Acme Foundry & Machine Co. v. Oil Well Improvements Co.

• Decision Date: 19 November 1924
• Docket Number: No. 6614.,6614.
• Citation: 2 F.2d 530
• Parties: ACME FOUNDRY & MACHINE CO. v. OIL WELL IMPROVEMENTS CO.
• Court: U.S. Court of Appeals — Eighth Circuit

2 F.2d 530 (1924)

ACME FOUNDRY & MACHINE CO. v. OIL WELL IMPROVEMENTS CO.^*

No. 6614.

Circuit Court of Appeals, Eighth Circuit.

November 19, 1924.

James A. Carr, of St. Louis, Mo. (McCune, Caldwell & Downing, and Robert B. Caldwell, all of Kansas City, Mo., and Joseph J. Gravely, of St. Louis, Mo., on the brief), for appellant.

Arthur C. Brown, of Kansas City, Mo. (Stuart, Cruce & Blaud, of Tulsa, Okl., and C. B. Stuart, of Oklahoma City, Okl., on the brief), for appellee.

Before STONE and KENYON, Circuit Judges, and FARIS, District Judge.

FARIS, District Judge.

The appellee herein, as plaintiff below, brought this action against appellant for an injunction, and an accounting for profits, and for treble damages, accruing from an alleged infringement of five claims of a patent for a "casing head" for oil wells, which was issued, on the 21st day of December, 1915, to one Alfred G. Heggem, as patentee and by him duly assigned to plaintiff.

The amended answer of defendant admitted that notice of the alleged infringement had been duly given to it, but denied the validity of the patent in controversy; averring that the same, in the light of the pleaded prior art, is invalid, for that plaintiff's assignor was not the original, first, and sole inventor of the improvements in such patent set out and described. Upon the point of alleged infringement, the answer contented itself with averring a lack of advice as to whether there existed, in the light of the facts, any infringement and demanded, upon that point, strict proof.

Upon the trial the court nisi found that the device constructed and sold by defendant infringed claims 7, 8, 12, 13, and 16 of plaintiff's patent, that the patent is valid and is owned by plaintiff, and entered a decree for an injunction and an accounting before a master for damages accruing to plaintiff, subsequent to November 18, 1916; reserving for decision the question of treble damages, till the coming in of the master's report. Pending the hearing before the master, this appeal was sued out in the conventional mode.

Of the claims of the patent sued on and upheld by the trial court, claim 16 may be taken as typical. This latter claim reads thus:

"A casing head involving a body member having vertically alined passages adapted to permit the passage of the well drilling cable and tools therethrough and also having a laterally opening passage, and a valve member mounted in said body member and movable with respect thereto, said members being adapted to receive a drilling cable between them when said valve is moved to restrain the flow of fluid through the casing head while the drilling tools are in the well, and said valve member having an opening through its side permitting it to engage one side only of the drilling cable as said valve is moved to restrain the flow of fluid through the casing head while the drilling tools are in the well, and said valve member being adapted to close communication between either of said vertically alined passages and the interior of the said body member."

The finding by the trial court of the fact of infringement is scarcely controverted by the evidence, as it was scarcely denied by the answer. The device made by defendant clearly reads on the patent of plaintiff, and so it follows that if plaintiff's patent is valid, the fact of infringement is too plain for further controversy. The sole and decisive question thus left in the case is whether in the light of the prior art pleaded against it, the patent of plaintiff is valid.

In limine, and aiding somewhat in a decision of this controlling question, are the presumptions arising from the grant of the patent, and from the fact that almost at once, after the device made under plaintiff's patent came upon the market, it fell into almost universal use, to the exclusion of practically all other casing heads for oil wells. The courts have, with almost one voice, said that the fact of the issuance of a patent and the fact of popular acclaim, to be deduced from great commercial success, are to be weighed in the balance in favor of validity when validity is questioned. Of course, neither of these things, nor both of them together are conclusive; but in case of doubt, and where the proof of lack of novelty is not clear and convincing, they are to be considered as making for validity in resolving the doubt.

The prior art largely relied on is exemplified by the prior patent of Swank & Thornley for a stop-valve; the prior patent of Palmer, for a casing head of an oil well, and a prior patent to Heggem himself, likewise for a casing head for an oil well, which, however, Heggem had dedicated to the public. Other patents were offered and urged as being within the applicable art, but these all seem so far afield as to deserve only passing notice. Among the latter were a number of casing heads for oil wells, but these, while seeking to solve the problems presented, did so in ways differing so substantially from that in which Heggem, in the patent at bar, undertook to solve them, that no extended reference to them seems worth while. For example, the prior patent of Layne, embodied and described a device whereby two plates, having in each a half-slot to receive the drilling cable, were by a crank, operating certain cogwheels, caused to come together in the well-piping and snugly engage the drilling cable, and at the same time close the opening in the piping. Theoretically, one of the same results was accomplished, as is accomplished by the device of plaintiff, but in a slower, less safe, and more cumbersome way and by means wholly different from that by which plaintiff's device accomplishes such result. Anakin Lock Works v. Dillon Lock Works (C. C. A.) 292 F. 45.

In the Palmer patent, which is that under which defendant claims to manufacture the alleged infringing device, there is used a valve-plug which in shape is similar to the frustum of a cone, but which is not housed at the ends thereof in the casing head structure, but merely passed loosely therethrough and secured at the small end by a nut, to prevent it from slipping out. The bridge of the valve-plug in the Palmer patent is a double bridge equivalently similar to the former Heggem patent. This is necessary, because no other means are provided to secure...