Stearns v. Tinker & Rasor

• Decision Date: 24 March 1955
• Docket Number: No. 13634.,13634.
• Citation: 220 F.2d 49
• Parties: Dick E. STEARNS and The D. E. Stearns Company, a partnership composed of Dick E. Stearns and Ellen Belson Stearns, Appellants, v. TINKER & RASOR, a corporation; John Patrick Rasor and Leo H. Tinker, Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

220 F.2d 49 (1955)

Dick E. STEARNS and The D. E. Stearns Company, a partnership composed of Dick E. Stearns and Ellen Belson Stearns, Appellants, v. TINKER & RASOR, a corporation; John Patrick Rasor and Leo H. Tinker, Appellees.

No. 13634.

United States Court of Appeals, Ninth Circuit.

February 7, 1955.

Petition for Modification of Opinion and Rehearing Denied March 24, 1955.

H. Calvin White, William P. Green, Los Angeles, Cal., Ralph R. Browning, James B. Simms, Houston, Tex., for appellants.

John H. Saunders, Los Angeles, Cal., Edward B. Gregg, Henry Gifford Hardy, San Francisco, Cal., for appellees.

Before STEPHENS and CHAMBERS, Circuit Judges, and WALSH, District Judge.

WALSH, District Judge.

Appellants sued appellees in the United States Court, Southern District of California, Central Division, charging by their Second Amended Complaint that appellees had infringed claims 1 and 7 of United States Letters Patent No. 2,332,182¹ (hereinafter "the Stearns patent"), and praying for an injunction, an accounting, and damages. Appellees, by answer, raised the defenses that: the claims in suit were invalid for want of invention and because they do not particularly point out and distinctly claim the invention; the claims in suit were not infringed by appellees; and appellants were barred or estopped from obtaining any relief because of their misuse of the Stearns patent by employing it to exercise a monopoly over unpatented materials. Appellees also filed a counterclaim against appellants predicated upon the affirmative allegations of their answer and praying for (a) a declaratory judgment that the claims in suit were invalid and that appellees had not infringed said claims; (b) an injunction restraining appellants from acts of unfair competition and from asserting the Stearns patent against appellees and their customers; and (c) a judgment against appellants for damages occasioned appellees by appellants' misuse of the Stearns patent. Appellants made answer to the counterclaim and, upon the issues formed by the pleadings outlined above, the cause proceeded to trial before the court sitting without a jury.

Following the trial, the court below filed a memorandum opinion² and, thereafter, made and filed Findings of Fact and Conclusions of Law. Having concluded as a matter of law that claims 1 and 7 of the Stearns patent were invalid for want of invention over the prior art and that, accordingly, appellants' Second Amended Complaint should be dismissed, the court entered its judgment dismissing the Second Amended Complaint upon the merits. No findings or conclusions were made upon the issues of invalidity of the claims because of failure to particularly point out and distinctly claim the invention, or infringement, or misuse of the patent; nor was any judgment entered on the counterclaim and the answer thereto. The appeal here is by appellants from the judgment dismissing the Second Amended Complaint.

The Stearns patent is for an "Insulation Testing Device" and is in the field of what are styled "holiday detectors", devices to detect flaws or "holidays" in the coal tar or asphalt enamel coatings which are applied to steel pipelines prior to their burial in the ground. The need for holiday detectors had its origin in the pipeline industry devoted to the transportation of petroleum products. The tremendous investment in the miles of steel pipe utilized in the industry, buried in the ground, and the fact that the pipe, if unprotected, is subject to rapid deterioration by rusting or electrolysis dictated that every feasible step be taken to protect the pipelines and thereby lengthen their life span. Therefore, at a comparatively early date in the development of the industry, there came into use the practice of coating the pipe, before it was interred, to safeguard it against corrosion. Originally, the coating was applied by hand and imperfectly, with the result that there were "pin holes", "thin spots", and other flaws or breaks — all called "holidays" — in the coating. Holidays would, of course, permit corrosion and, ultimately, leakage at their points of location. Thus was the industry led into efforts toward and a search for improved means of protectively coating pipelines and means of detecting flaws in the coating so that they might be repaired before the pipeline was placed underground. The efforts and the search continued for years, in both directions. Means of protectively coating the pipelines have been improved; but holidays still occur and hence there is still need for detectors. Detectors, too, were discovered and improved, and out of the history of these devices this case arises.

