Otis Pressure Control, Inc. v. Guiberson Corporation, 9226.
| Decision Date | 15 January 1940 |
| Docket Number | No. 9226.,9226. |
| Citation | 108 F.2d 930 |
| Parties | OTIS PRESSURE CONTROL, Inc., et al. v. GUIBERSON CORPORATION. |
| Court | U.S. Court of Appeals — Fifth Circuit |
Jack A. Schley, of Dallas, Tex., and Robert M. McManigal, of Los Angeles, Cal., for appellants.
Hastings W. Baker, of New York City, and Neth L. Leachman, of Dallas, Tex., for appellee.
Before FOSTER, HUTCHESON, and McCORD, Circuit Judges.
A patent infringement suit, the bill of complaint included a claim of unfair competition on behalf of one of the plaintiffs. The patents relied upon in the bill as originally filed included the two involved in this appeal, to Collins, 1,560,763, for a packing head and blow out preventer, for rotary type well drilling apparatus, issued November 10, 1925; and to MacClatchie, 1,708,316, for a blow out preventer, issued April 9, 1929, and four others.
In the course of the trial, and of the preparation for the appeal, all except the Collins and MacClatchie patents went out of the case. As to Collins the matter was submitted upon Claim 8;1 as to MacClatchie, upon Claims, 3, 4, 10 and 11, defendants denying both infringement and unfair competition, and alleging invalidity of the claims of the patents for anticipation and lack of invention.
After a full trial of the issues, the District Judge upon findings of fact and conclusions of law,2 which support his judgment, entered a final decree adjudging no infringement, no unfair competition. Appellants are here attacking as unsupported by the evidence, both the decree and the findings upon which it rests. Vigorous, sustained, and pressed with confidence as to the issue of patent infringement, the attack upon the issue of unfair competition is mildly, indeed almost feebly, pressed.
Appellee, concerning itself as little with the unfair competition issue as appellants do, vigorously opposes appellants' attack upon the finding of no infringement and, at the same time vigorously counter attacks upon the validity of the plaintiffs' patents. Insisting in short, that if plaintiffs' patents are valid they are valid only within the narrowest limits, and that as so limited, its device does not infringe, appellants launch a sweeping attack upon the patent claims as completely anticipated, as wholly without merit.
Reviewing the findings in the light of the record, and of Rule 52, Rules of Civil Procedure, 28 U.S.C.A. following section 723c, "that findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses," we think it plain that the finding as to unfair competition may not be disturbed, and we pass to a review of the findings on the seriously contested issues of the validity and infringement of the patent claims in suit.
Agreeing, at least as to the claims of infringement involved in this suit, with finding No. 4, that the Collins' patent was a fair anticipation of the MacClatchie patent,3 we take up Claim 8 of the Collins' patent, to inquire as to its validity and whether defendant's device is an infringement of it.
Met on every claim having relevancy to the contest here, with rejections by the examiner on prior patents, the Collins application had hard, but according to appellee, not quite hard enough, sledding in the patent office. Claims 1 to 11 of the application, including of course Claim 7, in combination with 5,4 were rejected on Childs' No. 1,503,476; in view of Taylor's No. 1,151,136, or Rigby's No. 696,747, the Examiner stating "both of whom show split packing and a gland for expanding the packing, there would be no invention in providing Childs with these elements." Thereafter, Claims 1 to 11, were cancelled, and Claim 19 which is Claim 8 of the patent, was allowed. Appellee insists that this claim is not distinguishable from rejected and abandoned Claim 7. Appellants dispute this. Pointing to what it regards as significant differences, they insist that the claims are quite different. The differences mainly relied on are: in Claim 7, the swivel head is required merely "to have a bore of such size as to permit the kelly to pass through it," but in Claim 8, the bore is specifically stated to be "of materially larger diameter than the kelly;" Claim 7 calls for a split packing adapted "to lie within the bore of the swivel head", Claim 8 not only requires that this packing have "a configuration to fit snugly about the kelly", but it also requires that the packing be of such size as "to have a seating" within the materially larger bore, and further, "there being a seat formed within said bore," for the reception of the lower end of the packing. Other claimed points of difference are that Claim 7 was indefinite, whereas Claim 8 was made more definite and necessarily more restrictive than Claim 7.
That there is nothing new or patentable, in a packing head and blow out preventer for rotary type well drilling apparatus, as such, is conceded. Collins in his application declares that he had invented certain new and usable improvements in those devices. It is, therefore, plain that if there is invention here, it is necessarily of a very narrow and limited order, and if the claim of the patent is to avoid the defense of anticipation it must be restricted to a most narrow scope. The District Judge with this in mind concluded that he need not determine the issue of patentability, for considering the narrow scope of plaintiff's patent and the small field, if any, preempted by it defendant's structure, though closely approximating, did not infringe that of plaintiff. Concluding that, limited as plaintiff's patent claim was, there was room enough in the crowded field in which plaintiff's and defendant's devices operated, for them both. He let the matter go at that, and though he had intimated that he thought Collins anticipated by Childs, he refrained from so holding. We do not think that this will do. It is true enough that in regard to matters of which much account is taken in the briefs, configuration of the pressure head, the ability, with the use of defendant's pressure head to draw the collars through the packer without loss of well pressure, and other matters not dealt with in the claim in suit, plaintiff's and defendant's devices are different. It is true, too, that if defendant's testimony is to be believed, its device affords a better practical solution of the difficult problem connected with getting drill pipe out of a well which has been drilled into a high pressure formation. Defendant's pressure head is such that the collars may be drawn through the packer without loss of well pressure,...
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