Edward Valves, Inc. v. Cameron Iron Works, Inc.
| Decision Date | 07 February 1961 |
| Docket Number | No. 18111.,18111. |
| Citation | 286 F.2d 933 |
| Parties | EDWARD VALVES, INC., and Rockwell Manufacturing Company, Appellants, v. CAMERON IRON WORKS, INC., Appellee. |
| Court | U.S. Court of Appeals — Fifth Circuit |
COPYRIGHT MATERIAL OMITTED
William A. Strauch, John D. Nies, Washington, D. C., Frank B. Pugsley, Houston, Tex., for appellants.
James B. Simms, Browning, Simms, Hyer & Eickenroht, Houston, Tex., Henry N. Paul, Jr., Philadelphia, Pa., of counsel, for appellee.
Before RIVES, CAMERON and WISDOM, Circuit Judges.
Cameron Iron Works, Inc. seeks injunctive relief and damages for an alleged infringement of its Allen patent, previously held valid in Cameron Iron Works, Inc. v. Stekoll, 5 Cir., 1957, 242 F.2d 17.1 The Allen patent is for a valve used in oil and gas drilling to control the flow of abrasive-laden fluids under high pressure.2 The defendants, Rockwell Manufacturing Co. and its subsidiary, Edward Valves, Inc., counterclaimed but have not appealed from the dismissal of the counterclaim. The patent in suit is patent No. 2,606,740, issued to the plaintiff August 12, 1952, upon application of Herbert Allen filed April 5, 1945. After a trial taking eight days, the district court held the patent valid and held that the defendants-appellants' accused device, a valve manufactured and sold under the trademark "Mudwonder", infringed the plaintiff's claims 1, 2, 4 and 5.3 Cameron Iron Works, Inc. v. Edward Valves, Inc., D.C.S.D.Tex.1959, 175 F. Supp. 423. We affirm.
Before the Allen patent, the use of abrasive-laden fluids in oil drilling presented a serious valve problem: how to maintain an effective seal actuated by upstream fluid pressure, yet at the same time protect the flexible sealing material from damage caused by the gate (the valve closure member that moves up and down to open and close the passage through the valve body thereby controlling fluid flow through the valve). When under high pressure, sometimes as much as several thousand pounds per square inch in drilling deep wells, the sealing material tended to "bulge" into the housing passage and would be sheared off by the gate as it slid past. Allen solved the problem by evolving a novel concept of arranging the elements of the valve and sealing ring.
The patent drawings illustrate two gate valves and a plug valve, but since the accused Mudwonder valve is a gate valve, the discussion in this opinion is confined to gate valves. Basically, a gate valve embodies four essential elements: (1) a conventional housing with a flow passage that connects the pipes leading to and from the valve, (2) a chamber intersecting the flow passage in which the movable valve closure member, or gate, is located; (3) the gate itself, mounted so as to move up and down in the chamber, shutting off the flow when the gate is across the flow passage; and (4) a sealing element to prevent leakage flow around the gate when it is closed. Thus, when the gate is across the flow passage, the valve is closed; when the gate is raised to a position not obstructing the flow passage, the valve is open.
The Allen solution utilizes lip-type seals or rings "of relatively soft yieldable material" surrounding the flow passage and carried by the valve housing on each side of the chamber. These seal rings are two separate and independent composite metal and rubber structures mounted on the body (the lower rigid part of the valve containing the fluid passage that is connected with the pipe line). One is on the upstream side (the side to which fluid under pressure is applied) and one on the downstream side (the outlet or low pressure side toward which fluid tends to flow). Although the valve is capable of use with either end as the inlet, the seal is always effected against the valve closure member around the valve outlet (i. e. on the side away from the greater pressure). The lip seal permits upstream pressure to pass into the valve chamber but compresses the downstream lip, sealing the pressure fluid against flowing out of the valve chamber on the downstream side.
A close similarity plainly exists between the Allen valve and the accused Mudwonder valve in principle, structure, and method of operation. The accused Mudwonder valve, like the Allen valve, has fluid pressure actuated sealing means that do not tend to tear off or be blown past the valve closure member when the gate is being opened or closed. The Mudwonder embodies the same four elements described as essential in an effective gate valve. The Mudwonder valve, like the Allen patent valve, provides its seal on the downstream side of the closure member, by lips that are forced into sealing engagement with the closure member by the upstream pressure in the chamber. Thus, as in the Allen patent, the seal is always on the outlet or downstream side, and the upstream pressure leaks by the lips on the upstream side of the gate and passes into the valve chamber. A difference, however, is that the lips of the Mudwonder valve confronting the gate and engaging it are joined at their lower ends by a crescent-shaped bridge that makes it easier to install the seal ring insert. The bridge also provides a seal against the very bottom of the gate, but it does not change the function of the lips in sealing three fourths of the way around the passage.
The basic issues before us are largely factual. The defendants-appellants, however, specify a large number of alleged errors by the trial judge. They argue vigorously that the sum of these errors made it impossible for the trial judge to reach a proper decision on the merits. We shall, therefore, take up these contentions, or most of them, before discussing the major issues of validity and infringement.
