Full opinion text
CAFFEY, District Judge. In a case, such as this, that involves consideration or ascertainment of intention or mental state or condition, difficulty is almost always-experienced. Here also there are difficult questions of law. In this case we reach a point where the law governing patents and the law governing contracts come into contact. In order fairly to consider or determine the questions of law, therefore, it is essential very carefully to discriminate with which branch of the law we are concerned. As counsel have indicated in their briefs, the subject involved is one upon which there has been much controversy. Certainly in some of the lower court decisions there has been a good deal of confusion. That confusion, as I see it, particularly from my reading of the Supreme Court decisions, has been principally attributable to the failure to realize within what field the issue for determination lay. In the present trial there has been a good deal of conflicting testimony. That is familiar experience of a trial judge. It brings but the ordinary work of the day. A consequence, however, is that, in endeavoring to arrive at the truth, it is requisite to consider questions of credibility, of weight of testimony, of bias, and what not. In arriving at what is deemed to be established by the testimony, it is not essential always to go further than to consider the type of witness, his demeanor, his bias, and the other ordinary incidentals. This is so in determining in a law court, precisely as in the everyday affairs of life, the weight to be assigned to what a particular person says. It is not essential often in my experience to conclude that there has been conscious falsification by a witness. At any rate, in so far as practicable for a judge, he being as human as anybody else, it is desirable to avoid attributing bad intent to a witness who has taken the stand and there under oath made his statement. We may have recourse also to the probabilities of a situation in ascertaining the truth. I am glad to say that in the present trial I find no occasion, in order to determine or to make an effort to determine where the truth is, to indulge in any harsh comment upon any witness. The proof has taken a wide range. Much of it has become wholly immaterial. Omitting mere conclusions on the part of witnesses, I think that when, combined with the documents, we take into account the testimony which is either undisputed or so plainly correct that it must be accepted, we can apply the law and reach a determination as to what is the duty of the court. In other words, when we disregard conclusions and disregard testimony which manifestly should be disregarded because erroneous, the truth is clear without having to say that any witness has intentionally sworn to an untruth. The findings which I shall make will be based on the entire proof, and there is no part of it that I have not considered in reaching the views that I shall announce. Nevertheless, my comment, in proportion to the volume of the proof, will be fairly brief. I shall indicate only the important features of the ease upon which I chiefly rely in reaching my conclusions. I shall take up the patents separately. I shall deal first with the so-called first American patent, No. 1,725,742. The application for that patent was filed by Mr. Singmaster on September 28, 1937. It was granted to him on August 20, 1929. It is entitled, “Artificial Silk-Filament and Method of Making Same.” • As to this patent there have been raised, and there have been discussed by counsel, seven principal questions. These are: (1) Was there a contract between the plaintiff, on the one hand, and the defendant Singmaster, on the other, as to the ownership of patentable ideas? (2) If so, was the subject of litigation on this branch of the ease comprehended within that contract? (3) If both of those questions be answered in the affirmative, is the contract the basis of a decree for specific performance? (4) Was there abandonment by the plaintiff of what was involved in the work of Mr. Singmaster, whatever it may have been, in November, 1926? (5) Was the defendant corporation a bona fide purchaser for value from Mr. Sing-master of what it acquired by the contract of March 5,1930, or -by the assignment delivered in escrow preceding that date covering this patent? (6) Has the plaintiff been guilty of laches that bars a recovery? (7) Is the plaintiff estopped from maintaining this suit? I shall take up the questions in the order stated and discuss each of them. Whether or not there was a contract hinges around instructions A-B. That was adopted in October, 1921, and was in force until 1929. In consequence, it was in existence as between the plaintiff and the defendant Singmaster, in "event it is determined to be a contract, at the time of the occurrence of the events with which we are concerned in this trial. It is plain that the plaintiff assented to those instructions. Did Singmaster assent? That is the issue upon this branch of the ease. It is clear also that, in the event there was assent by both parties, there was adequate consideration. We therefore have to inquire whether Singmaster assented, so that, by mutual assent of the two parties, it became a contract equally binding on both of them. It is without dispute that there had existed since 1912 instructions of the general nature of those embodied in instructions 4-B, adopted in 1921. It is without dispute that all of these were known to Singmaster and that he participated in advanee in the consideration, and to some extent in the formulation, of those instructions. It is without dispute that during the fifteen years from 1912 to 1927 he regularly received compensation from the plaintiff. It is without dispute that Sing-master transferred to the plaintiff twenty patents, or applications for patents, fourteen of these preceding the adoption of 4-B and six thereafter. It is also without dispute, and is shown by documents, that Singmaster from time to time took a position as affecting others, who were in the employ of the plaintiff, that they were bound by those instructions as a contract. Upon these facts, which are either without dispute or so thoroughly established that I feel bound to accept them, I see no escape from the conclusion that Singmaster assented to instructions A-B, and that they constituted a contract between him and the plaintiff. There are several arguments presented to the contrary. First, it is urged that back in 1909, when Mr. Singmaster entered the employment of the plaintiff as a $40 a month man, in the talk he had with Mr. Converse nothing was said about patents, and hence that oral employment exempted him from being bound or affected by instructions 4-B. Even if we gave full force to those facts, the very circumstance that patents were not mentioned at that time is a convincing reason why, when they were taken up and dealt with under the facts as I have recited them, that subject-matter came within the comprehension of what the parties agreed to upon the adoption of the instructions. I reject wholly the contention that either by its terms, or in law, this oral arrangement with Mr. Converse back in 1999 took Mr. Singmaster without the terms of the general instructions as a contract between himself and the plaintiff. Next, it is said that in or about 1913 there was presented to Mr. Singmaster by Mr. Sinn, as I recall the name, the son-in-law of Mr. Converse, a paper