ROBERTSON ROCK BIT CO., Inc., et al. v. HUGHES TOOL CO.
No. 12690.
United States Court of Appeals Fifth Circuit.
Aug. 13, 1949.
Rehearing Denied Sept. 22, 1949.
As Amended Sept. 27, 1949.
176 F.2d 783
R. C. Milling, Nеw Orleans, La., Floyd H. Crews, New York City, Harvey W. Mortimer, New York City, for appellants.
Robert F. Campbell, Houston, Tex., Geo. I. Haight, Chicago, Ill., Edward A. Haight, Chicago, Ill., John Humphrey, Wichita Falls, Tex., for appellee.
Before HUTCHESON, SIBLEY and WALLER, Circuit Judges.
HUTCHESON, Circuit Judge.
Appellee, Hughes Tool Company, plaintiff below, manufactures and for many years has manufactured and sold by the tens of thousands rotary drilling bits used extensively in the drilling of oil wells.
Appellant, Industrial Manufacturing & Tool Co., was organized, by Colin T. Robertson, in March, 1947, and, until going out of business a few months afterwards, because sued by Hughes, it manufactured about 200 bits of like kind with those Hughes now manufactures.
Appellant, Robertson Rock Bit Company, Inc., organized by Robertson after, and because of, Industrial‘s going out of business, also engaged in the manufacture of a like bit, making about 250 of them in all.
Defendant, Colin T. Robertson, has been the prime directing force behind thе activities of both of the defendant companies, particularly as regards the practices claimed as infringing.
Plaintiff, alleging that the manufacture by defendants of this type bit infringed designated claims of four patents1 owned by it, and that defendants had converted, and were continuing to convert, some of the bits, sued for patent infringement and conversion, and for an injunction restraining both.
The court finding validity, infringement, and conversion and against the defenses of want of title, misuse of patents and unclean hands, held valid and infringed all of the claims in suit, granted an injunction against further infringement and conversion, found unnecessary the appointment of a master to assess damages, and gave judgment2 accordingly.
Here, presenting a sweeping attack upon the trier and the judgment, appellants assail the trial as inadеquate and the judg-
Urging upon us that Hughes has obtained many successive patents for the same thing, has filed many unfounded infringement suits,3 has pretended to lease instead of sell its bits, and then threatened and sued for conversion persons who were merely exercising their right to repair them, appellants insist that Hughes has thereby acquired and, for many years, has obtained and continued an illegal and oppressive patent monopoly.
Citing as anticipation of the patents in suit, many patents, including some issued to Hughes, and calling to our attention many suits brought by Hughes under its patents, appellants insist that the time has come to declare invalid the patents sued on and thus to call a halt to these unjust and monopolistic practices.
Turning first to the general defenses applicable to all of the patents, misuse thereof and unclean hands, and of insufficient title applicable to all of them except Scott & Garfield, the three cone bit patent, we have no difficulty in reaching the conclusion that these defenses are without merit.
As to the leasing agreements and the practices of recovering used bits under them, the district court properly held them valid.
Aside from the fact that they have been, and are being used extensively by other manufacturers for handling products such as the plaintiff‘s, the evidence presented by Hughes shows that the method is practical, reasonable, and completely fair. In areas where drilling is being carried on and where the Hughes bits are used, field crews pick up all used bits and all worn out bits and examine them to see if there is any wear or unique feature in them which would require their being returned to the Houston laboratory. Many of these bits were returned to the Houston laboratory and were then examined in order that future bits might be designed in such manner that flaws appearing in the used bits would not again occur.
As to the claim of alleged misuse of patents in previous litigation, we find no more in it than the district judge found. It is quite plain that if it were sustained, it would amount to a holding that persons making bona fide claims against other persons for violation of their property rights in patented articles could not, by suit and threats of suit, obtain relief from those violations.
We agree, too, with the district court, that the claim that plaintiff failed to show title to patents No. 2011084 and No. 2030442 is completely without substance. If appellants were right in their claim that the legal title was not properly vested in plaintiff, this would not avail them, for the record leaves in no doubt that plaintiff was the real, the beneficial, owner. But the record does not sustain appellants, even on this technicality, for the instruments in evidence
We thus come to the issues of infringement and validity.
