 236-237.) From all of the evidence, which is uncontradicted, it must be obvious to this Court that the principals in this matter did not ever consider or look upon the scientific paper in question as a disclosure under the Invention Agreement. This is amply demonstrated by their actions, as hereinabove reported. VIII. CONCLUSION. We believe that a consideration of the evidence as pointed out in this brief will result in this Court’s concluding that none of the elements necessary to establish the defenses of shop right or implied license exist, and that the findings of the trial Court on said issues were and are more than amply supported by said evidence. It is respectfully submitted that the petition for certiorari to review the decision of the Court of Ap- peals for the Ninth Circuit should be granted. Dated, San Francisco, California, August 24, 1953. THEODORE H. RocHe, | Counsel for Petitioners. TxHeo. J. RocHz, SuLiivan, RocHe, JoHNSON & F'ARRAHER, Of Counsel. SUBJECT INDEX PAGE Opinions below 1 Statement of jurisdiction 2 Counterstatement of the case 2 The relevant facts 3 Question presented 13 The argument 14 (a) In general - 14 (b) Respondents have an express license under the patent in suit 15 (c) Respondents have an implied license under the patent in suit 22 Conclusion 26 TABLE OF AUTHORITIES CITED CasEs PAGE Bloomer v. McQuewan, 55 U. S. 539, 14 L. Ed. 532 17 Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 11 S. Ct. 846, 35 L. Ed. 521 19 Curtiss Aeroplane & Motor Corp. v. Janin, 278 Fed. 454.............. 37 District of Columbia v. Gallaher, 124 U. S. 505, 31 L. Ed. 526... 16 Elzilaw Co. v. Knoxville Glove Co., 22 F. 2d 962 26 Fields v. United States, 204'U. S. 291, 27 S. Ct. 281, 51 L. Ed. 490 14 General Talking Pictures Co. v. Western Electric Co., 304 U. S. 175, 58 S. Ct. 849, 82 L. Ed. 1273 14 Gill v. United States, 160 U. S. 426, 16 S. Ct. 322, 40 L. Ed. 480 18, 24, 25, 26 Heywood-Wakefield Co. v. Small, 87 F. 2d 716 18 Keller v. Potomac Electric Power Co., 261 U. S. 428, 43 S. Ct. 445, 67 L. Ed. 731 Lane & Bodley Co. v. Locke, 150 U. S. 193 McClurg v. Kingsland, 1 How. 202 Mitau v. Roddan, 149 Cal. 14, 84 Pac. 145, 6 L. R. A. 275........ 16 Panama Mail S.S. Co. v. Vargas, 281 U. S. 670, 50 S. Ct. 448, RR F 74 L. Ed. 1105 14 Solomons v. United States, 137 U. S. 342, 11 S. Ct. 88, 34 L. Ed. 667 25, 26 Standard Parts Co. v. Peck, 264 U. S. 52. 15 Tin Decorating Co. v. Metal Package Corporation, 29 F. 2d 1006; aff'd, 37 F. 2d 5; cert. den., 281 U. S. 759, 74 L. Ed. 1168 26 United Staves\v. Dubilier Condenser Corp., 289 U. S. 178, 53 S. Ct. 584, 77 L. Ed. 1114 19, 24, 26 PAGE United States v. United States Gypsum Co., 333 U. S. 364, 68 S. Ct. 525, 92 L. Ed. 746. 14, 15 Waterman v. Mackenzie, 138 U. S. 252, 11 S. Ct. 334, 34 L. Ed. 923 17 Rugs Federal Rules of Civil Procedure, Rule 52(a) Rules of the United States Supreme Court, Rule 38(5) STATUTES United States Code Annotated, Title 28, Sec. 1254(1) United States Code, Title 35, Sec. 31 sue Supreme Court of the United States October Term 1953 No. 301 Maurice A. GARBELL, INC., a corporation, and GARBELL RESEARCH FOUNDATION, a corporation, Petitioners, VS. CONSOLIDATED VULTEE AIRCRAFT CORPORATION, a cor- poration, and AMERICAN AIRLINES, INC., a corporation, Respondents. RESPONDENTS’ BRIEF IN OPPOSITION TO PETITION FOR WRIT OF CERTIORARI. To the Supreme Court of the United States: A. Opinions Below. The opinion of the Trial Court appears at R. 37 and is reported at 94 Fed. Supp. 843. The opinion of the Court of Appeals for the Ninth Circuit appears at R. 1139 and is reported at ............ F. 2d: 22, 98: ULS: Pi Q. 4 A Petition for Rehearing was filed in the Court of Appeals by petitioners on July 7, 1953, and the same was denied by the Court of Appeals on July 13, 1953 [R. 1149]. ieee B. Statement of Jurisdiction. Petitioner invokes the jurisdiction of this Court under Title 28, U. S. C. A., Section 1254(1). C. Counterstatement' of the Case. This is a patent infringement action, the District Court having entered judgment [R. 58] sustaining the validity and infringement of the patent in suit. The Court of Appeals reversed such judgment, holding that defendants have a license (i. e., shop-right) under the patent in suit, and expressly made no decision as to either validity or in- fringement of the patent in ‘suit [R. 1148]. The: Petition (p. 4) concedes that the question: involved’ concerns only an interpretation of the facts; stating: “To resolve the question involved, turning as it does entirely upon fact... .” The only reason set forth in the Petition (pp. 16-18) for its allowance is. that the Court of Appeals allegedly abused its discretion by not accepting the Findings of Fact of the District Court. The Petition: does not even.allege that “there are..any special and important reasons” in its support, as required by Rule 38(5) of’ this Court, and*in particular: (a) The Petition does not allege that any federal question: is here involved; (b) The Petition does not: allege that the decision of the Court of Appeals.is.in conflict: with that-of any, other court of appeals on the. same matter; (c) Petition does not allege that any question — of local.law is here involved; ae (d) The Petition does