referred to as the employment contract and he refused to sign it. Now, examination of that paper discloses that, even if it had been signed, it would not have taken Mr. Singmaster without the terms of these instructions; but, as Mr. Singmaster himself says, when he refused to sign it, he did it merely for the reason of an apprehension on his part that it might jeopardize his pension record. I reject therefore the contention that in any way this contract, which I have found to exist under A-B, was at all affected by what occurred back in 1913 with respect to the employment document. In the third place, it is said that the chart of 1917, or thereabouts, defining the executive duties of Mr. Singmaster, exempted bim from 4-B or its predecessor. As I understand, his fourth defense setting up rescission is designed to plead this chart as a basis of exemption from the provision of the instructions. The very fact that on its face the chart, containing a general definition of duties, includes executive duties, or the very further fact that it precedes the date of these instructions, completely nullifies the effect sought to be attributed to it upon the instructions as a contract between the plaintiff and Mr. Singmaster under the facts as I have recited them and have found them to be. Fourth; it is said that in 1921 there was a discussion in progress as to whether or not it would be advisable for the plaintiff to adopt the device of a special patent contract with each employee or to rely merely upon general instructions. It is said that Mr. Sing-master announced that he would not sign any such paper, or, except under protest, advise any of the other employees to sign it. If so; that is utterly immaterial so far as relates to the question with which we are presently concerned. As matter of fact, the general instructions, which had theretofore prevailed as a system, were continued as a system, and Mr. Singmaster did assent to the general instructions A-B. Lastly, it is said, as I understand the argument, that cheeks were paid and stock privileges or stock turned over to Mr. Sing-master, and that these things would indicate that there was some special treatment of himself, by way of interpretation perhaps, on the part of the plaintiff, of the instructions, so as to indicate that the plaintiff regarded Mr. Singmaster as taken out of the general instruetions. All that the defendants have indicated as a básis for this contention is that certain of these events with respect to cheeks and stock occurred on dates not far distant from and subsequent to some specially good work in regard to patents that had been done by Mr. Singmaster. The proof also is, however, that the benefit of such cheeks and the participation in stock were equally conferred on or about the same dates upon persons in plaintiff’s employ who had no connection with patents. Moreover, Mr. Hayes, whose testimony I accept, squarely and unequivocally explains the policy of the company in regard to the distribution of those checks and stock, and they had no relation whatsoever to patents, or rather to patent obligations between Mr. Singmaster and the plaintiff. Doubtless the good work done by Mr. Singmaster with regard to patents, alike as with respect to the performance of his executive duties, was taken into account by the plaintiff in including him among the restricted number of employees to. whom these special rewards were granted. The transactions as to cheeks and stock were wholly without any effect upon the existence or nonexistence of a contract between the plaintiff and Singmaster. I find complete and unambiguous acquiescence and consent on the part of Singmaster to the general instructions governing him, as it did others, as between himself and the company. The rules and regulations eases to which counsel have referred all turn upon issues of fact. An employer may by general rules or regulations prescribe the terms of a contract with his employees, if the employees consent. The question is always in the eases cited an issue of fact; and here the issue of fact on the proof and on the undisputed proof, as I see it, must be resolved against Mr. Singmaster. Was the subject of the litigation covered by the contract? This brings us particularly to the consideration of that subdivision of instructions 4-B which deals with the ownership of patents. What does it say? The exact wording is as follows: “All patentable ideas and devices originating with or developed by an employee of this Company or a subsidiary company, while in the employ of such company, shall belong and shall be formally assigned to The New Jersey Zinc Company by the inventor or inventors.” That especially is the clause of the contract which must here be interpreted — interpreted in the light of its own phraseology, interpreted as a part of the entire instrument in which it is contained, interpreted in the light of the purposes to be accomplished, and interpreted in the light of the circumstances. It is plain to me that this clause applies to all employees of the plaintiff. The obvious purpose was to provide something that should be applicable to them all. Why these instructions, or why general instructions, unless that was to be accomplished? We do not have to go outside of the very terms of the document itself, however. It is manifest on its face. Was Singmaster an employee? Of course he was. It applies therefore to him. There is not a word or a syllable in the instrument that would exempt one who was in the employment of the plaintiff because of his rank in the organization. It is immaterial whether he was at the head of a department or the lowest man in it. If he was an employee, then it governed him, whether he was at the top or at the bottom. It is plain also that this provision was applicable to patentable ideas of all kinds. There is no possible warrant, as I see it, for confining the patentable ideas to something that related directly to the work being carried on by the company, by the employer company. The language would have had to be restricted to have that effect, and here it is in the broadest terms. The language is, “all patentable ideas.” So that comprehended those which had no relation whatever to the particular line of business of the company, as well as those which had relation to the particular line of business of the company. We can easily imagine a reason for that. Without that being true, there would have been injected a basis for dispute with regard to a great many matters that might arise; and it is plain on the face of this instrument that it was drawn with care. We need not, however, go beyond the use of the word “all.” It covers everything. So also, and for that reason, whether the matter related to the domestic or foreign patent field, it was included in this instrument. Now, we come to the ideas. The contract says that the ownership shall pass to the employer, if those ideas either originated or were developed during the period of employment. Mr. Singmaster was employed until May 1, 1927. We therefore get into an issue of fact as to dates, which I must take up later; but, if the ideas comprehended within the ownership section cover the subject-matter of this litigation, and if during the period of Mr. Singmaster’s employment the ideas, in the sense of the contract, were either originated or developed, then by the express provision of the clause they became the property of the plaintiff. That carries us then to an