Martin v. Ford Alexander Corporation, 160 F. Supp. 670 (S.D. Cal. 1958)

160 F. Supp. 670 (1958)

Philip W. MARTIN and McCullough Tool Company, a corporation, Plaintiffs,
v.
The FORD ALEXANDER CORPORATION, a corporation, et al., Defendants.

No. 13289.

United States District Court S. D. California, Central Division.

March 10, 1958.

*671 *672 Lyon & Lyon, by Lewis E. Lyon and R. Douglas Lyon and James E. Harrington, Los Angeles, Cal., for plaintiff.

Elwood S. Kendrick, Fred H. Miller and Roy P. Dolley, Los Angeles, Cal., for defendant.

YANKWICH, Chief Judge.

For several decades prior to 1945, a difficult problem in the oil industry related to "fishing tools" designed to get out of the casing or pipe in the well pipe or other obstructions. What was sought was an accurate method of locating the point at which pipe is stuck or there is an obstructing object. In well pulling work, where tubing and sucker rods were stuck at some point down in the well at an unknown depth, it became important, in order to part the string of sucker rods and tubing to determine as closely as possible the point where the string was stuck.

A disinterested witness in the case before us, who at the time of testifying was the General Superintendent, General Division of the Producing Department of the Standard Oil Company of California, in charge of drilling, producing, engineering and construction operations in the Counties of Los Angeles, Orange, Ventura and Santa Barbara, California, stated the attempts to meet the problem in this manner:

 

"This originally was done in my experience by means of taking the pull on the string and measuring the elongation of the string at the surface with different amounts of pull, and then calculating or approximating the depth where the pipe or the string was stuck."

The method was not very successful, because, as the same witness put it,

 

"It was pretty hit or miss. Sometimes we were close, but quite often we missed it by quite a margin."

The patents in suit, Martin 2,530,308, to be referred to as Martin '308, filed September 28, 1945, and issued November 14, 1950, Martin 2,530,309, to be referred to as Martin '309, filed January 15, 1946, issued November 14, 1950, and Brookes 2,550,964, to be referred to as Brookes, filed October 1, 1948, and issued May 1, 1951, all aimed to determine the stuck point in the well. Martin '308 was called "Apparatus for Determining Movability of Members in Wells". The claims in suit are 1, 2, 5, 8, 10, 12, 13, 14, 15, 16 and 17. Of these claims two have been chosen as typical, Claims 10 and 15. They are printed in the margin.^[1]*673 Martin '309 is called "Device for Determining Relative Movements of Parts in Wells". The claims in suit are 1, 6, 7, 8, 9, 10 and 11. Claims 6 and 10 have been chosen as typical. They are reproduced in the margin.^[2] The Brookes patent was named "Device for Determining Point at Which Pipe is Stuck in a Well." All eleven claims are involved. But Claim 5 has been chosen as typical. It is reproduced in the margin.^[3]

The issues in this case, instituted by the patentees and their assignee, McCullough Tool Company,to be referred to as "McCullough"are the usual ones in patent litigation, validity and infringement.^[4]*674 To these have been added certain special defenses: invention by another,^[5] fraud practiced upon the Patent Office which calls for a denial of any relief in a court of equity,^[6] and misuse of the patent through restrictive agreements, which render the patents unenforceable.^[7]

 
I 
Certain Accepted Principles

It has become common practice for every current opinion on patent law to discuss the impact of the decisions of the Supreme Court in certain recent cases which establish a more rigid standard for determining patentability.^[8] It is unnecessary to do this here because the Court of Appeals of this circuit has stated repeatedly that the courts of this circuit are committed

 

"to the rigid standard of invention [of these cases]."^[9]

However, the promulgation of these tests has not affected other well-known principles of patent law which are important in the determination of the issues in this case. Stated briefly, they are:

Patents simultaneously issued must be construed together in order to determine whether there is double patenting, or whether the second patent merely embodies added features not contained in the first, and if this was done by the inventor or by direction of the Patent Office. The second, the continuing patent, may generally describe, without claiming, the first.^[10] The principle has been well stated by the Court of Appeals for the Eighth Circuit:

 

"But one who makes several patentable inventions that result in a new and useful machine or process, or both, may have as many separate valid patents as he makes patentable inventions. His is the option to secure all these inventions by a single patent, or by many patents, and the fact that he describes all of them in his application or specification for an earlier patent to secure one or more of them, does not invalidate a subsequent patent to him for those inventions there described but not claimed. * * * And a patent for an invention does not avoid a later patent for an improvement thereon nor does a patent for an improvement avoid a later patent for the invention on which the improvement is made. Thomson-Houston Elec. Co. v. Ohio Brass Co., [6 Cir.], 80 F. 712, 724, 725, 726, 26 C.C.A. 107, 119, 120, 121. The sum of the whole matter is that while an earlier patent avoids a later patent to the same patentee for the invention claimed and secured by the former it does not invalidate a later patent to *675 him for a distinct, different and separable invention whether generic or specific, whether an original machine or process, or both, or an improvement thereon which is not actually claimed or secured by the earlier patent."^[11]

This principle has special importance in this case because Martin '309 states specifically that it

 

"is a continuation-in-part of * * co-pending application, Serial No. 619,242, filed September 28, 1945, for Method and Apparatus for Determining Movability of Members in Wells."