In the matter of holiday detection, visual inspection of the coatings was at first relied upon to detect the flaws, but with highly unsatisfactory results. Then, because the organic material used for coating the pipe is, if sound, a poor conductor of electricity, while a flaw or holiday therein is, relatively speaking, a good conductor of electricity, the possibility of making an electrical inspection of the coated pipe was hit upon. In 1931, there was devised one of the first holiday detectors which made an electrical inspection of pipe coatings. It was a cloth saturated in a brine solution to conduct electricity and connected to the terminals of a battery to supply electric current. The cloth was slung underneath the pipe³ and cords attached to its ends were held by a man standing atop the pipe. As the man walked along the pipe, the cloth was moved along the pipe also; and as the cloth passed over a holiday, the passage of electricity from the cloth electrode through the holiday was registered upon a meter carried by the man and connected to the battery and the cloth electrode. This primitive holiday detector did disclose holidays better than was possible by visual inspection, but it was still very inefficient and efforts to improve the device and its several parts thenceforth engaged the attention and the efforts of the industry. Over the years, improvements and advancements were made in holiday detectors and in the elements which make up such detectors; but one of the large questions in this case is the precise point which had been reached by these improvements and advancements at the time of the advent of the Stearns holiday detector in early 1941.

There is in the record no substantial dispute between the parties as to a great deal of the history of holiday detectors during the decade between the birth of the "brine-soaked cloth plus battery" device and the completion of the Stearns invention. As to the electrode, the first step after the brine-soaked cloth was wire brushes or minute wires⁴ attached to a metal frame semi-circular in shape. A handle to be held by the operator was attached to one end of the semi-circular frame, and inspection of the pipe was made by the operator's passing the electrode along the length of the pipe. Since each such passage of the electrode covered but one-half of the circumference of the pipe, it was necessary, in order to cover the entire circumference, to pass the electrode over the pipe twice. Next came the full circle brush type electrode, constructed by putting together two half-circle brush type electrodes, joined by a hinge at the ends opposite from those to which the handles were attached. During the years under consideration, the brush type electrodes were the most widely used but other types also came into use. One was a copper ring set in a circular steel band but insulated from the band by a ring of reinforced resin. O. C. Mudd built a full circle electrode by joining the ends of a coiled spring. Mudd's electrode was attached by links and chains to a circular steel frame and was moved over the pipe surface by dragging it.

Developments in electrodes were paralleled by developments in other elements of detectors. One aspect of those developments which is pertinent here relates to the manner in which the electrical apparatus supplying current to the electrode was rendered mobile. Originally, such apparatus sat on the ground and was moved forward as the electrode progressed to the limit permitted by its connection to the electrical apparatus. Next, the apparatus was carried by the operator or someone assisting him. Then, the apparatus was placed in a cart or other vehicle and pulled along beside the pipe. Finally, the apparatus was set into a small platform which had wheels attached to it, and the whole arrangement was placed on top of the pipe to be moved by pushing or pulling it along the pipe as a roadway.

In 1934, R. A. Brannon built and used a holiday detector which integrated the platform on wheels to move atop the pipe carrying the electrical apparatus and a full circle brush type electrode. The circular frame of the electrode was rigidly joined by a piece of pipe to the platform containing the electrical apparatus, and as the platform was pushed or pulled the electrode moved also.

Turning again to the electrodes described above, it is not disputed that they had serious shortcomings. The brush type electrodes tended to wear out rapidly. Those attached to frames could not be held steadily at the proper uniform distance from the pipe coating, either because of inability to keep the frame concentrical with the pipe as the frame was in motion or because of variations in the diameter of the pipe. The Mudd coiled spring electrode above described, designed to be dragged along the pipe, tended to separate from the pipe as the "pull" at its several points of connection to the rigid frame became unequal.

The claims of the Stearns patent in suit are for a combination of (1) a platform or carriage on wheels intended to roll along the pipe and to carry the electrical apparatus; (2) an electrode in the form of a coiled spring having its ends secured together to embrace the coated pipe to be tested; and (3) a pusher and contactor, carried by and electrically insulated from the...