## Facts

- Howard G. Freeman worked for Rockwood Sprinkler Company (later acquired by E.W. Bliss Co.) as an inventor and later director of research; during his tenure he developed numerous patents for Rockwood.
- Freeman signed an employment agreement requiring him, without further consideration, to assign to Rockwood “any and all inventions or improvements which he may make while in the employ of Rockwood” relating to Rockwood’s products, as well as inventions “made or worked out on the time and at the expense of Rockwood,” and to disclose such inventions promptly.
- Rockwood manufactured ball valves, including single-seat designs that controlled fluid flow in one direction and tended to leak; customers occasionally requested a double-seal ball valve, but Rockwood did not develop one while Freeman was employed.
- By late 1953 Freeman believed he could develop a double-seal ball valve and market it through his own company; while still employed he studied the problem, reviewed technical materials, investigated the market, and sought investors.
- Freeman resigned from Rockwood in late January 1954 and soon formed Jamesbury Corporation, becoming its president.
- After leaving Rockwood, Freeman worked on a double-seal ball valve at Jamesbury, prepared drawings or sketches, and collaborated with machinist Oscar R. Vaudreuil (named a co-inventor).
- U.S. Patent No. 2,945,666 issued in 1960 to Jamesbury as assignee of Freeman and Vaudreuil.
- Jamesbury sued Worcester Valve Co. for infringement in federal district court; Bliss intervened claiming equitable ownership of the patent under the Rockwood employment-assignment clause.
- Bliss’s ownership claim was severed and tried without a jury; the district court found Bliss had no ownership interest, and Bliss appealed.

## Issues

1. Whether, under Massachusetts contract law, the employment-invention clause required assignment because the invention was “made” during Freeman’s Rockwood employment or “made or worked out on the time and at the expense” of Rockwood.
2. Whether Freeman’s pre-resignation study, planning, and market investigation constituted making the invention within the meaning of the agreement.
3. Whether the district court’s findings on when and where conception and reduction to practice occurred were clearly erroneous.

## Decision

- The First Circuit affirmed the judgment for Jamesbury.
- The court treated the dispute as a diversity contract action governed by Massachusetts law.
- The court held Bliss failed to prove the invention covered by the patent was made during Freeman’s Rockwood employment or on Rockwood’s time and expense.
- The court accepted the district court’s finding that the concrete inventive work (including drawings, design development, and reduction to practice) occurred after Freeman left Rockwood and worked at Jamesbury.
- Because Bliss did not establish contractual entitlement to assignment, the court rejected Bliss’s equitable ownership claim.

## Legal Principles

- In an employment invention-assignment dispute, ownership turns on the contract’s terms and factual proof that the invention was made within the contract’s temporal and scope limits.
- Preparatory steps (study, general planning, and market investigation) may be insufficient to constitute an “invention … made” during employment when the contract requires an actual invention rather than an unformed idea or aspiration.
- An employer seeking assignment under language covering inventions made during employment or on the employer’s time and expense must show that conception and reduction to practice (or comparable concrete inventive activity) occurred within that covered period.
- Appellate review of trial findings on timing and locus of inventive activity is deferential under the clearly erroneous standard, particularly where credibility and chronology are central.

## Conclusion

The First Circuit held that Bliss did not carry its burden to show Freeman made the patented double-seal ball valve invention during his Rockwood employment or using Rockwood’s time and resources; as a result, the patent remained owned by Jamesbury, Freeman’s post-employment company.


Jamesbury Corp. v. Worcester Valve Co., 443 F.2d 205 (1st Cir. 1971)