And it was issued on the same day as Martin '308.

It is axiomatic that a patent must show novelty, utility and invention.^[12] And novelty may consist in placing an old device to a new use which produces different or non-analogous results, not anticipated in the art.^[13]

A wider range of equivalents is permitted in a patent of a pioneer character.^[14] The Supreme Court in a noted case has defined the word "Pioneer" in this manner:

 

"This word (pioneer), although used somewhat loosely, is commonly understood to denote a patent covering a function never before performed, a wholly novel device, or one of such novelty and importance as to mark a distinct step in the progress of the art, as distinguished from a mere improvement or perfection of what had gone before. Most conspicuous examples of such patents are the one to Howe, of the sewing machine; to Morse, of the electrical telegraph; and to Bell, of the telephone."^[15]

There has been no deviation from this interpretation of the meaning of the word since.^[16]

*676 In interpreting the claims of a patent we are not limited to the structure described.^[17] Nor is the mere reading of the claims upon a device determinative of infringement unless there is substantial identity of function, means and result.^[18] Identity of operation of a device is not conclusive unless it is arrived at in the same operative manner.^[19]

 
II 
Pioneer or Basic Inventions 
A. The Problem

In the light of these principles and the presumption of validity which attaches by Congressional fiat to a patent,^[20] it is evident that we have here invention of a primary character.

We have already alluded to the problem which confronted the oil industry and the manner in which the patented devices met it. Attesting to the successful solution of the problem, in addition to the testimony already alluded to given by a high executive of one of the large companies, Standard of California, is the fact that the executive of one of the minor companies, Hancock, stated that his company alone may be saving over a million dollars a year by the use of McCullough tool. This witness,who, at the time he testified, was Vice President and Manager of Production of his Company, and had risen from the ranks beginning as a "roust-about" forty-two years before,very succinctly stated the difficulties which the oil industry had in salvaging work which only Martin solved.

In abandoning wells and cleaning up leases, it was necessary to remove from the well tubing and casing. To achieve this, in the witness' own words,

 

"We would rig up blocks and lines, and pull stretch on it, and from pulling the stretch we would determine where we could either rip it or shoot it, depending upon what the Mining Bureau required. And each string of pipe that was in from the center, the inside string, we would try to recover from the show of the next string of pipe. Most of it in those days was cable tool, and had more than one string of pipe in them."

*677 To recover casing or tubing, again using his words:

 

"We had no means except to pull stretch and the rule of thumb in the early days was a half-inch of stretch to 100 feet of pipe that you were pulling on, and then you would calculate it out, and try shooting or ripping at that point. If you couldn't get it loose there, why, you would come on up the hole."

In the view of the witness, not until the Martin invention was the problem solved successfully.

The large sums received by the assignee, McCullough, and by Martin, the inventor, from the operation of the tool furnish added proof of the commercial success of the device.^[21] Commercial success means nothing if there be no invention.^[22] But we have more than that here.

As already appears, for many decades the problem of locating stuck pipe in oil wells had baffled the industry. Then came the patented devices. In retrospect they

 

"seem simple and such as should have been obvious to those who worked in the field."^[23]

The fact remains, however, that they did not so occur to any one else. And Martin is entitled to the full scope of an invention which met very successfully a difficult problem, limited, of course, to what is claimed in his patents. As stated in a noted case:

 

"The scope of every patent is limited to the invention described in the claims contained in it, read in the light of the specification. These so mark where the progress claimed by the patent begins and where it ends that they have been aptly likened to the description in a deed, which sets the bounds to the grant which it contains. It is to the claims of every patent, therefore, *678 that we must turn when we are seeking to determine what the invention is, the exclusive use of which is given to the inventor by the grant provided for by the statute,`He can claim nothing beyond them.'"^[24]

The problem, whether fishing for objects in the well or spudding in, was to locate a definite spot where the obstructing object or the pipe was stuck. Martin thought that if he could provide a device which could be lowered within the stuck pipe and by which men working at the top of the well, could determine whether the portion of the pipe adjacent to the device in the well moves or stretches when a pull is applied to the upper end of the pipe, the problem would be solved. At the stuck point and below it the device would produce no indication of movement or stretch in the pipe, which would mean that the point to which the pipe is stuck in the well had been reached.

 
B. The Solution

In order to achieve the result, Martin proposed the placing of a sensing unit in a well in connection with an isolated section of the pipe so as to determine the condition existing at that point and means to transmit that fact to the operator. He obtained a direct connection with the pipe through the use of two anchor members. And through the slip connection between those anchors which were connected to move freely with reference to each other, he determined whether or not in that isolated section of pipe there was relative movement between those members. Martin '308, in one of the typical claims, Claim 10, describes the invention in, substantially, this manner:

(1) A pair of members connected together in movable relation; (2) Means for moving said members down into the well to selected positions; (3) Means for connecting each of said members to a different part of a localized portion of said tubular member in the well; and (4) Means responsive to relative movement of said members for imparting to an operator outside the well an indication of said relative movement.

