Defendant Evan Brown ("Brown") files this Motion for Summary Judgment and Brief in support and would respectfully show the Court as follows:
On April 24. 1997, DSC sued Evan Brown, its former employee. DSC contends that it owns an idea in Evan Brown's mind which, if it works, will allow the user of a software program to convert machine executable binary code into a high-level source code using logic and data abstractions. DSC alleges that the idea belongs to it based upon the terms of an Employee Patent, Copyright and Proprietary Information Agreement (the "Agreement") Brown signed one week after he began employment with DSC. The portions of that Agreement which purportedly obligate Brown to make disclosures to DSC, and which purportedly award DSC the ownership rights upon which it bases its suit, apply only to "inventions made or conceived" by Brown while at DSC. The idea in Brown's mind, however, is merely an idea and not an invention. Moreover, Brown has not "made" anything and has not "conceived" an "Invention" as those terms have been defined in the relevant case law.
Because the Agreement does not apply to mere ideas and because Brown has not "made or conceived" an "invention," the Agreement provides DSC with no ownership rights in Brown's idea. As such, all of the claims set forth in its amended petition fail as a matter of law. There are no genuine issues of material fact, and Brown is entitled to judgment in his favor as a matter of law. The Court should grant Brown's Motion for Summary Judgment, dismiss DSC's claims with prejudice and enter judgment in favor of Brown that DSC take nothing by its claims.
This Motion for Summary Judgment is based on the pleadings of the parties, Plaintiff's First Amended Original Petition and Application for Injunctive Relief attached hereto as Exhibit A, the affidavit of Evan Brown attached hereto as Exhibit B, and all other competent summary judgment evidence.
In 1975, well before his employment with DSC, Brown began mentally developing an algorithm for a software program that could convert machine executable binary code into a high level source code using logic and data abstractions. Exh. B, par.2. His idea essentially amounts to a computer program which would reverse engineer a computer program from its machine language to a source code of any type. Id. Prior to going to work with DSC, Brown had a mental image of 80% of the ultimate idea. Id.
On April 21, 1987, Brown began working for DSC. Exh. B, par. 3. After one week of employment, DSC told Brown to sign an Employee Patent, Copyright and Proprietary Information Agreement (the "Agreement") or face immediate termination. Id. He was not given any opportunity to negotiate over the terms of the Agreement. Id. Not wanting to lose a job he had had for only six days, he did as he was instructed and signed the Agreement on April 27, 1987, Id. As specifically stated in the Agreement, Brown was to divulge to DSC all inventions made or conceived while employed by DSC. Exh. A-1.
In March 1996, Brown mentally pictured the remaining 20% of his idea while he was in his car coming home from a long weekend. Exh. B, par. 4. In April 1996, Brown sought a release from DSC to pursue his idea. Id. After several months of no response from DSC to Brown's request, Brown inquired of several managers at DSC as to whether DSC would be interested in engaging him to develop the idea. Id. DSC and Brown began negotiating an agreement whereby DSC would pay Brown a percentage of savings realized by the company if the idea were successful and a percentage of income from third party sales, if any. Id. In early 1997, DSC suddenly discontinued negotiations with Brown. Id. When Brown refused to reveal his idea, DSC abruptly fired him and initiated this lawsuit to force Brown to disclose his idea and to obtain ownership rights in the idea. Id.
The idea which, Brown has developed is only in his mind. Exh. B, par. 5. There is no computer program, computer model or any other tangible representation of his idea. Id. Moreover, Brown has not written the idea down on paper; in fact, it would take him a month to simply write down the idea and the idea would take 400 single spaced pages to document. Id. Moreover, it would be at least 18 months before the idea could actually be put into practice. Id. The idea needs a great deal of further development and refinement before there is any chance of it functioning. Id. It also must be meticulously documented and thoroughly tested before Brown can even determine if his theory will work in practice. Id. At this point, Brown has nothing more than an abstract idea to a perplexing problem.