not allege that the Court of _ Appeals in its decision has so far departed from any ssa Mons accepted or usual course of judicial proceedings as to call for any exercise of the power of supervision of this Court; and (e) The Petition does not allege that any public question is here involved. The Petition, in effect, merely complains that the Court of Appeals, after a review of the record in this case, came to a different interpretation of the facts than that of the District Court. There is no reason, so far as the public interest is con- cerned, supporting the granting of the Petition. On the contrary, the public interest requires a denial of the Peti- tion. Over 170 “Convair” airplanes have been sold by respondent Consolidated [R. 418] and are in extensive commercial airline service operated by respondent Amer- ican Airlines and other airlines providing travel service to the public. To grant the Petition would simply be a step towards sustaining the patent in suit and, by injunction, grounding and forcing out of service such “Convair” air- planes, to the great injury and inconvenience of the public. Since the Petition and Petitioner’s Brief are largely devoted to an exposition of alleged facts pertinent to the issues here involved, and since the statements of fact therein are largely misleading and in many instances er- Toneous, a restatement of the significant facts is in order and is presented in the following section, The Relevant Facts. Letters Patent No. 2,441,758 in suit [R. 605], issued to the patentee Garbell, covers an airplane wing construc- tion, sometimes hereinafter referred to as the “alleged invention in suit.” mls -Garbell, the patentee of the patent in ‘suit, was em- ployed by respondent. Consolidated on September 7, °1942, and terminated his employment on October. 15, 1945 ‘( Pet. pp. 6,14). The application for Letters Patent: No..2,441,- 758 was filed on July 16, 1946, less than one -year.after Garbell terminated his employment with Consolidated. The District Court found, in effect, that Garbell had “conceived” (as distinguished from “reduced to practice’’) the alleged’ invention in suit prior to his employment by Consolidated, but, as pointed out by the Court of Appeals [R.°1146], the only evidence supporting such finding -was the testimony of Garbell himself. In the record there ‘is no corroboration of any kind of Garbell’s testimony ‘that he had conceived the alleged invention in suit prior to his employment by ‘Consolidated. Garbell testified that shortly after his employment by Consolidated he disclosed his alleged invention to his su- perior in the company, Mr. Bayless [R. 446]. This was denied by Bayless who testified [R. 303] that the earliest that he knew of the invention was when Garbell and his co-workers Rogers and Fiul presented to Bayless a written report, Exhibit A [R. 1007], which is dated February 25, 1944, relating to the “Two-Engine Tailless” design, ‘an airplane then being designed’ by Consolidated. Garbell admitted that he suggested to Consolidated that it use his alleged invention in its “Two-Engine Taifless Design” [R. 250], and admitted that’ Exhibit A [R. 1007] embodies the principles of his invention [R. 247]. Ex- hibit A shows on its face [R. 1007] that it was a report and suggestion jointly made to Consolidated by Fiul, Gar- bell and Regers (all employees). Exhibit A covers sixty- three pages of the record [R. 1007-1070], and ‘includes extensive engineering calculations relating to the use of sills the alleged invention in suit in the Consolidated “Two- Engine Tailless” airplane. Exhibit A shows on its face at R. 1007 that it was “approved by Consolidated.” Bay- less testifiel that such suggestion by Garbell was approved by Consolidated and incorporated in its “Two-Engine Tailless” design [R. 324]. Petitioners’ Brief (pp. 36, 38, 39) concedes in effect that the “Two-Engine Tailless” was one of the Consolidated airplane designs for which Garbell suggested his alleged invention. Petitioners’ Brief (p. 38) concedes that “three models were built” by Consolidated of the “Two-Engine Tailless,” the second of which, at least, included the alleged inven- tion in suit. ixhibit B [R. 694-774] contains many inter-company reports signed by Garbell and other Consolidated em- ployees showing the extensive work done by Consolidated with models using the alleged invention in suit in the “Two-Engine Tailless,” and showing his full knowledge of and participation in the same. Representative reports are detailed as follows: (a) A “scale power-off model” of the “Two-En- gine Tailless” was tested in the Galcit 10-foot wind tunnel from Feb. 28, 1944 to Mar. 5, 1944, which showed that the “revised wing” (1. ¢., the alleged in- vention in suit) was satisfactory, but suggesting spe- cific structural modifications [R. 694-696]. Such test demonstrated the improved stall performance of the new revised wing incorporating Garbell’s alleged invention [R. 695], the improved results being set forth in detail [R. 698-702]. (b) A “power-on model” of the “Two-Engine Tailless” was actually in the Galcit wind tunnel on March 7, 1944 [R. 696]. silie (c): Additional “power-off” tests of the ““Two-En- gine Tailless” airplane were conducted from March 28, 