Martin's application for the patent was dated September 28, 1945. In his '309 application which was made three months after the first application, and which, as already stated, was denominated "a continuation-in-part" of the other application, he provided the means of best achieving the result sought by using an inductance type operating mechanism utilizing the inclined pole face which enables him to determine relative movement between the two anchor members in stretch or in torque. In Martin '309, he described this in one of the typical claims, Claim 11, which has five elements:

(1) A pair of members connected together in moveable relation and adapted to be lowered into a well; (2) Means for moving said members in the well to a position adjacent to selected portion of a tube in said well; (3) Means operating independently of said first named means to support said members; (4) Means operating in consequence of relative movement of said selected portion of said tube to produce relative movement of said members; and (5) Current control means comprising a variable inductance means arranged to be coupled to said circuit and connected to said members so that relative movement of said members will cause a change in the inductance of said variable inductance means, as an indication of movement of said selected portions of said tube. In essence, the '309 patent describes the same structure but utilizes a different sensing system, i. e., two magnets with a sensing device thereon exposed between them which provides a magnetic type of pickup. This is connected at the surface to the metering device so that the change *679 in the electrical characteristics occasioned by the separation or rotation of two magnetic elements in the sensing device is recorded on the instrument. The Brookes patent does not use the magnetic form of holding device for securing the sensing means to the localized section of pipe. Instead, it uses as a sole supporting means two bowspring clamping devices which are in engagement throughout the length of the travel of the detector into the well. The sensing device achieves the same result of measuring the relative movement of the pipe between the two clamping devices. The method of operation of the Brookes patent is described in one of the typical claims, Claim 5, in this manner:

(1) An assembly adapted to be lowered into the pipe, said assembly having spaced members expansible radially so as to frictionally engage the wall of the pipe and means connecting said members so that they may be relatively rotated around the axis of the pipe in response to torsional deformation of said pipe; (2) Conductors forming an electric circuit extending from the top of the well to said assembly; (3) Means producing an electrification of said circuit; (4) Electrical control means connected to said members so as to be actuated in response to relative rotation of said members, said control means having parts acting to change an electrical characteristic of said electrification when there occurs relative rotation of said members; and (5) Electro-responsive indicating means at the top of the well coupled with said circuit, operative to indicate said change in said characteristic of said electrification and thereby indicate that there has been a relative rotation of said members.

The plaintiffs introduced a tool manufactured according to the teachings of each of the patents in suit. Demonstrations were conducted in court and described by witnesses under conditions simulating an oil well and indicating that they were operative and achieved the results claimed. The defendants conducted like experiments with tools of their own making according to the teachings of these patents in order to demonstrate that they were inoperative. Having witnessed all demonstrations and having heard the comments of the demonstrators, I am satisfied that the patented devices described in Martin '308, Martin '309 and Brookes are operative devices. More, Martin '308 and '309 may, for all intents and purposes, be considered one and the inventor was free to combine the elements they contain in one tool.^[25]

A fourth tool was also introduced,the commercial tool actually sold by McCullough known as the "Magna-Tector". Concededly it contained some additions not contained in the others. But it is a fundamental principle of law that one who has a basic invention may make changes in it in order to increase its practicality without losing the benefit of his generic invention. The most noted example of this occurred in the famous Telephone Cases,^[26] in which it was contended that Bell's invention of the telephone was inadequate in that Bell had never

 

"actually transmitted telegraphically spoken words so that they could be distinctly heard and understood at the receiving end of his line."^[27]*680 However, the court gave him the full benefit of a primary invention, saying:

 

"* * * in his specification he did describe accurately, and with admirable clearness, his process,that is to say, the exact electrical condition that must be created to accomplish his purpose,and he also described, with sufficient precision to enable one of ordinary skill in such matters to make it, a form of apparatus which, if used in the way pointed out, would produce the required effect, receive the words, and carry them to and deliver them at the appointed place. The particular instrument which he had, and which he used in his experiments, did not, under the circumstances in which it was tried, reproduce the words spoken so that they could be clearly understood; but the proof is abundant, and of the most convincing character, that other instruments, carefully constructed, and made exactly in accordance with the specification, without any additions whatever, have operated, and will operate successfully. * * *

 

"The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection; it is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation. This Bell did."^[28]

For the same reason, an improver of a basic invention

 

"without a license is an infringer, and may be sued as such."^[29]

A combination patent stands as a unit. Where the result achieved is the same, the addition of elements to a patented combination by an infringer, even if an improvement, will not avoid infringement.^[30] So the fact much stressed at the trial and at the argument that the McCullough commercial device embodied features not contained in any of the three patents carries little weight. In the main, the commercial device follows the teachings of the patents in suit with such additions as practical experience commanded and which were open to the inventor under the teachings of the Telephone Cases.^[31]

 
C. Method of Operation

In one of the catalogues in the record, the McCullough commercial tool is described in this manner as to function and operation:

 

"The function and purpose of this tool is to locate the point at which pipe is stuck in a well, or the lowest point that it is free, and from which it can be recovered. It can also be used to ascertain strain or compression at any given point in a string of casing, tubing or drill pipe above the stuck point. * * * When used in drill pipe, the most outstanding value is that the stuck point can be located quickly, so that the pipe can either be cut-off, shot or backed-off at the lowest possible point before enough time has elapsed to allow the pipe to stick farther up the hole. All of the same advantages exist when the Magna-Tector is used for testing tubing, and in addition the operator will also be able to definitely ascertain whether or not the tubing is stuck above or below a packer or tubing hanger."

