Eastman Oil Well Survey Co. v. Sperry-Sun Well Surveying Co.

• Decision Date: 16 January 1943
• Docket Number: No. 10197.,10197.
• Parties: EASTMAN OIL WELL SURVEY CO. v. SPERRY-SUN WELL SURVEYING CO.
• Court: U.S. Court of Appeals — Fifth Circuit

131 F.2d 884 (1942)

EASTMAN OIL WELL SURVEY CO. v. SPERRY-SUN WELL SURVEYING CO.

No. 10197.

Circuit Court of Appeals, Fifth Circuit.

December 8, 1942.

Rehearing Denied January 16, 1943.

Jack A. Schley, of Dallas, Tex., for appellant.

Ira J. Allen, of Houston, Tex., and George A. Smith, of Philadelphia, Pa., for appellee.

Before HUTCHESON, HOLMES, and McCORD, Circuit Judges.

HUTCHESON, Circuit Judge.

The suit was for infringement of a method claim of one¹ and four method and two apparatus claims of another² patent for orienting and setting whipstocks designed to guide a drilling tool in a definite predetermined direction, e. g., in straightening a crooked bore-hole or deliberately deflecting it in a given direction.

"A whipstock", as appellant's brief described it, "is, broadly speaking, a rotatable wedge with a grooved inclined face, and its purpose is to deflect or change the direction of drilling by guiding the drill bit down its face. It is used to change the course of the well or to direct the bit back to the perpendicular line of the well to straighten the hole. The practice in connection with the use of it has been to first make a preliminary survey of the well bore by means of an instrument, called a single shot or a multiple shot, to determine the degree of inclination from the perpendicular and the direction of inclination. This preliminary survey informs the operator as to the degree of inclination of the well bore and usually the direction of slant with relation to the Earth's magnetic north. For instance, it may be found that the well bore is inclining eight degrees from the perpendicular and is directed fifteen degrees west of north. This survey is made prior to the performance of the method here in controversy. When the drill pipe with the whipstock is lowered into the well and brought to rest the operator does not know in which direction the whipstock is facing, therefore, he must run a second survey; and such survey is the subject matter of this controversy."

The claim was that defendant was infringing these claims by employing a method and device substantially the equivalent of those claimed in plaintiff's patents. The defenses were lack of invention, anticipation, noninfringement, and, as to the Hyer Patent, that he was not the true inventor. The district judge, of the opinion that the patents were valid and infringed, gave judgment accordingly.

Appellant here urging upon us the same contentions it made below, insists that Hyer's admission that he had nothing to do with putting, and did not put, in the patent drawings the figure 4, disclosing the indirect method of obtaining the indications sought, shows that he was not the sole and only inventor and avoids the patent. But its main argument is directed to the issues of anticipation, and therefore lack of invention, and non-infringement. Insisting that the claims of both Palmer and Hyer are anticipated by, and invalid under Straatman³ and Koerner⁴; it argues further that if not so invalid, it must be because they are to be so narrowly construed that defendant's device is not an infringement of them. Appellee concedes, as it must, that neither Palmer nor Hyer were pioneers in the art of orienting and setting whipstocks, a tool well known in the oil well drilling trade. But it insists that its inventions are advancements in the art of such merit that they are entitled to be protected as well against equivalent as against identical devices. It thus at once appears that what is presented here is the familiar picture of claims to an invention not of a pioneer nature, but, if invention at all, representing only a limited advance over earlier disclosures in the same field. Here the claimed infringer seeks to impale plaintiff on the horn of claiming too broadly, and, therefore, because of the prior art, having no patent at all, or on that of having its invention so narrowly defined that, its patent sustained as valid, its suit fails because it is unable to obtain a finding and decree of infringement. An infringement of such patents is not easily made out, since, while in principle the doctrine of equivalence is applicable to them, it is only so when most narrowly circumscribed, Hughes v. Magnolia Petroleum Co., 5 Cir., 88 F.2d 817; Shephard v. Carrigan, 116 U.S. 593, 597, 6 S.Ct. 493, 29 L.Ed. 723. In short, plaintiff in this case, as in so many others like it, finds the going hard, the sledding rough in its efforts to meet defendant's claim on the one hand that its method and device are mechanically, and, therefore, substantially different from and do not infringe plaintiff's method and device, and on the other hand that defendant has but followed the disclosures of earlier patents, and if in doing so it has infringed the claim of plaintiff, then plaintiff's patents are invalid because what infringes, if later, necessarily anticipates if prior, Butex Gas Co. v. Southern Steel Co., 5 Cir., 123 F.2d 954; Johnston Formation Testing Co. v. Halliburton, 5 Cir., 88 F.2d 270; Otis Pressure Control, Inc., v. Guiberson Corp., 5 Cir., 108 F.2d 930; Price-Trawick, Inc., v. Gas Lift Corp., 5 Cir., 101 F.2d 134.

Examining claim 33 of the Palmer patent in the light the governing principles shed on the undisputed facts, it is quite clear that that claim is so broadly stated and so wholly without effective limitations, the words "bearing a known relationship to the whipstock" being wholly without effect as such, as that if allowed, it would give a general monopoly on methods...