Robbins Co. v. Dresser Industries, Inc.

• Decision Date: 27 June 1977
• Docket Number: No. 75-2653,75-2653
• Citation: 554 F.2d 1289
• Parties: The ROBBINS COMPANY, Plaintiff-Appellee, Cross-Appellant, v. DRESSER INDUSTRIES, INC., Defendant-Appellant, Cross-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 1289

554 F.2d 1289

194 U.S.P.Q. 409

The ROBBINS COMPANY, Plaintiff-Appellee, Cross-Appellant, v. DRESSER INDUSTRIES, INC., Defendant-Appellant, Cross-Appellee.

No. 75-2653.

United States Court of Appeals, Fifth Circuit.

June 27, 1977.

Ralph R. Browning, C. James Bushman, Houston, Tex., John K. DeLay, Jr., Dallas, Tex., for defendant-appellant, cross-appellee.

V. Bryan Medlock, Jr., Dallas, Tex., John O. Graybeal, James R. Uhlir, Seattle, Wash., for plaintiff-appellee, cross-appellant.

Appeals from the United States District Court for the Northern District of Texas.

Before TUTTLE, GOLDBERG and CLARK, Circuit Judges.

CLARK, Circuit Judge:

Defendant, Dresser Industries, Inc. (Dresser), appeals from the district court's judgment entered pursuant to a jury's finding that Dresser infringed claims 1, 2, and 4 of U.S. Patent No. 3,220,494 of plaintiff, The Robbins Company (Robbins). We reverse on the ground that Robbins's combination patent, which describes a method of "raise" drilling, is obvious and thus invalid under 35 U.S.C. § 103. ¹

A raise is a "shaft" which connects the surface of the earth or an upper mining tunnel or "level" with a lower mining level. In multi-level mining operations, these connecting shafts provide the lower levels with ventilation, utility line access, water take-off and drainage conduits, permit the conveyance of equipment between two levels and of ore materials toward the surface, and, most importantly, furnish miners with a rescue and escape shaft. This last function distinguishes a raise from the typical vertical or diagonal shaft. Generally a shaft is not considered to be a raise unless it is 36 inches or more in diameter, large enough that a miner may ascend or descend through it. Most raises are 100 yards or more in length.

Invention is the sine qua non of patentability. Dann v. Johnston,425 U.S. 219, 96 S.Ct. 1393, 1397, 47 L.Ed.2d 692 (1976); accord, Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 1536, 47 L.Ed.2d 784 (1976). 35 U.S.C. § 103 provides:

A patent may not be obtained though the invention is not identically disclosed or described or set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

What is obvious within the meaning of § 103 is a question of law, "the resolution (of which) necessarily entails several basic factual inquiries . . .." Sakraida v. Ag Pro, Inc., 425 U.S. at 280, 96 S.Ct. at 1536; accord, Fred Whitaker Co. v. E. T. Barwick Industries, Inc., 551 F.2d 622, 627 (5th Cir. 1977); Yoder Brothers, Inc. v. California-Florida Plant Corp., 537 F.2d 1347, 1379 (5th Cir. 1976), cert. denied, 429 U.S. 1094, 97 S.Ct. 1108, 51 L.Ed.2d 540 (1977); Stamicarbon, N.V. v. Escambia Chemical Corp., 430 F.2d 920, 924 (5th Cir.), cert. denied, 400 U.S. 944, 91 S.Ct. 245, 27 L.Ed.2d 248 (1970). "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." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966).

Once a patent has issued, it is presumed valid, and the burden of establishing its invalidity rests with the party challenging the patent. 35 U.S.C. § 282. Nonetheless, the presumption is not conclusive. Waldon, Inc. v. Alexander Manufacturing Co., 423 F.2d 91, 93 (5th Cir. 1970). It merely shifts the burden of proof to the party attacking the validity of the patent. Reynolds Metal Co. v. Acorn Building Components, Inc., 548 F.2d 155, 160 (6th Cir. 1977); see Parker v. Motorola, Inc., 524 F.2d 518 (5th Cir. 1975), cert. denied, 425 U.S. 975, 96 S.Ct. 2175, 48 L.Ed.2d 799 (1976). Moreover, when the claimed invention is a combination patent, our task is to "scrutinize (such) claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. . . . A patent for a combination which only unites old elements with no change in their respective functions, . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152-53, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950), quoted with approval in, Sakraida v. Ag Pro, Inc., 425 U.S. at 281, 96 S.Ct. at 1537.