1944, to April 7, 1944, at Massachusetts Insti- tute of Technology with a wing that had been modi- fied with respect to that tested at Galcit [R. 705]. (d) Free-flight tests of a model of the ““Two-En- gine Tailless” airplane were made prior to July 1, 1944, showing collaboration by Rogers of Consoli- dated [R. 725]. (e) Additional wind tunnel tests of the scale model of the “Two-Engine Tailless” using a modification of the “revised wing” (which included the alleged invention in suit) were made at Galcit in late July, 1944 [R. 735]. (f) Additional wind tunnel tests of a scale model of the “Two-Engine Tailless” were made by Consoli- dated prior to August 6, 1944 [R. 745]. (g) The “power-off” models of the “Two-Engine Tailless” each required about 3500 man-hours in their manufacture [R. 755-757]. (h) As late as December, 1944,. Garbell was still trying to increase flying stability of the “Two-Engine Tailless” [R. 758-759]. The foregoing test reports on the “Two-Engine Tail- less” airplane models plainly indicate the many changes and modifications that were made in the models during such tests [petitioners’ allegation (p. 10), that no changes were made, to the contrary notwithstanding]. The extensive testing by Consolidated of at least one model of the ““Two-Engine Tailless” including the alleged invention in suit while Garbell was employed by Consoli- a is dated was confirmed by Garbell who testified that “there were hundreds and hundreds of runs that went into that” [R. 454]. The Garbell patent No. 2,441,758 in suit states [R. 605, Col. 10, lines 50-64]: “Numerous flight tests and wind-tunnel tests in reputable wind-tunnels such as the California Insti- tute of Technology, the Massachusetts Institute of Technology, the various wind tunnels of the Na- tional Advisory Committee for Aeronautics, and else- where have demonstrated convincingly that each of the objects of this invention has been fully achieved. The tests were performed on numerous wing models, on sailplanes, and on models of at least five aircraft designs of widely varying design scope employing a wide variety of airfoil series. Force-test records, photographic records, and cinematographic records of the tests substantiate the attainment of the objects of this invention” (emphasis added). Garbell identified such wind-tunnel tests referred to in his patent as those performed by Consolidated with models of the Consolidated “Two-Engine Tailless” and XB-46 airplanes in the wind tunnels at the California Institute of Technology, the Massachusetts Institute of Technology, and the National Advisory Committee for Aeronautics, including his alleged invention [R. 260-262]. Such tests made by Consolidated of the alleged invention obviously constituted a reduction to practice thereof, as they “dem- onstrated convincingly that each of the objects of this invention has been fully achieved” as stated in the patent in suit. Garbell stated that prior to his employment by Con- solidated no one had ever designed an airplane wirg em- esac meor nance ora gre eos mca ipl bodying his alleged invention, and that even up to the date of the trial in the District Court neither Garbell nor anyone acting for him had ever manufactured such a wing [R. 238-239]. The Garbell patent in suit has had no public acquiescence or any commercial success what- ever. Garbell admitted that he suggested that Consolidated use his alleged invention in suit in a military bomber, the XB-46, being designed by Consolidated while he was em- ployed by Consolidated’ and that they ultimately did so after he left its employ [R. 252-255, 262]. Petitioners’ Brief (p. 36), in effect, admits the same thing. Ex- tensive conferences were had in May, 1945, with respect to wind tunnel testing of the XB-46 design, between Con- solidated (represented by Garbell and a co-employee Shue) and National Advisory Committee for Aeronautics repre- sentatives, in which many weeks of tests of a variety of models made by Consolidated were planned [R. 760-774], obviously with Garbell’s full knowledge and consent. Gar- bell admitted that Consolidated made a model of a wing for its XB-46 bomber and tested the same in the wind- tunnel at the Massachusetts Institute of Technology, which test was one of those referred to in his patent in suit as demonstrating “convincingly that each of the objects of this invention has been fully achieved.” Garbell also admitted that while employed by Consoli- dated he suggested to it that it use his alleged invention in its Model 110 airplane being designed by Consolidated [R. 275, 466-467]. A full sized Model 110 airplane was completed and extensively flight-tested by Consolidated after Garbell left its employ [R. 416-419], the actual flight tests of such Model 110 being recorded in Exhibit 35. Such Exhibit 35 shows the many changes and struc- melnen tural modifications made by Consolidated in the wing and accessories therefor before it could obtain satisfactory flying results with such wing. As admitted by Garbell [R. 272], such accessories on a wing affect the aerody- namic results, thus indicating the necessity of full testing of an airplane wing to establish a reduction to practice thereof. The wing of Consolidated’s Model 110 airplane was later