As to infringement, there is neither a frank admission, nor a frank denial, by all of the defendants, but а sort of “You said it, you prove it“, half hearted denial by some of the defendants as to all of the claims, and by some of them as to some of the claims of all of the patents. That there was, however, infringement of some of the claims of some of the patents by some of the defendants is not seriously denied.
Defendant Robertson‘s testimony as to his knowledge of, and acquaintance with, Hughes’ patents, and that the structures made under his direction and procurement were deliberately and carefully made with the intention of competing with Hughes, upon the advice of unnamed counsel that these structures were not covered by valid patents, when taken with the vigor of his defenses of anticipation of and lack of novelty and invention in the patents in suit, makes it clear that the twin like resemblаnces between plaintiff‘s and defendants’ structures was not accidental. Indeed, the points of difference relied on by appellants as saving their structure from infringement are so finely drawn, so immaterial, so lacking in substance, such hair splitting as to be no more than camouflage to conceal or soften the starkness of appellants’ deliberately planned piracy in the event the legal opinion on which they acted was not correct and it should turn out that the copied structures were not in the public domain.
Concerning ourselves, therefore, no further with the issues of infringement, we turn to the vital issues in the case, whether the patents are invalid for anticipation and want of invention.
The manufactured structures of both plaintiff and defendants may here be described generаlly as being rotary drilling bits having a base section from which three strong metal arms extend downward and outward. From the ends of these arms, shafts depart at an angle, still in a downward direction but in a path so that the three shafts, if extended, would converge at the center line of the bit. Rotating on these shafts are three cone-shaped cutters having teeth set in circumferential pattern. These cutters run on the shafts with the aid of bearings which serve to fix the cones on the shaft and also to take both lateral and cross stress. While at one time the bearings were lubricated by means of a special oil lubricator, the patent on which has been the subject of much litigation, the bearings on the structures in suit are lubricated by drilling fluid which is continually passed through the hole. The teeth on the several cutters are so placed that they interfit with the teeth of each of the other cutters without touching. Thus, in the drilling operation, as one portion of each cutter is scraping or chipping along the bottom of the hole, other portions are interfitting with the other cutters.
One of the patents in this litigation, Scott & Garfield, No. 1983316, 12-4-34, is for the interfitting three-cone rotary drilling bit. The structure of this bit is identical with that described as the manufactured structure in the foregoing paragraph except that this patent does not cover the bearing features. It covers a device the three cutters of which will chip or scrape along the bottom of the hole without tracking except for the outer row of teeth of each cutter. It also provides, through the interfitting feature, for self-cleaning teeth. The three cones make a uniform base for distribution of the weight in drilling, reducing bounce and lengthening the cutting life of the individual bit.
When the three-cone bit with interfitting teeth was first used, fixed-bushing type bearings were employed on the cutter shafts. Arrangements of rolling bearings with and without built-in lubricators have also been employed in various stages of development of drilling bits. These efforts proving not entirely successful, in 1935 and 1936, two of the three patents now remaining in suit, F. L. Scott, No. 2011084, 8-13-35, and Scott & Garfield, No.
In use, particularly in deep drilling, this type cutter and shaft are subjected to enormous weight and strains.6 Three sets of rolling bearings are provided in the structure described in this patent and are positioned along the shaft circumferentially where the thrusts are strongest. All three bearings are arranged to take the vertical thrust from the bottom of the hole. Two rings of bearings are on the larger diameter of the shaft, and one ring is nearer the tip of the cone. The middle ring of bearings is designed to support the cone on the shaft and to take up a lateral thrust occurring along the axis of the shaft, as well as helр minimize the vertical thrust. The use of three rows of bearings effects a longer bearing life, as the wear on the bearings is more evenly distributed. It also allows reduction in the space required for the bearings, as smaller ones can be used, thus preventing a weakening of either shaft or cone. These bearings space the cutter from the shaft, allowing an area for lubrication by drilling fluid and, as well, keep the cutter from wearing on the shaft.
