Hughes Tool Co. v. Owen, 74.

• Decision Date: 30 June 1941
• Docket Number: No. 74.,74.
• Citation: 39 F. Supp. 656
• Parties: HUGHES TOOL CO. v. OWEN et al.
• Court: U.S. District Court — Northern District of Texas

39 F. Supp. 656

HUGHES TOOL CO. v. OWEN et al.

No. 74.

District Court, N. D. Texas, Abilene Division.

June 30, 1941.

Haight, Goldstein & Hobbs, of Chicago, Ill., Wagstaff, Harwell, Douthit & Alvis, of Abilene, Tex., and Andrews, Kelley, Kurth & Campbell, of Houston, Tex., for plaintiff.

Carl P. Springer, of Abilene, Tex., for defendants.

DAVIDSON, District Judge.

This is a patent case. The complainant, Hughes Tool Company, charges an infringement upon a patented drilling bit. The complainant operates a large plant employing some 3,600 persons at Houston, Texas. The defendant is a blacksmith or a welder, employing himself and his son. The drilling bit, sometimes referred to as a rotary bit, contains three pieces of cone-shaped steel, fastened within a partial housing to the end of a drill stem, used in drilling oil wells. The cones have the general shape of a pine burr. There is placed upon them teeth or jagged steel points, and as the bit rotates and the cones revolve, these cones wear away the rock or earth beneath the drill stem and thus make the hole into the earth.

The complainant, Hughes Tool Company, sells the use of these bits to drillers. The life of the teeth is dependent upon the nature of the earth or rock in the hole, and runs from a few hours to much longer periods of time. When the teeth, or steel points, are new and sharp they are more effective. As the teeth become worn and dull, the progress becomes slower until eventually the drill stem is drawn from the hole and the bit removed. The driller can either discard the bit and get another, or he may have the teeth sharpened or retipped. The re-tipping consisted of drawing out the teeth to the original length and sharpness by means of an acetylene torch applied simultaneously to the tooth and a steel rod.

The patents allegedly infringed were the Scott and Wellensick No. 1,647,753 and the Fletcher No. 1,856,627, covering the drilling bit as a whole, but with special reference to the arrangement of the teeth as to position upon the cone.

The question in the case is whether the defendant, in sharpening the teeth, was rebuilding the bit or repairing it. If he was rebuilding it, then he is guilty of an infringement.

There have been some recent decisions bearing upon this question, but the most analytical and complete discussion of the distinction between repair and reconstruction is perhaps contained in the case of Wilson v. Simpson, 9 How. 109, 50 U.S. 109, 122, 13 L.Ed. 66. That case, like the present one, involved a great time and labor saving device. The present patent deals with an oil drilling rotating bit. The Woodworth patent in the Wilson case had to do with the bits in a planing mill. The pioneer would hew his timbers from the trees of the forest. Later a sawmill appeared, crude at first, cutting rough, undressed boards covered with small splinters. The builder had to take a hand plane and dress these splinters from the plank. It was a laborious and slow process, but many of the older homes standing were made of hand-dressed lumber.

About this time there appeared the Woodworth machine. It not only dressed the plank, but it had an appliance that cut a groove in one edge and put a tongue in the other, which made a very air-tight flooring when the tongue was fitted into the groove. The knives, or cutters, for this dressing service, like the rotary bit in the present case, could only be used for a limited period, when they had to be either sharpened or replaced. The court said of the Woodworth patent in the Wilson case:

"The specifications under the general proposition are, that the defendants have substituted other machines for those used by them, before the expiration of the first term of Woodworth's patent. That they have reconstructed Woodworth's entire combination in the frames of their old machines, or supplied an essential constituent part of it, to continue in use those machines. * * *

"It does not follow, when one of the elements of the combination has become so worn as to be inoperative, or has been broken, that the machine no longer exists, for restoration to its original use by the owner who has bought its use. When the wearing or injury is partial, then repair is restoration, and not reconstruction. * * Repairing partial injuries, whether they occur from accident or from wear and tear, is only refitting a machine for use. And it is no more than that, though it shall be a replacement of an essential part of a combination. It is the use of the whole of that which a purchaser buys, when the patentee sells to him a machine; and when he repairs the damages which may be done to it, it is no more than the exercise of that right of care which every one may use to give duration to that which he owns, or has a right to use as a whole. * * *

"The complaint now is, that the defendants, in the use of their old machines, have replaced new cutters for those which were worn out. * * * The right of the assignee to replace the cutter-knives is not because they are of perishable materials, but because the inventor of the machine has so arranged them as a part of its combination, that the machine could not be continued in use without a succession of knives at short intervals. Unless they were replaced, the invention would have been but of little use to the inventor or to others. * * * The inventor cannot complain, if he sells the use of his machine, that the purchaser uses it in the way the inventor meant it to be used, and in the only way in which the machine can be used."

In 20 Ruling Case Law 1159, we find the distinction between repair and reconstruction of a patented article treated in the following language: "Of course, when the substance of a patented article ceases to exist, there can be no right to renew or reconstruct it unless by consent of the patentee, but repairing partial injuries, whether they occur from accident or wear and tear, is only refitting a machine for use. And it is no more than that, though it shall be a replacement of an essential part of a combination. It is the use of the whole of that which a purchaser buys, when the patentee sells to him a machine; and when he repairs the damage which may be done to it, it is no more than the exercise of that right of care which everyone may use to give duration to that which he owns, or has a right to use as a whole."

This distinction is further considered in the case of Morrin v. Robert White Engineering Works, 2 Cir., 143 F. 519, 520: "It was not seriously disputed at the argument that the repair of a single tube would not infringe the claim. It is equally clear that replacing the entire series is an infringement. Between these two extremes lies a debatable ground, the precise limits of which cannot be determined in advance. Whether the bounds of legitimate repair have been exceeded must be determined upon the facts of each case as it is presented. The mere fact that the patentee is able and willing to replace the injured part and make the repair is not alone sufficient to vest in him a monopoly of this work. If the purchaser sees fit to make necessary repairs himself, or employs others for that purpose, he has a right to do so, even though it is shown that he has theretofore been guilty of infringement."

In the case of Goodyear Shoe Machinery Co. v. Jackson, et al., 1 Cir., 112 F. 146, 147, 55 L.R.A. 692, the editor in the...