Swofford v. B & W, INC.

• Decision Date: 08 March 1966
• Docket Number: Civ. A. No. 13564.
• Citation: 251 F. Supp. 811
• Parties: Marvin K. SWOFFORD and Marion F. Wright, individuals, and Pathfinder Oil Tool Co., a corporation, Plaintiffs, v. B & W, INC., Defendant.
• Court: U.S. District Court — Southern District of Texas

251 F. Supp. 811

Marvin K. SWOFFORD and Marion F. Wright, individuals, and Pathfinder Oil Tool Co., a corporation, Plaintiffs, v. B & W, INC., Defendant.

Civ. A. No. 13564.

United States District Court S. D. Texas, Houston Division.

March 8, 1966.

Hayden & Pravel, Jack W. Hayden, Houston, Tex., for plaintiffs.

Lyon & Lyon, R. Douglas Lyon, Los Angeles, Cal., and Arnold & Roylance, Tom Arnold, Houston, Tex., for defendant.

NOEL, District Judge.

Plaintiffs, Marvin K. Swofford, Marion F. Wright, and Pathfinder Oil Tool Co., filed this action against defendant, B & W, Inc., and seek to recover damages for the infringement of Letters Patent No. 2,826,253 and pray for an injunction against further infringement by said defendant.

Defendant alleges that the patent in suit is void and not infringed, and in any event, unenforceable, as plaintiffs come into Court with unclean hands due to their prior misuse of the patent.

Plaintiff Marvin K. Swofford is a resident of Houston, Texas, and plaintiff Marion F. Wright is a resident of Kingsland, Texas. Plaintiff Pathfinder Oil Tool Co. is a Texas corporation with a place of business in Houston, Texas. Defendant B & W, Inc. is a California corporation with a place of business in Houston, Texas. United States Letters Patent No. 2,826,253 were issued to Marion F. Wright and Marvin K. Swofford on March 11, 1958, and Pathfinder Oil Tool Co. is the owner thereof with the right to maintain this action for patent infringement under 35 U.S.C.A. § 281. The jurisdiction of this Court is founded upon 28 U.S.C.A. §§ 1338 and 1400.

By its Memorandum and Order of October 4, 1963, this Court granted plaintiffs' demand for jury trial, at least as to those questions of fact germane to the request for damages: the issues of validity of the patent, infringement thereof, and appropriate damages. See Swofford v. B & W, Inc., D.C., 34 F.R.D. 15. Pursuant to Rule 42(b) of the Federal Rules of Civil Procedure, separate trials of the issues of liability and damages were ordered so as to present counsel the opportunity to first obtain final settlement of the liability issue on appeal before reaching the damages question.

The jury trial on the issues of validity and infringement commenced on March 15, 1965, and the jury returned its verdict on March 25, 1965, finding the patent to be both valid and infringed. The case is now before the Court upon defendant's motion for directed verdict under Rule 50(a), Federal Rules of Civil Procedure; plaintiffs' motion for judgment in accordance with the verdict; and for determination of the equitable defense of unclean hands.

Validity:

Jury answers to interrogatories pertaining to the question of the validity of United States Letters Patent No. 2,826,253 are as follows:

Interrogatory No. 1:

Do you find that defendant has proved by clear and convincing evidence that the combination of old elements defined by the respective claims of the plaintiffs' patent in suit does not produce any unusual or surprising consequence which would not have been expected by a person having ordinary skill in the art and having knowledge of all the prior art as of June 4, 1954?

Answer, "We do" or "We do not," as to each claim as follows:

Claim 1 We do not

Claim 2 We do not

Claim 3 We do not

Claim 4 We do not

Claim 5 We do not

Claim 6 We do not

Claim 7 We do not

Interrogatory No. 2:

If you have answered Interrogatory No. 1 with respect to any claim, in the negative, then specify, describe or identify as to each such claim what new or unusual consequence, or consequences, you find so produced.

As to,

Claim 1 A well bore cleaner with fixed cable loops

Claim 2 means of securing to casing pipe

Claim 3 support member is hollow strip of metal

Claim 4 a predetermined pair of openings for fixed loops being secured to interior of said supporting member

Claim 5 adjacent loop members overlapping and contacting each other

Claim 6 means of securing inner portions against movement relative to support

Claim 7 individual securing means for each loop

Interrogatory No. 3:

Do you find that the defendant has proved by clear and convincing evidence that the patented structure does not produce a new and useful result?

Answer, "We do" or "We do not," as to each claim as follows:

Claim 1 We do not

Claim 2 We do not

Claim 3 We do not

Claim 4 We do not

Claim 5 We do not

Claim 6 We do not

Claim 7 We do not

Interrogatory No. 4:

If you have answered Interrogatory No. 3, with respect to any claim, in the negative, then describe as to each such claim the nature of the new and useful result you find was so produced:

As to:

Claim 1 Less damage to tool on pipe rack

Claim 2 economy and ease of installation

Claim 3 Less damage to tool in well

Claim 4 clean bore in well more efficiently

Claim 5 Better durability

Claim 6 Give good rigidity and flexibility

Claim 7 Stronger uniform loops

Interrogatory No. 5:

Do you find that the defendant has proved by clear and convincing evidence that the assembly of elements defined by any one of the claims of the plaintiff's patent in suit produces no result differing from that produced by Barcal (French) 540,910, which a person of ordinary skill in the art at the time of the claimed invention would not have expected to result from such an assembly?