interpretation of the phrase “patentable ideas.” Does the determination of that issue keep us within the patent field or carry us into the contract field? As I have heretofore indicated, we are dealing with a somewhat novel question and one where the fields of patent law and of contract law meet. The- issue, partly of law and partly of fact, is whether what was comprehended prior to May 1, 1927, was a patentable idea. That involves definition and it involves date. It also involves the very difficult task on the part of the court of endeavoring to ascertain from the proof what was in the mind. The dates are within a rather narrow range. The plaintiff says that the patentable idea came about and came into existence, within the meaning of the contract, prior to May 1, 1927. Mr. Singmaster on this trial has said that it came into existence on May 7, 1927. We have therefore a range of a week in controversy between the parties. That, as I have said, is within a pretty narrow limit of time. What is a patentable idea? The defendants have argued this ease as if the meaning were the same as if the contract had related only to an invention, a completed invention, to which upon presentation of an application to the Patent Office the plaintiff would have been entitled to the issuance of a patent. The difference of meaning in the patent law between idea and means is well settled; certainly it is, and at the time of the formulation of instructions A-B was, well known to lawyers. This document bears all the earmarks of having had at least the scrutiny of lawyers. We may fairly assume that it was not put into final form until, as was indicated by the testimony, it had been gone over with great care by lawyers. The patent statute (35 USCA § 31) relates to arts, manufactures, machines, and compositions of matter. None of those phrases was used in the document. Invention was not used in the document. The word is “ideas.” It cannot therefore be confined in its meaning to arts or to machines or to manufactures or to compositions of matter. It cannot therefore be confined to inventions. Doing either would nullify the language employed. It says “ideas,” and the obligation imposed upon an employee was to transfer his ideas to the employer. Ideas is the subject-matter of property rights. Ideas may be the subject of property rights and of obligation to transfer from one person to another. Why, therefore, should there be a restriction from the normal meaning of the word “ideas” ? I find no justification for it in the language employed. It is argued that the combination with" ideas of the word “patentable” has the effect urged by the defendants. “Patentable” is there employed as an adjective. It undoubtedly is entitled to the full force of its meaning. What is its office here? Certain it is that the instruction related to patents. Certain it is that it was not the object of the contract to vest in the employer property in ideas of all character that might exist on the part of its employees. A field or class had to be defined as between the two. It is difficult with precision to put into words just the extent to which the employment of this adjective carried the parties. I think the intention was to classify the ideas, so that they should be of a nature novel or inventive in their relations, and rationally associated with what would be a proper basis of presentation in an application to the Patent Office. The machinery provided in the contract for the handling of patentable ideas strongly indicates that this was the office or significance of the adjective. Can it be that,” before there came into existence an obligation under the contract on the part of an employee to transfer to the employer, it must appear that, in event the matter had been presented to the Patent Office, it would grant a patent on it? Can that be the meaning? Plainly not. That would attribute to the parties, in the use of language, as it seems to me, little less than an absurdity. Nobody in advanee could tell whether in the performance of its duty the Patent Office would or would not grant a patent on an application. History and common experience alike demonstrate that it is frequently, we might without much exaggeration say practically universally, the experience that it is a struggle to get a patent out of the Patent Office. Every application receives, as we all know, the most careful scrutiny and study. What it describes is the subject of comparison with the entire art as it exists at the time. It is also the subject of interferences. What is asked for is a monopoly of what is included within the application. It is necessary, in order to accomplish the reason for its existence, that the Patent Office go through this procedure. A restriction of the phrase “patentable idea” in sneb a way that, before it can he interpreted to confer the right of property or an obligation to transfer, it must appear that what is included in the expression constitutes so complete an invention that, if it were handed over to the Patent Office for consideration, thereupon a patent would issue, cannot be warranted. That is not the meaning. Yet that would be the meaning if the interpretation insisted on by the defendants were adopted. As I conceive it, it has no greater significance here than its employment as a classification of the type of ideas dealt with in the ownership clause of instructions 4r-B. I have found no governing precedents in the court decisions I have examined. The reason for that is clear. This matter turns upon contract law and not upon patent law. The question is, What does the contract mean? If we ascertain that, then the rights of the parties as between each other are not within the realm of rational dispute. Reduction to practice is not necessary to constitute a patentable idea. Otherwise there would be a contradiction in terms. So also the tests of invention, as they are employed by the courts in infringement cases and in priority cases, do not govern this case. They do not control us in ascertaining the meaning of the contract as between these parties. Of course, in those infringement and priority litigations, rights between individuals were involved; but, when it comes to the issuance of patents, one to whom the government makes an award gets a monopoly. The public is interested. Here we are only concerned with rights between two individuals, an employer and an employee. If I be correct in the views I have stated, then the error, as I conceive it, in the argument advanced by the defendants is in their premise. They have failed to distinguish between the class of questions where the public is involved or in regard to the priority of a patent or the validity of a patent or the infringement of a patent and the like, and a question where the rights between two individuals under a contract is the determining issue. That line between the type of questions is well pointed out, on a somewhat different subject, in the case of International News Service v. Associated Press, 248 U. S. 215, 39 S. Ct. 68, 63 L. Ed. 211, 2 A. L. R. 293. That I think you can take as the analogy governing this case and governing the duty of the trial court in the selection of the avenue by which it must approach the determination of this ease. As I have previously indicated, we are entitled to interpret this document in the light of its purposes as disclosed by its recitals or the language it employs. We are entitled also to take into account the surrounding