*681 As demonstrated in the courtroom, the Magna-Tector contains two electromagnets between which there is a sensing element which senses either torque or stretch. The device aims to find whether the pipe is free by stretch or torque. The cable through which the tool is lowered is attached to a truck on which there is the power supply to energize the electro-magnets and also the variable conductors. The meter at the top indicates whether the pipe is stuck or free. When the pipe is stretched the meter moves to the extreme right, indicating that the pipe is moving or elongating between the two magnets. When the tension is let off the meter comes back to the same place again. In effect, with the Magna-Tector at the bottom of the well when the pipe is stretched from the surface and its stretch reaches down to the Magna-Tector, the pipe is free and if the stretch does not reach the Magna-Tector the pipe is stuck. The depth at which the device is in the well is measured with a counter. So that from the length of the wire line run into the well the location of the tool is determined.

In torque, when pressure is applied, if the indicator meter moves back and forth it means that the pipe is turning in the area. When the weight is taken off, the indicator comes back to the starting point. When the pipe is stuck there is no motion on the meter, whether the pipe is stretched or torqued.

At the lower end of the tool there is a collar finder and the filter circuit to shoot the string shot. These two elements have been added to the Martin patents. They are not operated at the same time as the torque is. They are hung on the same handle and they are run on the same run so that more than one operation can be performed in the well in one run. In order to do this, the power supply to which the tool is attached has two sources of power, one direct current, the other alternating current. When the point at which the pipe is stuck is found, either by stretch or torque, a charge of explosives is lowered to the nearest point in the pipe or collar. Then the alternating electrical conductor is inserted into the top of the tool, and the explosives are shot off in the pipe to secure back-off. In this manner there is economy of operation. For immediately after locating the stuck point of the pipe the operation which frees it is also performed with no waste of time and little additional labor and the use of practically the same equipment.

The advantage of giving the two services is attested by the fact that the defendant corporation in one of its early catalogues, 1949-1950, advertised both services under the name of "Dia-log Free Point Indicator and String Shot Back-Off Service." There is in the record a reproduction of a full page advertisement which appeared in several nationally known trade publications, 1949-1950, of the oil industry advertising the services together. That it was possible by little change to adapt the McCullough tool to perform both operations is a tribute to Martin's inventive ability.

 
III 
Combination Patents

Much of the evidence of the defendants and the argument seems to have been directed to proving that the basic element of the patents in suit is a strain gauge which has been long known to the art and was contained in literature and in patents dealing with the subject. The difficulty with the argument is that, while a strain gauge is employed, other elements are added to it in order to achieve a combination which is an entity in itself and which produces a result not thought of before. It is easy to make what has long been called in patent law a "mosaic" defense,which consists of an attempt to show that, like the tesselated or inlaid work called "mosaic", the elements of the patented combination were old and known. But just as a "mosaic" can achieve artistic unity through use of bits, cubes or squares of stone, glass or enamel, so in the law of *682 patents, the use of an old device or devices to achieve a new, different or non-analogous purpose is invention. As stated by the Supreme Court:

 

"Indeed, it often requires as acute a perception of the relation between cause and effect, and as much of the peculiar intuitive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the device de novo. And this is not the less true if, after the thing has been done, it appears to the ordinary mind so simple as to excite wonder that it was not thought of before. The apparent simplicity of a new device often leads an inexperienced person to think that it would have occurred to any one familiar with the subject; but the decisive answer is that with dozens and perhaps hundreds of others laboring in the same field, it had never occurred to anyone before."^[32]

In the law of patents we should eschew the tyranny of words. It is an accepted axiom that "a patentee is at liberty to supply his own dictionary".^[33] This is indicative of the fact that the courts in interpreting patents are endeavoring to give effect to the meaning of the claims,whether the terms used by the inventor were ordinary words or words which had a meaning other than the meaning attributed to them by lexicographers, but which was apparent from the context in which the inventor used them.^[34]

The defendants would have us nullify the invention because of their contention that it teaches nothing more than the use of a strain gauge to achieve the desired result. Even if this were all, it would still be arguable that Martin put a strain gauge to a different and non-analogous use, which amounted to invention.^[35] But the fact remains, as the analysis just given illustrates, that he used what might be called a "strain gauge" in combination with other elements. Charts offered in evidence by the defendants themselves illustrating Claim 10 as to Martin '308, Claim 11 as to Martin '309 and Claim 2 of Brookes indicate the presence of other elements. And at the argument, counsel for the defendants, in referring to the prior art, conceded that the patented combination in the three patents in suit consisted of many elements, but tried to trace every one of the elements to the prior art. His references are given in the margin.^[36]

*683 So it would serve no useful purpose to analyze in detail the voluminous art cited and referred to in the argument. Even the best references do not anticipate the invention.

