Claypool v. HOUSTON OIL FIELD MATERIAL COMPANY

• Decision Date: 03 July 1958
• Docket Number: Civ. A. No. 9688.
• Citation: 166 F. Supp. 173
• Parties: Robbins M. CLAYPOOL and David M. Best, d/b/a Gulf Tool Company, Plaintiffs, v. HOUSTON OIL FIELD MATERIAL COMPANY, Inc., National Instrument Corporation, Weldon L. Medders, Richard E. Golemon and George O'Leary, Defendants.
• Court: U.S. District Court — Southern District of Texas

166 F. Supp. 173

Robbins M. CLAYPOOL and David M. Best, d/b/a Gulf Tool Company, Plaintiffs, v. HOUSTON OIL FIELD MATERIAL COMPANY, Inc., National Instrument Corporation, Weldon L. Medders, Richard E. Golemon and George O'Leary, Defendants.

Civ. A. No. 9688.

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

July 3, 1958.

Hayden & Pravel, Houston, Tex. (Jack W. Hayden and B. R. Pravel, Houston, Tex.), for plaintiffs.

Fulbright, Crooker, Freeman, Bates & Jaworski, Houston, Tex. (James F. Weiler, Austin C. Wilson and Jefferson D. Giller, Houston, Tex.), for defendants.

HANNAY, Chief Judge.

Plaintiffs, Robbins M. Claypool and David M. Best, individually and dba Gulf Tool Company, residents of Harris County, Texas, filed this action against defendants, Houston Oil Field Material Company, Inc. (hereinafter referred to as Homco), a Delaware corporation having a permit to do business in Texas with its principal place of business in Houston, Harris County, Texas, National Instrument Corporation, a Texas corporation no longer in existence, George O'Leary, Weldon L. Medders, both residents of Harris County, Texas and Richard E. Golemon, a resident of Texas, and seek to recover damages for the infringement of claims 5-11 of Letters Patent No. 2,698,761, issued to plaintiffs on January 4, 1955, and pray for injunction against further infringement by said defendants. Plaintiffs also seek damages for the manufacture and sale of infringing devices prior to the issuance of plaintiffs' patent, and allege deliberate and wilful infringement.

Defendants allege that the patent in suit is void and not infringed.

The case came on for trial on plaintiffs' First Amended Complaint and defendants' Answer thereto and counterclaim for declaratory judgment for patent invalidity. The parties agreed that any issue of damages would be established after the trial on the merits as to issues of patent validity and infringement. All other issues were submitted to the Court which here makes and enters the following Findings of Fact and Conclusions of Law:

1.

Robbins M. Claypool and David M. Best are the lawful owners of the patent in suit, No. 2,698,761, issued on January 4, 1955 (Stip. TR A-55).

The Invention

The Problem

2.

A safety joint is a joint which is put in a string of oil well pipe for safety so that the well string can be parted or separated at a preferred point (Best TR 9, 209, 210, Crook 808, 809.)

3.

In August, 1948, plaintiffs began devoting their attention to devising a new type of safety joint to try to overcome the disadvantages and problems encountered with using safety joints offered to the oil industry at that time (Best 2, 3), which disadvantages and problems included:

(a) The connecting means used in safety joints at the time plaintiffs first began working to develop their safety joint was unsatisfactory because such connecting means in many cases would gall and bind and would not operate properly (Best TR 3, 5; Medders TR 592, 593).

(b) The safety joints offered to the oil industry at the time of plaintiffs' invention made it necessary for the industry, or a user, to purchase different types of safety joints, depending upon what the user wanted to do and there was no one safety joint offered to the oil industry which would do many, many different things (Best TR 5, 6, 211, 212).

(c) There was no one safety joint which was constructed and connected so as to prevent premature release and which also could transmit forces longitudinally of the drill string and transmit a twist or torque in the drill string either to the right or to the left while the safety joint was connected (Best TR 6, 7, 211, 212, 216).

(d) Also, plaintiffs wanted to try to provide a safety joint so that there would be no restriction to fluid or to tools that might be run inside of the pipe on which it was supported and which safety joint could be maintained in sealed relationship as the safety joint was manipulated in the well bore (Best TR 6, 206-220; Pl. Ex. 21, page 133).

4.

The problems of safety joints had been prevalent in the oil industry for a number of years and was intensified because the failure of safety joints was the direct cause of fishing operations which were required to remove the inoperative safety joints from well bores (Best TR 3, 5; Pl.Ex. 16 — patent in suit, col. 1, lines 24-36).

5.

Prior to the invention of the patent in suit, there was no safety joint which included a means for connecting the safety joint together to prevent premature release on the one hand, but which connecting means could easily be actuated to release the joint and in which longitudinal and rotational forces could be transmitted through the joint in either direction, while maintaining the safety joint leak proof (Best TR 206-220).