circumstances. I find no occasion to resort to surrounding circumstances because, as it seems to me, the meaning of the phrase “patentable ideas” is clear from an analysis of the language; but, if we consider the purpose disclosed by the instrument itself, it but fortifies the conclusion I have reached. When we add to that the surrounding circumstances, it further fortifies that conclusion. This employer was establishing or had established, at' considerable expense, buildings and equipment. It was organizing a force for research. Undoubtedly its primary purpose was, and it was a proper purpose, to ascertain things that might increase or affect the distribution of its own products. It sought out and selected people of talent, such as Mr. Singmaster; everybody accords to him great talent. If the company were going to spend the money and incur the expense, it would have been foolish on its part not to take to itself the -advantages; whether generous or not, certainly it was reasonable, and there was nothing harsh about it. An employee could leave at will. If an employee was not satisfied with working under the conditions prescribed, he need not enter the employment or he could leave when he got ready. But, so long as he was there, an obligation on his part to transfer to the company the benefit of the work he did, and for which he was paid, was not unreasonable. Now, we must turn to the facts, and see whether or not what is comprehended within this litigation comes within the terms of the contract. I shall consider the question first as if the law, or rather as if the meaning of the contract, were not as favorable to the company as I have indicated I think it is. I shall consider it as if the subject-matter of the litigation comprehended within the contract — that is, the ideas which the employee was obligated by the contract to transfer to the employer — must have gone to the extent of invention, and certainly of invention without reduction to practice; in other words, that there must have been conception which included identified means for the accomplishment of the purpose of the novel idea. If that be taken to be the measure of the rights as between the parties, then I find that Mr. Singmaster has made an explicit admission in writing that the matter had reached that point while he was still in the employ of the plaintiff. The patent was issued on August 20,1920. An interference by Dreyfus and Platt was declared on October 21, 1930. Mr. Chambers sent the declaration of interference, including a precise copy of its two counts, to Mr. Sing-master. What were the counts in that declaration of interference? If you read them, you will see that they are substantially a repetition of the fourth and fifth claims of the already issued patent. Now, consider the circumstances: Mr. Singmaster was called upon to respond to a charge of anticipation by some one else of the identical thing with whieh we are concerned in this litigation. What are those counts ? The first was this: “An artificial silk filament having its opacity and covering power increased by having submerged in and widely distributed throughout its mass a small percentage of small particles of pigment-like inorganic material the quantity and distribution of the particles being such as not to materially impair the continuity of the mass of the filament.” The second count was this : “An artificial silk filament having the characteristics of claim 4 in which the pigment-like particles distributed in the mass of the filament are of materials inert to the action of chemicals used in the manufacture dyeing and bleaching of the filament.” Mr. Singmaster had that document about sixteen days. He had the advice of skilled counsel, both in Philadelphia and in New York, in the preparation of his response. He had also, as we shall see later on, the advantage of conference with the president of the Tubize Silk Company, in advance of the preparation of his reply. What does he say in reply? In his statement of November 7,1980, he says, in response to these two counts whieh I have quoted, “that he conceived the invention set forth in the declaration of interference on or about the first day of July, 1926.” There is no qualification to that. He was dealing there with the patent after it had issued, after it had been out of the Patent Office for some fourteen or fifteen months. Here is something that he framed into language after conferring with the president of the Tubize Silk Company, which had previously accepted ownership of the patent from him or transfer from him. He was advised by counsel, and he deliberately said, as to this identical thing, that the identical thing which is described in the two counts whieh I have recited was conceived on or about July 1, 1926, a good many months before he left the employment of the plaintiff on May 1, 1927. Mr. Singmaster goes on to say “that he made no drawing of the invention.” Then he next says “that he first disclosed the invention to others in the month of September, 1926, and to the best of his knowledge and belief before the 10th day of September in said year,” also well within the employment period. Then he adds “that the first written description of the invention was made on November 6, 1926,” also well within the period of employment. He goes on to say that he made “a further disclosure to others” on the 7th of May, 1927, referring, of course, to his interview on that day with Mr. Coursen, then the president of the Tubize Silk Company. He says again that “a second and more amply written description of the invention was made by him on the 10th day of May, 1927.” The reference there is to the memorandum of May 10, 1927, Defendants’ Exhibit 35, on which I will comment later. As I have said, reduction to practice is not necessary in order to constitute a patentable idea under contract law. We are not concerned therefore with the recital in this preliminary statement “that the first reduction to practice of the invention was on the 9th day of June, 1927,” referring there, of course, to the Hopewell tests by Mr. Coursen in the Tubize Silk Company’s plant. Mr. Sage and Mr. Arnold of the PennieDavis firm were told by Mr. Singmaster concerning this matter in August or September, 1926. The reference to the date September 10,1926, in the preliminary statement answering the interference proceeding, is to the interview with Mr. Sage; and the proof shows that there was a conference in regard to the matter with both Mr. Arnold and Mr. Sage as early as August or September, 1926. The proof also shows that during the sixteen days’ pendency of the preparation of a reply to the declaration of interference on October 21, 1980, there was at least one interview with Mr. Sage, and that this interview occurred on November 3, 1930. The proof indicates that there were other conferences with Mr. Sage; but certainly there was the one of November 3. The proof is further that there was an interview with Mr. Chambers, the patent counsel for the Tubize Silk Company in Philadelphia, as early as May 31, 1927, and there is included among the exhibits the correspondence between Mr. Singmaster and Mr. Chambers from October 22 to November 7, 1930 — quite a period — in regard to the preparation of this identical paper. Mr. Sage was not called; Mr. Arnold was not called; Mr. Chambers was not called. Why? The ordinary reason for not calling an available witness is because, if you do call him, he will testify to