 
IV 
The Best References

Sweet, U.S. No. 2,078,426, issued April 27, 1937, was a method for recovering casing from a well. It provided a cumbersome method of lowering a string of pipe into a well

 

"carrying a tool capable of gripping the interior of the casing to connect the pipe therewith, the tripping or actuating of the tool, applying a longitudinal force to the casing through the medium of the pipe and gripping tool, noting whether or not the force thus applied varies the tensile strain on the casing to determine if the said tool is above or below the point at which the casing is caught, locating the point of fixation of the casing by actuating said tool and applying the longitudinal force at different vertically spaced points, cutting or parting the casing immediately above the point of fixation of the casing, and then removing the freed portion of casing from the well."

It contained none of the simplicity and efficacy for detecting the stuck point of the tool involved here.

E. L. Johnston, U.S. No. 2,300,384, issued on October 27, 1942, was entitled "Method of Locating Stuck Pipe in Wells". He stated one of the objects of his invention to be

 

"to anchor a detector unit to the inside of a stuck pipe in a well bore and to then pull on the pipe to determine whether the pipe at the elevation of anchorage is stretching due to such pull.

 

"Another object of the invention is to exert a pull upon a stuck pipe in a well bore and determine the length of pipe which is stretching due to such pull so as to locate the elevation at which the pipe is stuck in the well.

 

"Another object of the invention is to exert a simultaneous pull upon an anchoring device in a pipe and upon the pipe itself to determine whether the pipe moves at the elevation of anchorage."

*684 It did not contain the means for detecting with accuracy the location of the stuck point of any of the three patents in suit.

There is no evidence that the teachings of either Sweet or Johnston were reduced to practice before Martin appeared in the field, or that anyone in the oil industry familiar with the problem ever heard of, or saw used, a device of either character, although Sweet's application was filed July 11, 1934, and Johnston's July 29, 1940. More, the Johnston patent was cited as a reference in both Martin applications. As it was rejected by the Examiner

 

"each is presumed to be valid as against those cited against it."^[37]

As to Ruge, U.S. No. 2,316,975, issued April 20, 1943, it may be said that it was merely an electrical gauge to be used on a disc to test surface strains. To make it perform the function of the patents in suit one would have to add to it a slip joint to permit two mounted anchor members to be used in connection with an isolated piece of pipe in an oil well.

It follows that the claims sued on in each of the patents are valid, and not anticipated in the prior art.

 
V 
Other Defenses 
A. Invention by Another

I believe that the strong feeling that manifested itself at the trial of this case stems from the contention of the defendants that whatever novelty there be in the Martin patents was disclosed to McCullough by Edgar T. Howes. In conducting negotiations with McCullough for the acquisition by it of a company with which he was connected, the Magnatest Corporation, in April, 1945, Howes presented to them a sketch of a tool that might be constructed and operated from a wire truck in order to locate stuck drill pipe. A contract for a license under a pending patent application "for stress measurement" was tendered, but the negotiations were not completed, the offer being rejected by McCullough by letter dated May 23, 1945. What Howes, who is not a party to this suit, presented was the suggestion of an idea and not the description of a completed tool. It was, at most, an embryonic idea. It did not describe the device which Martin and Brookes ultimately developed. Patentability does not attach to ideas but to their practical embodiment in completed inventions.^[38] The Court of Appeals for the Eighth Circuit has stated:

 

"Clearly, Stocke had the idea of obstructing the throat (of a machine) to prevent errors, but ideas are not patentable. It is the means, or thing by which they may be accomplished that is within the law."^[39]

As Howes' idea had not passed the stage of an abstract, unrealized suggestion and could not have been patented, it cannot be used as an anticipatory disclosure that would support a defense that Martin himself did not invent the device.^[40]

 
*685 B. Fraud in the Patent Office

Certain other defenses may be disposed of with brevity. There is the charge that the patent is unenforceable because of fraud practiced on the Patent Office.^[41] The entire basis for the contention is the presence in the file wrapper of application '309 of a statement in some affidavits secured by counsel for McCullough to the effect that the affiants knew of no apparatus seeking to achieve the same results, reading:

 

"To the best of my knowledge and belief, there is no other device or instrumentality other than the Magna-Tector which is available to the oil industry with which the freeze point of pipe can be located with a high degree of accuracy."

The evidence shows that while representatives of McCullough solicited these affidavits, in forwarding them the attorney for the company stated that he had been informed by a member of the McCullough staff that the witness was willing to sign the affidavit and suggested that in case the affidavit did not conform to the facts, the witness was free to make such changes as he desired or have another affidavit prepared. In at least one instance that was actually done and the clause was eliminated.