used by it in the “Convair” (Model 240) airplane [R. 418] which is here charged by petitioners to infringe the patent in suit. Garbell thus suggested to Consolidated while he was in its employ that it use substantially the identical wing which was ultimately used by it in its “Con- vair” airplanes here charged to infringe. When Garbell was employed by Consolidated he exe- cuted an Invention Agreement, Exhibit 16 [R. 633], the pertinent provisions of which are as follows: “1. The Employee agrees: (a) To disclose promptly in writing to the Com- pany’s Patent Department or to such person as the Company may designate, all inventions and improve- ments heretofore or hereafter made, developed, per- fected, devised or conceived by the Employee either solely or in collaboration with others during the Em- ployee’s employment by the Company, whether or not during regular working hours, and including a period of one (1) year after termination of employ- ment, relating to aircraft or parts and the manu- facture thereof, or relating in any way to aviation or to the business, developments or products of the Company ; 6. If the Company shall fail to elect in writing that it desires to prosecute a patent application on sail any invention or improvement specified in paragraph 1 hereof within nine months following the com- plete disclosure thereof to the Company, then: all rights of the Company in and to such invention or improvement shall revert to the Employee with the exception only that the Company shall have a free shop right with respect thereto.” On December 20, 1944, while he was employed by Consolidated, Garbell delivered to its Patent Department a paper, Exhibit D {R. 775], which set forth the alleged invention of the patent in suit [R. 269-270], together with a covering memoranda, Exhibit E [R. 789), the latter being signed by Garbell and stating: “Please consider this paper an official disclosure of invention. I shall be glad to complete the dis-_ closure with any additional material that may be re- quested by you.” By memorandum dated January 8, 1945, Exhibit F [R. 790], the Consolidated Patent Department requested additional information from Garbell as to his said dis- closure. Such information was never provided by Garbell. There is no evidence in the record that Garbell ever at any time while he was employed by Consolidated made any claim, in substance or effect, that his alleged imven- tion in suit was his separate property, or that he expected Consolidated to treat it as such, or that he had any claim adverse to Consolidated with respect thereto. At no time while employed by Consolidated did Garbell raise any objection to its use of the alleged invention in suit, and, to the.contrary, at all times urged Consolidated to adopt and use the invention (Pet. p. 33). tte The nature of Garbell’s employment by Consolidated and the variety and responsibility of his duties while so employed are important to note. Garbell’s initial tele- graphic application for employment [R. 617] stated: “Can you offer advanced field of activity of experienced aeronautical engineer. Well versed in airplane and en- gine design, performance analysis and research. Have three successful original designs to my credit.” Gar- bell’s follow up [R. 619] of his initial telegram stated: “I am primarily interested in being placed where my ability may find its greatest usefulness in your organi- zation, namely preliminary design or research engineer- ing.” This correspondence clearly shows that Garbell was seeking employment in which he could design air- planes. Garbell’s first work for Consolidated was design work in connection with aircraft [R. 216]. Garbell was origi- nally employed as an “Aerodynamics Engineer A,” and effective November 1, 1943, he was promoted to “Design Engineer” [R. 802, 804], the change being made for a “Merit Increase.” Effective March 16, 1944, he was promoted to “Group Engineer,” and effective February 1, 1945, he was promoted to “Design Specialist A” [R. 803]. Exhibit I [R. 801] and the portions thereof en- titled “Stability and Control,” “Special Projects,” and “Prediction of Tompressibility Effects” list the typical duties of Garbell while employed by Consolidated [R. 297], which plainly indicates that Garbell’s duties in- cluded work on “new designs” of airfoils, vrind-tunnel reports, test predictions, and related subjects pertaining to aircraft and aircraft wings. As a part of his duties, Garbell was not only working on the design of aircraft but in such work had under his supervision and control a eight engineers, as is shown by Exhibit H [R. 800, 396]. Garbell was obviously employed by Consolidated to design and test wings for aircraft, and the record in this case shows that he did so practically throughout this employ- ment. Garbell’s salary was raised by Consolidated after his initial written suggestion with regard to and work on the testing of the “Two-Engine Tailless” airplane early in 1944, and his disclosure of invention in December, 1944. Thus, on May 1, 1944, he was a Group Engineer and his semi-monthly wage was increased from $247.50 to $267.50 [R. 803]. Again on February 1, 1945, he was promoted from Group Engineer to Design Specialist and his semi-monthly