Shields v. Halliburton Co.

• Decision Date: 19 February 1982
• Docket Number: No. 80-3729,80-3729
• Citation: 216 USPQ 1066,667 F.2d 1232
• Court: U.S. Court of Appeals — Fifth Circuit
• Parties: C. Nelson SHIELDS, Jr., Trustee, and Advance Engineering, Inc. (an indirect subsidiary of Baker International Corporation), Plaintiffs-Appellees, v. HALLIBURTON COMPANY, Halliburton Services, Brown & Root, Inc. and Brown & Root Marine Operators, Inc., Defendants-Appellants.

Page 1232

667 F.2d 1232

216 U.S.P.Q. 1066

C. Nelson SHIELDS, Jr., Trustee, and Advance Engineering,

Inc. (an indirect subsidiary of Baker

International Corporation), Plaintiffs-Appellees, v. HALLIBURTON COMPANY, Halliburton Services, Brown & Root,

Inc. and Brown & Root Marine Operators, Inc.,

Defendants-Appellants.

No. 80-3729.

United States Court of Appeals, Fifth Circuit.

Feb. 19, 1982.

James E. Cockfield, Kenway & Jenney, Thomas V. Smurzynski, Boston, Mass., Mouton, Roy, Carmouche, Bivins & Hill, Harmon F. Roy, Lafayette, La., John H. Tregoning, James Robert Duzan, Duncan, Okl., for defendants-appellants.

Hubbard, Thurman, Turner, Tucker & Glaser, Robert W. Turner, John P. Pinkerton, Dallas, Tex., for plaintiffs-appellees.

Appeal from the United States District Court for the Western District of Louisiana.

Before CLARK, Chief Judge, GOLDBERG and WILLIAMS, Circuit Judges.

CLARK, Chief Judge:

The defendants in this patent infringement suit appeal from the decision below upholding the validity of Bassett & Olsen reissue patent number RE 28,232 and finding infringement by the defendants. 493 F.Supp. 1376 (W.D.La.1980). We affirm.

The patent in issue pertains to a method of grouting the legs of offshore oil platforms. The history and details of the patent, including descriptive diagrams, are set out fully in the opinion of the district court. The following is a summary of the basic facts.

Many offshore platforms are mounted on cylindrical steel legs, called jackets. To strengthen and secure the mounting, pilings are inserted through the jackets and driven into the ocean floor. The resulting space inside the jacket between the outside of the piling and the inside of the jacket wall is referred to as an annular space, or annulus. In the final part of the process to set the jacket and piling, all water in the annulus is driven out, and the annulus is filled with liquid grout, which hardens and bonds the piling and jacket together. Prior methods had accomplished the dewatering and grouting at an underwater point near the bottom of the jacket. In the method taught by Bassett and Olsen RE 232 all operations are performed above the water line. The annulus is dewatered by sealing the top of the jacket and injecting compressed air to force the water out of the bottom of the jacket. Grout is then pumped into the annulus through a nipple at the top of the jacket. To prevent the sea water from reentering the bottom of the annulus, air pressure is maintained but modulated as the grout is injected so as not to force the grout out of the bottom of the jacket.

This pressure grouting method was first employed by Max Bassett in late 1968 on a McDermott platform. Bassett's initial efforts using the previous, conventional grouting methods had failed, and the idea of using air pressure to dewater the annulus was conceived on the spur of the moment. Some time later Bassett disclosed this procedure to H. W. Olsen, who suggested some additional ideas. One was to use a vibrator attached to the jacket in those instances where it was necessary to break the bond between the bottom of the jacket and the ocean floor so as to permit water to be driven out. Also, Olsen suggested maintaining air pressure not only to prevent the reentry of seawater in the early stage of the procedure, but also to provide a tighter bond between the grout and the jacket wall while the grout was setting. This latter Olsen idea is referred to by the parties as the "constraint" feature, i.e. the grout is constrained by air pressure while setting. Bassett and Olsen filed jointly for a patent on the pressure grouting method in September 1969, which resulted in the issuance of United States Patent No. 3,601,999 on August 31, 1971. Additional applications for this same method containing broader claims resulted in RE 28,232.

In August, 1977, the defendants began using grouting methods which allegedly infringed the patented method and this suit was brought. Following trial the district court found the patent valid and infringed. On appeal, the defendants press two main exceptions to the district court's ruling. First, they contend that the district court violated the "nose of wax" prohibition articulated in White v. Dunbar, 119 U.S. 47, 7 S.Ct. 72, 30 L.Ed. 303 (1886), by giving the patent a narrow construction to find validity over the prior art and then giving it broad construction to find infringement. ¹ Second, they say that the district court erred in according Bassett and Olsen RE 232 the liberal construction due a "pioneer" patent.

