Hughes Tool Co. v. Varel Manufacturing Co.

• Citation: 336 F.2d 61
• Decision Date: 21 September 1964
• Docket Number: No. 20661.,20661.
• Parties: HUGHES TOOL COMPANY, Appellant, v. VAREL MANUFACTURING COMPANY, Inc., Appellee. VAREL MANUFACTURING COMPANY, Inc., Appellant, v. HUGHES TOOL COMPANY, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (5th Circuit)

336 F.2d 61 (1964)

HUGHES TOOL COMPANY, Appellant, v. VAREL MANUFACTURING COMPANY, Inc., Appellee.

VAREL MANUFACTURING COMPANY, Inc., Appellant, v. HUGHES TOOL COMPANY, Appellee.

No. 20661.

United States Court of Appeals Fifth Circuit.

February 12, 1964.

Rehearing Denied September 21, 1964.

Robert F. Campbell, Houston, Tex., Edward A. Haight, Chicago, Ill., Roy H. Smith, Jr., Andrews, Kurth, Campbell & Jones, Houston, Tex., Fred T. Porter, Leachman, Gardere, Akin & Porter, Dallas, Tex., Haight, Simmons & Hofeldt, Chicago, Ill., for Hughes Tool Co.

Robert A. White, Houston, Tex., Morris I. Jaffe, Wm. C. Baker, Dallas, Tex., Baker, Botts, Shepherd & Coates, Houston, Tex., Wynne, McKenzie, Jaffe & Tinsley, Dallas, Tex., for Varel Mfg. Co.

Before BROWN, MOORE^* and GEWIN, Circuit Judges.

JOHN R. BROWN, Circuit Judge.

Reacting as do their brother attorneys in traditional jury trials, Williams v. National Surety Corp., 5 Cir., 1958, 257 F.2d 771, 773, or proctors in the esoteric admiralty area, Ohio Barge Line, Inc. v. Oil Transp. Co., 5 Cir., 1960, 280 F.2d 448, 449, 1961 AMC 375, these patent-solicitor-advocates are here ostensibly asserting legal errors, but actually seeking at our hands a new look at the facts. Only in the most superficial way is there even the remotest possible whisper of a suggestion of difference over a single significant legal principle.¹ What has happened is that all parties have transferred from the District Court to us the whole case in the mistaken, but optimistic, hope that with three heads it will not only turn out differently, the result will be better. But as elsewhere, this does not reckon with the principles behind F.R.Civ.P. 52(a) which commits to trial judges, not us, the important and frequently decisive role of fact finding. We therefore affirm.

This contest, between Hughes,² a long time leader in the field of oil well drilling bits, and Varel,³ the alleged infringer, concerns validity and infringement of patents (a) 2,687,875,⁴ (b) 2,774,571,⁵ and (c) 2,774,570.⁶ The trial Court held (a) valid but uninfringed and held (b) and (c) invalid. Hughes appeals from the holding of noninfringement of (a) and invalidity of (b).⁷ Varel cross appeals from the holding of validity of (a).

The subject matter of the patents in suit is a rotary drill bit designed for more efficient drilling in extremely hard, highly abrasive rock formations. They are primarily directed to rotary drill bits of the type having a roller cone construction. They embody a head, which can be threaded onto the lower end of the drill stem, and three generally conical-shaped cutters mounted on bearings at the lower end of the head. As the drill stem is turned, the cutters roll upon the bottom of the hole being drilled to disintegrate the rock formation. The earth-drilling, if not earth-shaking, Merry Mfg. Co. v. Burns Tool, 5 Cir., 1964, 335 F.2d 239 1964, contribution is the use of rounded, ovoid-shaped cutting elements in the form of hard, wear-resistant compacts which are inserted in the face of, and protrude from, the conical cutter in annular rows. These compacts are an extremely hard, but brittle, material such as sintered tungsten-carbide. These "button" compacts take the place of the billed, chisel-shaped teeth of the traditional roller rock bit. Experience had long proved that in hard, abrasive formations, the useful life of milled cutter bits was often but a few feet, and the rate of penetration very slow. Both in cost of the bits and more so in the cost of time in pulling the drill pipe for removal and renewal of worn bits, the industry had long sought a bit of faster penetration and longer drilling life.