In short, the subject of this dispute is nothing more than the seed of an idea which is Evan Brown's mind. There is no invention made or conceived by Brown. There is only the remote, speculative and future possibility that Brown's idea will some day blossom into a practical and useful invention. Brown's untested, undocumented and uncertain notion is not an invention and does not fall within the parameters of his Agreement with DSC.
DSC's First Amended Original Petition and Application for Injunctive Relief asserts claims for injunctive relief, declaratory relief, breach of contract. promissory estoppel, misappropriation of trade secrets, unfair competition and breach of fiduciary duty. Exh. A. Each of these claims is premised on Brown's alleged contractual duty to divulge his idea to DSC and DSC's alleged ownership rights in Brown's idea. The Agreement, however, applies only to inventions made or conceived by Brown and not to mere abstract ideas residing solely in Brown's head. Because Brown's idea is not an invention made or conceived, the Agreement does not obligate Brown to disclose his idea to DSC and does not award DSC any ownership rights in the idea. For this and other reasons set out more fully below, all of DSC's claims fail as a matter of law. The Court should grant Brown's Motion for Summary Judgment, dismiss DSC's claims with prejudice and enter a judgment that DSC take nothing by its claims.
- The Agreement applies only to inventions made or conceived by Brown while at DSC.
The Employee Patent, Copyright and Proprietary Information Agreement ("Agreement") which is the subject of this dispute is a form agreement drafted by DSC for use by all of its employees. One week after Brown began employment with DSC, he was told to sign the Agreement or lose his job. This was consistent with DSC's practice of requiring its employees to sign the Agreement or face immediate termination. Brown was given no opportunity to negotiate over the terms of the Agreement. He was presented with a take-it-or-leave-it proposition by DSC: sign the Agreement as-is or lose his job. Brown chose to keep his one-week old job and signed the Agreement as instructed. The Agreement states in pertinent part as follows:
In consideration of my employment (or continued employment in the event I am already in the employ of the Company at the time of execution hereof) with DSC Communications Corporation or any subsidiary or affiliate thereof (the "Company") and of the salary or wages paid for my services in such employment, the Company and I agree as follows:
(A) I will communicate to an officer of the Company promptly and fully all inventions (including but not limited to all matters subject to patent, i.e., processes, machines, computer programs, etc.) made or conceived by me (whether made solely by me or jointly with others) from the time of entering the Company's employ until I leave, (1) which are along the lines of the business, work or investigations of the Company or of companies which it owns or controls at the time of such inventions, or (2) which result from or are suggested by any work which I may do for or on behalf of the Company.
(B) I will assist the Company and its nominees during on subsequent to such employment in every proper way (entirely at its or their expense) to obtain for its or their own benefit patents for such inventions in any and all countries (including the assignment of any inventions to the Company), said inventions to be and remain the sole and exclusive property, of the Company or its nominees whether patented or not ....
(C) I will notify the Company in writing before I make any disclosure or perform or cause to be performed any work for or on behalf of the Company, which might conflict with (1) the rights I claim in any invention or idea (a) conceived by me or others prior to my employment or (b) otherwise outside the scope of this Agreement, or (2) rights of others arising out of obligations incurred by me (a) prior to this Agreement or (b) otherwise outside the scope of this Agreement. In the event of my failure to give notice under the circumstances specified in (1) of the foregoing, the Company may assume that no such conflicting invention or idea exists, and I agree that I will make no claim against the Company with respect to the use of any such invention or idea in any work or the produce of any work which I perform or cause to be performed for or on behalf of the Company ....
Exh. A-1. These are the contractual terms upon which DSC bases all of its claims for relief. Because these terms do not apply to mere ideas residing in the heads of DSC's employees, DSC's claims against Brown fail as a matter of law.
