Smith Industries International v. Hughes Tool Company

• Decision Date: 10 June 1968
• Docket Number: No. 24787.,24787.
• Citation: 396 F.2d 735
• Parties: SMITH INDUSTRIES INTERNATIONAL, Appellant, v. HUGHES TOOL COMPANY, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

396 F.2d 735 (1968)

SMITH INDUSTRIES INTERNATIONAL, Appellant, v. HUGHES TOOL COMPANY, Appellee.

No. 24787.

United States Court of Appeals Fifth Circuit.

June 10, 1968.

Charles L. Tighe, Midland, Tex., William D. Harris, Jr., V. Bryan Medlock, Jr., Richards, Harris & Hubbard, Dallas, Tex., Stubbeman, McRae, Sealy & Laughlin, Midland, Tex., for appellant, Smith Industries International; Wynne, Jaffe & Tinsley, Dallas, Tex., of counsel.

Edward A. Haight, Britton A. Davis, Chicago, Ill., Robert F. Campbell, Houston, Tex., Elton Gilliland, Shafer, Gilliland, Davis, Bunton & McCollum, Odessa, Tex., Andrews, Kurth, Campbell & Jones, Houston, Tex., Haight, Simmons & Hofeldt, Chicago, Ill., for appellee, Hughes Tool Co.

Before RIVES, GEWIN and THORNBERRY, Circuit Judges.

RIVES, Circuit Judge:

This infringement suit by appellee Hughes against appellant Smith presents the usual questions: Is Hughes' patent No. 3,075,781¹ valid and, if so, did Smith infringe that patent? The patent relates to a bearing seal or face seal adapted to seal between two relatively rotatable surfaces to retain lubricant within a bearing and to exclude foreign material. Its particular utility is in the environment of a bit used in drilling oil wells.

The seal is circular or ring shaped and comprises a metal spring or core covered by an impervious material such as rubber. The metal spring is of the type called a "Belleville" spring in the sealing art. It is shaped like an inverted saucer with the bottom removed, and is referred to as a frusto-conical shape since it resembles a cone with the top cut off. Two forms of cores are described, one having slots shaped like keyholes which pass through the metal, and the other being corrugated. The seal effected is between a shaft and a member which rotates about the shaft. Bearings facilitate the rotation of the member, which, in the case of a drill bit, is a cone provided with teeth or abrasives for boring through earth, rock and other formations. As has been said, the seal operates to retain the lubricant around the bearings and to prevent its contamination by drilling mud, cuttings or other foreign material.

The specification explains that the seal is perferably mounted around a shaft so that there is a slight clearance between the inside of the seal and the shaft.² Alternatively, the inner diameter of the seal may be provided with a bead of rubber which contacts the surface of the shaft.³

The patent contains ten claims and the district court did not identify the particular claims held infringed.⁴ Of course, separate claims in the same patent are independent inventions.⁵ Smith does not disagree with Hughes' designation in brief of the claims which it insists are infringed as claims 1, 2, 3, 8, 9 and 10. Hence our opinion and decision will be confined to those claims. We think that, for an adequate understanding of the patent, only one claim need be quoted.

"1. In a machine having a support member, a shaft extending transversely thereof, and a relatively rotatable member mounted on such shaft, there being opposed, generally radially extending annular surfaces on such members, an annular seal ring radially floatingly surrounding said shaft and generally coaxial therewith, said seal ring in relaxed position having the general form of a frusto-conical shell having a wall of elongated length in comparison with both its thickness and its axial height and being axially elastically flattenable to reduce such height, said seal ring having a pair of axially facing, radially spaced annular surfaces at its inner and outer peripheral portions, said surfaces facing in opposite directions and each in sliding and sealing engagement with one of the annular surfaces of said members, such engagement resulting from a partial flattening of said seal ring between and by the annular surfaces of said members." (Emphasis added.)

The decision of this case, especially on the question of infringement, turns largely on the expressions which we have italicized. Such expressions are contained in each of the claims which Hughes insists are infringed.

