McCullough Tool Company v. Well Surveys, Inc., No. 6952-6956.

CourtUnited States Courts of Appeals. United States Court of Appeals (10th Circuit)
Writing for the CourtMURRAH, , BREITENSTEIN and HILL, Circuit
Citation343 F.2d 381
Docket NumberNo. 6952-6956.
Decision Date20 April 1965
PartiesMcCULLOUGH TOOL COMPANY, Robert W. Pringle, Kenneth I. Roulston, George M. Brownell and Philip W. Martin, Appellants, v. WELL SURVEYS, INC., and Dresser Industries, Inc., a Corporation, Appellees. McCULLOUGH TOOL COMPANY, Appellant, v. WELL SURVEYS, INC., Appellee. WELL SURVEYS, INC., and Dresser Industries, Inc., Appellants, v. McCULLOUGH TOOL COMPANY, Robert W. Pringle, Kenneth I. Roulston, George M. Brownell and Philip W. Martin, Appellees (two cases). WELL SURVEYS, INC., Appellant, v. McCULLOUGH TOOL COMPANY, Appellee.

343 F.2d 381 (1965)

McCULLOUGH TOOL COMPANY, Robert W. Pringle, Kenneth I. Roulston, George M. Brownell and Philip W. Martin, Appellants,
v.
WELL SURVEYS, INC., and Dresser Industries, Inc., a Corporation, Appellees.

McCULLOUGH TOOL COMPANY, Appellant,
v.
WELL SURVEYS, INC., Appellee.

WELL SURVEYS, INC., and Dresser Industries, Inc., Appellants,
v.
McCULLOUGH TOOL COMPANY, Robert W. Pringle, Kenneth I. Roulston, George M. Brownell and Philip W. Martin, Appellees (two cases).

WELL SURVEYS, INC., Appellant,
v.
McCULLOUGH TOOL COMPANY, Appellee.

Nos. 6952-6956.

United States Court of Appeals Tenth Circuit.

March 17, 1965.

Rehearing Denied April 20, 1965.


343 F.2d 382
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343 F.2d 383
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343 F.2d 384
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343 F.2d 386
R. Welton Whann, Los Angeles, Cal., Richard B. McDermott, Tulsa, Okl., and Edwin A. Oser, Los Angeles, Cal. (Robert M. McManigal and James E. Harrington, Los Angeles, Cal., on the briefs), for McCullough Tool Co., Robert W. Pringle, Kenneth I. Roulston, George M. Brownell and Philip W. Martin
343 F.2d 387

Robert W. Fulwider, Los Angeles, Cal., and Rufus S. Day, Jr., Cleveland, Ohio (Farmer, Woolsey, Flippo & Bailey, Tulsa, Okl., Fulwider, Patton, Rieber & Utecht, Los Angeles, Cal., McAfee, Hanning, Newcomer, Hazlett & Wheeler, Cleveland, Ohio, Anderson, Luedeka, Fitch, Even & Tabin, Chicago, Ill., on the briefs), for Well Surveys, Inc., and Dresser Industries, Inc.

Before MURRAH, Chief Judge, BREITENSTEIN and HILL, Circuit Judges.

HILL, Circuit Judge.

The appeals and cross-appeals in these consolidated cases involve the validity, infringement and misuse, together with the purge of such misuse, of three patents1 owned by Well Surveys, Inc. (hereinafter referred to as WSI), and the validity and infringement of one patent2 owned by Robert W. Pringle, Kenneth I. Roulston, George M. Brownell and Philip W. Martin, which is subject to an exclusive license in favor of McCullough Tool Company. For convenience we will hereinafter refer to all of the latter parties as McCullough. The first case was filed by WSI in the Southern District of Texas and thereafter transferred to the Northern District of Oklahoma. In this suit, WSI charged McCullough Tool Company with infringement of the Bender Reissue, Fearon and Swift patents. McCullough Tool Company answered denying infringement and asserting the usual defenses of invalidity, lack of invention and misrepresentation by the patentees to the Patent Office and defects in the issuance of the Bender Reissue Patent as well as misuse of all three of the patents. In the second case, commenced in the court below by McCullough Tool Company, it alleged that WSI misused the three patents and sought a declaratory judgment of unenforceability, invalidity and non-infringement of such patents. By subsequent amendments to the complaint: Lane-Wells Company was made a party defendant and it and WSI were charged with infringement of the Pringle Patent; Pringle, Roulston, Brownell and Martin were made parties plaintiff; and Dresser Industries, Inc., was substituted for Lane-Wells.