Because DSC drafted the Agreement, this Court must construe any ambiguities against DSC. In Jamesbury Corp. v. Worcester Valve Co., 443 F.2d 205 (1st Cir. 1971), two companies were involved in patent litigation over an idea which had been discovered by a former employee of one of the companies. The employee had signed a contract in which he agreed to give to his employer all inventions made while employed by the company. The court held that it was required to construe the agreement against the employer, since the employer had drafted the form contract which the employee signed. Id. at 213. (Note: 1) This holding is consistent with Texas law, which holds that a court is to strictly construe a contract against the party which authored the agreement. See, e.g., Temple- Eastex, Inc. v. Addison Bank, 672 S.W.2d 793,(Tex. 1984)("In Texas, a writing is generally construed most strictly against its author"); Enell Corp. v. Longoria, 834 S.W.2d 132, 134 (Tex. App.--San Antonio 1992, writ denied) ("In this case, as in other cases under Texas law, the contract must be construed most strictly against its author").
In addition to construing an agreement against its drafter, a court giving effect to a written agreement "should examine and consider the entire writing in an effort to harmonize and give effect to all the provisions of the contract so that none will be rendered meaningless." Coker v. Coker, 650 S.W.2d 391,393 (Tex. 1980) (emphasis original), see also Affiliated Capital Corp. v. Commercial Federal Bank, 834 S.W.2d 521, 526 (Tex. App.--Austin 1992, no writ) (same). In order to give meaning to the Agreement between DSC and Brown, this Court must interpret the Agreement in a manner which will not render any of its provisions meaningless.
In applying the foregoing principles, it is clear that the Agreement obligates Brown to disclose to DSC only inventions and not ideas. As set forth above, the portions of the Agreement which DSC alleges obligate Brown to make disclosures to DSC and award ownership rights to DSC apply only to "inventions." The term "Idea" is never mentioned in those paragraphs. Exh. A-1, pars. (A), (B). In contrast, other portions of the Agreement which do not form the basis of DSC's claims against Brown refer repeatedly to any "invention or idea." Exh. A-1, par. (E). As the cases set forth above indicate, this Court must interpret the Agreement so as to give effect to the "invention or idea" language contained therein. The Court's interpretation must therefore preserve the distinction between an "invention" and an "idea" which is demonstrated by the use of the language "invention or idea" (emphasis added) by construing paragraphs (A) and (B) of the Agreement to apply only to inventions and not ideas. Any other interpretation would render the "invention or idea" language meaningless, in contravention of established principles of contract construction.
The Agreement is a standard document that is used by DSC for its employees. DSC, not Brown, drafted the document. Moreover, Brown was given no choice but to sign the Agreement or lose a job he had had for only six days. Under such circumstances, the Court must construe the Agreement strictly against DSC. See Jamesbury Corp., 443 F.2d at 213 (construing agreement against employer where employer drafted the contract, the contract was a standard form contract and the employer had superior bargaining power); see also Temple-Eastex, Inc, 672 S.W.2d at 798 ("a writing is generally construed most strictly against its author"). If there is any ambiguity as to whether the Agreement required Brown to disclose only inventions or both inventions and ideas, this ambiguity must be resolved in favor of Brown and against DSC.
For the foregoing reasons, this Court should construe the Agreement between Brown and DSC so as to only obligate Brown to disclose inventions made or conceived by him while employed by DSC and not to disclose mere ideas. The Court should likewise construe the Agreement in a manner that does not award DSC any ownership rights in the mere ideas of its employees. Such a construction is consistent with the overall terms of the Agreement as well as with the rules of construction set forth above. Because Brown's "solution" is nothing more than an idea in his head -- and is not an invention made or conceived by Brown while at DSC-- the Agreement gives DSC no claim to ownership of Brown's idea. As Such, all of DSC's claims against Brown must fail as a matter of law. Brown's motion for summary judgment should therefore be granted in its entirety.
- An idea is not an invention.