The Claypool-Best Safety Joint of the Patent In Suit Solved The Problems and Achieved Commercial Success

6.

The Claypool-Best safety joint described and claimed in the patent in suit satisfies fully all of the requirements of the problems set forth in findings 3, 4 and 5 above. For example, the patent in suit discloses a safety joint construction that provides a male and female member in abutting (assembled) relation with means connecting the male and female member together to prevent premature release therebetween, but which means can be released without fear of galling or binding (Pl. Ex. 16 — patent in suit, col. 1, lines 28-36; claims 5-11), and a safety joint which is leak proof (patent in suit, col. 1, lines 35-40).

Also, with the safety joint construction disclosed in plaintiffs' patent, it is possible to transmit torque (twist) to either the right or the left, while a longitudinal force is placed on the drill string in which the safety joint is positioned (patent in suit — col. 3, lines 70-77), and there is no restriction to fluid or tools that might be run inside of the pipe (patent in suit, col. 1, lines 39-46).

Also, with the construction of the safety joint described and claimed in plaintiffs' patent, it is possible to transmit longitudinal and rotational forces in either direction of the safety joint, while maintaining the safety joint sealed from inside to outside (Best 206-220) (Patent Office Bd. of Appeals Pl. Ex. 21, page 133).

7.

The defendant, Homco has extensively advertised the safety joint of the invention in the industry and uses the safety joint with its Washover Back-Off Connector tool and Spear tool (Medders 639, 640, 644; Pl. Ex. 20, 71, 72). Defendant Homco has manufactured and sold up to May, 1955, at least 837 safety joints of the type involved in the present lawsuit (Justice TR 1155).

8.

Homco's employee, Golemon, called Homco's employee, Medders, at home in December of 1949 and stated that he wanted a new tool, or safety joint which would get away from the disadvantages of the safety joints then being manufactured by defendant Homco. Defendant Homco at this time was manufacturing the so-called Thurston, Massey and Blondie Reynolds safety joints, all of which were objectionable. Goleman told Medders that there was a market for a new type of safety joint. (Medders TR 593, 594, 649, 650, 676, 1117; Def. Ex. 14).

The Solution was Achieved by the Combination of Elements Recited in the Claims

9.

Claims 5-11 of the Claypool-Best patent 2,698,761 express the novel concept of the Claypool-Best safety joint in terms of the combination of elements recited in the claims, including the structure of the elements and their physical relationship to accomplish the functions recited therein; and said novel concept residing in providing a tool which has a male and female member in abutting (assembled) relation with interlocking means arranged to prevent premature release between the male and female tool parts, and which safety joint can transmit longitudinal and rotational forces in either direction of the well string while, if desirable, maintaining a leak proof safety joint (patent in suit; TR 206-220).

The Prior Art Produced No Satisfactory Solution and Fails to Invalidate the Claypool-Best Patent

10.

Defendants cited 43 patents as allegedly anticipating the invention of plaintiffs' patent and of this number, defendant had enlarged prints of each of the following:

(a) Def. Ex. 14 — Thurston Patent 2,508,306 (assigned to Homco and relating to a threaded type safety joint)

(b) Def. Ex. 15 — Burney Patent 1,523,928

(c) Def. Ex. 18 — Waggener Patent 2,572,895

(d) Def. Ex. 20 — Waggener Patent 2,610,077

(e) Def. Ex. 22a and 22b — Baker Patent 2,228,243

(f) Def. Ex. 24 — Reed Patent 2,309,866.

Defendants' Expert, Mack Crook stated that the above designated exhibits were the most pertinent patents of all the patent references cited by defendant and admitted that the Patent Office at some stage during the lengthy proceedings of plaintiffs' application for patent considered each and every one of the above, except Baker 2,228,243, Reed No. 2,309,866 and Waggener No. 2,610,077 (Crook TR 1004, 1019).

11.

Defendants' Expert did not offer any testimony to try to show that either Baker 2,228,243, Reed 2,309,866 or Waggener 2,610,077 were any more pertinent as references than those patents considered by the Patent Office during the prosecution of plaintiffs' patent and defendants' Expert admitted that individual components such as "J-slots," "Shear pins," and reduced diameters were items which had been shown in the patents considered before the Patent Office during the prosecution of plaintiffs' application for patent (Crook TR 1011, 1012, lines 10-12; 1013, 1014)

(a) Reed 2,309,866

Defendants admitted (Crook TR 1021) that if a well string twists as it is being lowered into the well bore, the alleged "interlock" of the Reed reference would have the danger of prematurely unlocking; therefore, Reed fails to disclose a means to interlock a safety joint as recited in each of claims 5, 6 and 7 of plaintiffs' patent which interlock prevents premature release of the safety joint and...