Some of these affidavits were presented to the Patent Office on July 6, 1949, by the attorney in charge of the two Martin applications. Others were filed later; the latest appears to have been filed on August 20, 1949. However, the patents were not issued until November 14, 1950. And there is no evidence that the affidavits had the effect of expediting the granting of the applications which had been pending for years or that they served to overcome any specific objection which the Examiner had to the issuance of the patents or of the claims in suit. More, as I stated at the trial, the paragraph has so many qualifying phrases, such as "to the best of my knowledge and belief", "Located with a high degree of accuracy",that it could be characterized, in the language of the late Theodore Roosevelt, as embodying "weasel words". Nor is there a showing that the person who caused the affidavit to be filed did not actually believe that the experiment he may have seen conducted with the experimental device of the defendants in May and June 1949 was in any way as successful as, or comparable to, the device for which Martin claimed invention. In a matter of this character, as in all matters relating to fraud, there must be scienter, i.e., knowledge on the part of the person that what he is stating is false.

The frauds which call for denial of enforceability in patent law must be of the type which imply willfulness. Here we do not have even a showing of that type of irresponsible utterance which is, at times, identified with willfulness.^[42]

 
*686 C. Misuse of Patent

Nor is there any substance to the defense that there has been misuse of the patent through combining of unpatented articles with the patented articles and forcing the purchase of both,the type of restrictive agreement and misuse of the patent monopoly which courts have in the past deemed sufficient to deny enforceability.^[43]

In the original agreement dated September 9, 1939, between Martin and McCullough, a clause was inserted which read:

 

"Sixth: Licensee agrees that he will not manufacture and/or rent and/or use and/or sell any device or devices that are competitive in their uses or purposes to those herein referred to or that the Licensor may develop and/or patent with the consent of the Licensee."

This clause was never put into effect. And an amendment to the agreement dated December 31, 1941, which eliminated it, was not made to legalize a possible illegality of the contract, but to formalize by writing what had actually been the practice since the inception.

Because of the nature of the patented devices, McCullough sells (in the United States) its services in conjunction with the employment of its own men to operate them upon wire trucks which they own and which are not patented. These wire trucks are used to lower the instrument into the well and to energize the device. But the evidence in the record shows that McCullough has made these same services available to other companies, competitors in the same field, which are permitted to use their own wired trucks. It was testified that when this is done the McCullough crew must carry, often by airplane, as much as 500 pounds of electrical equipment. For this reason, the price for the service is the same. It is argued that because of this the competitive device of the defendants (the "Free-Point-Indicator") cannot well compete with the device of the plaintiffs (the "Magna-Tector") unless the defendants have at various oil fields trucks of the same type. It is insisted that an oil company seeking the service is compelled to take McCullough's because they have the equipment, and they offer it at a combination price which is advantageous to those seeking the service.

The argument is somewhat contradictory. It is argued, on one hand, that oil operators are forced to accept a fixed price for services, whether they use the wiring trucks or not and, on the other hand, that McCullough's competitors are at a disadvantage because McCullough has available these trucks at all points. As stated at the trial, the insistence on the operation of a tool of this character by one's own employees has many economic and business reasons to commend it. To allow employees to operate on someone else's trucks might raise very complicated legal questions in states like California which have stringent Employer's Liability Laws.^[44] For the relationship existing between the employer and employee may change when an employee performs work for an independent contractor or is loaned to another employer.^[45]

*687 More, I am of the view that more recent cases have sustained agreements of this character involving "package" deals which give price advantages to customers where the field is open to others and there is no intention to exclude or monopolize.^[46] These cases revive the doctrine that mere price advantage which does not involve the monopoly of a substantial portion of commerce is not illegal.^[47] This principle was given recognition recently by our Court of Appeals in a case in which the Court, speaking through Stephens, Chief Circuit Judge, stated:

 

"The mere fact that an owner of a patented article combines the article with an unpatented article and sells or leases the unit as a whole does not per se prove misuse. The holder of a patent can exploit his legally protected monopoly in the patent as best he sees fit, so long as in doing so he does not restrain competition in the unpatented article."^[48]

 
VI 
Infringement

It follows that none of the special defenses is valid. That the defendants' device infringes cannot be questioned. In one of their own operating manuals the defendants describe their tool in this manner:

 

"The Dia-Log Free Point Indicator is an electrical strain gauge lowered on a conductor cable in an oil well to measure stretch and torque movement in drill pipe, tubing, and casing. The tool assembly as run in the well comprises three sections: (1) the weights, (2) the jar section, and (3) the tool itself consisting of the lower centralizing springs, the strain gauge element, and the upper centralizing springs.

 

"Usually three lead filled weights having a central electrical conductor are placed above the tool to force it down the pipe against the friction of the centralizing springs. Each weight, 1 5/8 " in diameter and five feet long, weighs forty-five pounds.

 

"The jar section has a one foot stroke which separates the strain gauge element and centralizing springs from the conductor cable and weights as the pipe is stretched. Overall length of the tool is 9½ feet with the jars closed and 10½ feet with the jars open.

 

"The two sets of adjustable centralizing springs are spaced 52 inches apart. Weight of the tool is sixteen pounds. Each set of springs will hold approximately twenty pounds, and thus if the two sets are properly adjusted, they will support more than twice the weight of the tool without slipping. Coil springs in combination with the centralizing springs permit the tool to pass through small openings and still hold in larger pipe. For example, with springs set to hold in 4½ inch drill pipe, the tool will still pass through and hold in 2 inch I.D. drill collars. Maximum diameter of the tool is 1 5/8 inches and the smallest opening through which it will pass is 1¾ inches.