wage was raised from $267.50 to $285.00 [R. 803]. The Court of Appeals held that “During his employ- ment by Consolidated, Garbell disclosed his alleged in- vention to Consolidated” [R. 1143], which is in accord with Finding of Fact XXXVII of the District Court [R. 53]. The Court of Appeals held that Consolidated did not waive the shop-right provided to it by paragraph 6 of the Invention Agreement becween it and Garbell [R. 1143] and that: “The District Court did not find, nor did the evidence warrant a finding, that Consolidated ever ‘rejected’ or waived that shop right” [R. 1147]. The Court of Appeals held that the findings of the District Court that Garbell made, developed, and per- —13— fected his alleged invention prior to his employment by Consolidated “were not supported by evidence and were clearly erroneous” [R. 1145], holding that “the evi- dence showed that if Garbell ever made, developed or per- fected his alleged invention, he did so during his employ- ment by Consolidated” [R. 1146]. The Court of Appeals held an invention is not “made, developed or perfected until reduced to practice’ and that “There was no evidence that Garbell reduced his alleged invention to practice prior to his employment by Consolidated. Instead, the evidence showed that, if he ever reduced it to practice, he did so during the employ- ment” [R. 1146]. The Court of Appeals held that “if Garbell ever made, developed or perfected his alleged in- vention, he did so by and through the use of materials and facilities of Consolidated and time for which he was paid by Consolidated” [R. 1147]. The record in this action, for example as referred to above, clearly shows that all of the evidence in this action clearly supports the decision of the Court of Appeals. D. Question Presented. Although the Petition (p. 15) states four alleged “questions,” actually there “; only one question presented by the Petition, as follows: Do the facts in this case justify the Court of Ap- peals decision reversing the District Court on factual issues? a See E. The Argument. (a) In General. The only questions presented by the Petition are as to the facts and the inferences to be drawn from the facts. This Court has uniformly denied petitions for certiorari where, as here, the only questions presented are factual. (General Talking Pictures Co. v. Western Electric Co., 304 U. S. 175, 178, 58 S. Ct: 849, 82 L. Ed. 1273; Fields v. United States, 204 U. S. 291, 27 S. Ct. 281, 51 L. Ed. 490.) The Petition should be denied on this ground alone. This action for patent infringement prays for a per- manent injunction [R. 4] and such injunction has been ordered by the District Court [R. 59]. This is an action in equity, and in such an action “the review, unlike that on a writ of error at law, extends to the findings of fact as well as to the rulings on questions of law.” (See: Panama Mail S. S. Co. v. Vargas, 281 U. S. 670, 50 S. Ct. 448, 74 L. Ed. 1105; Keller v. Potomac Electric Power Co., 261 U. S. 428, 43 S. Ct. 445, 67 L. Ed. 731.) The Court of Appeals, having clearly in mind [R. 1146] the requirements of Rule 52(a) of the Rules of Civil Procedure, had the record before it as to both the facts and the law, and under the foregoing authorities had full power to reverse the District Court on its find- ings of fact. . The Petition relies heavily upon Umited States v. United States Gypsum Co., 333 U. S. 364, 68 S. Ct. 525, 92 L. Ed. 746. However, petitioners can find no comfort in that case because there this Court held that certain findings of fact of the District Court were “clearly er- roneous,” just as the Court of Appeals has done here. —15— The Gypsum Co. case, supra, in fact is direct support for the decision of the Court of Appeals in this case, as, obviously, the Court of Appeals here, after a careful review of the whole record in this case, was “left with a definite and firm conviction that a mistake has been committed” by the District Court. The decision of the Court of Appeals in the present case was unanimous. Consolidated could have acquired the entire legal title to Garbell’s alleged invention in suit under the Invention Agreement, Exhibit 16 [R. 623] by paying him not to exceed $100.00. Or it could have asserted title thereto under the doctrine of Standard Parts Co. v. Peck, 264 U.S. 52. It has done neither, leaving title in Garbell, for him to enjoy the patent in suit against the whole world other than respondents. All that Consolidated claims is a shop-right to free it from the inequitable claim made here by Garbell. (b) Respondents Have an Express License Under the Patent in Suit. The Court of Appeals held [R. 1145-1146] that re- spoxdents have an express license (i. ¢., shop-right) under the Garbell patent in suit under the Invention Agreement, Exhibit 16 [R. 633], because the alleged invention was reduced to practice (i. e., “made, developed, or perfected”’) while Garbell was employed by Consolidated, as contem- plated by the Invention Agreement. Such holding is manifestly correct and is fully supported by the evidence. Petitioners argue (pp. 7-9, 17, 50) that, because Gar- bell did not adequately comply with his obligations under the Invention Agreement as to disclosure to Consolidated of the