In the case of Jamesbury Corp. v. Worcester Valve Co., 443 F.2d 205 (1st Cir. 1971), the Jamesbury Corporation, whose president was Howard Freeman, brought a patent infringement suit against Worcester Valve Company for infringing a patent for a double-seal ball valve. E.W. Bliss Company, Freeman's former employer, intervened in the suit. claiming ownership of the patent at issue. Freeman had gone to work in 1940 as an inventor for Rockwood Sprinkler Company, which was later acquired by Bliss. In his employment contract with Rockwood, Freeman agreed "to give to Rockwood the full benefit and enjoyment of any and all inventions or improvements which he may make while in the employ of Rockwood ..." Id. at 207. After Freeman concluded that he could develop a double-seal ball valve and profitably market it through his own company, he resigned from Rockwood and quickly set up his new corporation. Up to that point, nothing had been put on paper regarding his idea for a double-seal ball valve. About a week after leaving Rockwood, Freeman began to make drawings and sketches of the patent concepts for the valve.
The district court interpreted the term "invention" in Freeman's employment contract to apply only to an idea which has been reduced to tangible form. Because Freeman's idea had not been reduced to tangible form while he was employed by Rockwood, the court rejected Bliss' claim to ownership rights in the idea and rendered judgment in favor of Jamesbury against the infringing Worcester Company. On appeal, the court defined the issue as follows:
The central issue in this case is the interpretation of the word "invention" as it is used in the 1940 employment contract between Freeman and Rockwood. Bliss claims an undisclosed idea is an invention, Jamesbury claims an idea must be written down or otherwise converted into tangible form before it becomes an invention. The district court sided with Jamesbury and concluded that the definition of "invention" is "well settled and specific." In support of this proposition, the court relied on cases which defined "invention." It is the contract interpretation which Bliss appeals.
Id. at 210. Thus, the issue on appeal in Jamesbury is identical to the issue raised in the instant case. In both cases, the issue is whether or not an idea which has not been written down or otherwise converted to tangible form is an "invention" subject to an employment agreement obligating an employee to disclose "inventions" to his employer. The Jamesbury case is directly on point and provides this Court with helpful guidance in determining the legal issues raised by this Motion.
The court of appeals in Jamesbury stated that the district court had concluded that the term "invention" had a definite meaning in patent law. Because patent concepts were used in conjunction with the word "invention" in the employment contract, the court of appeals stated that the patent definition had much weight in its analysis. Id. at 210. Like the agreement in Jamesbury, the Agreement signed by Evan Brown similarly uses patent concepts in conjunction with the term "invention" in the agreement. Exh. A-1, pars. (A), (B) (defining the term "inventions" as "including but not limited to all matters subject to patent" and stating that Brown will assist the company to "obtain for its or their own benefit patents for such inventions"). The court of appeals in Jamesbury analyzed several cases dealing with the definition of an "invention" under patent law. After reviewing a number of patent cases involving the priority of competing claims to an invention, the court noted that "if a non-disclosed idea would constitute an invention, courts would have to read minds to determine priority. Therefore, courts will not consider an idea to be an 'invention' until it is made tangible." Id. Although some of the cases which it cited were patent priority cases, the court of appeals stated that the rationale of those courts "is not one of evidentiary convenience; it is an acknowledgment that an 'invention' is generally thought to be more than a thought in the inventor's head." Id. In sum, the court stated, the relevant case law establishes "that an idea becomes an 'invention' only when it is reduced to some tangible form." Id.
Based upon all of the foregoing, the court of appeals in Jamesbury concluded that Freeman had not made an invention within the meaning of his employment contract when he left Rockwood because he had not put any of his ideas down in any tangible form. The court clearly realized the important policy implications of its decision, stating as follows:
To rule as Bliss would have us rule would require the court to attempt to read inventors' minds in order to determine when the essential idea behind an invention was conceived. Such an interpretation is perhaps facially appealing in close cases such as Lamson, where there was some evidence that the critical ideas were conceived before the termination of the contract period, or the instant case, where reduction of ideas to paper followed quickly. But such an approach would also, in cases where ideas were not reduced to practice for many years, involve the courts in something close to retrospective telepathy. It would also require us to circumvent established doctrines of contract interpretation. We are not prepared to face any of those consequences.
