Chicago Pneumatic Tool Co. v. Hughes Tool Co.

• Decision Date: 12 December 1951
• Docket Number: No. 4153.,4153.
• Citation: 192 F.2d 620
• Parties: CHICAGO PNEUMATIC TOOL CO. v. HUGHES TOOL CO.
• Court: U.S. Court of Appeals — Tenth Circuit

192 F.2d 620 (1951)

CHICAGO PNEUMATIC TOOL CO. v. HUGHES TOOL CO.

No. 4153.

United States Court of Appeals Tenth Circuit.

November 12, 1951.

Rehearing Denied December 12, 1951.

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Floyd H. Crews, New York City (Darby, & Darby, Harvey W. Mortimer, Raymond G. Mullee, all of New York City, Bruce McClelland, Oklahoma City, Okl., and P. H. Lamphere, Denver, Colo., on the brief), for appellant.

George I. Haight and Edward A. Haight, Chicago, Ill. (Robert F. Campbell, Ray L. Smith, Houston, Tex., and Lynn Adams, Oklahoma City, Okl., on the brief), for appellee.

Before PHILLIPS, Chief Judge, and BRATTON and PICKETT, Circuit Circuit Judges.

BRATTON, Circuit Judge.

Hughes Tool Company, hereinafter referred to as Hughes, brought this action against Chicago Pneumatic Tool Company, hereinafter referred to as Pneumatic, alleging infringement of claims 1, 2, and 3 of Fletcher patent No. 1,856,627; of claims 1, 2, and 3 of Scott and Garfield patent No. 1,983,316; of claims 1, 2, and 3 of Scott patent No. 2,011,084; and of claims 4, 6, 8, 12, 13, 14, and 15 of Garfield and Scott patent No. 2,030,442. All of the patents relate to cone drills or cone cutters used in the drilling of deep wells for oil and gas. The defenses interposed to the cause of action pleaded in the complaint were invalidity of the patents, insufficiency of patent markings, noninfringement, misuse of the patents, and laches and estoppel. By counterclaim, Pneumatic alleged infringement on the part of Hughes of claims 1, 3 and 6 of Reed patent No. 1,835,523; of claims 2, 13, 15, 16, 17, and 18 of Reed patent No. 1,865,706; of all claims of Reed patent No. 1,997, 345; of claims 35, 36, 37, and 42 of Reed patent No. 2,047,110; of claims 1, 2, 3, 4, 8, 9, 10, 11, and 12 of Reed patent No. 2,058,624; and of claims 5 and 7 of Reed patent No. 2,065,742. All of these patents likewise relate to cone drills or cone cutters for use in the drilling of deep wells for oil and gas. By reply to the counterclaim, invalidity of the patents and non-infringement were pleaded as defenses. The court found that the respective claims of the several patents pleaded in the complaint were valid; that they had been infringed; that there had not been any insufficiency of patent markings; that there had been no misuse of the patents; and that Hughes was not precluded from recovering on account of laches or estoppel. In respect to the counterclaim, the court found that the respective claims of the several patents pleaded therein had not been infringed; and that if such claims be construed in such manner as to bring the Hughes structures within their scope, they would be invalid for anticipation and lack of invention. The court entered judgment enjoining Pneumatic from continuing its acts of infringement; awarding damages for infringement of the Scott and Garfield patent, the Scott patent, and the Garfield and Scott patent; appointing a master to ascertain and report the amount of such damages; reserving for jury trial later the question of damages for infringement of the Fletcher patent in the event the court should first determine that such patent was valid and had been infringed; and dismissing the counterclaim. 90 F.Supp. 845. Pneumatic appealed.