Scott and Garfield No. 2030442, also relates to the use of bearings on cutters for drilling bits, and differs from the foregoing Scott patent in that, cylindrical rolling bearings are employed as well as the ball-type bearings, and in that, design of the shaft differs.7 The cutter shaft on this
Defenses claimed against infringement of Scott No. 2,011,084 are invalidity for anticipation in the prior art10 and no infringement, as well as the general defenses misuse and lack of title. Garfield and Scott patent No. 2,030,442, is attacked as to validity with reference to the prior art, and here some six patents are mentioned by defendants.11
Against thеse citations and the roundly urged contentions of appellants that the patents in suit represent no advance in the oil well drilling art, appellee replies that appellants’ complete and faithful reproduction by their own structures of the structures covered by the Hughes patents, rather than following the teachings of the claimed
As to Scott, No. 2011084 and Garfield & Scott, 2030442, they point to the carefully considered opinion of the tenth Circuit Court of Appeals in Williams Iron Works v. Hughes Tool Co., 10 Cir., 109 F.2d 500, 508; in which these patents were examined, and except as to claims 7 and 8 of the Scott patent, were sustained over Fletcher, Hughes and Pickin, mainly relied on here as anticipation.
Finally, pointing to the fact that these are combination patents, that the improved structures made and used under their teachings have greatly contributed to eliminate undue delays and to reduce expenses in drilling, especially in deep wells, they insist that a deliberate infringer seeking to overthrow them must show something more than has been shown here, and that by all the established and accepted tests of the validity of such patents, they are valid. We agree.
As to Scott and Garfield, the three cone bit patent, there is no gainsaying that though three cone non interfitting patents had been known for years, but had not been used, Scott & Garfield were the first to discover and develop an interfitting workable three cone bit, that it filled a long felt want and in a very short space of time became Hughes’ most used and biggest seller.
The patents cited as prior art anticipations except Scott 1,480,014 & Hughes 949,540 were all considered in the patent office. In urging the patentability of claims 1, 2, and 3, in their application, Scott and Garfield‘s attorney clearly stated the problem solved in their application. This was that the arrangement of three conical cutters with the teeth interfitting and with rows of teeth arranged so that each row will cut a different track on the bottom of the hole and also leave sufficient support for the cutters so that they will withstand heavy duty. By making the teeth interfit, the cutter shells may be made larger and the shaft may be strong enough. No one claims that any single prior art structure showed this invention.
It will not do, as appellant tries to do, to cull from one and another of the prior patents elements of the combinations in suit. They must show not that some of the elements are present in the prior patents but that the combination is. The evidence as a whole is not sufficient to overcome the presumption attending their granting.
When it comes to thе later patents dealing with the mounting of cutters on a bit head, we find in Williams Iron Works v. Hughes Tool Co., supra, full support for appellee‘s view, that the claims of these patents in suit are valid. There the court set down clearly and correctly the general rules governing the construction of combination patents. There is pointed out as to the first patent, “Scott made a very substantial contribution toward the development of a shaft with antifriction bearings for bit cutters which would operate without lubrication“, and as to this patent and the later one to Garfield and Scott; “Scott and Garfield and Scott succeeded where others failed. Scott conceived a new combination of old elements whereby a new and useful result is obtained. Garfield and Scott conceived a new combination of old elements whereby an old result is obtained in a more facile, economical, and efficient way than in any prior conception or device.” There, summing up in their favor,12 the court sustained claim 6 of the first Scott patent, a
In view of the thoughtful and carefully reasoned nature of that opinion, we conclude that in a suit by one who sets out to infringe by deliberately copying the patented structures of another, comity requires us to follow rather than to reject the opinion of another circuit court of appeals of long and unchallenged standing, especially when the patents have stood without successful challenge for nearly the allotted span of their lives. Cf. Novadel-Agene Corp. v. Tex-O-Kan, 10 Cir., 119 F.2d 764.
In addition, when we consider as to the three patents in suit; their great usefulness to, their uniform use in deep drilling where they operate thousands of feet underground; that they have stood without successful challenge for nearly the allotted span of their lives; and that it is very easy after a discovery to determine that the discovery was obvious, we are of the firm opinion that the presumption following the grant of the patent, aided as it is by long public acceptance and use and the opinion of plaintiff‘s expert, and supported by judicial approval, far outweighs the opinion of defendant‘s expert that because some of the elements of these combination patents are well known, the patents show no novelty and the combinations they represent are anticipated.
We think this takes too narrow a view of the applicable patent law. A combination is patentable though each of its constituent elements was well known in the prior art, if the combination produces a new and useful result and not merely the aggregate of several old results or if it produces an old result in a cheaper or otherwise more advantageous way.