 

"As a length of pipe is stretched or torqued, there is an approximately uniform stretch or angular deflection for any unit length. The Free Point Indicator strain gauge element measures the stretch or angular deflection of the 52 inch section *688 of pipe between the two sets of centralizing springs."

It is admitted that this device achieves the same result as the patented devices. Identity of result alone is, of course, not sufficient to invalidate a patent, if it is secured by different means which are not equivalents.^[49] However, here the means used are either identical or clearly within the range of equivalence of what we have declared to be a pioneer or generic patent.

 
A. Identity of Structure

The defendants' device contains two anchor members, belly springs, connected by a slip joint which permits the two members to freely move apart without resistance. They can be freely rotated, one with reference to the other and they can be easily separated. While the structure is not lowered into the well by a cable it is so lowered by weight under the force of gravity so that it comes to a selected position within the well. There are means which are responsive to the relative movement of the two anchor members for imparting to an operator outside the well an indication of the relative movement.

These are all elements of Claim 10 of Martin '308 which read upon the defendants' structure. The same is true of Claim 6 of Martin '309. For the accused device has two anchor members, the belly springs, which are connected together for relative movement, and are so connected to the pipe within the well that movement in that part of the well will produce relative movement between the two anchor members. The accused device has inductance inclined pole face type elements connected with one of the anchors in close relation to it. That is the armature disposed in movable relation to the winding, one connected with the lower anchor being the armature and the other being the electric core connected with the upper anchor, and the slip joint connection between the two anchor members permits variation of the two elements, so that the change in electrical impedance within the gauge gives an electrical current flow indicative on the meter at the surface of the ground of the movement of the members. When the inductance inclined pole faces of the defendants' structure move apart by the separation of the anchor means to vary the air gap between the inclined pole faces, the result is to produce an electrical change which is as defined in these claims.

Without going into greater detail we state that we find the same similarity between the Brookes patent and the defendants' device. The claimed distinction between the two arising from the use of belly springs instead of the anchors, means little unless it is shown that defendants conceived the idea of the use of the belly spring before Brookes taught it to the art. If they did not, they are infringing, notwithstanding change of form.

 
B. Operation and Result

The operation of the accused device, which correctly describes the function of the tool in such manner as to show the identities which spell infringement, may be summed up in this manner: There is a line on the wired truck, connected at the surface of the earth to a meter, which supports the down hold instrument. The top of the unit ("The Dia-Log-Free Point Indicator") consists of weights and two driller jars. The weights have a conductor running through the center and there is a slip joint immediately above at the top of the tool referred to as "tubular jars" in the defendants' catalogue drawing. When they start into the well with the tool there is at the top of the tool a set of belly springs or anchor members. Immediately below, there is an electronic indicating element which is located between the two belly spring assemblies. Below the sensing element is another set of belly springs. When the tool is lowered *689 into the well gravity holds it in the well. When the desired point to be checked is reached the weights are released from the top of the tool and the two members anchor the tool in place. Then a stretch or torque is applied to the pipe. And if the two anchor members change in relation to each other, the induction in the coil is changed and it becomes electrical energy, which is recorded at the surface. Otherwise put, when the inductive gap is opened by either stretch or torque the impedance of the inductor is changed. The change affects the electrical current flow through the variable inductor, which is the sensing element in the tool, and, on being measured at the surface, informs the operator whether the pipe is free or stuck at the point.

It follows that there is identity of function, relationship of parts, mode of operation and results.^[50] There is evidence in the record that the device of the defendants can be and has actually been, used in situations where the plaintiff's devices cannot be used or where they actually failed, because the defendants' device is in "continuous engagement" with the pipe. Assuming that this is the fact and that it is due to an improvement which the defendants made, they are not entitled to use the basic patent without the payment of a royalty.^[51]

Judgment will therefore be for the plaintiff, the exact terms to be contained in a separate decision filed herewith. *690 *691 *692 *693 *694 *695 *696 *697 *698 *699 *700 *701 *702 *703 *704 *705 *706 *707 *708

NOTES

[1] "10. In a device having parts adapted to be lowered into a well for determining whether a portion of a tubular member in the well is movable, the combination of: a pair of members connected together in movable relation; means for moving said members down into the well to selected positions; means for connecting each of said members to a different part of a localized portion of said tubular member in the well; and means responsive to relative movement of said members for imparting to an operator outside the well an indication of said relative movement. * * *

"15. In a device for determining which portions of a pipe stuck in a well are movable, an organization adapted to be lowered into said pipe to selected positions, said organization having at least one member adapted to engage a selected portion of said pipe and comprising: means operative to move said organization from place to place in the well; means for effecting engagement of said member with a selected portion of the pipe for supporting said member independently of said first-named means so that movement of said selected portion will be transmitted to and cause movement of said member; and electrical movement sensing means in said organization in the well, adapted to produce an electrical signal in consequence of said movement of said member, and means at the surface of the ground connected to said sensing means and adapted to indicate said signal." (Patent No. 2,530,308, Nov. 14, 1950, P. W. Martin, Exhibit 1. See post, p. 690.)

