Foster Cathead Company v. Hasha

• Citation: 382 F.2d 761
• Decision Date: 11 October 1967
• Docket Number: No. 23541.,23541.
• Parties: FOSTER CATHEAD COMPANY, Appellant, v. Malvern M. HASHA and International Tool Company, Inc., Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (5th Circuit)

382 F.2d 761 (1967)

FOSTER CATHEAD COMPANY, Appellant, v. Malvern M. HASHA and International Tool Company, Inc., Appellees.

No. 23541.

United States Court of Appeals Fifth Circuit.

September 11, 1967.

Rehearing Denied October 11, 1967.

Jefferson D. Giller, James F. Weiler, Dudley R. Dobie, Jr., Fulbright, Crooker, Freeman, Bates & Jaworski, Houston, Tex., Royal H. Brin, Jr., Strasburger, Price, Kelton, Martin & Unis, Dallas, Tex., for appellant.

Jack W. Hayden, Coke Wilson, Houston, Tex., John R. Feather, Dallas, Tex., for appellees.

Before BELL, GODBOLD and DYER, Circuit Judges.

DYER, Circuit Judge:

This is a suit for infringement of United States Patent No. 3,144,085, issued August 11, 1964, to Malvern M. Hasha, covering a "Power Spinner Unit for Well Swivels" (commonly known as a kelly spinner) a device used in connection with oil well drilling. Judgment on a jury verdict was entered for appellees¹ holding claims 1, 2, 3, 4, 12, 13, 15, 16 and 17 of the patent valid² and, except for claim 16, infringed.

The evidence involves the problem of adding additional sections of pipe to the drill string in oil well drilling operations. To accomplish this before Hasha conceived the kelly spinner of the patent in suit, it was necessary to screw the kelly (an elongated square piece of pipe at the top of the well string) to the additional pipe by a "spring chain" and "cathead." The spring chain is a length of chain connected to a cable which is wound on the cathead (powered reel). A roughneck manually wraps loops of the chain around the upper end of the additional pipe. When the cathead is rotated by power, it winds the cable onto the reel. This pulls on the chain causing the pipe to rotate and thus screws the pipe onto the kelly. While the cable is pulling the chain off of the pipe, the roughneck must hold the remaining loops of chain tightly against the rotating pipe with his hands to prevent the remaining loops from slipping. The chain must then be held to cause it to rotate the pipe. The chain is often slippery with mud and grease, and if the roughneck's hands slip off the chain, its loose end whips around with dangerous force.

After the section of pipe has been connected to the kelly it must be again rotated by the spinning chain and cathead to connect it with the drill string. To accomplish this, the spring chain is wrapped around the upper end of the pipe in the rotary table. The lower end of the section of pipe is stabbed into the upper end of the pipe projecting from the rotary table. The roughneck throws the wraps of chain from the upper end of the pipe in the rotary onto the lower end of the pipe section. Again, the cathead is turned on and the chain is unwound from the pipe to rotate the kelly and the pipe to thread the two pipe ends together. The roughneck must hold his hands on the chain wrapped around the pipe to prevent the chain from slipping.

The patented kelly spinner is a device, which, when attached to the bottom of the swivel (located at the upper end of the kelly), is used to rotate the kelly to connect it to and disconnect it from drill pipe. This kelly spinner has an upper and lower plate secured together by bolts. These plates have a centrally located opening through them so that they may be slipped over the swivel spindle and the upper plate may be secured by bolts to the swivel housing. A large circular ring gear is fastened to the swivel spindle between these upper and lower plates so that rotation of the ring gear will rotate the swivel spindle and hence the kelly. A motor is secured to the lower plate on one side of the ring gear. The motor turns a gear mounted on a support on a shaft.

When power is supplied to the motor the support moves the gear upwardly to engage and turn the ring gear and hence the spindle and the kelly. When the power is withdrawn from the motor the gear automatically withdraws downwardly from the ring gear to its beginning position and permits the kelly to be turned by the rotary table.

The gear and apparatus for moving the gear upwardly to engage the ring gear when the motor is turned on and to withdraw the gear when the motor is turned off is commonly called a Bendix.

In making connections, the kelly spinner rotates the kelly to connect the threaded lower end of the kelly to the upper end of the additional section of pipe. The lower end of the pipe section is then aligned with the top of the drill string supported in the rotary. The kelly spinner again rotates the kelly to thread the section into the drill string. The kelly is then lowered to seat the kelly bushing in the rotary so that drilling operations may resume. The kelly spinner is designed to rotate the spindle in either a clockwise or counterclockwise direction by the operation of controls.