something adverse to what you claim. The present situation is worse than that. Mr. Sage was here on the stand, called by the other side as a witness to some records. Not a question was propounded to him having relation to what had been disclosed to him in September, 1926, or in November, 1930. Mr. Arnold was not called at all. Mr. Chambers was not called at all. The corporate defendant likewise must bear the brunt of the inevitable inference of failure to call those witnesses. Mr. Sage became the counsel of the corporate defendant in regard to this matter as early as July, 1929. Mr. Chambers was the counsel of the corporate defendant as early certainly as May, 1927, and throughout the whole proceedings. Yet it did not call either Mr. Sage or Mr. Chambers. The Supreme Court has said over and over again that silence is one of the most pregnant evidential facts. I cannot but conclude that the failure on the part of the defendants to call these three witnesses was attributable to the realization on the part of the defendants that, if called, they would not have substantiated Mr. Singmaster’s testimony. Moreover, the evidence shows that Mr. Chambers and Mr. Sage are highly competent and highly reputable lawyers. Yet, with full knowledge of the facts, according to the testimony of Mr. Singmaster, who says he laid everything before them, they recited in the most unequivocal terms in the preliminary statement, dealing, as I have pointed out, with the identical subject-matter covered by the issued patent, including opacity, delustering and all, that the thing which was embraced in the patent was conceived by Mr. Singmaster while in the employ of the plaintiff, was disclosed while in the employ of the plaintiff, and was described while in the employ of the plaintiff. It is suggested that a preliminary statement is a pleading. Of course 'it is. But a pleading is also evidence; a pleading in a lawsuit is evidence. It is familiar to put in evidence as an admission a statement made in a pleading by a party to the litigation. This was not only a pleading, but it was a sworn pleading. An unsworn pleading is evidence of an admission; but this was a sworn pleading, and a sworn pleading that had been phrased after the most careful consideration and the most competent advice. Let us see, however, about the evidence outside of these documents. I think the evidence outside of these documents will show two things: First, a failure on the part of Mr. Singmaster to extricate himself from the admission; and, second, corroboration of the correctness of the admission. Remember that we are dealing with the problem of penetrating the mind of Mr. Sing-master, and I may say here and now that I am not criticising him. He is a man of great talents. It is perfectly manifest, however, that he is a man of a good deal of feeling. Sometimes we refer to that as being temperamental. Certainly he has strong feeling, and he is interested in the result. He may be somewhat biased or forgetful as to dates. Yet I do not even suggest conscious falsity on his part; not at all; and I do not want anything that I say to be interpreted as a reflection on him. As heretofore suggested, it is merely part of the day’s work to try to find where the truth lies when testimony is conflicting. It is an unusual experience — unusual in my experience — to have witnesses of the class who have appeared at this trial go on the stand and take a solemn oath and then consciously lie. I do not accuse Mr. Singmaster of anything like that. We have a narrow issue here. The question is whether these things we are talking about became patentable ideas prior to May 1,1927, or, if we are to take the contention of Mr. Singmaster as stated by him, whether they became patentable ideas on May 7, 1927 —a difference of a week. Mr. Singmaster says that between July, 1926, and April, 1927, he put in not exceeding five or six hours on this subject. He says, on the other hand, that in the single interview on May 7 with Mr. Coursen he thereupon made the invention. That is the substance of what he says. Now, first, let us take up certain documents put in by the defendants themselves as evidence in their own behalf, and see what significance is to be attributed to them on this issue. On November 3, 1930, Mr. Singmaster made a memorandum, Defendants’ Exhibit 56, of his interview with Mr. Sage in regard to the reply to be made to the Dreyfus interference. In it there is not a word or suggestion of a claim by him to have made the invention on May 7, 1927. That is of some significance. Taken in connection with certain other documents, I think it has considerable significance. Under date of November 6, 1930, Mr. Chambers sent a letter to Mr. Singmaster, Defendants’ Exhibit 58, and there for the first time we have a reference to the “first personally written description”; and how does Mr. Chambers, the defendant corporation’s lawyer, phrase it? He says, “I have thought it best to include in the statement of your disclosure to Mr. Coursen and your first personally written description.” Mr. Chambers plainly knew of the talk between Mr. Sing-master and Mr. Coursen on May 7, 1927. Yet this is not mentioned in Mr. Singmaster’s memorandum of his interview with Mr. Sage on November 3, and you will note that the reference of Mr. Chambers is to the May 7 talk as “your disclosure to Mr. Coursen.” There is no suggestion by this careful lawyer, Mr. Chambers, of an “invention” on May 7. Mr. Singmaster sent a reply under date of November 7, 1930, Defendants’ Exhibit 59, in whieh he transmitted the preliminary statement to Mr. Chambers; and what is in it? Is there anything there about the invention having been made on May 7? Not at all. Here is what he says: Having complied with the suggestion that originated with Mr. Chambers, he says, “I note that you have thought it best to include in the statement the date of my disclosure to Mr. Coursen and my personally written description thereof.” That is how the portion of the preliminary statement relating to the “further disclosure to others” on May 7, 1927, originated. There is another letter from Mr. Singmaster to Mr. Chambers, and it contains two interesting and relevant statements, Defendants’ Exhibit 57. This was written on November 5,1930. That was two days after the interview with Mr. Sage and'after the preparation- by Mr. Singmaster of the memorandum of that date which I have already referred to. The first statement by Mr. Sing-master in his November 5 letter to Mr. Chambers is this: “This interference proceeding has been the cause of some concern to our Tubize friends and I have had some conversations with Messrs. Slaughter and Scott on the subject and they in turn have had me discuss the matter with our friend Sage of Pennie, Davis, Marvin & Edmonds.” Then again, further on in the letter; Mr. Singmaster says: “Now regarding the dates. I conceived the invention of my patent,” “conceived the invention of my patent.” That surely means when he had already reached the point when he had a “patentable idea” — “I conceived the invention of my patent about July 1, 1926.” This is not a lawyer’s language, embodied in a statement prepared by lawyers. This is Mr. Singmaster’s letter to his lawyer. “I conceived the invention of my patent about July 1, 1926. I disclosed the invention to others early in September, 1926.” “I disclosed the invention.” That is what Mr. Mr. Singmaster said it was. He calls it an “invention.” Is that a “patentable idea,” within the meaning of this contract? He characterizes both the conception and the disclosure — characterizes them in a lay letter to his lawyer — as an invention. “I disclosed the invention to others early in September, 1926 when I asked Messrs. Sage and Arnold of his office to make a search of the art in this respect. The first written description of the invention I suppose could therefore be considered as the letter written me on November 6, 1926, covering the search by Mr. Sage of the prior art. The invention was first reduced to practice on June 9, 1927.” The invention was reduced to practice “on June 9, 1927, when the first spinning of silk containing a pigment was made by Messrs. Coursen and Rudgely at the laboratory of the Tubize Company in Hopewell.” You will note that the May 7 talk with Mr. Coursen is characterized as a “further disclosure,” or second disclosure. That implies a precedent disclosure. So much we derive -as to the faets from the exhibits put in at this trial on their own behalf by the defendants. They do not extricate the defendants from the unambiguous admissions made by Mr. Singmaster in the preliminary statement. On the contrary, they strongly tend to corroborate the admissions there made. There are other faets, however. As I have said, Mr. Singmaster testified that he only gave five or six hours to the subject between July, 1926, and April, 1927. Let us see if he is not forgetful as to what happened. There is not much dispute about these faets; but, when we consider the reasonable probabilities in the light of these faets, the inference is inescapable that Mr. Singmaster is in error. If he is in error about that, I think he is in error also as to the extent to whieh he had progressed with this matter prior to leaving the employment of the plaintiff. The dates must be kept in mind and the nature of the activities that are shown. So also we must observe tbe order of tbe events described. In July, 1926, Mr. Singmaster had a conversation with Mr. Breyer on the subject of the incorporation of pigments into artificial silk, having in mind particularly at that time zinc oxide. There is. no question about it. Both witnesses admit it. In that same month, July, 1926, at Palmerton, there was a microscopic examination of samples of natural and artificial silk by Mr. Green. Somewhat later, but during the summer of 1926, some samples of artificial silk were subjected to ultra-violet ray tests by Mr. Green in the plaintiff’s laboratory. Incidentally, I may call your attention to the fact that the evidence shows that Mr. Green is in the employ of or associated with Mr. Singmaster and he was not called; you will note also, when I refer later to Defendants’ Exhibit 35, that the significance of the ultra-violet ray tests is that they have a vital bearing upon opacity, as covered in Defendants’ Exhibit 35. Mr. Singmaster is a competent chemist. He knew back to that day about the difference between artificial silk and natural silk. Did the man who only put five or six hours on this whole thing during a period from July of one year to March of the next do anything further? In August or September, 1926, he went down to Mr. Sage’s office and there ordered a search in the Patent Office, a search upon the identical question upon which he was concerned or had been concerned — the incorporation of pigments into the filaments of artificial silk. In September, 1926, apparently around about Labor Day, Mr. Singmaster was conferring with an artificial silk manufacturer, Mr. Bosworth, at the Horsehead Inn in Palmerton. That is the date that is fixed by the evidence. Mr. Bosworth, engaged in the manufacture of rayon, was concerned, of course, having knowledge of - the manufacture of artificial silk, and, as I understand the evidence, if Mr. Singmaster had not previously known, he then learned about the various processes. He certainly learned at that time about the viscose process and the nitrocellulose process. Not interested? Had spent only five or six hours on it ? Why pursue it ? He, a chemist, not in position to understand the composition of viscose and nitrocellulose? It is clear that he did understand it; he understood it at least as early as September, 1926. Moreover, he understood the differences between artificial silk and natural silk before that time. In November, 1926, he had a discussion with Mr. Trewin about the incorporation of pigments in artificial silk. What inferences are to be drawn from his remark, as to other matters which “we” need interest ourselves in may not be certain; but it is certain that the discussion with Mr. Trewin occurred. It is undisputed. In November, 1926, he received the Arnold search. He also examined some notes in Chemical Abstracts about that time. In November, 1926, Mr. Breyer, with whom he had previously discussed the matter and who was in charge of research of Palmerton, received, according to his own statement, from the Tubize Company, through Mr. Peters, various samples of artificial silk. That is demonstrated by Plaintiff’s Exhibit 79; but Mr. Breyer recalls it and so stated on the stand. As showing that Mr. Singmaster was further interested in November, 1926, he says at that time he examined one of the patents sent him by Mr. Arnold. He refers particularly to a single patent — the Darcey patent. He says that upon examining this patent he learned, as I understand it, that sulphuric acid was present in the performance of the viscose method, and that this would dissolve zinc oxide. That is my understanding of his contention as to or his explanation of why he went no further; why he only put in five or six hours. What happened after that? In December, 1926, he instructed Mr. Me-Craven, the librarian at the plaintiff’s New York office, to keep a watch for magazine articles dealing with the identical subject. In January, 1927, Mr. MeCraven drew to his attention magazine -articles (Plaintiff’s Exhibits 68 and 69) dealing with the subject. We cannot tell the extent to which they influenced Mr. Singmaster or the extent to which he examined them. They were given to him by Mr. MeCraven, and they bear the ordinary indicia, in accordance with the method by which the business of the company was done, that they were submitted to him. Did he abandon the subject then? Nq. On March 1, 1927, he directed that Av-ram’s book on Rayon Industry be ordered. He had already informed himself about the different processes for the manufacture of artificial silk in a general 0 way, and he ordered this book on the subject. On March 20; 1927, the book was charged to him. We cannot tell the extent to which he examined it. In addition there are various scientific papers, produced from the files of the plaintiff’s library at Palmerton, containing information on various related problems involved in the identical question, with indicia during the general period, certainly in January, 1927, and later, of having been in the hands of Mr. Singmaster during Ms employment by the plaintiff, and bearing the ordinary indications of examination by him. What is the natural inference to be drawn from the course of conduct that I have described? It certainly shows a continuous interest by Mr. Singmaster in the subject from July, 1926, to March, 1927. The very order of the events, as I have recited them, is significant; particularly significant in view of Ms statement that he says he made on or about November 7, 1926, to Mr. Hayes, the vice president