Tubular Service & Engineering Company, Tuboscope Company, Myron N. Kinley and John Cary Kinley, Appellants, v. Sun Oil Company, Appellee, 220 F.2d 27 (5th Cir. 1955)

This appeal is from the district court's holding that appellee's patent No. 2,518,663, described as a "Tube Calipering and Recording Mechanism", is valid and infringed by certain devices manufactured and used by appellants.

The patent in suit was granted August 15, 1950 to Preston E. Chaney and William E. Barnes, employees of appellee, on their application filed October 26, 1945. Specifically, the claimed invention therein relates to an improved type of mechanical measuring and recording instrument known as a tubing caliper. Such instrument is used in high pressure oil or gas wells to determine the extent of corrosion existent in the well tube, without the necessity and expense of removing the tube from the ground, and has considerable utility in revealing when a tube or section thereof should be removed and replaced in order to prevent extensive damage resulting from its fracture or breakage.

As the patent and physical exhibits show, the Chaney-Barnes patented structure reveals six small wheels or discs, called "feelers", which protrude under spring pressure from a housing so as to engage the inner surface of tubing into which the device is lowered. Deviations in the normally smooth inner surface of the tube caused by corrosion pits are translated through the "feelers" by means of a recording mechanism within the housing and reflected on a graph or chart which is removed and studied to evaluate the tube's condition.

The validity and infringement of Claims 1 through 4 of the Chaney-Barnes patent in suit are here in issue, Claim 1 being a typical embodiment of the inventive concept involved and reading as follows:

"1. In an internal tube wall calipering and recording device adapted to be passaged through an extended length of tubing the combination comprising an elongated housing, recording means including a recorder member and a single stylus member mounted in said housing, a plurality of independently movable feelers spaced circumferentially of said housing and adapted for independent lateral movement between said housing and the tube wall being calipered, mechanical actuating means for said recording means common to all of said feelers and mounted in said housing for reciprocal movement therein, means for resiliently urging said common actuating means in one direction, and a plurality of movement transmitting means, one for each of said feelers, operable independently of each other to transmit outward movement of said feelers to said common actuating means, each movement transmitting means including means for constantly and independently urging the corresponding feeler outwardly of said housing and for simultaneously urging its movement transmitting means in opposition to, and with a force greater than, said first-mentioned urging means, whereby said common actuating means is movable in response to any of said feelers but is moved to an extent corresponding to and controlled by only the greatest outward feeler movement at any instance during a calipering passage." (Emphasis ours.)¹ 

The district court, 120 F. Supp. 428, adopted findings of fact and conclusions of law proposed by appellee, in effect holding that the essentially novel inventive concept of the Chaney-Barnes patent, which established its validity and distinguished it from the prior art, lay in its "automatic selection, measurement and recording of the single, largest radius corresponding to the deepest pit encountered at each level of a well tubing being calipered"; that the element urged by defendants (appellants) as essential to the Chaney-Barnes invention, though not recited in the claims, was a spring and plug "centering device," but that the patent claims did not either expressly or impliedly include this element; that, even though desirable and advantageous in some respects, the centering device was neither a necessary nor essential element of the invention, since the patented device would operate effectively without it "to record the depths of the deepest pits encountered", the desired function of maintaining the device in a centered position during operation then being performed "by the feelers themselves"; that the admitted omission of the centering device in appellants' accused structures was, therefore, "immaterial to the issue of infringement", and since they otherwise revealed every essential element of the patent claims, functioning in combination in substantially the same way to effect substantially the same result, they constituted infringement thereof.²  The court rejected appellants' special defenses of prior public use and intervening rights, as well as their reliance upon a prior suit between the parties or their alleged privies as controlling in their favor,³  holding that the prior Kinley Caliper uses in 1948 were experimental in nature and "were not public uses" such as would create intervening rights in favor of appellants, or otherwise restrict or limit the scope of the claims; finally, it held that the former suit relied upon by appellants was "without effect upon the issues herein involved."⁴ 