First, defendants contend that the trial judge misinterpreted the earlier litigation by giving the Stekoll case the force of res judicata or estoppel by judgment, precluding his making an independent determination of the validity of the plaintiff's patent. The trial judge did make references to the Stekoll case having upheld the validity of the Allen patent.4
A decision adjudging a patent valid is binding neither as res judicata nor as estoppel by judgment in suits against different parties involving different prior art. Graham et al. v. Cockshutt Farm Equipment, Inc., 5 Cir., 256 F.2d 358. See 3 Walker, Patents, §§ 608-09. Looking at the record as a whole, however, we find that the trial judge did not regard Stekoll as binding on him in this different case. He permitted the introduction of voluminous evidence on the issue of validity of the patent in suit. He made detailed findings distinguishing the Allen patent from the prior art. He gave detailed reasons for his conclusion that the Allen patent was valid. He may have made a bow or a grimace in the direction of Stekoll. That is all he did. The district judge's comprehensive findings and conclusions on the issue of validity are inconsistent with any view except that he reached his own decision, without benefit of res judicata or estoppel by judgment.
The defendants cite certain remarks by the trial judge as indicative of the fact that he was confused as to which valve was the Allen valve, causing him to misinterpret the evidence on the issue of infringement. On the second day of the trial Cameron conducted demonstrations at its plant to enable the trial judge to observe the operation of the valve in the Allen patent. Two days later the trial judge referred to the tested valve as the Mudwonder valve.5 Counsel for the defendants did not correct the mistake.
This is the second time the trial judge has had a long trial over the Allen patent. The record relating to the test shows that he was keenly interested in the test and had a full understanding of the subject. The record as a whole shows that the trial judge scrutinized the evidence closely and was not confused as to the valves. The descriptions of the two valves in the findings of fact show no confusion or misunderstanding in the judge's mind. We consider that the mistake was an inadvertent slip negated by the trial judge's demonstrated knowledge of the identities of the valves.
The defendants argue that the trial judge improperly excluded certain exhibits relating to negotiations between the parties. The exhibits were excluded as privileged communications relating to a proposed settlement. Allegedly, the exhibits establish that during two years of negotiations Cameron made no contention that the Mudwonder valve infringed the Allen patent; that the defendants consistently maintained the Mudwonder valve did not infringe the Allen patent, and advised Cameron accordingly. Exclusion of these exhibits, the argument runs, prevented an adequate defense to Cameron's charge that as early as 1953 the defendants expected Cameron to sue them under the Allen patent. The evidence, it is said, refutes the court's finding that the infringement was "bold, deliberate and wilful."
Cameron learned of the Mudwonder valve when it was first publicly displayed in the spring of 1953. In September 1953, Cameron asserted that the Mudwonder valve was covered by the claims of its pending patent application Serial No. 377,145, filed in the Patent Office August 28, 1953 (not the patent in suit). In January 1954 Cameron offered the defendants an exclusive license to manufacture and sell the Mudwonder valve, and negotiations were continued on this basis until July 1955 when, so the defendants contend, Cameron, for the first time, asserted infringement of the Allen patent.
Acts performed and letters written during attempted settlement negotiations are usually inadmissible. The law favors settlements. A man will hesitate to discuss a settlement if he thinks his words or willingness to settle will be turned against him. Home Ins. Co. of New York v. Baltimore Whse. Co., 1876, 93 U.S. 527, 548, 23 L.Ed. 868; Southern Rwy. Co. v. Madden, 4 Cir., 1956, 235 F.2d 198; 4 Wigmore, Evidence, §...
To continue reading
Request your trial
-
Ab Iro v. Otex, Inc.
...L.Ed.2d 56 (1966); Arnold Pipe Rentals Co. v. Engineering Enterprises, Inc., 350 F.2d 885 (5th Cir.1965); Edward Valves, Inc. v. Cameron Iron Works, Inc., 286 F.2d 933, 944 (5th Cir.), modified on other grounds, 289 F.2d 355 (5th Cir.), cert. denied, 368 U.S. 833, 82 S.Ct. 55, 7 L.Ed.2d 34 ......
-
LAITRAM CORPORATION v. Deepsouth Packing Co.
...Doctrine of File Wrapper Estoppel," Volume L, Journal of the Patent Office Society, 143, 150 (1968). 29 Edward Valves, Inc. v. Cameron Iron Works, Inc., 5 Cir., 1961, 286 F.2d 933. 30 Glikin v. Smith, 5 Cir., 1959, 269 F.2d 641, 651-652. 31 Great Atlantic and Pacific Tea Co. v. Supermarket ......
-
Monsanto Company v. Rohm & Haas Company
...never presumed and a party alleging fraudulent procurement of a patent bears a heavy burden of proof. Edward Valves, Inc. v. Cameron Iron Works, Inc., 286 F.2d 933, 947 (5th Cir. 1961), cert. den. 368 U.S. 833, 82 S.Ct. 55, 7 L.Ed.2d 34.2 "A finding that a patent was procured by fraud or un......
-
Coordinated Pretrial Proceedings in Antibiotic Antitrust Actions, In re
...Inc., 299 F.2d 793, 796 (4th Cir.), cert. denied, 370 U.S. 924, 82 S.Ct. 1566, 8 L.Ed.2d 504 (1962); Edward Valves, Inc. v. Cameron Iron Works, Inc., 286 F.2d 933, 947, modified on other grounds, 289 F.2d 355 (5th Cir.), cert. denied, 368 U.S. 833, 82 S.Ct. 55, 7 L.Ed.2d 34 (1961); Haloro, ......