The lower court consolidated the two cases for trial and, after making extensive findings of fact and conclusions of law reported at 199 F.Supp. 374, entered judgment in accordance therewith. In Case Nos. 6952 and 6953, McCullough appeals from those portions of the judgment holding: (1) The Bender Reissue, Fearon and Swift patents to be valid and infringed; (2) the Pringle patent to be valid only when limited to a certain apparatus and, as limited, non-infringed; (3) that WSI had not misused its patents after June 1, 1956, but had purged itself as of that date and was entitled to enforce its patents against infringement subsequent thereto; and (4) denying their motion for a new trial. The appeals and cross-appeals in Case Nos. 6954, 6955 and 6956 by WSI and Dresser are from those portions of the judgment holding: (1) The Pringle patent to be valid even as limited; and (2) WSI had misused its valid patents from June 11, 1940, to June 1, 1956.

The subject matter of the patents in suit relate to a method and apparatus for the logging of oil wells. Radioactivity well logging is the only method for logging an oil well through the casing and the first commercial logging services were offered to the oil industry by WSI and Lane-Wells. The term "radioactivity well logging" was originally applied to methods of detecting and measuring radiation naturally emitted by the formations of the earth around an oil well, but it soon became a generic term and is

343 F.2d 388
now used to designate any well logging in which radiations coming from the formations, whether naturally or artificially produced, are detected and measured. There are various types of radioactivity well logging, including gamma ray logging and neutron logging

We will first consider the validity of the patents in suit and will follow the rule that the findings of the Patent Office, especially when confirmed by the District Court, as they are here, will not be overturned by this court unless clearly infected with error. Johns-Manville Corporation v. Ladd, 117 U.S.App. D.C. 262, 328 F.2d 563. In this Circuit the better practice is to first consider the issue of the validity of a patent and then the issue of infringement. Sears, Roebuck & Co. v. Jones, 10 Cir., 308 F. 2d 705, cert. denied, 371 U.S. 952, 83 S. Ct. 509, 9 L.Ed.2d 501.

Bender Reissue Patent

The Bender Reissue Patent is for a "Subsurface Prospecting Device". It was issued to Lane-Wells on October 18, 1938, as Patent No. 2,133,776. The application and patent states that the invention disclosed therein "* * * relates to a subsurface prospecting device which may be employed to detect the location of radio-active formations and particularly where such formations have been penetrated by a well bore so that the instrument may be passed through the formation and in this manner detect the presence of the formation." The objects of the invention, as stated in the patent, are to: (1) Locate petroleum sands and other radioactive materials by means of detecting the location of secondary emissions therefrom; (2) detect the presence of petroleum sands outside of a well casing in which the instrument is being operated; and (3) lower a radiant energy detecting device into a bore well so that the radiant energy may be recorded at the surface and thereby establish the type of material at a particular depth.

The application for reissuance was filed on October 4, 1940, and it was issued on May 9, 1950, as Patent No. Re. 23,226 to Lane-Wells, which subsequently assigned it to WSI. The stated reason for seeking the reissuance was to obtain new claims 14-21, which cover a subject matter alleged to have been disclosed but not claimed in the original patent. In this connection, the record shows that, while thirteen claims were allowed in the original patent, two claims, 7 and 8,3 were contained in the original application but were cancelled on July 20, 1938. The new claims, 14 through 21, were identical with certain counts of interference then pending in the Patent Office. Bender became a party to that proceeding and ultimately prevailed with the Patent Office holding that the original application disclosed and supported the material covered by the new claims in the reissue application. The record also shows that the two drawings of the Bender device contained in the original application and patent remain unchanged in the reissue patent.

The claims in issue relate to a method and apparatus for measuring radiations emanating from earth formations traversed by a bore hole and thereby to produce a radioactivity log of such subsurface formations. This invention teaches what is known as natural gamma ray logging and involves detecting and measuring the natural radioactivity of formations outside of and around the well casing. It utilizes the fact that earth formations exhibit natural gamma ray activity to a greater or lesser degree depending upon the type of formation, i. e., for example, shales and clays contain larger amounts of gamma ray emitting

343 F.2d 389
materials than do sandstones or limestones. The device used for detecting and measuring the gamma rays may be described as a radiation detector, i. e., Geiger counter, which is contained within a housing or lead cylinder that is lowered into the well by means of a cable. As the cylinder is lowered within the well casing, the radioactive signals produced by the earth formation outside of the well casing are detected by the Geiger counter and transmitted through a conductor located within the cable to the surface where, by means of a mechanical device, they are recorded in correlation with depth to produce an oil well log. This log gives information concerning the lithology of the subsurface formations