Though disavowing any intimation that "the Chaney-Barnes invention is inoperative or wholly lacking in utility", and even conceding that it "advanced the art" and solved the problem of "determining the depth of the deepest pit encountered", appellants nevertheless insist that the patent is invalid because the precise invention now claimed was abandoned by appellee during prosecution of the Chaney-Barnes patent application;⁵  that, assuming validity, the district court was unjustified in according the Chaney-Barnes patent near pioneer status in its broad interpretation of the claims, particularly in view of the McMahan, Hardel and Kinley prior art patents⁶  and uses; that the scope of appellee's monopoly under the Chaney-Barnes patent is necessarily limited by the specifications and language of the claims, as well as by the Patent Office file wrapper and the prior art⁷  as a whole to a combination of known mechanical elements which include a "centering device" enabling the "feelers" to have that "independent lateral movement between said housing and the tube wall being calipered" described in the claims; that the district court clearly erred in holding that the "feelers" of appellants' structures, which use no centering device, have such "independent lateral movement" within the meaning of the patent claims, and particularly in finding that "the omission of the centering spring and plunger in defendant's calipers * * * is immaterial to the issue of infringement"; that the district court further erred in finding that the desired function of centering the device could be just as effectively performed "by the feelers themselves", since the phrase "independent lateral movement between said housing and the tube wall", both as a matter of law and physics, impliedly limits the patented structure described to the use of a centering device; that, if the claims were properly construed by the district court as not being impliedly limited to a caliper using a centering device, they disclose no invention over the prior art and are invalid for anticipation by it; conversely, if they be properly construed as impliedly including the centering device, so as to attain validity over the prior art, they are then invalid for non-compliance with the statutory mandate that a patentee must "distinctly claim" his invention; that the claims are valid, if at all, only when narrowly construed, and are not infringed by appellants because their devices follow the teachings of the prior art, particularly the McMahan patent, and do not use the combination of the patent in suit because they do not employ a centering device or measure the depth of the deepest pit, and also because the "feelers springs" of their device do not use the relative spring strength called for by the Chaney-Barnes patent in suit.⁸ 

Appellee insists that each of the district court's findings of fact and conclusions of law on the basic issues of validity and infringement, as well as the special defenses of prior public use and late claiming, should be sustained as amply supported by the record; that, in any event, the trial court's decision is not clearly erroneous and appellants, by here asserting practically the same defenses as were urged in the trial court, are merely attempting to broaden the ordinary scope of appellate review and retry identical factual issues heretofore resolved against them upon substantial evidence. Specifically, appellee insists that appellants' reliance in its late claiming defense upon the Muncie Gear case, supra, is misplaced, since the patent there involved was held invalid because the untimely filed claims disclosed "new matter" not contained in the original application, whereas the Chaney-Barnes patent in suit continuously claimed substantially the same invention, and further because the decision was not primarily based upon intervening rights or any other form of equitable estoppel here urged by appellants; that the testimony fully supports the district court's findings of validity over the prior art, since the prior art calipers, such as McMahan, Hardel and DeLeeuw, either measured only average diameter rather than the deepest pit or, under the rule of Potts v. Creager, 155 U.S. 597, 606-608, 15 S. Ct. 194, 39 L. Ed. 275, may not fairly be viewed as anticipation because taken from non-analogous arts; that appellants' "centering device" and "weak feeler spring" defenses, heretofore summarized, represent merely an ingenious partisan attempt to read implied limitations into express language of otherwise clear and unambiguous claims which do not actually exist, and appellants may not, by resorting to such strained and abortive claim construction, thereby escape the consequences of their willful infringement through manufacture and use of the accused devices, which reveal in combination substantially the same mechanical elements, functioning in substantially the same way, to accomplish substantially the same result.