It is urged with emphasis that the respective claims of the several patents pleaded in the complaint are invalid. This is not the first attack made upon these patents on the ground of invalidity. Every claim involved here has been previously challenged on that ground. Some of them have been sustained by the Court of Appeals of the Fifth Circuit, some have been sustained by this court, and some have been expressly upheld by both courts. Williams Iron Works Co. v. Hughes Tool Co., 10 Cir., 109 F.2d 500; Robertson Rock Bit Co. v. Hughes Tool Co., 5 Cir., 176 F.2d 783, certiorari denied, 338 U.S. 948, 70 S.Ct. 487, 94 L.Ed. 585, petition for rehearing denied, 340 U.S. 923, 71 S.Ct. 355, 95 L.Ed. 666, second petition for rehearing denied, 340 U.S. 939, 71 S.Ct. 487, 95 L.Ed. 678; Williams v. Hughes Tool Co., 10 Cir., 186 F.2d 278, certiorari denied, 341 U.S. 903, 71 S.Ct. 612, 95 L.Ed. 1342, petition for rehearing denied, 341 U.S. 934, 71 S.Ct. 802, 95 L.Ed. 1362, second petition for rehearing denied, 341 U.S. 956, 71 S.Ct. 1013, 95 L.Ed. 1377. In view of the painstaking care with which the question of validity of such claims was considered in the cases to which reference has just been made, there is no need to explore the question anew, patent by patent, or claim by claim. To do so, would merely extend the length of this opinion without serving any useful purpose. But in this connection, one ground of attack upon the Garfield and Scott patent No. 2,030,442, not determined in any of the earlier cases, merits discussion. It is said that this patent is invalid for prior invention as shown in Harrington patent No. 2,000,076. The application for the Harrington patent was filed October 3, 1932, and the patent was issued May 7, 1935. The application for the Garfield and Scott patent was filed October 28, 1933, and the patent was issued February 11, 1936. Pneumatic introduced evidence tending to carry the Harrington invention back to March 15, 1932. But the court found upon evidence adequate to support the finding that Garfield and Scott conceived the invention disclosed and claimed in their patent in the middle of December, 1931; that they reduced it to practice by February 6, 1932; and that they diligently continued development of it until commercial production began in August, 1932. The rule to be applied in a contest between two or more rival inventors whose applications for patent are pending at the same time is that the one who first conceives the invention and exerts reasonable diligence in perfecting it and reducing it to practice is the first inventor. Willard v. Union Tool Co., 9 Cir., 253 F. 48. Since Garfield and Scott conceived their invention prior to the filing of the application for the Harrington patent, or any date of invention claimed for Harrington, they were the original inventors and therefore the patent issued to them is not invalid for prior invention as shown in the Harrington patent. In the light of the previous cases determining that the respective claims in the several patents were valid, supplemented by the views just expressed with respect to Garfield and Scott being prior inventors over Harrington, we have no difficulty in reaching the conclusion that the attack upon the validity of the respective claims of the several patents pleaded in the complaint is without merit.

It was the view of the trial court that the type E bit manufactured and marketed by Pneumatic infringes all of the respective claims of the several patents pleaded in the complaint. Pneumatic concedes that if Scott & Garfield patent No. 1,983,316 is valid, it is infringed. It is argued briefly that the bit does not infringe Scott patent No. 2,011,084, or Garfield & Scott patent No. 2,030,442. But we are unable to share that view. It is clear that the bit responds to the respective claims of these two patents presently in issue. With respect to Fletcher patent No. 1,856,627, claims 1 and 3 each include as an element teeth on the cutters of approximately the same size. The teeth on the type E bit are not substantially uniform or equal in size. Some are approximately twice as long as others. That difference between claims 1 and 3 of the patent and the accused structure is substantial and therefore it cannot be said that the structure infringes such claims. But claim 2 is completely silent in respect to uniformity or sameness in size of the teeth, and the accused structure does infringe that claim. The patent has expired. No question is presented in respect of present or future infringement of it. And since the accused bit did infringe claim 2 during the life of the patent, the rights of the parties on the accounting will be the same as they would be if it infringed all three of the claims. Accordingly, the determination of the trial court that the accused structure infringes claims 1 and 3 is not prejudicial to the rights of Pneumatic and does not warrant disturbance of the judgment on appeal.

Pneumatic contends that Hughes should not prevail for the reason that it has misused the patents on which it relies. The argument in support of the contention is that while in form Hughes leases its drilling devices with title reserved and exacts a commitment on the part of each lessee to return the device when its useful life has ended, the transactions are in reality sales; that after receiving its full reward, Hughes objects to legitimate repair of the devices; and that it has filed numerous suits against others for retipping worn teeth on cones. It is said that in this manner, Hughes has extended the monopoly of the patents beyond their permitted scope. This contention was pressed and rejected in Robertson Rock Bit Co. v. Hughes Tool Co., supra, and in Williams v. Hughes Tool Co., supra. On the authority of those cases, and without reiteration or amplification of that which was said in them, we fail to find merit in the contention.

Pneumatic urges the further contention that Hughes is barred by laches and estoppel from asserting any rights under any of its patents in suit. It is argued that Hughes led Pneumatic to believe that it did not consider the type E bit an infringement of the Hughes patents and would not sue for infringement based upon the manufacture and marketing of such bits; and that in reliance thereon, Pneumatic spent more than $400,000 in the expansion of its facilities for the manufacture of bits of that type. To support the argument that Hughes led Pneumatic to believe that it did not consider the type E bit an infringement of the Hughes patents and would not sue for infringement based upon the manufacture and marketing of such bits, reliance is placed upon certain statements made by...