The accused device is known as Foster's Model 77 kelly spinner. It has a train of three small gears which drive a ring gear. The first and smallest gear is driven by a shaft from the motor. This is always engaged with and rotates the second gear. Under this is a third small gear which is always engaged with teeth on the outside edge of a large ring gear and rotates the latter. Below and extending inside the ring gear is a drag ring carrying several jaws (gripping elements) mounted on pivot posts on the drag ring. Each of these jaws has teeth on one end that are always engaged with teeth on the inside edge of the ring gear. Inside of the drag ring is the swivel spindle.

The motor is activated with the jaws retracted from the spindle and turns the train of small gears which rotate the ring gear clockwise. Friction holds the drag ring stationary during the initial movement of the ring gear and because the jaws are always engaged with teeth in the ring gear this initial movement of the ring gear relative to the drag ring causes these jaws to rotate on their pivots and extend until they contact and grip the spindle. When these jaws have gripped the spindle the force of the ring gear causes the jaws and drag ring to move with the ring gear as a unit in a clockwise direction and turn the spindle in the same direction. The motor is reversible and when its direction of rotation is reversed the jaws retract and are moved free of the spindle and returned to their original position so that they are no longer engaged with the spindle and do not rotate it counter-clockwise. The only way to make the Model 77 spinner rotate the pipe in reverse is to disassemble it, lift out the jaws, turn them over, and reassemble the device.

Foster attacks the jury finding of validity of Hasha's patent contending that if the claims are given the sweeping construction sought by Hasha, then all of them are invalid because of (1) over-claiming, (2) Foster's prior power tong, (3) the Arthur power swivel, or (4) the functionality and indefiniteness of the claims at their only possible point of novelty. Foster further urges that without regard to infringement, claims 1-4, 12 and 13 are invalid because of the Bendix arrangement.

As we shall later point out, the claims of Hasha's patent are embarrassingly broad and we are unwilling to extend his monopoly far beyond the invention. Cf. Edwards v. Johnston Formation Testing Corporation, 5 Cir. 1932, 56 F.2d 49, 50. This pretermits the necessity for an extended discussion of the many pronged attack on validity by Foster premised upon a finding of infringement.

We reject Foster's contention that the claims (including the Bendix arrangement) are invalid due to their functional language,³ because we find the point of novelty is described within sufficiently definable limits, and that therefore the nonnovel elements could be described in terms of function. 35 U.S.C.A. § 112; Bryan v. Sid W. Richardson, Inc., 5 Cir. 1958, 254 F.2d 191, 194; Georgia Kaolin Co. v. Thiele Kaolin Co., 5 Cir. 1955, 228 F.2d 267, 272.

Neither are we persuaded that the Arthur devices anticipated Hasha's kelly spinner. These power swivels are used to turn the drill string and there is no kelly described or claimed in the Arthur patents or devices. In any event, whether Arthur is a complete teaching of a kelly spinner; whether Arthur conceived of the kelly spinner before Hasha, and whether Arthur was diligent between the time he conceived the kelly spinner and the time he reduced it to practice, were all issues that were submitted to and determined by the jury. We cannot say that the verdict in this respect is not supported by the evidence.

It is significant that Hasha's invention was the first to supplant the use of the old spring chain and cathead for connecting the kelly to the drill pipe. It is obvious that the use of the spring chain was a very hazardous operation which had to be repeated every time a section was added to lengthen the drill string as the hole was deepened. The kelly spinner greatly enhanced the safety of oil field operations and was an immediate success. Not later than 1957 Foster recognized the need for a kelly spinner but did not develop its Model 77 spinner until about two years after the Hasha invention was commercialized.

As we said in Samuelson v. Bethlehem Steel Company, 5 Cir. 1963, 323 F.2d 944, 947:

35 U.S.C.A. § 282 provides that

"A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it."

Any reasonable doubt will be resolved against the party alleging the invalidity of a patent. Mumm v. Decker & Sons, 1937, 301 U.S. 168, 171, 57 S.Ct. 675, 81 L.Ed. 983; Cameron Iron Works v. Stekoll, 5 Cir. 1957, 242 F. 2d 17; Jeoffroy Mfg. Co. v. Graham, 5 Cir. 1955, 219 F.2d 511.

Without belaboring the point, the evidence was entirely sufficient to sustain the validity of the patent. The invention revolutionized the operation it was designed to accomplish. While it was a combination of old elements, the improvement was not obvious to persons skilled in the art; and the claims, as we limit them, define a patentable invention over the...