Skinner Bros. Belting Co. v. Oil Well Improvements Co.

• Decision Date: 24 December 1931
• Docket Number: No. 490.,490.
• Citation: 54 F.2d 896
• Parties: SKINNER BROS. BELTING CO. v. OIL WELL IMPROVEMENTS CO.
• Court: U.S. Court of Appeals — Tenth Circuit

54 F.2d 896 (1931)

SKINNER BROS. BELTING CO. v. OIL WELL IMPROVEMENTS CO.

No. 490.

Circuit Court of Appeals, Tenth Circuit.

December 24, 1931.

Joe T. Dewberry, of Tulsa, Okl. (G. W. Earnshaw, of Joplin, Mo., on the brief), for appellant.

Gilbert P. Ritter, of Washington, D. C. (John A. Haver, of Tulsa, Okl., Ritter, Mechlin & O'Neill, of Washington, D. C., and Randolph, Haver, Shirk & Bridges, of Tulsa, Okl., on the brief), for appellee.

Before COTTERAL and McDERMOTT, Circuit Judges, and POLLOCK, District Judge.

McDERMOTT, Circuit Judge.

The defendant appeals from a decree adjudging claims 1 and 2 of patent to Heggem, 1,175,261, and claims 1, 2, 3, 4, and 12, of Heggem patent 1,256,899 valid and infringed. Both patents involve a device for sealing a drilling oil well so that the drilling cable may operate through the device and at the same time prevent oil from escaping at the mouth of the well.

The validity of the patents, and the range of equivalency accorded them, depends in part upon the prior art. The prior art is sketchy, and, at the time the inventor entered the field, it was not crowded. The merit of these devices was almost immediately recognized by the industry, and very shortly their use became general. These patents were issued in 1916 and 1918, respectively, and it is a fair deduction from the record that considerable capital has been invested on the faith of the grants. Under such circumstances, the defendant must show some clear reason why these grants from the government should be set aside, and the defendant permitted to appropriate the ideas of the inventor. We are of the opinion that the defendant has not met the burden, and that the decree of the trial court was right.

When oil wells are being drilled or swabbed, it is necessary to prevent the escape of oil out of the top of the casing, both to save the oil and to prevent fires. In both operations the wire drilling cable must be free to operate. The earliest device was crude; a sleeve attached to the drilling cable which operated through packing in a stuffing box. But this was not satisfactory, for the reason that when the tools had to be pulled out of the well, the sleeve had to be taken off the cable, or so loosened that it would not prevent the escape of the oil. In 1902, Rigby invented and patented an oil saver (696,747) which in some respects was more satisfactory. To avoid the necessity of a sleeve on the cable, he proposed a device which was clamped to and closed the casing head, save for a slot through which the cable was free to operate. His device was constructed in two equal parts, each semicircular in form, so that it could be taken off the cable, and thus avoid the necessity of threading the cable through it. The cable operated through a stuffing box in which were rubber rings; these rings were compressed vertically by means of a large screw, operated by handles, which was at the top of the device and which likewise was split to encircle the cable. This device avoided some of the troubles of the old "barrel oil saver," but ran into others. The drilling cable was operated by a walking beam; consequently, as the cable worked up and down, it swayed sideways; the result was a constant wear against the sides of the compressing screw; this caused the screw to work loose which required almost continuous adjustment. Again, the vertical compression of the packing reduced the bearing surface against the cable and lessened its efficiency. Rigby was better for swabbing, and more convenient when tools must be lowered or lifted; but the old barrel saver was better for day by day drilling.

Although some such device was necessary in the oil business, a satisfactory oil saver had not been devised when Heggem entered the field. There were at least three angles to the problem: (a) Side sway must be controlled; (b) The device must be capable of assembly without cutting or threading the cable; (c) means of keeping the packing snug against the cable must be provided for. Heggem's first patent, claim 1 of which is in the margin,¹ accomplished these ends. He did away with the top compression screw of Rigby, and provided for semilateral means of adjusting the packing. He then took from other arts rotatable guide spools and placed them on top of the device, where Rigby's compression screw was. These guide spools fed the cable into the stuffing box evenly, and avoided the wear incident to side sway. He availed himself of the separable sections of Rigby.

Is this a patentable combination? It is said that all of the elements are old; this is true, but immaterial. Leeds & Catlin Co. v. Victor Talking Mach. Co., 213 U. S. 301, 29 S. Ct. 495, 53 L. Ed. 805; Bates v. Coe, 98 U. S. 31, 25 L. Ed. 68. In that text-book of patent law, National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co. (C. C. A. 8) 106 F. 693, 706, Judge Sanborn lays down the rule: "A new combination of old elements, whereby a new and useful result is produced, or an old result is attained in a more facile, economical, and efficient way, may be protected by patent as securely as a new machine or composition of matter. Seymour v. Osborne, 11 Wall. 516, 542, 548, 20 L. Ed. 33; Gould v. Rees, 15 Wall. 187, 189, 21 L. Ed. 39."

The patent in suit meets this test. It is said that no inventive genius, but only mechanical ingenuity, was needed to think of this device. No formula has been prescribed which affords a solution of the vexed question, Has inventive genius been exercised? We know that the simplicity of the device does not belie inventive genius. Hughes Tool Co. v. International Supply Co. (C. C. A. 10) 47 F.(2d) 490, 492, and cases there cited. We know that we should try to eliminate "hindsight"; we know that the fact that the problem existed, that financial reward awaited a solution, and that no one did think of it, is strong evidence of invention. We know a presumption of invention arises from the issuance of the patent, and that commercial success strengthens that presumption. Considering these things, we are not prepared to say that this device, simple though it is, does not disclose inventive genius.

It is said that it is an aggregation and not a combination; that the guide spools operate in the same way that they have always operated; and so of the other elements. This is true, but not fatal, for it is not necessary to a valid combination that one element shall affect the quality of the work done by another. It is said that the elements are but hitched together, and therefore are not patentable. Nor is this the test. The test is whether the combination discloses a co-operation or a co-ordination of the elements which, working together as a unit, although mayhap not simultaneously, produces a new or better result. The distinction between combination and aggregation is one difficult to put in words that really define; it has been the subject of much legal literature which we find it unnecessary to...