McCullough first contends that this patent is invalid because the invention disclosed in the reissue claims in suit is wholly different from that intended to be covered by, or disclosed in, the original patent. A reissue patent, to be valid, must be for the same invention as the original patent. The original and reissue patents are for the same invention where the latter fully describes and claims the very invention intended to be secured by the original patent and describes and claims only those things which were embraced in that invention and where it is not merely suggested in the original but constitutes a part or portion of that invention. The required intention does not appear if the additional matter covered by the reissue is not disclosed in the original patent. It is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification. U. S. Industrial Chemicals v. Carbide and Carbon Chemicals Corp., 315 U.S. 668, 62 S.Ct. 839, 86 L. Ed. 1105; Leishman v. Associated...

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124 practice notes
  • Pennwalt Corp. v. Durand-Wayland, Inc., DURAND-WAYLAN
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 6, 1987
    ...that every element or its substantial equivalent be found in the accused structures. E.g., McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381, 145 USPQ 6 (10th Cir.1965), cert. denied 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851, 148 USPQ 772 (1966); Texas Co. v. Anderson-Prichard Refin......
  • Marvin Glass & Associates v. Sears, Roebuck & Company, Civ. A. No. 68-H-516.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • July 30, 1970
    ...Implement Mfg. Co. v. McLemore, 350 F.2d 244 (5th Cir. 1965) ("clear and satisfactory"); McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381 (10th Cir. 1965), cert. denied, 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966) ("clear, cogent, and satisfactory proof to remove all reasonabl......
  • Monsanto Company v. Rohm & Haas Company, No. 19132.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • January 12, 1972
    ...1204 (7th Cir. 1970), cert. den. 401 U.S. 913, 91 S.Ct. 882, 27 L.Ed.2d 812 (1971). See too McCullough Tool Company v. Well Surveys, Inc., 343 F.2d 381, 394 (10th Cir. 1965), cert. den. 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966), rehearing den. 384 U.S. 947, 86 S.Ct. 1452, 16 L.Ed.2......
  • Autogiro Company of America v. United States, No. 50328.
    • United States
    • Court of Federal Claims
    • October 13, 1967
    ...that every element or its substantial equivalent be found in the accused structures. E. g., McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381 (10th Cir. 1965), cert. denied 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966); Texas Co. v. Anderson-Prichard Refining Corp., 122 F.2d 829 ......
  • Request a trial to view additional results
123 cases
  • Pennwalt Corp. v. Durand-Wayland, Inc., DURAND-WAYLAN
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 6, 1987
    ...that every element or its substantial equivalent be found in the accused structures. E.g., McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381, 145 USPQ 6 (10th Cir.1965), cert. denied 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851, 148 USPQ 772 (1966); Texas Co. v. Anderson-Prichard Refin......
  • Marvin Glass & Associates v. Sears, Roebuck & Company, Civ. A. No. 68-H-516.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • July 30, 1970
    ...Implement Mfg. Co. v. McLemore, 350 F.2d 244 (5th Cir. 1965) ("clear and satisfactory"); McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381 (10th Cir. 1965), cert. denied, 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966) ("clear, cogent, and satisfactory proof to remove all reasonabl......
  • Monsanto Company v. Rohm & Haas Company, No. 19132.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • January 12, 1972
    ...1204 (7th Cir. 1970), cert. den. 401 U.S. 913, 91 S.Ct. 882, 27 L.Ed.2d 812 (1971). See too McCullough Tool Company v. Well Surveys, Inc., 343 F.2d 381, 394 (10th Cir. 1965), cert. den. 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966), rehearing den. 384 U.S. 947, 86 S.Ct. 1452, 16 L.Ed.2......
  • Autogiro Company of America v. United States, No. 50328.
    • United States
    • Court of Federal Claims
    • October 13, 1967
    ...that every element or its substantial equivalent be found in the accused structures. E. g., McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381 (10th Cir. 1965), cert. denied 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966); Texas Co. v. Anderson-Prichard Refining Corp., 122 F.2d 829 ......
  • Request a trial to view additional results
1 books & journal articles
  • United States Law and the Proposed Code of Conduct on the Transfer of Technology
    • United States
    • Antitrust Bulletin Nbr. 23-4, December 1978
    • December 1, 1978
    ...of Brulotte have involved morecomplicated factual situations concerning multiple-patentlicenses.InMcCulloughToolCo.v. Well Surveys, Inc., 343 F.2d 381 (10th Cir. 1965), cert. denied, 383 U.S. 933 (1966), thecourt upheld the propriety of a license agreement, entered intovoluntarily, providin......

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