After an extensive hearing, the district court entered full findings of fact and conclusions of law and held the plaintiff Hughes entitled to an injunction against further infringement and to an accounting of its damages.⁶

Patentability is dependent upon three explicit conditions: novelty and utility as defined in 35 U.S.C. §§ 101 and 102, and nonobviousness as set out in § 103. See Graham v. John Deere Co., 1965, 383 U.S. 1, 12, 86 S.Ct. 684, 15 L.Ed.2d 545. Smith does not question the novelty and utility of the 781 patent, but claims that it does not meet the obviousness test of § 103:

"A patent may not be obtained though the invention is not identically disclosed or described as 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."

In the Graham case, supra, the Supreme Court said:

"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. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. See Note, Subtests of `Nonobviousness\': A Nontechnical Approach to Patent Validity, 112 U.Pa.L.Rev. 1169 (1964)." 383 U.S. at 17-18, 86 S.Ct. at 694.

The principal, practically the sole, prior art reference relied on by Smith on appeal is Curtis Patent No. 2,560,577, issued July 17, 1951, for an "end face oil and dirt seal." The district court devoted several pages of its findings to a discussion of the Curtis Patent, ultimately concluding:

"The sealing device there described does not appear to have been intended for use in a rock bit. As shown in the Curtis patent, it does not meet the restrictive space limitations of such a bit. Further, Curtis\' seal does not have, or claim to have, the flattenability and elasticity capabilities which Atkinson the 781 patent teaches, and which are necessary under the conditions peculiar to the operation of a rock bit as described in the above findings. As in the case of the other prior art patents, the Curtis patent did not teach those attempting to develop a rock bit seal how to accomplish it."

We agree. Instead of a frusto-conically shaped and elastically flattenable seal, the core of the Curtis seal has spaced yielding fingers bound at both inner and outer diameters of the seal by "relatively rigid, continuous ring shaped flanges." The claims describe those flanges as designed "to stiffen and reinforce the latter the sealing rings against radial deflection." The specification describes the sealing element as possessing "radial stiffness and rigidity to maintain its exact circular form at the sealing face." The Curtis Core is neither flattenable nor elastic to a degree even approaching that meant for use in a rock bit.

The Curtis patent was not among the references cited in the file of the 781 patent. We think the Patent Office reference to the French Patent 1,132,266 was more apt than Curtis, but we agree with the district court that none of the prior art patents would have made obvious the development of an effective seal for use in a bit used in drilling oil wells.

Any doubt on that score is removed when we consider the long and unsuccessful efforts of others to solve the problem, the long-felt need in the oil-drilling field for such a device, and the wide commercial success⁷ of Hughes with its 781 patent. These considerations are developed at length in the findings of the district court and need not be here repeated. As so well observed in the Graham case,

"These legal inferences or subtests do focus attention on economic and motivational rather than technical issues and are, therefore, more susceptible of judicial treatment than are the highly technical facts often present in patent litigation. See Judge Learned Hand in Reiner v. I. Leon Co., 285 F.2d 501, 504 (2 Cir. 1960). See also Note, Subtests of `Nonobviousness\': A Nontechnical Approach to Patent Validity, 112 U.Pa.L.Rev. 1169 (1964). Such inquiries may lend a helping hand to the judiciary which, as Mr. Justice Frankfurter observed, is most ill-fitted to discharge the technological duties cast upon it by patent legislation. Marconi Wireless Telegraph Co., etc. v. United States, 320 U.S. 1, 60 63 S.Ct. 1393, 87 L.Ed. 1731 (1943). They may also serve to `guard against slipping into use of hindsight,\' Monroe Auto Equipment Co. v. Heckethorn Mfg. & Sup. Co., 332 F.2d 406, 412 (6 Cir. 1964), and to resist the temptation to read into the prior art the teachings of the invention in issue." 383 U.S. at 35-36, 86 S.Ct. at 703.

The Curtis patent was issued some seven years before the application for the 781 patent was filed. During that period may persons skilled in the art were seeking a solution to the problem and actually Curtis did not make that solution obvious.

We, therefore, agree with the district court that claims 1, 2, 3, 8, 9 and 10 of Patent 3,075,781 are valid.

A closer question is presented as to whether...