Ingersoll-Rand Company v. Brunner & Lay, Inc.
| Decision Date | 04 April 1973 |
| Docket Number | No. 72-2026.,72-2026. |
| Citation | 474 F.2d 491 |
| Parties | INGERSOLL-RAND COMPANY, Plaintiff-Appellant-Cross Appellee, v. BRUNNER & LAY, INC., Defendant-Appellee-Cross Appellant. |
| Court | U.S. Court of Appeals — Fifth Circuit |
COPYRIGHT MATERIAL OMITTED
Richard S. Banick, Miami, Fla., John M. Calimafde, New York City, Carl R. Horten, Princeton, N. J., for plaintiff-appellant.
John H. Oltman, Fort Lauderdale, Edward C. Vandenburgh, Arlington Heights, Fla., for defendant-appellee.
Before GODBOLD, DYER and CLARK, Circuit Judges.
Rehearing and Rehearing En Banc Denied April 4, 1973.
Invalidity for obviousness1 is the broad subject of this patent appeal. A subsidiary issue is joined on the trial court's application of the doctrine of file wrapper estoppel. The imitator who was successful in the court below cross-appealed from the court's refusal to award it attorney's fees.2 Because we reverse the trial court's determination of obviousness and its invocation of an estoppel against the patentees, the attorneys' fee issue is eliminated; but the case must be remanded for an accounting.
United States Letters Patent No. 3,424,479 issued to J. D. Ditson and James F. Cantrel, the assignors of the plaintiff, Ingersoll-Rand Company, on a coupling and rod system for rock drills. The present action was instituted to enjoin the defendant, Brunner & Lay, Inc., from manufacturing and marketing a drill rod which was alleged to infringe Claims 4 and 5 of the 479 patent.3 No issue was raised as to the novelty or utility of the device covered by these patent claims.4 Nor is infringement an issue on this appeal.5 The complaint sought injunctive relief against continued infringement and an accounting for damages. Brunner & Lay counterclaimed for declaratory judgment of patent invalidity and sought general relief. Brunner & Lay now contends that Ingersoll-Rand's assignors were guilty of fraud in the procurement of the patent and that the trial court abused its discretion in refusing to allow Brunner & Lay to recover attorneys' fees incurred in defense of the litigation.
A percussion drilling rod, as described in the patent claims, is a thick steel tube usually 10 feet in length and 1½ inches in outside diameter, which forms a connection between a hammer on one end and a bit on the other end in an equipment system used to drill holes into rock formations for the purpose of setting dynamite charges. A simple analysis of the physics of the system discloses that rapid hammer blows are struck on the upper end of the drilling rod, which then drives the bit attached to its lower end into the dense material being drilled. As heavier and more efficient hammers and better bits were developed and deeper hole capacity was required, rods were strengthened and were provided with threaded sections at both ends to facilitate attachment to the hammer and bit and to enable interconnection between drill rods. Modern day drill rods not only transmit the enormous force of the rapid heavy hammer blows to the bit, but also serve to carry a stream of air down their bore and through the center of the bit to blow chips and debris back up and out of the hole.
Technology which brought improvements at the hammer and bit ends, made rod breakage due to metal fatigue and wear of threads the most acute equipment problems in this field. When drill rod breaks occurred the equipment operator either had to abandon the broken rod and bit and start a new hole with new equipment, or he had to retrieve the broken section and recondition or replace it. Rods with worn threads similarly had to be reconditioned or replaced. Prior to the marketing of present patented rod, the two principal solutions were to (1) use rods made of relatively low strength steel, which, while subject to breakage, could be reconditioned at the job site by cutting additional threads; or (2) use rods of high strength treated steel which did not break as often, but could only be reconditioned at a machine shop. Although breakage may occur at any point throughout the length of the rod, most breakage failures and wear outs occured within the threaded areas at the ends.
In May of 1965, J. D. Ditson applied for a patent on a coupling and drill rod system. On January 11, 1966, a continuation-in-part patent application was filed by Ditson and James F. Cantrel with the verified explanation that Cantrel had conceived and reduced a portion of the invention to practice. This joint application eventuated in the grant of the 479 patent to Ditson and Cantrel. The claims in issue here (see footnote 3 above) taught the construction of a drill rod which had a continuous roll-formed thread with a groove in its crest over the entire length of the rod. Illustrative diagrams from the patent grant are appended to this opinion.
Pertinent to the claims involved here, the specifications of the patent provided that among the objects of the invention was to provide a system which would enable the use of high strength rods that could be reconditioned in the field. Other advantages in greater inherent strength and more efficient transmission of energy were said to result from the manner in which the rod and its accompanying coupling member would operate. Specifically, the uniformity of cross-section was described as advantageous in eliminating stress raising factors and possible causes of premature rod failure associated with points of variation in rod cross-section. The process of reconditioning a failed or broken rod was stated to be simplified because it required only the cutting off of the failed or broken portion with a steel saw. This was said to enable the rod manufacturer to initially employ special materials and unusual heat treatment and finishing processes in the fabrication of the rod without consideration of the field reconditioning problems that had previously limited use of such strengthening processes and materials.
Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), blocks out the equation to guide our detailed fact-law analysis of the trial court's conclusion that claims 4 and 5 of the 479 patent were erroneously allowed upon an obvious device.
While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. at 155, 71 S.Ct. at 131, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.
Here the controlling facts are undisputed. Our task is to set them into the formula standard and calculate the result.
The art involved is that of metallurgy, in general, and the formation of steel rods for percussion drilling, in particular.
Early in the history of development of percussion drilling systems, practitioners used a rod constructed of twisted steel which could be sharpened on one end to serve the function of a bit. Many of such twisted rods were commonly twisted throughout the length of the rod. The nearest example is U.S. Patent No. 236,774 issued to Butler, et al in 1881. The diagrams accompanying this patent are set out in the appendix. The specifications of the Butler patent taught that the rod could be initially formed by rolling before being twisted. It was further provided that the spiral form would aid in freeing the hole of chips, and that the uniformity of rod contour and strength would enable the continued use of any unbroken portion either as a bit end or for insertion into the hammer without forging. Other patents covering or describing twisted drill rods are British Patent No. 26810 to Christiansen and U.S. Patent No. 2,733,943 to Nater. However, no twisted drill rods are shown to have taught any twisting process accurate enough to permit the use of the resulting twists for threading to other drill rod sections and no such twisted rods were shown to now be in use in the particular area of percussion drilling here involved.
Drilling rods with threaded sections at each end to accommodate coupling to hammer, bit, and each other were previously patented. An early example is Patent No. Re. 17,557 to Thurston which shows end threading of a sinuous or undulatory contour, designed for use with a straight coupling so as to seat each rod end snugly against its opposite piece. This thread and coupling configuration is similar to that illustrated by Ditson and Cantrel but was specified to extend only for the length of the coupling or a thread width beyond. Nevertheless, both Thurston and the No. 1,952,996 U.S. Patent to Landgraf illustrated threads which extended beyond the length of the coupling. Karlsson had also obtained U.S. Patent No. 3,211,484, which taught the utility of a rod with two separate sections of threads interrupted by an unthreaded interval of the same diameter as the adjacent rod. The diagrams accompanying Karlsson are appended.
The technique of roll-forming threads on regular piping and the technique of applying an external thread throughout the length of a piece of such piping had also been patented to Finch (U.S. No. 2,669,469) and Boyer (No. 1,904,675), respectively. Boyer's diagram is appended. His patent also emphasized the advantage of...
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