Extraction of minerals from the earth is a venerable industry. Despite its lengthy history, mechanization of the mining processes has developed only during the past 100 years. As early as 1938, vertical raises were being driven mechanically with a calyx or "shot" drill in copper mines at Butte, Montana. Use of the shot drill in boring raises was limited, however, because the mechanization of the shot drill causes it to function properly only when boring vertical rather than diagonal raises. Since mining levels must follow the irregular vein of ore being extracted, it is often necessary that a diagonal raise be formed to connect an upper and lower level.

Development of machines for raise drilling was hindered until tungsten carbide was developed. This was the first cutting element or "drill bit" metal which was sufficiently durable to withstand the wear and pressure of boring against hard rock. The other basic engineering problem confronting this area of the industry was the designing of a machine for use within the lower mine levels that could exert adequate thrust to bore a diagonal raise.

When Robbins sought the patent-in-suit in 1962, most raises were still being formed manually in the United States by what is called the "bald" or "drill and blast" method. This method is a highly skilled and extremely dangerous occupation. It entails drilling a hole into the ceiling or "back" of a lower level and wedging a dynamite charge into the hole. After the miner detonates the charge and the dust settles, the miner removes the debris and pries any partially loosened rocks from the resulting cavity or "rock face." A scaffold is erected and then placed directly under the cavity. The miner drills a second hole in the rock face, plants another charge, climbs down and removes the scaffold, detonates the charge, removes the debris, and so it goes. As the raise develops, ventilation of the cavity becomes an increasing problem because hot air causes gases, smoke and fumes, and dust from the blast to remain in the cavity. As a result, only one "drill and blast" can be made on a single shift because of the time required for evacuation of smoke and dust from the cavity. Moreover, prying or "barring down" partially loosened rock from the rock face also becomes a more dangerous procedure as the raise lengthens. Incidents of death resulting from loosened rock falling on miners directly or crushing the scaffold and causing the miner to fall to the lower level were not uncommon.

In early 1962, Robert E. Cannon, one of the inventors of Robbins's patent-in-suit, witnessed an attempt at mechanical raise formation in hard rock. In this process, Cannon saw a Schramm rotary drill used to bore a 16-inch shaft from an upper mine level to a lower level. Progressively larger drilling bits were used to widen the shaft in a series of downward reaming operations. The Schramm drill was in a cantilever position to the drill site: i. e., it was positioned to one side of the hole rather than directly over it. An arm holding the drill string extended outward from the machine, and the drill string extended downward to the drill site. Although the Schramm drill was secured to the floor of the level by several cables, it was unstable and vibrated excessively from the counter-rotation of the drill bit against the hard rock surface. Cannon suggested that the method could be improved by replacing the original drill bit with a larger bit on the drill string at the lower level after the initial "pilot" hole was drilled and then reaming upward to enlarge the diameter of the shaft. Yet even after incorporating his suggestions, the Schramm drill had problems and was unsatisfactory overall.

Cannon subsequently contacted Robbins about developing a new raise drill machine. During design discussions and engineering work at Robbins over the next few months, the invention disclosed and claimed in the patent-at-suit was made, and Robbins filed its patent application on September 19, 1962. Robbins's patent application acknowledged that the basic concept of drilling a pilot hole downwardly followed by up-reaming was old. German patent 648,438, cited in its application, taught this technique but utilized hammer drilling rather than rotary drilling when up-reaming. As filed, Robbins's application principally alleged that the following features were new and inventive: (1) the forming of raises by rotary drilling employing hydraulic thrusting; and (2) emplacing and anchoring the machine's base member on the floor of the upper level shaft from where the raise is to be drilled and then anchoring the machine to the base member.

The concept of placing the base member of the drilling machine directly over the drill site so that it would be in a "substantially surrounding relation" to the axis of the bore hole, that is, directly over the raise site, was not expressed in Robbins's original application. Nor was the function or advantages to be achieved by this configuration discussed.

In early 1965, Japanese Patent 303, issued in 1950, came to the attention of Robbins's patent attorney. It set forth the method of drilling a pilot hole downwardly followed by up-reaming the raise with a rotary drilling technique. Similar to the Schramm drill, the...