Wilson v. Byron Jackson Co.

• Decision Date: 03 December 1937
• Docket Number: No. 8241.,8241.
• Citation: 93 F.2d 572
• Parties: WILSON et al. v. BYRON JACKSON CO.
• Court: U.S. Court of Appeals — Ninth Circuit

93 F.2d 572 (1937)

WILSON et al. v. BYRON JACKSON CO.

No. 8241.

Circuit Court of Appeals, Ninth Circuit.

December 3, 1937.

Hamer H. Jamieson and G. Benton Wilson, both of Los Angeles, Cal., for appellant.

Lyon & Lyon, Frederick S. Lyon, and Leonard S. Lyon, all of Los Angeles, Cal., for appellee.

Before WILBUR, STEPHENS, and HEALY, Circuit Judges.

WILBUR, Circuit Judge.

On December 17, 1934, appellee filed a bill of complaint alleging acts of infringement of six patents for improvements in well elevators and praying for an accounting and an injunction. On May 16, 1935, the District Court issued a preliminary injunction restraining appellant from infringing letters patent as follows: Patent No. 1,341,957 issued to E. C. Wilson, inventor, June 1, 1920, filed May 2, 1914; patent No. 1,314,996 issued to E. C. Wilson, inventor, September 2, 1919, filed January 2, 1909; patent No. 1,511,699 issued October 14, 1924, to C. E. Wilcox, inventor, assignor to E. C. Wilson, filed January 29, 1921; patent No. 1,599,144 issued September 7, 1926, to H. M. Paulsen, inventor, assignor to Dunn Manufacturing Company, filed September 12, 1923. The appeal is from orders of April 27, 1935, and May 3, 1935, granting the injunction.

It appears from the complaint that prior to December 30, 1926, title to patents Nos. 1,314,996, 1,341,957, and 1,511,699 was vested in appellant, his wife, and his two brothers, G. B. Wilson and E. C. Wilson, and their wives, appellant and his wife each owning one-sixteenth interest. On December 30, 1926, the owners of these patents granted to the Wilson Oil Tools Corporation an exclusive license to manufacture and sell devices under these patents.¹ On September 6, 1928, appellant, with the other owners of these patents, granted appellee an option to purchase their rights under this agreement, and the three patents, for $1,000,000, which option appellee exercised. The patents and rights under the license agreements were assigned to appellee.² It further appears that appellee became owner of patent No. 1,599,144, the Paulsen patent, as follows: On September 6, 1928, appellant and his wife, his two brothers and their wives, agreed to assign to appellee their title and the title of Paulsen to this patent. On September 7, 1928, Paulsen assigned his title to the patent to E. C. Wilson. It is alleged that in accordance with the above agreement of September 6, 1928, appellant and others procured from E. C. Wilson an assignment to appellee of "the whole right, title and interest in and to the United States Letters Patent No. 1,599,144," the Paulsen patent.³ It is also alleged that the Dunn Manufacturing Company assigned its title to the Paulsen patent to appellee.⁴

The elevators, the patents for which are alleged to be infringed in the case at bar, are used in lowering and raising pipe, casing, tubing, etc., in oil wells. The elevators consist of a pipe encircling part having two sections which are hinged together at one end and secured at the other by a locking device. For convenience of description, the larger and heavier section is called the body and the smaller one the gate. The pipe encircling parts of the elevator when open are placed around the pipe under the collars connecting the joints of the pipe. After the pipe is placed in the elevator, the unhinged ends of the gate and body are securely fastened together. Bails, linked suspension means, are attached to the body on each side of the elevator for hoisting and lowering it. The bails are made fast to the drilling cable. When the cable is raised, the elevator in contact with the collar supports the load. The patents sued upon in the case at bar are for the means used for securing the bails to the elevator and for the means to securely lock together the pipe encircling part.

Since the appeal was taken, patent No. 1,314,996 has expired and by stipulation the injunction in relation thereto has been vacated. We were informed by counsel on the hearing before this court that patent No. 1,341,957 has also expired. As to these patents, the appeal has become moot and is dismissed. Gamewell Fire-Alarm Tel. Co. v. Municipal Signal Co. (C. C.A.) 61 F. 208; National Folding Box & Paper Co. v. Robertson (C.C.A.) 104 F. 552; Lockwood v. Wickes (C.C.A.) 75 F. 118; Chapin v. Friedberger-Aaron Mfg. Co. (C.C.A.) 158 F. 409.

The granting of a preliminary injunction rests in the sound discretion of the trial court and its decision will not be disturbed unless there was an abuse of discretion. Kings County Raisin & Fruit Co. v. U. S. Consolidated Seeded Raisin Co. (C. C.A.) 182 F. 59; Owen v. Perkins Oil Well Cementing Co. (C.C.A.) 2 F.2d 247; American Grain Separator Co. v. Twin City Separator Co. (C.C.A.) 202 F. 202; Sherman-Clay & Co. v. Searchlight Horn Co. (C.C.A.) 214 F. 99. Did the lower court abuse its discretion in granting a preliminary injunction as to the remaining patents?

The Wilcox patent No. 1,511,699: This invention concerns a double locking arrangement providing means whereby the pipe encircling parts of the elevator are locked together when the elevator is in place and the gate is closed. It consists of a latch at the lower end of the gate and another independent lock at the upper ends of the elevator parts. The upper locking device has a head which extends above the rest of the elevator when it is first secured in place. At the bottom of the head are two downwardly extending lugs which fit into notches in both sections of the elevator. When the load is lifted, thus forcing the head down, these lugs securely lock the gate. Claims 2, 10, and 11 of this patent are very broad, and are as follows:

"2. In a device of the character described embodying two relatively movable members adapted to embrace a casing the combination of, a latch to releasably connect the members in position embracing the casing, and a separate means to independently connect the members at a point removed from the latch.

"10. A device of the character described comprising two relatively movable casing embracing members, a latch to connect and hold the members in casing embracing position, and another connecting member separate from the latch and adapted to be actuated by reason of engagement with the casing collar to connect the casing embracing members independently of their connection by the latch.

"11. A device of the character described comprising two relatively movable casing embracing members, a latch to connect and hold the members in casing embracing position, and another connecting member separate from the latch and adapted to connect the casing embracing members independently of their connection by the latch."

In the patent drawing the gate does not itself move vertically with reference to the body of the elevator, but the two parts (body and gate) merely swing with reference to each other, and the upper locking part consists of a lug detached from both except by a pin and spring that moves down under the load into counter-sunk groove in the two parts, T-shaped at both ends, thus locking the elevator.

The appellant's elevator performs the same service as the patented device and comes within the broad claims of the patent,⁵ but has an additional function, the automatic closing of the gate at its upper end from a partially closed position when a load is placed on the elevator. This function is due to the wedge shape of a lug on the gate which moves downward and inward into a notch on the body of the elevator, locking the gate and body together when the load is placed on the elevator.

These general descriptions and claims are not very clear without the aid of the photographs and drawings in evidence and in the patents, but will suffice without them in view of our conclusion, which is based primarily upon an estoppel.

As to patent No. 1,511,699, it is clear that appellant by his assignment to appellee is estopped to deny the validity of the patent. Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 45 S.Ct. 117, 69 L.Ed. 316; Leather Grille & Drapery Co. v. Christopherson (C. C.A.) 182 F. 817. Appellee contends in his brief that the scope of this estoppel is extended by an estoppel in pais to cover the alleged infringing device,⁶ because "appellee was induced to make and made its purchase relying upon the scope of the respective inventions of the patents in suit asserted by the Wilsons, and upon the interpretations and constructions of these patents by the Wilsons...