## Facts

- General Electric contracted with DRB Industries (a Chromalloy division) to develop a cost-effective, one-piece titanium leading edge for GE90 composite fan blades.
- J. Michael Teets, an at-will DRB engineer, was assigned as chief engineer on the GE90 project and spent most of his work time on it; he had no written invention-assignment agreement.
- After DRB’s multipiece welding/diffusion-bonding approaches produced defects, Teets presented sketches made at home for a one-piece “Hot Forming Process” (HFP).
- With management approval, Teets and other DRB personnel developed, refined, and reduced HFP to practice using DRB facilities, equipment, funding, and employee labor.
- HFP testing succeeded, and GE ordered leading edges produced using HFP.
- Teets initially prepared a patent application with DRB/Chromalloy and listed DRB’s general manager, Douglas R. Burnham, as a co-inventor, then later claimed sole inventorship and ownership.
- Teets sued seeking a declaration of exclusive ownership and an injunction limiting Chromalloy’s use of HFP.
- After a bench trial, the district court found Teets the sole owner and enjoined Chromalloy from certain uses; Chromalloy appealed and Teets cross-appealed.

## Issues

1. Whether an at-will employee without an express assignment agreement could claim exclusive ownership of an invention conceived during an employer-assigned project.
2. Whether the employer acquired enforceable rights (including shop rights and/or ownership interests) where the invention was developed and reduced to practice using employer time, facilities, funds, and co-worker contributions to satisfy an employer contract.

## Decision

- The Federal Circuit reversed the district court’s determination that Teets solely owned HFP.
- The court held the district court erred by treating Teets’s initial at-home conception as dispositive while discounting the assigned nature of the work and extensive use of company resources.
- The court concluded Chromalloy/DRB had rights in HFP sufficient to defeat Teets’s claim of exclusive ownership and to eliminate the basis for an injunction restricting Chromalloy’s use.
- The injunction premised on Teets’s exclusive ownership could not stand.

## Legal Principles

- An employer may obtain an equitable shop right to practice an invention when the employee develops it using the employer’s time, materials, facilities, or equipment; the right is royalty-free even if legal title is elsewhere.
- In determining rights to employee inventions absent a written assignment, courts consider the totality of circumstances, including whether the invention arose from assigned duties, was developed for the employer’s benefit, and was reduced to practice through employer-supported collaboration.
- An employee’s conduct—such as collaborating with the employer on patenting and identifying co-inventors—may weigh against a later claim of exclusive personal ownership.
- Equity disfavors allowing an employee to exclude the employer from using an invention created through employer-funded experimentation and efforts undertaken to perform a company contract.

## Conclusion

The Federal Circuit rejected a finding of sole employee ownership where the invention was developed as part of an assigned corporate project and brought to practice using substantial employer resources and personnel, holding that the employer’s rights barred the employee from enjoining the employer’s use.


Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403 (Fed. Cir. 1996)