F.C. Austin Mfg. Co. v. American Wellworks

• Decision Date: 07 October 1902
• Docket Number: 866.
• Citation: 121 F. 76
• Parties: F. C. AUSTIN MFG. CO. v. AMERICAN WELLWORKS.
• Court: U.S. Court of Appeals — Seventh Circuit

121 F. 76

F. C. AUSTIN MFG. CO. v. AMERICAN WELLWORKS.

No. 866.

United States Court of Appeals, Seventh Circuit.

October 7, 1902

C. K Offield and C. C. Linthicum, for appellant.

L. L Bond, for appellee.

This appeal is brought by the defendant, F. C. Austin Manufacturing Company, from a preliminary injunction granted upon bill filed by the American Wellworks, as complainant alleging infringement by the defendant of certain claims of letters patent No. 382,689, issued May 15, 1888, to Matthew T. Chapman, for 'apparatus for sinking wells.' No infringement is asserted in the well boring and sinking machinery used by the defendant, except in its device for clamping and sinking the well tubing, which is alleged to infringe claims 12 and 13 of the patent, namely:

'(12) A rotary clamp adapted to grasp a round article and rotate with the endwise movement of the article clamped, independent of the rotary movement which carries said article around, and having jaws of a circular form, provided with sharp angles, substantially as described.

'(13) A rotary clamp having jaws of a circular form, with sharp angles, adapted to grasp a round article, to rotate with the endwise movement of the article, independent of the rotary movement which carries said article around, in combination with a rotary ring for carrying said clamp, and gearing for driving said ring, substantially as described.'

The validity of these claims is challenged, but the main contention for reversal of the order is that the defendant's rotary clamp does not infringe for the reason that a 'round beaded roll' for grasping the pipe is substituted for the means described in the claims as 'jaws of a circular form, provided with sharp angles.'

Before JENKINS and BAKER, Circuit Judges, and SEAMAN, District Judge

SEAMAN District Judge (after stating the facts as above).

The only question for review on this appeal is whether the discretion of the trial court was improvidently exercised in granting the preliminary injunction. Welsbach Light Company v. Cosmopolitan Incandescent Light Company, 43 C.C.A. 418, 104 F. 83, 85; United States Gramophone Company v. Seamans, 51 C.C.A. 419, 113 F. 745, 749; Stearns-Roger Mfg. Company v. Brown, 52 C.C.A. 559, 114 F. 939, 941.

In the record below, strong grounds were presented for the relief sought, if infringement appeared. Not only had the validity of the patent and of the claims in question been contested and finally adjudicated in another court, but the parties to the present bill were before the court below in other litigation involving both validity and infringement of the same patent and claims. Prior hearings had occurred, resulting in an injunction against an alleged infringement by the defendant pending final hearing. The instant case appeared, therefore, as a second attempt to use a device which might evade the patent, while adopting an equivalent means. The presumptions which run with the patent are thus well fortified by circumstances to entitle the owner to injunctional relief against an infringer. Electric Manufacturing Company v. Edison Electric Light Company, 10 C.C.A. 106, 61 F. 834, 836.

Numerous prior patents are introduced by way of attack upon the validity of the patent in suit, but no device thus shown appears upon its face to be such anticipation of the patent device as calls for consideration, under the rule governing this appeal. The issue thereupon must be reserved for final hearing, aided by such proof as may then be submitted. So that the ruling upon the question of infringement alone remains for review. As the application for an injunction is addressed to the judicial discretion of the court, the order will not be reversed unless it is 'clearly erroneous.' Welsbach Light Co. v. Cosmopolitan Incandescent Light Co., supra. For the exercise of that discretion the rule is well settled in patent cases that the fact of infringement must be clearly established, or, as frequently stated must appear beyond reasonable doubt. Standard Elevator Co. v. Crane Elevator Co., 6 C.C.A. 100, 56 F. 718, 720; Menasha Wood Split Pulley Co. v. Dodge, 29 C.C.A. 508, 85 F. 971, 977; McDowell v. Kurtz, 23 C.C.A. 119, 77 F. 206, 207; Blakey v. National Mfg. Co., 37 C.C.A. 27, 95 F. 136, 137. But the correctness of the order must be considered under the facts and circumstances of the case as presented below, and 'from the same standpoint as that occupied by the court granting it,' and, if its legal discretion 'was not improvidently exercised, we should not disturb its action. ' Duplex Printing Press Co. v. Campbell Printing Press & Mfg. Co., 16 C.C.A. 220, 69 F. 250, 252; Stearns-Roger Mfg. Co. v. Brown, supra.

The defendant's device is a rotary clamp, and identical with that of the patent in purpose, operation, and effect. Both are used in connection with machines for well boring and sinking, and are adapted to sink heavy metal tubes in deep wells, for the various sizes and weight of tube required which range from 4 to 15 inches in diameter, and are frequently 10 to 12 inches. The devices operate alike in grasping the well tube and compelling its continuous rotation, while permitting its movement longitudinally for sinking in the bore. For these objects each is provided with sets of rolls or wheels mounted for rotation, and having 'gripping edges' which serve to bite into the surface of the pipe; thus holding it for continuous downward movement, and causing it to turn with the rotation of a ring which carries the gripping means. The devices differ alone in the number and form of these gripping means, and the form of their gripping edges. In the patent 'two oppositely located sets of wheels' are employed, called 'holding cones' in the specifications. As shown in the drawings, each set consists of two cone-shaped rolls having annular offsets, which present sharp angles for gripping edges; and they are described in the claims as 'jaws of a circular form, provided with sharp angles. ' The means used by the defendant is described by its expert as 'three equidistant radial...