Conceding the prior use statute's adoption of the general equitable principle, as set forth in the Muncie Gear case, supra, and elsewhere, Cf. Webster Electric Co. v. Splitdorf Co., 264 U.S. 463, 469, 44 S. Ct. 342, 68 L. Ed. 792, that a delay in claiming for more than the statutory period after adverse public use would ordinarily preclude the existence of a monopoly thus untimely asserted, we think the district court correctly held that, assuming a reasonable application of the doctrine of equivalents, there has been no material departure here between the monopoly asserted before the Patent Office and that presently claimed, nor any such unreasonable delay in claiming subsequent to the Kinley alleged public use, as would fairly justify invalidation of the patent claims in suit. Cf. Jeoffroy Mfg., Inc. v. Graham, 5 Cir., 219 F.2d 511; see Matthews v. Koolvent Metal Awning Co., 5 Cir., 158 F.2d 37, 40. We further agree that, as revealing the first practical patented device for measuring the depth of the deepest pits in well tubing, rather than merely the average depth of all corrosion pits encountered, the claims of the Chaney-Barnes patent are valid over the prior art. Robertson Rock Bit Co. v. Hughes Tool Co., 5 Cir., 176 F.2d 783, 789, 790. We think that neither the express language of the claims, nor the doctrine of equivalents, may be so narrowly circumscribed as to impose limitations and restrictions on the patent, such as are inherent in acceptance of appellants' "centering device" and "weak feeler spring" defenses, that appellee, by omitting any express reference thereto in claiming its monopoly, undoubtedly sought to avoid. Cf. Southern States Equip. Corp. v. USCO Power Equip. Corp., 5 Cir., 209 F.2d 111, 121; Hughes v. Magnolia Petroleum Co., 5 Cir., 88 F.2d 817, 818. Moreover, in view of the structural and functional differences found to exist between the Otis caliper, held to infringe the McMahan prior art patent in the unreported Dallas suit, and the type caliper revealed by the present Chaney-Barnes patent here in dispute, we think the prior adjudication, if it has any bearing at all, is only remotely persuasive, and logically compels no result favorable to appellants here.

No useful purpose would be served by unduly lengthening this opinion with any further discussion of the divergencies in purpose, structure and modus operandi of the various prior art patents or the many authorities cited. As heretofore stated, on the basic issues of validity and infringement, as well as the special defenses of late claiming and intervening rights based on the alleged Kinley prior use, we find ourselves generally in agreement with the findings and conclusions adopted by the district court,⁹  many of which have been heretofore summarized. In spite of appellants' contrary insistence, we agree with appellee's assertion that essentially only issues of fact were involved in its rejection of most of the asserted defenses, and that the ultimate determination of the controlling facts here was peculiarly for the district court, after hearing all of the disputed testimony, including that of the expert witnesses during more than nine days of trial. Furthermore, a review of appellants' contentions in the light of the testimony, the prior art, and the physical exhibits, has convinced us that they either assume facts not found, or conflict with contrary findings based on disputed testimony which may not fairly be set aside as "clearly erroneous". See Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 274-275, 69 S. Ct. 535, 93 L. Ed. 672; Hazeltine Research v. Admiral Corp., 7 Cir., 183 F.2d 953, 955; Hunt v. Armour & Co., 7 Cir., 185 F.2d 722, 728; Rule 52(a), Fed.Rules Civ. Proc. 28 U.S.C.A.; Jeoffroy Mfg., Inc., v. Graham, 5 Cir., 206 F.2d 772, 778-779; Southern States Equip. Corp. v. USCO Power Equip. Corp., supra, at page 120. For example, as a purely abstract proposition of mechanics there is undoubtedly a germ of truth in appellants' assertion and the testimony to the effect that an "off center shift" results from using the Chaney-Barnes patented structure without the centering device which prevents perfect accuracy in attaining the avowedly novel patent purpose of measuring the depth of the deepest pit encountered. But other witnesses for appellee, such as Fredd and Kelly, testified that this slight amount of theoretical off-center shift was so inconsequential as to be practically de minimis under ordinary operating conditions.¹⁰  In fact, their testimony and the district court's findings as to the ability of the spring feelers to maintain the caliper in a substantially centered position in the absence of the centering device are supported by other testimony that the importance of a centering device is diminished as the number of feelers used increases, and also by the similarity between the field records produced by the Chaney-Barnes type caliper and those used by appellants which were held to infringe. Finally, we think appellants' contention, purportedly based on the second italicized portion of the claim, that it does not infringe because of its use of weaker feeler springs than those called for by the patent in suit, is effectively refuted by testimony supporting the trial court's finding that this language may not fairly be construed as a limitation of the claims which avoids infringement, but is largely a variable factor of optional engineering design.

It follows that the district court properly held the Chaney-Barnes patent in suit valid and infringed, and the judgment is accordingly

Affirmed.