of the company, and, as I have pointed out and as you will observe from Defendants’ Exhibit 35, from which I will shortly read, certainly as early as the ultra-violet ray examinations by Mr. Green in the summer of 1926 he was in possession of knowledge that was relevant to any scientific man as to opacity. In the light of all these facts, wMeh I have summarized, the inherent improbability of the patentable idea having come to Mr. Singmaster after he left the employment of the plaintiff is so great that there is no justification whatsoever on the evidence for finding that the invention was made on May 7, rather than preceding May 1, 1927. The explanation made by Mr. Singmaster, as I understand it, of Ms failure to put more than five or six hours’ time upon the matter which he had under consideration preceding May 1, 1927, is that, when he read the Dareey patent and the notes in Chemieal Abstracts in November, 1926, they revealed to him something that he had not thought about before. That is the substance of what he says. It revealed to him that, in the important branch of manufacture by the viscose process, there was a bath of sulphuric acid, and that this would destroy or dissolve the zinc oxide wMeh he had contemplated using. And so he was no longer interested in it; the company was no longer interested in it; it could not sell zinc oxide as a result; therefore he was no longer interested in it. Also he says that what was revealed by the Dareey patent was verified by reading at his home Chemical Abstracts, which came under his observation. Gentlemen, I think Mr. Singmaster is in error about this explanation or his having in November, 1926, ceased to work on the problem ; and I will tell you why. It is inherently inconsistent with the type of scientific man that Mr. Singmaster has well shown himself to be; he would never abandon a tMng of this significance merely upon reading in the Darcey patent or in Chemieal Abstracts that the presence of sulphuric acid in one of the processes would destroy zinc oxide. No, sir; he is too thorough. Moreover, as you will see when I discuss what happened about the strengthening claim, there is unambiguous documentary proof that he did not abandon the subject in 1926. He did not abandon it at all for the reason assigned. He did not abandon the notion that, by the device he had in mind, the filaments of artificial silk could be strengthened, nor did he wait to resume the idea that it would strengthen the filaments until after the Hopewell tests during the week of May 16, 1927, by Mr. Coursen. He explicitly embodied in his memorandum of May 10, 1927, to Mr. Coursen, the claim that it would strengthen. In the present connection, however, it is enough to say that the explanation of the revelation from the Dareey patent and of the Chemieal Abstracts is, first, not enough, in the light of the type of chemist, of the talent and qualities possessed by Mr. Sing-master, to sustain abandonment on that ground; and, secondly, abandonment then on that ground is inconsistent with Ms continuation thereafter to insist that the filaments would be strengthened. The claim that it would strengthen was continued as late even as June 27, 1928, in the Patent Office. The argument presented to the Patent Office by his counsel, Mr. Chambers, after submitting that argument to him for consideration, and after he had carried on the serimeter tests in the laboratoiy at Bronxville in the winter of 1927 and the spring of 1928, demonstrates that he was still hanging on to the claim. It cannot be, therefore, that what he had said on the stand is the real explanation. In the light of all these facts, the amount of work and activity on the part of Mr. Sing-master between July, 1926, and the 1st of May, 1927, in conjunction with what he knew, what he did, what he learned, is not it likewise inherently improbable that on this particular day, May 7, 1927, only a week after he left the employment of the plaintiff, at the single interview with Mr. Coursen, he conceived the patentable idea or made the invention? Mr. Coursen revealed to him little, if anything, beyond what he knew before, what we have every reason to infer he must have learned from another silk manufacturer, when he interviewed him at the Horsehead Inn in September, 1926, what was common knowledge and what he could get out of the book which he directed to be obtained and wMeh was handed to him for examination as early as March, 1927. He could have learned about all these processes with the talent he had as a chemist, with the genius he had, because he did have genius; everybody accords it to him; nobody will deny it to him. I say, is not it inherently improbable that on this particular date May 7, 1927, he made this invention or made this discovery? I think so. Another document presented by the defendants, Defendants’ Exhibit 35, tends to support the conclusions I have stated; tends to negative that discovery was after May 1, 1927. What does it say ? I will read a few things in it. This- is the so-called amateur patent application, dated May 10, 1927, which was furnished to Mr. Coursen pursuant to his request made, as I recall, when Mr. Singmaster had the interview with him on May 7. What did Mr. Singmaster say on May 10, 1927? “One pigment I have discovered as particularly suitable for this purpose is zinc oxide, particularly that of fine particle size.” Did he make that discovery after May 1? “This pigment can be so dispersed in the plastic material, e. g., into nitrocellulose, as to still permit it to be extruded or spun.” Did he learn that after May 1 ? Certainly the circumstances all indicate he must have known that before. “The addition of pigments of this character, when properly dispersed will result in one or all of the following beneficial effects in making artificial silk or the like;” and the second of those beneficial effects he recites is this: “(2) A reinforcing effect is to be had from the addition of a suitable pigment. Artificial silk may have a strength as low as 60'% of that of natural silk] and an increase of strength is highly desirable.” Did he learn that after May 1? Certainly not. Then comes this clause, which, as I conceive it, is of great significance in determining the issue as to dates: “4-a. Since zinc oxide is opaque to ultra-violet light, it should protect silk against harmful chemical effect of the actinic rays of sun light.” Then lastly, in summarizing the advantages in paragraph 8 at the end of the memorandum, he says: “(a) Strength may be increased.” “(c) The covering power may be increased.” Gentlemen, all of these things as I see it, .all these facts I have recited, these documents I have recited, tend to corroborate the accuracy of the admission made by Mr. Singmaster in his preliminary statement; and that is particularly true in the light of the failure to produce as witnesses in his behalf the various persons whom I have named, who could throw light upon the controverted issue as to dates. I shall now approach the matter, however, from an entirely different angle, or rather from a more restricted angle. I shall not for the moment take so wide a range of facts for consideration. Eliminating mere statements of conclusions on his part, take what Mr. Singmaster says and see if it does not bring the subject-matter of this litigation, as that subject-matter is described by him, as it existed preceding May 1, 1927, within the terms of' the contract, requiring him to transfer