Id. at 213. Based on the foregoing, the court of appeals held that the district court's interpretation of the term "invention" as being an idea reduced to tangible form was supported by the evidence and not clearly erroneous. As such, the court of appeals concluded, Bliss was unable to prove the Freeman made his invention while still in the employ of Rockwood, and Bliss therefore had no ownership rights in the idea. Id. at 214. Given the factual similarities between the two cases, and the application of the legal principles set forth above, this Court should reach the same conclusion with respect to Mr. Brown's idea.
Another case with striking similarities to the instant case is Amoco Production Company v. Lindley, 609 P.2d 733 (Okla. 1980), which involved the ownership of a computer software program referred to as the "Lindley System." (Note:" 2) Lindley, the inventor of the system, began working for Amoco in 1964 under a written contract in which he agreed to disclose to the company "all inventions or discoveries capable of use in connection with the business" of Amoco. Id at 736. During his employment with Amoco, Lindley developed a computerized well log analysis system. Amoco initially rejected Lindley's request to develop the program, because it had already made a decision to develop another computer program for the same purpose. Eventually, Amoco officially recognized the Lindley System after it was used to locate a large hydrocarbon-bearing subsurface geological formation. Ten months later, Lindley left the company due to differences with management over the program.
After Lindley left the company, Amoco brought suit seeking specific performance of the employment contract in which Lindley had awarded to Amoco property rights to any "invention" made by Lindley during his employment. The trial court issued a temporary injunction which precluded Lindley from using any part of the Lindley System for his own use or benefit or for the use or benefit of any third party. Id. After being sanctioned by the trial court, Lindley submitted an application to the Oklahoma Supreme Court for a writ of prohibition against the trial court. Among the issues confronted by the Oklahoma Supreme Court were those encompassed by Lindley's interlocutory appeal from the trial Court's temporary injunction order. In Issuing the injunction, the trial judge had concluded that the Lindley System was an invention which was governed by the employment agreement between the parties. Id at 739. Lindley, to the contrary, argued on appeal "that the Lindley System is not an invention and is therefore not the property of Amoco under the contract." Id. Because the contract was liberally interspersed with language applying to patents, the Oklahoma Supreme Court, like the court in Jamesbury, held that patent law was relevant in construing the term "invention" in the agreement. Id at 740.
The Oklahoma Supreme Court defined the crucial issue as "whether this computer software system is an invention." Id. The court noted that the Lindley system was not new or novel, but was simply a combination of two arts -- well log analysis and computer programming. Id at 741. The court noted that "the system can do nothing that cannot be done manually; its utility and importance lies in the facts, from evidence presented in the injunction hearing, that it is a better and more efficient way of getting the data sought." Id. Based on a review of various court decisions relating to patents, the court held that such a process was simply not patentable. Id. Like the Lindley System, Evan Brown's idea does nothing that cannot already be accomplished manually. Exh. C at par. 2. Rather, his idea is simply a method to automate by computer a process which companies are already undertaking by hand. Id. Based on numerous patent cases, the Jamesbury case discussed above and the well-established rule of contractual interpretation that contracts are construed against the party who prepared them, the Oklahoma Supreme Court held that the trial court's conclusion that the Lindley System was an "invention" as that term was used in Lindley's employment contract was clearly erroneous. Id at 742-747. Like the court in Lindley, this Court should hold that a mere idea such as Evan Brown's idea is not an "invention" as that term is defined by relevant case law.
The foregoing cases clearly distinguish between a mere idea and an invention. Other courts have similarly recognized that something more than a mere thought is necessary to constitute an invention. As one court has stated, "the development of an invention requires its mental conception by the inventor, its embodiment in a working model and the refinement of such so as to prove its fitness for the intended purpose or purposes and to substantially embody therein the claims sought to be patented." Rodgard v. Miner Enter., 914 F.Supp. 907, 917 (W.D.N.Y. 1995). Stated another way, an invention is "the birth of an idea and its reduction to practice" and a "concept demonstrated to be true by practical application or embodiment in tangible form." U.S. v. Dubilier Condensor Corp., 289 U.S. 178, 188 (1933). Consistent with these definitions, at least one court has specifically held that a mere idea is not patentable. See Gottschalk v. Benson, 409 U.S. 63 (1972).