Answer, "We do" or "We do not," as to each claim as follows:

Claim 1 We do not

Claim 2 We do not

Claim 3 We do not

Claim 4 We do not

Claim 5 We do not

Claim 6 We do not

Claim 7 We do not

Interrogatory No. 6:

If you have answered Interrogatory No. 5, with respect to any claim, in the negative, then specify, describe or identify as to each such claim what differing result you find was so produced.

Claim 1 Fixed cable loops

Claim 2 Means of securing to Casing Pipe

Claim 3 Support member is a hollow strip of metal

Claim 4 A predetermined pair of openings

Claim 5 adjacent loop members contacting each other and held in contact with said supporting member against longitudinal displacement

Claim 6 different means of securing inner portion against movement relative to support

Claim 7 individual securing means by clamps for each loop

Interrogatory No. 7:

Do you find that the defendant has proved by clear and convincing evidence that the assembly of elements defined by any one of the claims of the plaintiffs' patent in suit produce no result differing from that produced by Wright patent 2,634,813, which a person of ordinary skill in the art at the time of the claimed invention would not have expected to result from such an assembly?

Answer, "We do" or "We do not," as to each claim as follows:

Claim 1 We do not

Claim 2 We do not

Claim 3 We do not

Claim 4 We do not

Claim 5 We do not

Claim 6 We do not

Claim 7 We do not

Interrogatory No. 8:

If you have answered Interrogatory No. 7, with respect to any claim, in the negative, then specify, describe or identify as to each such claim what result differing from the Wright patent 2,634,813 you find was so produced.

As to:

Claim 1 Fixed Cable Loops

Claim 2 described means of securing to Casing

Claim 3 Support member is a hollow strip of metal

Claim 4 A predetermined pair of openings

Claim 5 adjacent loop members contacting each other and held in contact with said supporting member against longitudinal displacement

Claim 6 different means of securing loops

Claim 7 Individual securing means of loop

Interrogatory No. 17:

Does the Barcal (French) 540,910 disclose a series of flexible loop-forming members mounted upon a hollow support member with the ends thereof clamped together?

Answer, "Yes" or "No." No

Interrogatory No. 21:

Do you find that the combination defined in the claims of the plaintiff's patent in suit is a combination the structure of which was not obvious as of June 4, 1954 to a man of ordinary skill in the art who had knowledge of all of the prior devices and references?

Answer, "We do" or "We do not" as to each claim as follows:

Claim 1 We do

Claim 2 We do

Claim 3 We do

Claim 4 We do

Claim 5 We do

Claim 6 We do

Claim 7 We do

Interrogatory No. 22:

Do you find that the combination defined in the claims of the plaintiff's patent in suit is a combination the structure of which is anticipated, as that term is defined to you in the charge to the jury, by prior devices and references?

Answer, "We do" or "We do not," as to each claim as follows:

Claim 1 We do not

Claim 2 We do not

Claim 3 We do not

Claim 4 We do not

Claim 5 We do not

Claim 6 We do not

Claim 7 We do not

The ultimate issue of whether a patent meets the requisite standard of invention is a question of law rather than one of fact. Fritz W. Glitsch & Sons, Inc. v. Wyatt Metal and Boiler Works, 224 F.2d 331 (5th Cir. 1955); Little Mule Corp. v. The Lug All Co., 254 F.2d 268 (5th Cir. 1958); Noe v. Smith et al., 300 F.2d 430 (5th Cir. 1962). However, while invention is a question of law, what the prior art was and what the patentee did to improve upon it are questions of fact. National Lead Co. v. Western Lead Products Co., 291 F.2d 447 (9th Cir. 1961); Rohr Aircraft Corp. v. Rubber Teck, Inc., 266 F.2d 613 (9th Cir. 1959). At this point the following language found in Spray-Bilt, Inc. et al. v. Ingersoll-Rand World Trade Ltd., 350 F.2d 99 (5th Cir. 1965), is very pertinent:

"Directing our attention, then, to the validity of the main Anderson patent (hereinafter referred to as Anderson '125) allegedly infringed, we are immediately faced with the `rather severe test' promulgated by the Supreme Court to test patents made up of new combinations of old elements, Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950), i. e., are there `any unusual or surprising consequences from the unification of the elements here concerned? Granted, this test is not an end-all by any means, but it does indicate an approach for determining the validity of combination patents and amounts to a mandate from the Supreme Court `to scrutinize combination patent claims with a care proportioned

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