The premise for the defendant's "nose of wax" argument is the district court's statement that Bassett working alone on the McDermott platform was a different inventive entity from the subsequent collaboration of Bassett with Olsen. 35 U.S.C. § 102 provides that "a person shall be entitled to a patent unless ...(a) the invention was known or used by others in this country before the invention thereof by the applicant or ... (g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed or concealed it." The district court accepted the defendants' contention that Bassett was "another" as to Bassett and Olsen. However, the district court found that Bassett and Olsen's joint work constituted a sufficient advance over Bassett's individual work to be separately patentable. The defendants assert that what the district court necessarily must have concluded was Olsen's advancing contribution to Bassett's own method was Olsen's "constraint" idea. In other words, the defendants claim that Olsen's "constraint" feature had to be the key to the district court's finding that Bassett and Olsen's work was a patentable advance over the prior work of Bassett alone. The defendants assert that they did not employ Olsen's constraint feature, and that in finding they nevertheless infringed the patent the district court must have ignored Olsen's contribution. They would establish a violation of the nose of wax doctrine by showing Olsen's contribution was the key to the trial court's finding of validity over the prior art, but that his contribution was ignored by the court in finding infringement. Defendants say this violates not only the nose of wax proscription, but also runs afoul of a related maxim: that which infringes, if later, anticipates, if earlier. Peters v. Active Manufacturing Co., 129 U.S. 530, 9 S.Ct. 389, 32 L.Ed. 738 (1889). The defendants claim that, at most, they repeated Bassett's earlier work. If doing so infringed Bassett & Olsen's RE 232, then Bassett's prior work anticipated it, and the patent is invalid.

We agree with the plaintiff that the district court was incorrect in its statement that Bassett's earlier work for which no patent was sought constituted earlier invention or prior art as to Bassett and Olsen. Accordingly defendants' argument, premised on that statement, fails. The trial judge correctly noted the factual distinction between the case at bar in which the "first" inventor, Bassett, never sought a patent himself, and the cases cited by defendants where the first inventor filed for, or received a patent for his own work, and subsequently filed jointly with a collaborator for newer developments. See In re Land and Rogers, 368 F.2d 866 (C.C.P.A.1966); Merry Mfg. Co. v. Burns Tool Co., 206 F.Supp. 53, 57 (N.D.Ga.1962), aff'd, 335 F.2d 239 (5th Cir. 1964); Kendall Co. v. Tetley Tea Co., 89 F.Supp. 897 (D.Mass.1950), aff'd, 189 F.2d 558 (1st Cir. 1951). The district judge found no precedent addressing the type of arguments presented here, and neither have we. Perhaps this is so because if the "first" inventor's initial work for which no patent was sought constitutes an earlier invention as to any subsequent efforts with a collaborator, no valid joint invention would be possible. Theoretically every joint invention would have to be the result of simultaneous inspiration by the collaborators. See Monsanto Co. v. Kamp, 269 F.Supp. 818, 824 (D.D.C.1967).

A leading authority on patent law explains that valid joint invention is possible in our situation, where the major share of the inventive effort is accomplished by one joint inventor working alone prior to the collaboration:

Every machine, before it can be used, must be constructed as well as invented. If one man does all the inventing and another does all the constructing, the first is the sole inventor. But where two or more persons exercised their inventive faculties in the mutual production of a new and useful process, machine, manufacture, composition of matter, or design, those persons are joint inventors thereof, regardless of whether one, or part, or all, or neither of those persons constructed or helped to construct the first specimen of that thing, or performed or helped to perform the first instance of that process. And the fact that one of two joint inventors conceived the best thought that went into the invention does not invalidate the patent issued to them jointly where the claim covers a series of steps or a number of elements in a combination. Nor is a patent to joint inventors invalidated by the fact that one of them only first perceived the crude form of the elements and the possibility of their adaptation to accomplish the result desired. In fact the conception of the entire device may be due to one, but if the other makes suggestions of practical value which assist in working out the main idea and making it operative, or contributes an independent part of the entire invention which helps to create the whole, he is a joint inventor even though his contribution be of minor importance. But if the contribution is the subject of a separate claim in the patent, such person is not a joint inventor.

1 A. Deller, Walker on Patents § 40, at 183 (1964). See Monsanto Co. v. Kamp, 269 F.Supp. at 824.

The cases involving an inventor who first seeks a patent, and then seeks a subsequent...