alleged invention in suit, Consolidated acquired no shop-right or license under the Invention Agreement. This ae em is a curious contention. How a party to a contract could defeat the rights of the other contracting party thereto simply by failing or refusing to comply with his obliga- tions does not appear to us. In any event, the acquisi- tion of a shop-right by Consolidated under the Inven- tion Agreement is not conditioned in any way upon Gar- bell disclosing the alleged invention to Consolidated, and since the invention was reduced to practice while Gar- bell was so employed the requirements of the Agreement were satisfied at least insofar as the shop-right to Con- solidated is concerned and the shop-right is absolute. However, Garbell made a disclosure of the alleged in- vention by his paper, Exhibit D [R. 775], to the Patent Department of Consolidated, exactly as required by Para- graph 1 of the Invention Agreement. Furthermore, Gar- bell expressly characterized such “paper” as an “official disclosure of invention” by his accompanying memo, Ex- hibit E [R. 789]. Thus, Garbell himself construed his alleged invention in suit as falling within the terms of the Invention Agreement. The actions of the parties construing a contract should be followed by the courts in construing a contract. (District of Columbia v. Gal- laher, 124 U. S. 505, 31 L. Ed. 526, 527; Mitau v. Rod- dan, 149 Cal. 14, 84 Pac. 145, 6 L. R. A. 275, 281.) The only question seriously raised by petitioners in whether the alleged invention in suit was “made, devel- oped or perfected” [Par. 1 of the Invention Agreement] while Garbell was employed by Consolidated, and this is a purely factual question. The Court of Appeals [R. 1146] held that an inven- tion is not “made, developed, or perfected until reduced to practice,” citing the authority of this Court and other courts. Petitioners admit (p. 28) that this statement of nl the law is correct in many types of patent cases, includ- ing those in which the defendants are “seeking any title to or interest in the invention or patent.” Petitioners seek to avoid the application of such legal principle to the facts of this case by contending that here the respondents are not “seeking any title to or interest in the invention or patents” but without the citation of any authority in support thereof. Such contention of petitioners is obvi- ously without merit. Respondents claim a non-exclusive license (shop-right) under the Garbell patent in suit, and, obviously, a non-exclusive license is a limited in- terest in the monopoly of the patent in suit. (Waterman v. Mackenzie, 138 U. S. 252, i1 S. Ct. 334, 34 L. Ed. 923; Bloomer v. McQuewan, 55 U. S. 539, 14 L. Ed. 532.) Petitioners do not contend that Garbell’s alleged in- vention in suit was actually reduced to practice prior to his employment by Consolidated. They could not do sO, because there is no evidence to support such a conten- tion and, in fact, Garbell stated in effect that up vstil the time of trial of this action neither he nor anyone else with his consent had ever built an airplane wing em- bodying his alleged invention in suit [R. 238-239]. Petitioners attempt to avoid the consequences of the above principle of law stated by the Court of Appeals, by contending (pp. 11 and 44) that Garbell’s mere con- ception or oral disclosure of the invention prior to his employment by Consolidated was a “constructive reduc- tion to practice” of the invention. In support of this contention, petitioners cited Curtiss Aeroplane & Motor Corp. v. Janin, 278 Fed. 454 (C. A. 2d), which is not in point, as in that case the Court actually held that it even the filing of a patent application was not a reduc- tion to practice. The case of Heywood-Wakefield Co. v. Small, 87 F. 2d 716 (C. A. Ist), largely relied upon by petitioners, is clearly distinguishable on its facts from the present case and is not in point. In that case, the inventor Small on his own time conceived and built an adequate model of the invention there in suit, and, the Court held, that no further testing of any kind was required to demon- strate that the invention was in practical commercial form. That is not true in the present case because, as plainly stated in the Garbell patent in suit and Garbell’s admis- sions (p. 7, supra), it was the extensive building and testing of models of the “Two-Engine Tailless” and the XB-46 by Consolidated that “demonstrated convincingly that each of the objects of this invention has been fully achieved.” Furthermore, as pointed out by the Court in the Heywood-Wakefield case, supra, Small did not stand by for a long period of time and permit his em- ployer to use his invention without protest (as in Gill v. United States, for example). Largely determinative of the case was the fact that the inventor Small immediately upon disclosure of his invention to his employer demanded payment for the employer’s use of it, and at all times there was a controversy between Small and his employer as to whether Small or the employer was to have the rights to the invention. No such situation is presented in this action, as here Garbell at no time while he was eriployed by Consolidated made any claim that the alleged inven- tion here