The quotation from Hotchkiss v. Greenwood, 11 How. 248, 13 L.Ed. 683, commonly relied on: “* * * for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were pоssessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.”13 does not mean this. The “any person who has invented or discovered” etc. of
It means no more, though, than that when confronted with a combination producing a materially different or more advantageous result, one must examine the particular change made in the light of the art at the time the device was developed to determine whether inventive skill produced the change or whether only mechanical aptitude was responsible.
In two recent articles in the American Bar Journal, written from opposite standpoints, under the title “Meaning of Infringement in Patent Law“, American Bar
“Judges who have tried many patent cases, who have heard the testimоny of experts, the one affirming the matter to be merely an advance in mechanical steps, the other to be invention of the highest order; the one affirming prior use, the other denying it; the one affirming it to be the flight of genius into new fields, the other, the mere dull trudging of an artisan, know that for a just decision of such causes no objective criteria can be relied on. They well know that there must be in the trier something of the same imaginative response to an idea, something of that same flash of genius that there is in the inventor, which all great patent judges have had, that intuitive brilliance of the imagination, that luminous quality of the mind, that can give back, where there is invention, an answering flash for flash.”14 We think the district judge was this kind of trier. In his brief opinion, concluding: “This is a simple patent and may be understood without expert testimony. Of the two experts used, the plaintiff‘s is the most creditable.” he gave sound reasons for sustaining the patents.
A reading of the brief but clear and convincing testimony of plaintiff‘s expert Payne in connection with the record as a whole, leaves us in no doubt that, though by 1927 this was a crowded art, the patents in suit contributed very materially to deep rotary drilling. Such contributions when made in a crowded art are highly indicative of invention.15 The testimony of Payne,16 at Record 47-48 is most interesting and informative. It is notable, too, that these patents have run the whole of their lives without having been successfully contested. We are of the opinion that in view of the great difficulties and hazards attending rotary drilling at great depths, in view of the complete acceptance of these tools by everyone in the art, including defendants, in view of the fact that the three un-
It is now ordered and adjudged by this Court that the Fletcher patent 1,856,627 having expired pending the appeal, the issues as to it have become moot, the judgment of the District Court is reversed and the complaint dismissed as to it; otherwise, the judgment is affirmed.
SIBLEY, Circuit Judge, (dissenting in part).
The present Hughes Tool Company, and its predecessors of the same name, have for about forty years enjoyed a virtual monopoly in the west in the manufacture and sale of rotary bits for drilling oil and gas wells, maintained by a series of patents, obtained or bought, on such equipment. Most of thе patents have expired and only the last four were involved in this suit. Pending appeal the earliest of the four issued to Fletcher as
The next patent, issued to Scott as
The final patent to Garfield and Scott,
Passing by several patents which show a similar combination, I come to the Three Cones Bit patent above mentioned which we are sustaining. The application was filed April 17, 1932. The drawing (Record p. 324) shows with perfect clarity the exact combination of rollers and balls and the plugged hole to put the balls through. The claims, however, do not assert anything pаtented as to the bearings. But the disclosure, in lines 50 to 60 of the first page says: “We have shown the shaft as recessed adjacent to the head to form a raceway 5, for a row of roller bearings 6. The shaft also has an annular groove to receive the ball bearings which serve to hold the cutter on the shaft. These balls are inserted through a channel through the shaft, said channel being then plugged by a cylindrical plug.” This exactly describes the combination under discussion. On this disclosure as consideration the Three Cone Bit patent was granted. Now on October 28, 1933, the application was filed to patent this very combination and not only in respect of Hughes Three Cone Bit, but all “roller cutters in deep well drills.” The applicants apparently did not on April 17, 1933, think the bearing combination patеntable. It does not seem right to me to go back six months later and apply for another and later patent on part of what was previously disclosed.
But at last the claims here held valid and infringed are certainly too broad. Typical are claims 12, 13, and 14. “12. A cup-shaped roller cutter (i. e. any sort of cone-like cutter) having an internal roller raceway adjacent to its rim, and an internal ball raceway adjacent to its bottom.” “14. A roller cutter bearing having an external roller raceway and an external ball raceway between said roller raceway and the end
SIBLEY
Circuit Judge