it to the plaintiff, investing the property to it in the plaintiff. Confessedly in 1926 he conceived the idea of incorporating pigments into artificial silk. That there was further progress in the idea after May 1, 1927, is clear. That he learned a great" deal on the strengthening problem in the course of time, that he thought of other treatments, and so on, is manifest. Now, it is extremely difficult with precision to draw the line as to how far Mr. Singmaster had progressed at May 1, 1927. As I view the law, it was plainly not essential to reduce the idea to practice in order to bring what had been accomplished up to May 1, 1927, within the contract provision as to patentable ideas. If patentable ideas mean what I have indicated, what I have concluded myself that I am bound to construe the contract to require that I treat as 'its meaning, then the idea as conceived by Mr. Singmaster in 1926, in the more restricted form that I have described, became the property of the plaintiff. Otherwise, gentlemen, you would have to rewrite the contract. The contract was one freely entered into, deliberately entered into by the parties, and it is the duty of the court to enforce it. Can it make a difference in the rights of the plaintiff that subsequent to May 1, 1927, that after the employment had ceased, Mr. Singmaster went further, and that the patent as issued embodied much in addition to what he had fully conceived prior to May 1, 1927? I do not think it makes a bit of difference. The analogy to my mind is precisely that which prevails in the doctrine of confusion of goods. There is no way to separate the two —that which was the property of the plaintiff and became the property of the plaintiff prior to May 1, 1927, and that which came about subsequently. The two were commingled. The commingling having been the act by a wrongdoer, the property in the whole mass passed to the one who was innocent. That doctrine is accurately stated in The Idaho, 93 U. S. 575, 23 L. Ed. 978. My reflection leads me to believe that I am bound, sitting in a court of equity, to apply it here. If the contract was made, and the terms have the meaning I have ascribed to them, certainly it should be specifically enforced. The meaning, as I can see it, is to be derived from within the four comers of the instrument. There is manifestly an inadequate remedy at law. If the patentable ideas belong to the plaintiff, there is no way by which, in the trial of an action at law, you could measure the damages to the plaintiff by being deprived of that which was its property. In that situation it is the duty of the court, as I conceive it, as established by several decisions of the Circuit Court of Appeals of this circuit, to award specific performance as the remedy. As I have previously indicated, I see nothing harsh about the contract. I see nothing unreasonable .about the contract. The old talk in some of the old decisions, with respect to agreements of this character, completely lost effect when the Supreme Court handed down the Standard Parts Case, 264 U. S. 52, 44 S. Ct. 239, 68 L. Ed. 560, 32 A. L. R. 1033. There are four defenses for consideration. I will take these up in order. First, abandonment or waiver. That is pleaded by both defendants. It constitutes the first and second defenses of Mr. Sing-master. The reason assigned by him for the alleged abandonment in November, 1926— namely, it having come to his attention that in the viscose process there was employed a sulphuric acid bath, in view of his knowledge as a chemist that subjecting zinc oxide to that bath would dissolve it — appears to me, for reasons I have previously assigned, to be inherently improbable. Mr. Singmaster is a scientific man of too high talent to quit a problem of that kind for such a reason. And that he did not abandon it for that reason is further borne out by the fact that, long after November, 1926, when he says it was abandoned, he persisted in the claim that the employment of pigments, including zine oxide, as I understand his testimony, would strengthen. Let us, however, take Mr. Singmaster’s own statement of the conversation between himself and Mr. Hayes on or about November 7, 1926, on which wholly or chiefly is predicated the defense of abandonment. Accept the conversation as having occurred precisely as described by Mr. Singmaster. Even so, it would afford no basis whatsoever for finding an abandonment by the plaintiff. According to Mr. Singmaster’s account, there was hardly more than a casual remark. There was no revelation of the facts to Mr. Hayes. There was no basis furnished to Mr. Hayes by Mr. Singmaster upon which Mr. Hayes could^ exercise judgment. According to Mr. Singmaster, after his rather casual statement to Mr. Hayes, the only remark made by Mr. Hayes was, “Well, that is too bad.” That comes nowhere in the neighborhood of sustaining the defense of abandonment, as pleaded. There was no declaration by the company that there was a determination then that the matter was not patentable or was not useful or was not practicable. Far from it. What is more, as I have already pointed out, Mr. Singmaster himself did not abandon it then. On the contrary, he pursued it from time to time, as indicated by this record, right straight through at least into the month of March, 1927. There is another circumstance. Mr. Hayes has testified at considerable length. He is a methodical man. He conducted the business of the plaintiff company in a methodical way, and thoroughly. The provisions of instructions 4-B, in force at the time, prescribed an exact method by which questions as to whether or not work done by employees of the company involved patentable ideas that should be presented to the Patent Office had to go to the patent committee. They did not go to the vice president until after the patent committee had made its report. The patent committee consisted of the general counsel, experts among the personnel of the plaintiff’s employees, and experts in the field of patent law. It is practically unthinkable that a man of the type of Mr. Hayes, as disclosed by his testimony and by his appearance on the witness stand, would ever upon a'casual remark like that related by Mr. Singmaster undertake, or would even on more complete information have at all undertaken, to discard that piece of property of the company, to throw it away. He would have subjected it to the preordained and prevailing method of determining the question of whether it was or was not without merit before he ever would have exercised any authority in respect to it on behalf of the company. Abandonment like waiver, I take it, involves conscious relinquishment of a known right. Here, taking Mr. Singmaster’s testimony at its face, its full face, there was not sufficient knowledge on the part of Mr. Hayes to enable him consciously to exercise the right. In addition I find that in truth there was no assent by Mr. Hayes to the company foregoing whatever right it had to the patentable ideas of Mr. Singmaster. The defendants contend also that there was failure on the part of the plaintiff, within a reasonable time, to prosecute an application for a patent, or otherwise to prosecute efforts to procure issuance of the patent in suit. Without full revelation to the plaintiff, without knowledge on its part, of the facts, fault in that regard cannot be attributed to it. The talk with minor employees of the plaintiff mentioned in the testimony was merely casual. It