in suit was his separate property or that he was, entitled to any payment from Consolidated for its extensive use and planned use of the alleged invention in its “Two-Engine Tailless,” XB-46, and Model 110 air- —]9— Planes in all of which Garbell had expressly suggested that Consolidated use the alleged invention in suit. There is no authority for such a contention as_peti- tioners urge and it is contrary to all of the established law to the effect that an invention is not made (1. e., reduced to practice) until embodied in some concrete physical form. As stated by this Court in Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 11 S. Ct. 846, 35 L. Ed S27: “It is evident that the invention was not completed until the construction of the machine. A conception of the mind is not an invention until represented in some physical form .. .” The distinction between conception and reduction to practice of an invention, and the necessity of the inven- tion being embodied in tangible form, was reiterated by this Court in United States v. Dubilier C ondenser Corp., 289 U. S. 178, 53 S. Ct. 554, 77 L. Ed. 1114, 1119, as follows : “It [the invention] is the result of an inventive act, the birth of an idea and its reduction to practice; the product of original thought; a concept demon- strated to be true by practical application or embodi- ment in tangible form. Clark Thread Co. v. Will- mantic Linen Co., 140 U. S. 481, 489, 35 L. Ed. $21, 525, 11 S. Ce. 846 T. H. Symington Co. v. National Castings Co., 250 U. S. 383, 386, 63 L. Ed. 1045, 1049, 39 S. Ct. 542; Pyrene Mfg. Co. v. Boyce (C. C. A. 3rd), 292 Fed. 480, 481.” (Em- phasis added.) The evidence, as reviewed above (p. 47 ), plainly shows that’ actual models of wings for the “Two-Engine Tailfess” airplane, incorporating Garbell’s alleged inven- —20— tion in suit were made by Consolidated and extensively tested by it with the full knowledge and consent of Gar- bell during his employment. Consolidated’s reports signed by Garbell and covering such tests showed that such tests demonstrated the practicability of his alleged inven- tion, and the Garbell patent in suit plainly states in ef- fect that the models and tests made by Consolidated “dem- onstrated convincingly that each of the objects of this invention has been fully achieved” (see p. 7, supra). In addition, Garbell in his suggestion dated March 2, 1945, that Consolidated employ his alleged invention in suit in its Model 37 airplane, Exhibit 25 [R. 666], ex- pressly admitted that his alleged invention had previously been embodied in the various earlier airplane designs of Consolidated, as follows: “The ‘tri-section wing’ principle which has been - successfully applied to the Tailless design, the ex- ecutive transport, and the XB-46 design, yields sev- eral satisfactory wings.” Such Exhibit 25 was held by the District Court to be a disclosure of the alleged invention in suit to Consoli- dated [R. 40]. In view of its express statement, quoted above, by Garbell at the time and on the spot and long — prior to any controversy, there can be no doubt that — Garbell’s alleged invention had been embodied by Con- solidated in its “Two-Engine Tailless,” its executive trans- port, and its XB-46 bomber at least as early as March 2, 1945, with Garbell’s full knowledge. Obviously, Gar- — bell’s alleged invention was thereby reduced to practice — nln: by Consolidated while he was employed by it and with his full knowledge and approval. Petitioners argue (pp. 9-10) that while inventions for processes, machines, or designs may require embodiment in physical form before they are complete, the alleged in- vention here in suit “is not one which calls for a process or machine or design.” The Garbell patent in suit was obtained under old Section 31 of Title 35, United States Code, which made provision for patents only on an “art, machine, manufacture, or composition of matter . . . [and] asexually reproduced . . . plant.” If the air- plane wing of the Garbell patent here in suit is not a “machine” within the statute, we do not know what it is. Certainly, it is not an art, manufacture, composition of matter, or a plant. We suggest that petitioners’ ad- mission (p. 10) that inventions for machines “usually need work and trial-and-error methods, models need to be made,” etc., applies directly to a complex structure such as Garbell’s alleged invention in suit. It is thus plain that: (a) there is clear evidence in the record to support the decision of the Court of Appeals that the alleged invention in suit was reduced to prac- tice while Garbell was employed by Consolidated and is therefore within the Invention Agreement and respon- dents have an express shop-right with respect thereto: and (b) there is no evidence to support the Finding of “made” (as distinguished from its “eonception”’), prior to Garbell’s employment by Consolidated, and such Finding a (c) Respondents Have an Implied License Under the Patent in Suit. The Court of Appeals further held [R. 1147] that re- spondents have an implied in law license (4. @., shop-right) under the Garbell patent in suit, in view of the fact that Garbell’s alleged invention was reduced to practice by hir (if ever) while he was employed by Consolidated “by and through the use of materials and facilities of Consolidated and time for which he was paid by Con- solidated.” This implied in law license, the Court of Appeals pointed out, existed irrespective of the Invention Agreement. That the alleged invention in suit was reduced to prac- tice while Garbell was employed by Consolidated has been pointed out above (p. 16-20). Petitioners contend, in effect (pp. 12, 45), that there is no evidence in the record that the work done by Con- solidated with regard to Garbell’s alleged invention while he was employed by it cost Consolidaied anything. Such contention is either flatly wrong, highly misleading, or — we misunderstand petitioners’ argument. As pointed out ers, Strohmeyer and Bayless) devoted company time to — utilizing. and testing Garbell’s“alleged invention in suit [R. 309, 697, 1007] while he was likewise so , Could any court be asked seriously to believe that all ai such construction: work: and the extensive wind-tunnel testing of the models was without substantial cost to Consolidated?) We think not. In any event, Garbell freely admitted that everything in issue done at Con- solidated' was done at its'expense, as follows: “The Court: As a matter of fact, all the experi- ments, or whatever you call them, these tests, were done as a part of the work and progress of the con- cern, isn’t that true? The Witness: (Pause.) The Court: Do you know what I mean by ‘work and progress’? That is used in engineering, it is also used in literature. When you have a thing in a preliminary stage and you just keep on working on it. The Witness: Yes; your Honor, but— The Court: I don’t mean to catch you by the Guestion. The Witness: No, I want to make myself very clear though: The:Court: I am trying to shorten this: by get- ting, an answer that will end it. Whatever was. done, was done at company expense, assuming that it re- quired expense, these experiments, these wind tunnel ‘tests, or whatever’ was done: Mr. Gerlach: The preparation. The Court: The preparation: of the report or whatever was.done,.was.done on company. time,.and where it required money, with company money, isn’t that true? _ The Witness: Yes, but’ especially during all of ‘the: early suggestions: and urgings they were: com+ .. pletely outside: of my assignments, my direct. work —24— The Court: Work that you did yourself? The Witness: Yes. The Court: I am not interested in that. I know what is bothering you. I know your type very well. What is bothering you is the idea that all of this was conceived before this was done, isn’t that true? The Witness: And it was proposed and sug- gested outside of the work assignments in a general sense. The Court: That is all right. The Witness: I wasn’t working on those at all. The Court: But whatever they did, whether they gave directions or not, they did it at their expense, whatever the expense was, isn’t that true? The Witness: It was theirs or the contracting agencies.” [R. 264-265, and see 262-263.] We therefore suggest that, as stated by the Court of Appeals, if Garbell’s alleged invention was ever made, developed or perfected it was done so while he was em- ployed by Consolidated with its time, materials, and fa- cilities at its expense and with his full knowledge and consent. In finding such implied in law license in respondent Consolidated the Comt of Appeals relied upon a number of decisions of this Court in. footnote 1 [R. 1143] and footnote 9 [R. 1147]. Petitioners do not question the — applicability of such decisions to the facts of this action, — citing (p. 18) Gill v. United States, 160 U. S. 426, 16 S. Ct. 322, 40 L. Ed, 480; United States v. Dubilier Com denser Corp., 289 U. S. 178, 53 S. Ct. 554, 77 L. Ed — 1114; and Solomons v. United States, 137 U. S. 342, il S. Ct. 88, 34 'L. Ed. 667. Petitioners quote with approval from: Gill'v. United States, supra, as follows: “The principle is really an application or outgrowth of the law of estoppel in pais, by which a person looking on and assenting to that which he has power to prevent is held to be precluded ever afterwards ‘from maintaining an action for damages.” ‘The. applicability of such legal principle stated in the Gill. case, supra, to the facts of this action is obvious. Here, Garbell looked on, assented to, and encouraged Consolidated to adopt and use his alleged invention in suit, it allegedly did so and is now sued for patent in- fringement as a result of such use. If there ever has been a situation where the doctrine of estoppel in pais should be applied it is in this case. Petitioners (pp. 17-18, 27) attempt to define the “shop- right_rule” but such definition does not consider the, plain language of this Court’s decisions which petitioners cite and rely: upon, inserting additional requirements that such decisions of this Court do not mention. The true “shop- right rule” was stated by this Court in the Gill case, supra, at page 429, as follows: ‘“{Can]an employee paid by salary >r:wages,:who .devises ian improved:method of doing his work, using .the, property or labor of his employer to put his in- vention into practical form, and assenting to the ‘use of such improvements by ‘his employer, ; ‘by taking out a patent upon ‘such invention, ‘recover