The foregoing cases all distinguish between an invention and a mere idea. They all stand for the proposition that, without some tangible embodiment, a mere idea remains just that and falls far short of an "invention." This distinction is consistent with the use of the language "invention or idea" in the Agreement, which clearly indicates a distinction between the two terms. Based on this distinction -- which is supported by case law, the language of the Agreement, well-established rules of contractual interpretation and simple common sense -- Evan Brown's mere idea is not an invention as that term is used in the Agreement. As such, DSC's claims fail as a matter of law.
- Brown has not "made" anything.
The idea which Brown has developed is only in his mind. There is no computer program, computer model or any other tangible representation of his idea. Moreover, Brown has not written the idea down on paper; in fact, it would take him a month to simply write down the idea and the idea would take 400 single spaced pages to document. In addition, it would be at least 18 months before the idea could actually be put into practice. The idea needs a great deal of further development and refinement before there is any chance of it functioning. It also must be meticulotisly documented and thoroughly tested before Brown can even determine if his theory will work in practice. At this point, Brown has nothing more than an abstract idea to a perplexing problem.
The Agreement refers to inventions "made or conceived." As the foregoing facts demonstrate, Brown has not "made" anything. His idea is simply in the thought stage and has never been put into any tangible form. Because Brown has not "made" an "invention," or anything else for that matter, the Agreement does not apply to his idea. DSC's claims should be dismissed.
- Brown has not "conceived" an invention.
As discussed at length above, Brown's agreement with DSC allegedly contains an obligation to disclose to DSC inventions made or conceived during his employment. While Brown clearly made no invention while employed by DSC, DSC will undoubtedly claim that Brown conceived an invention while in their employ. As set forth below, however, the term "conceived" has a special meaning when applied to the subject of an invention. To "conceive" an invention requires much more than simply exercising one's mental faculty to come up with an idea or solution to a problem. Rather, it requires a permanent and complete idea developed to the extent that only ordinary skill is necessary to reduce it to practice without extensive research or experimentation. Because Brown's idea does not meet this definition, it is not within the scope of his agreement with DSC.
Conception of an invention has been defined as "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996); see also Amgen, Inc. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1206 (Fed. Cir. 1991). Stated another way, conception occurs when "a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known." Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). "Conception requires both the idea of the invention's structure and possession of an operative method of making it." Amgen, 927 F.2d at 1206. Evan Brown's idea does not fit any of these definitions of conception of an invention. He does not have a definite and permanent idea of a complete and operative invention, nor does he possess an operative method of making an invention based upon his idea. Rather, he simply has in his mind a general idea of the solution to the code conversion problem he encountered many years ago. The idea is far from definite and permanent.
Numerous other courts have held that "conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." Burroughs Wellcome Company v. Barr Laboratories, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994); see also Mahurkar, 79 F.3d at 1577 (same); Sewall, 21 F.2d at 415 ("conception is complete when one of ordinary skill in the art could construct the apparatus without unduly extensive research or experimentation.") Again, Evan Brown's idea fails to meet the definition of conception. As stated in his affidavit, it would take someone of extraordinary skill to reduce Brown's idea to a working computer program. A person of "ordinary skill" would have virtually no chance of converting his raw idea into a workable program. Moreover, no one, not even Brown himself, could reduce his idea to a tangible form "without unduly extensive research or experimentation." Rather, Brown believes it would take at least eighteen months of documentation, research and experimentation before his idea could ever achieve a tangible form.
Based upon the uncontroverted facts and the applicable case law. it is clear that Evan Brown has neither made nor conceived an invention. As such. the agreement between he and DSC provides DSC with no ownership rights to his idea. Brown's motion for summary judgment should be granted, and DSC's claims dismissed with prejudice.
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