253 F. 48 | 9th Cir. | 1918
The appeal in this case involves the decrees of the court below in two suits for infringements of patents, namely, Willard and Wilson against the Union" Tool Company, and the same plaintiffs against the Oil Well Supply Company and R. H. Herron. _ Both suits are upon patent No. 1,064,270 issued to Willard and Wilcox on June 10, 1913, on an application filed March 11, 1912. _ Submitted with these cases in the court below was the case of Griffin et al. v. Wilson et al., upon patent No. 1,067,330, issued
The appellants’ patent is for a well-boring apparatus, and relates to well borers which are provided with rotary tops whereby the rotation of the boring tool and the string' of pipe sections extending from the same is caused; the rig being employed in raising and lowering the boring tool and string in performing the operations incident to drilling. The patent contains two general groups of claims. The second group, which embraces claims 6, 7, 8, and 9, will be first considered. The nature of those claims is fairly represented by claim 6, which is as follows:
“In improvements of tlie character disclosed, the combination with a rotary table and a well-boring string; of a bushing fitting within the table and formed to surround and grip the string and impart rotation from the table thereto; and a member upon the string formed and disposed in a position to engage with said bushing and withdraw the same from the table upon the elevation of of the string.”
The court below found that all of this combination was covered by the patent to Griffin of July 15, 1913, except the last element, the “member upon the string formed and disposed in position to engage with said bushing and withdraw the same from the table upon the elevation of the string,” and held that, although that element was ' not mentioned or claimed in the Griffin patent, it was plainly disclosed therein, and that Griffin had the conception of all the claims involved in the patent in suit at the time of the filing of his application which was prior to the application for the appellants’ patent, and that the .presumption arose therefrom that Griffin had then reduced the same to practice, and held that where the contest is between a patentee or his successors in interest and another person, or his successors in interest, and such other person has been shown to have reduced to practicó the combination claimed prior to the filing date of the application of the patentee, the burden rests upon those suing under the patent to show a reduction to practice prior to that of the alleged infringer, and that, since such reduction to practice was not Shown by the high degree of proof required, it followed that the claims of the Willard and Wilcox patent were void. In brief, the position of the trial court was, not that the combination described in the appellants’ patent did not involve invention and was not patentable, but that Willard and Wilcox were not the first inventors thereof, and that, since Griffin made no claim for that element of the combination -which would have rendered his invention patentable, he thereby relinquished the combination to the public, and all were free thereafter to use it.
The contest here does not arise between two rival patentees. It is not between the owners of the patent to Willard and Wilcox, and a manufacturer under the Griffin patent. It is between the owners of the former patent and persons who are admittedly infringers if the claims of that patent are sustainable. It is not claimed that Willard and Wilcox got from Griffin the idea of their combination, or that they were not original inventors of the same.
“The date of the application, if it describes the invention sufficiently, is conclusive evidence that the invention was made prior to such date.”
On behalf of the appellants, testimony was introduced to show that in the summer of 1911 the Wilson & Willard Manufacturing Company, for thé appellants, had manufactured and sold devices which embodied all the features of the second group of the claims of their patent. The witness Madsen, owner of the Madsen Iron Works, made the castings for those devices, and he testified that they were made of such diameter that the collar on the pipe would lift the bushing when the stem, was raised into the derrick. Fie produced copies of invoices of castings which he made at different periods between May and September of that year. He testified that the first devices made were not so constructed that the bushing would be lifted when the stem was raised, but that during the summer the change was made, and he was positive that it occurred before September, because on the 1st of September he changed his place of business, and in his memory he associated the making of the devices with his former place of business. .E. C. Wilson, the president of the Wilson & Willard Manufacturing Company, testified that one of the devices was so made in the summer of 1911, and that early in the summer it was installed and in operation by the Pacific Eight '& Power Company in the Salt Eake oil field west of Eos Angeles, under the superintendence of M. E- Thorn, and that he saw it there in use. It was in evidence that, at the time of taking the testimony in the case, Thorn was snowbound and inaccessible in the mountains of Nevada, and that, while the case was under submission, the appellants made application for leave to take his testimony, presenting his affidavit in which he deposed that in the summer of 1911, and prior to September he as such superintendent purchased from the appellants and used the rotary well-drilling outfit, with a drive bushing, and that the drive bushing of that outfit was directly engaged and withdrawn by the collar upon the elevation of the drive stem. The application w;as denied for want of diligence, and because the offered testimony was cumulative. W. W. Wilson, vice president of the Wilson & Willard Manufacturing Company, testified that in August, 1911, he saw in use, under the superintendence of M. E- Thorn, a rotary rig containing the appellants’ combination. Charles E. Wilcox, salesman for the Wilson & Willard Manufacturing Company, and one of the patentees, testified that he saw the device in operation by the Pacific Light & Power Company in the spring or summer of 1911, and that it was furnished by the Wilson & Willard Manufacturing Company. Arthur G. Willard, the other patentee, testified that the change in the diameter of the bushing so as to permit it to engage the collar on the stem was made at his direction at the instance of Wilcox from drawings produced by him, and that the first device so made was constructed by the Madsén Iron Works in July, 1911. There was no contradiction of any of this testimony, and it was sufficient we think to , sustain the burden of proof and to show that the Willard and Wilcox invention was reduced to practice two or three months before the date of the Griffin application for patent.
Turning to the other group of claims, we find that -they are founded on a combination of the drive bushing device with certain devices called
*‘Improvements of tlie character disclosed comprising in combination with a. rotary table, a plurality of means of operative connection between the samo and a string and oath formed for separate application to the table in substitution for the other, there being interlocking means effective between one of said means of operative connection and the table whereby the string may be rotated upon rotation .of the table; the other of said means of operative connection being formed and adapted to coact through the table and with slips to sustain the weight of tlie string.”
The combination claims were held void by the court below on the ground that they present an aggregation and not a patentable combination. Said the court:
•'When the slips or wedges aro removed from the opening to allow tlie substitution of the drive bushing or nut, they are removed by hand and laid aside, here or there; far or near, as chance and tlie inclination of the operator may determine* leaving them, for the time, to lie a part neither of this or any other machine, becoming a separate tool to be gone in search of when again needed, recovered, returned, and again placed by hand in the opening before assuming any relation to the rest of tlie machine.”
And the court held that the mere fact that the opening in the table may be formed to accommodate in succession both the drive bushing for rotating the string, and the slips for hauling it up, does not render the table, the stem, the drive bushing, or the slips any part o£ one combination.
“A combination in mechanism must consist of distinct mechanical parts, having some relation to each other, and each having some function in the organism.”
Says Robinson, section 153:
“A combination is an instrument or operation formed by uniting two or more subordinate instruments or operations in a new idea of means.”
Here the elements are not contained in a unitary structure, and the instrument is not formed by uniting two or more subordinate instruments. The device for holding the pipe string in position is a detached instrument which is no part of a machine or manufacture. The manual use of a tool or an unattached movable device cannot, we think, be made an element of a combination claim.
The decree as to claims 1, 2, 3, 4, and 5 is affirmed. As to the other claims, the decree'is reversed, and the cause is remanded for further proceedings.