Pennington v. National Supply Co.

• Decision Date: 08 March 1938
• Docket Number: No. 8540.,8540.
• Citation: Pennington v. National Supply Co., 95 F.2d 291 (5th Cir. 1938)
• Parties: PENNINGTON et al. v. NATIONAL SUPPLY CO.
• Court: U.S. Court of Appeals — Fifth Circuit

95 F.2d 291 (1938)

PENNINGTON et al. v. NATIONAL SUPPLY CO.

No. 8540.

Circuit Court of Appeals, Fifth Circuit.

March 8, 1938.

Jesse R. Stone, of Houston, Tex., for appellants.

Leonard S. Lyon and Lewis E. Lyon, both of Los Angeles, Cal., and J. Vincent Martin, of Houston, Tex., for appellee.

Before SIBLEY, HUTCHESON, and HOLMES, Circuit Judges.

HOLMES, Circuit Judge.

Appellants filed this suit in the District Court seeking an injunction and an accounting against appellee for alleged infringement of patent No. 1,822,710, issued to Harry Pennington on a rotary drilling rig for oil and other deep well drilling. The other appellant, American Well & Prospecting Company, is the sole licensee. The bill was dismissed after a trial on the merits.

The bill alleged the issuance of the patent to Pennington on September 8, 1931, pursuant to his application therefor filed in the Patent Office on December 8, 1925, and the license agreement with the American Well & Prospecting Company under date of November 27, 1928. It further alleged the infringement of the patent by various machines manufactured, sold, and used by appellee, and consequent loss to appellants.

The answer denied the allegations of invention and infringement contained in the bill, and alleged that the claims contained in the patent were anticipated by some 55 prior patents and by various printed publications; that the alleged invention had been in public use and on sale by various parties other than Pennington for more than two years prior to the date of his application; that the alleged invention had been abandoned; that the patent was void in that Pennington unjustly obtained the same upon matters which were the inventions of others; that the claims of the patent were too restricted to cover appellee's device; that the prior art was such that the alleged invention amounted to a mere application of mechanical skill; and that Pennington did not come into court with clean hands, in that, subsequent to the filing of his application, the same was amended and broadened to include matter not embraced within the original application and which was not the invention of Pennington, and on which he was not entitled to a patent.

The basic machine, a rotary drilling device for drilling oil and other deep wells, was old in the art of deep well drilling before Pennington became employed in this field. Such machines consist in a base or frame upon which a circular table is mounted to rotate horizontally. The rotating table moves on bearings between it and the base, and is propelled by power from an outside source communicated to it through a horizontal shaft mounted in the base with a gear which meshes with another fixed to the table. It is provided through an opening in the center with means of gripping the pipe or drill stem to be passed through the same, and to which its rotary motion is thereby transmitted.

The operation of these machines was attended with difficulty because of dirt and grit, always present while the work was in progress, being deposited on the gears and bearings, which nullified the effect of lubrication and caused wear and friction to such an extent that the life of the machine was very short and its operation unreliable. In the year 1918, the Texas Company, in its production department, began the development of an improved drilling machine which was built and put in operation before the end of that year. The important features of the Texas machine were that the drive was through a bevel pinion on the drive shaft and ring gear on the rotating table, so constructed and positioned as to lubricate themselves from a quantity of oil contained in the base of the machine and maintained at a level at which the teeth of the pinion would dip at each revolution, the pinion and gear being inclosed in a dirt-proof housing made up of the base and table together with overlapping rings protruding therefrom, and a main bearing, upon which the table rotated, made up of three friction rings, one attached to the table, one attached to the base, and one between these two which was allowed to run free, this bearing being also inclosed and protected from grit and dirt but being lubricated through openings in the top of the table into which a small quantity of lubricant was introduced at frequent intervals. The operation of the machine was successful to the extent that the Texas Company used it to drill at least three wells from 1919 to 1922. Thereafter, it was decommissioned, and Pennington bought it to remodel and use in his own operations.

Giving him credit for all the changes made in the Texas machine, either by himself or the mechanics employed by him to make or assist in making the changes and repairs, Pennington made the improvements thereon which enabled him to use it in drilling a number of wells. The first step was to replace the friction rings in the bearing between the base and the rotating table with a frictionless cone type taper roller bearing. The frictionless bearing being thicker than the friction rings, the table was raised with reference to the base and correspondingly with reference to the drive shaft mounted thereon, with the result that the drive pinion did not mesh with the ring gear. This required that the bearing in which the drive shaft rotated be raised sufficiently to compensate for the difference in thickness of the friction rings and the roller bearing with cones. To accomplish this, shims, or small strips of metal, were inserted under the supporting edges of the drive shaft bearing to bring the pinion into proper mesh with the ring gear and to bring the shaft into proper alignment. This in turn left an opening under the bearing through which oil placed in the base would flow out before attaining sufficient height to lubricate the pinion. A small plate was fashioned to fit around the drive shaft and close the opening under the bearing whereby a sufficient quantity of lubricant could be retained to supply the pinion and ring gear.

It should be noted that, in raising the drive shaft bearing and in closing the opening thereunder, the capacity of the oil-containing recess was materially increased. Another result of inserting the thicker roller bearing in place of the friction bearing was to raise the under surface of the rotating table so that there was an opening between it and the rim which separated the recess containing the roller bearing from that in which the ring gear rotated. As a result, the oil spray caused by the clash of the teeth of the pinion with the teeth of the ring gear flowed over this rim and lubricated the roller bearing, dispensing with the necessity of openings in the top of the table for this purpose. The only parts of the Texas machine not used by Pennington were the friction rings replaced with the roller bearing. The only parts added were the roller bearing, the shims under the drive shaft bearing, and the oil-retaining plate placed outside the drive shaft bearing and adjacent to the drive shaft.

Pennington used the machine thus reconstructed, and on December 8, 1925, filed his application for a patent, the plans and specifications accompanying the same being the same as those of the Texas machine as modified by Pennington, except for certain mechanical equivalents, and that the drawings and description show an original construction instead of a modification and adaptation. This application followed the usual course in the Patent Office until an interference was declared on the prior applications of Hild and Zilen. In the interference proceeding Pennington claimed to have developed the ideas embodied in his machine as early as 1918, and produced a complete set of drawings made in 1923, and one of a series of drawings which he claimed to have made in 1918. No other...