The commercial embodiment of these bits both by Hughes and its competitors has met with great success and industrial acceptance. The bits have not only increased penetration capacity considerably, but also have an average drilling life of four to five times, and, in some cases, eight to ten times, that of the best available previous bit. Ironically, the Patentee's contention of invention beyond the skill of the law's mechanic, rests on the instinctive initial rejection of the bits by practical men in the field. The cones, with rows of hemispherical button-like protrusions, looked ineffectual in contrast to the traditional rock bit with jagged milled cutter teeth. One early customer remarked, "I have got a bit sharper than that in my dull pile."⁸

Attacking validity of (a), Varel asserts two primary contentions. The first is that inserts of hard wear-resistant metals in drill bits had long been recognized. The second, akin to the first, was that the utility of the bit over the general lack of success in prior-art bits was due, not to the round-end form of the insert, but to the improvement of metals and particularly the newer kinds of sintered tungsten-carbide. Joining issue, Hughes asserted that the great discovery was in the form of the button-like insert. This was, to be sure, affirmatively emphasized in the disclosures of the patent and the fact that in all but one of the 11 claims, the outer end of the wear-resistant inserts are described as ovoid or arcuate,⁹ which terminology the specifications then defined precisely.¹⁰

Whatever we might have concluded as a factual matter were we hearing this evidence, we think the Judge's findings more than pass muster under F.R.Civ.P. 52(a). The record seems overwhelming that sintered tungsten-carbide was available for many years. If advances in metallurgy afforded any improvement in its application as possible drill inserts, the evidence is not so convincing as to drive the fact finder to the conclusion that it was the new material, not the shape of it, that counted. Likewise, the evidence was quite ample to show that inserts having chisel, cylindrical, conical or similar ends were not practicable because, in such forms or shapes, the brittle characteristic of tungsten-carbide could not withstand the stress, pressure, and abrasion encountered in drilling operations. To offset this, Varel's theory was that the initial rounded shape of the compacts was of no significance since, in actual operations, the chisel, pointed, conical forms would be rounded off in a short time. This was, of course, a factual matter, and it undertook to establish this through an expert of impressive competence. Persuasive as some of his testimony, demonstration and exhibits may have been, cross examination — as it most always does with any expert — demonstrated enough uncertainty as to many inescapable assumptions and hypotheses that the Judge was not forced to credit this opinion and reject a considerable body of contrary opinion reflected in the testimony and records advanced by Hughes.

We therefore affirm the District Court's judgment upholding the validity of No. 2,687,875.

The claim of infringement of (a) had two aspects. Varel stipulated that certain bits manufactured and sold for a time were almost a "Chinese" copy and that if the patent were valid, the Court should enter an appropriate decree for infringement relief.¹¹ The real controversy turned on whether there was infringement by inserts which, broadly speaking, had a series of angular surfaces. In its brief attacking the holding of noninfringement, Hughes recognizes that the "ends * * * although blunt, were not literally rounded or ovoid." It then went on to describe Varel's modified bits. "In its modified bits, Varel utilized multiple concentric bevels to achieve an insert having the desired degree of bluntness. In cross-section, the ends of such inserts appear as a series of chords of an arc * * *," which as "imperfectly rounded inserts * * * might also be described as chordal-hemispherical."

Since literal infringement is not urged, Hughes relies on the doctrine of equivalents and the colorful language Judge Hutcheson penned for us in Matthews v. Koolvent Metal Awning Co., 5 Cir., 1946, 158 F.2d 37, 38.¹² Likening Varel's imitation to the infringer's unsuccessful effort to get by with an octagonal railroad car under a claim calling for a circular body¹³ and a similar fate from the use of two consecutive chords instead of the curbed saw guides called for in the claim,¹⁴ Hughes insists that for all practical purposes the modified inserts are both the actual and legal equivalent of those called for in this patent. As we pointed out earlier, there is and can be no dispute about what the doctrine of equivalents is or means. Nor do we have much quarrel with the practical similarity of these two compacts. Hughes fails, not because the law as an abstract proposition is against it, or because, from an operational mechanical point of view, there is much difference between the elements. Hughes fails because to get this patent granted and the claims allowed in the first place, it was necessary — in order to overcome the prior art — that this patent offer its own restricted definition of inserts which had ovoid or arcuate ends.

The file wrapper reflects that all of the claims were initially rejected on the cited references, several of which bore a close resemblance to the patentee's proposed structure, the principal difference being in the shape of the protruding ends of the inserts. To meet these objections, the claims were redrawn and resubmitted by a response which...