Rosaire v. Baroid Sales Division, National Lead Co.

• Decision Date: 08 February 1955
• Docket Number: No. 15035.,15035.
• Citation: Rosaire v. Baroid Sales Division, National Lead Co., 218 F.2d 72 (5th Cir. 1955)
• Parties: Esme E. ROSAIRE, Appellant, v. BAROID SALES DIVISION, NATIONAL LEAD COMPANY, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

218 F.2d 72 (1955)

Esme E. ROSAIRE, Appellant, v. BAROID SALES DIVISION, NATIONAL LEAD COMPANY, Appellee.

No. 15035.

United States Court of Appeals, Fifth Circuit.

January 7, 1955.

Rehearing Denied February 8, 1955.

Earl Babcock, Duncan, Okl., Lawrence P. Gwin, Houston, Tex., for appellant.

Harry R. Pugh, Jr., New York City, Frank Burruss Pugsley, Houston, Tex., Henry R. Ashton, New York City, Garrett R. Tucker, Jr., Houston, Tex., Baker, Botts, Andrews & Shepherd, Houston, Tex., of counsel, for appellee.

Before HOLMES and TUTTLE, Circuit Judges, and ALLRED, District Judge.

TUTTLE, Circuit Judge.

In this suit for patent infringement there is presented to us for determination the correctness of the judgment of the trial court, based on findings of fact and conclusions of law, holding that the two patents involved in the litigation were invalid and void and that furthermore there had been no infringement by defendant. 120 F.Supp. 20.

The Rosaire and Horvitz patents relate to methods of prospecting for oil or other hydrocarbons. The inventions are based upon the assumption that gases have emanated from deposits of hydrocarbons which have been trapped in the earth and that these emanations have modified the surrounding rock. The methods claimed involve the steps of taking a number of samples of soil from formations which are not themselves productive of hydrocarbons, either over a horizontal area or vertically down a well bore, treating each sample, as by grinding and heating in a closed vessel, to cause entrained or absorbed hydrocarbons therein to evolve as a gas, quantitatively measuring the amount of hydrocarbon gas so evolved from each sample, and correlating the measurements with the locations from which the samples were taken.

Plaintiff claims that in 1936 he and Horvitz invented this new method of prospecting for oil. In due course the two patents in suit, Nos. 2,192,525 and 2,324,085, were issued thereon. Horvitz assigned his interest to Rosaire.

Appellant alleged that appellee Baroid began infringing in 1947; that he learned of this in 1949 and asked Baroid to take a license, but no license agreement was worked out, and this suit followed, seeking an injunction and an accounting.

In view of the fact that the trial court's judgment that the patents were invalid, would of course dispose of the matter if correct, we turn our attention to this issue. Appellee's contention is that the judgment of the trial court in this respect should be supported on two principal grounds. The first is that the prior art, some of which was not before the patent office, anticipated the two patents; the second is that work carried on by one Teplitz for the Gulf Oil Corporation invalidated both patents by reason of the relevant provisions of the patent laws which state that an invention is not patentable if it "was known or used by others in this country" before the patentee's invention thereof, 35 U.S.C.A. § 102(a). Appellee contends that Teplitz and his coworkers knew and extensively used in the field the same alleged inventions before any date asserted by Rosaire and Horvitz.

On this point appellant himself in his brief admits that "Teplitz conceived of the idea of extracting and quantitatively measuring entrained or absorbed gas from the samples of rock, rather than relying upon the free gas in the samples. We do not deny that Teplitz conceived of the methods of the patents in suit." And further appellant makes the following admission: "We admit that the Teplitz-Gulf work was done before Rosaire and Horvitz conceived of the inventions. We will show, however, that Gulf did not apply for patent until 1939, did not publish Teplitz's ideas, and did not otherwise give the public the benefit of the experimental work."

Appellant poses what it claims to be the main issue as follows: "The main question before the court on this appeal is: Does the earlier experiment by Gulf invalidate the patents in suit? The District Court has held that it does. We contend that it does not."

We shall discuss these points in the order of importance that the parties themselves seem to place on them.

In support of their respective positions, both appellant and appellee stress the language in our opinion in the case of Pennington v. National Supply Co., 5 Cir., 95 F.2d 291, 294, where, speaking through Judge Holmes, we said:

"Appellant insists that the court erred in considering the prior use of the Texas machine, because that machine was abandoned by the Texas Company and was not successful until modified and rebuilt. As to this, it does not appear that the Texas machine was a failure, since it drilled three wells for the Texas Company, which was more than was usually accomplished by the rotary drilling machines then in use.

"An unsuccessful experiment which is later abandoned does not negative novelty in a new and successful device, T. H. Symington Co. v. National Malleable Castings Co., 250 U.S. 383, 386, 39 S.Ct. 542, 63 L.Ed. 1045; Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489, 11 S.Ct. 846, 35 L.Ed. 521. Nevertheless, the existence and operation of a machine, abandoned after its completion and sufficient use to demonstrate its practicability, is evidence that the same ideas incorporated in a later development along the same line do not amount to invention. Corona Cord Tire Co. v. Dovan Chemical Corporation, 276 U.S. 358, 48 S.Ct. 380, 72 L.Ed. 610; Jones v. Sykes Metal Lath & Roofing Co., 6 Cir., 254 F. 91. If the prior machine does not anticipate, it would not have done so if it had been neither unsuccessful nor abandoned. Novelty is ascribed to new things, without regard to the successful and continued use of old things. Correlatively, it is denied to old things, without regard to the circumstances which caused their earlier applications to be unsatisfactory or their use to be abandoned. Cf. Pickering v. McCullough, 104 U. S. 310, 26 L.Ed. 749; Merrimac Mattress Mfg. Co. v. Feldman, C.C., 133 F. 64; Van Epps v. United Box Board & Paper Co., 2 Cir., 143 F. 869."

The question as to whether the work of Teplitz was "an unsuccessful experiment," as claimed by appellant, or was a successful trial of the method in question and a reduction of that method to actual practice, as contended by appellee, is, of course, a question of fact. On this point the trial court made the following finding of fact:

"4.

"I find as a fact, by clear and substantial proof beyond a reasonable doubt, that Abraham J. Teplitz and his coworkers with Gulf Oil Corporation and its Research Department during 1935 and early 1936, before any date claimed by Rosaire, spent more than a year in the

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