[2] "6. In a device of the character described, for obtaining information from a well of movement of parts in the well, the combination of: a pair of members connected together in movable relation and adapted to be lowered into a well; means for connecting each of said members to separate parts in a well so that movement of said parts will produce relative movement of said members; means forming an electrical circuit having a winding support in close relation to one of said members; an armature disposed in movable relation to said winding; means for producing a fluctuating current flow in said circuit; means connecting said armature and one of said members so that relative movement of said members will cause relative movement of said armature and said winding and thereby change at least one of the characteristics of said current flow; and means at the top of the well adapted to act in response to said change in said current flow and indicate said relative movement of said members. * * *

"10. In a device of the character described, for use with a circuit which extends down into a well and means for producing a fluctuating electrical flow in said circuit: a pair of members connected together in movable relation and adapted to be lowered into the well; means operable to produce such engagement of said members with separate parts in the well that relative movement of said parts will cause relative movement of said members; and variable inductance means arrange for coupling to said circuit, said inductance means having relatively movable elements, at least one of which elements comprises a winding, and one of said elements being connected to one of said members and another of said elements being connected to the other of said members, to effect relative movement of said elements and variation of said inductance means in consequence of relative movement of said members." (Patent No. 2,530,309, Nov. 14, 1950, P. W. Martin, Exhibit 2. See post, p. 698.)

[3] "5. In a device for determining the point at which a pipe is stuck in a well, the combination of; an assembly adapted to be lowered into the pipe, said assembly having space expansible members comprising bow springs to frictionally engage the wall of the pipe and vertically extending means connecting said members so that they may be relatively rotated around the axis of the pipe in response to torsional deformation of said pipe, one of said members being rotatable relative to said vertically extending means; conductors extending in proximity to said assembly and forming an electric circuit extending from the top of the well to said assembly; means producing an electrification of said circuit; electrical control means forming a part of said assembly and connected to said vertically extending means and one of said members so as to be actuated in response to relative rotation of said members, said control means having parts acting to change an electrical characteristic of said electrification when there occurs relative rotation of said members; and electro-responsive indicating means at the top of the well coupled with said circuit, operative to indicate said change in said characteristic of said electrification and thereby indicate that there has been a relative rotation of said members." (Patent No. 2,550,964, May 1, 1951, N. Brookes, Exhibit 3. See post, p. 704.)

[4] 28 U.S.C.A. § 1338.

[5] 35 U.S.C.A. § 102(a) (b) and (f).

[6] International Business Machines Corp. v. United States, 1936, 298 U.S. 131, 135-136, 56 S. Ct. 701, 80 L. Ed. 1085; Hazel-Atlas Glass Co. v. Hartford Empire Co., 1944, 322 U.S. 238, 250, 64 S. Ct. 997, 88 L. Ed. 1250; Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 1945, 324 U.S. 803, 814, 65 S. Ct. 993.

[7] 35 U.S.C.A. § 282(1); McCullough v. Kammerer, Corp., 9 Cir., 1948, 166 F.2d 759; Chamberlin v. Clark Bros., D.C. Cal.1951, 96 F. Supp. 498, 500.

[8] Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp., 1938, 303 U.S. 545, 549, 58 S. Ct. 662, 82 L. Ed. 1008; Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 71 S. Ct. 127, 95 L. Ed. 162.

[9] Moist Cold Refrigerator Co. v. Lou Johnson Co., 9 Cir., 1957, 249 F.2d 246, 253; Bergman v. Aluminum Lock Shingle Corp., 9 Cir., 1957, 251 F.2d 801. And see, Goldman v. Bobins, 7 Cir., 1957, 245 F.2d 840.

[10] Benjamin Electric Mfg. Co. v. Dale Co., 2 Cir., 1907, 158 F. 617, 619-620; Century Electric Co. v. Westinghouse Electric & Mfg. Co., 8 Cir., 1911, 191 F. 350; Independent Oil Well Cementing Co. v. Halliburton, 10 Cir., 1932, 54 F.2d 900, 902; Buono v. Yankee Maid Dress Corp., D.C.N.Y.1934, 7 F. Supp. 793, 794, 795.

[11] Century Electric Co. v. Westinghouse Electric & Mfg. Co., supra, Note 10, 191 F.2d at page 353.

[12] Hycon Mfg. Co. v. H. Koch & Sons, 9 Cir., 1955, 219 F.2d 353, 356.

[13] Ansonia Brass & Copper Co. v. Electrical Supply Co., 1892, 144 U.S. 11, 18, 12 S. Ct. 601, 36 L. Ed. 327. See, Potts v. Creager, 1895, 155 U.S. 597, 606-607, 15 S. Ct. 194, 39 L. Ed. 275.

[14] Westinghouse v. Boyden Power Brake Co., 1898, 170 U.S. 537, 561-562, 18 S. Ct. 707, 42 L. Ed. 1136; Cimiotti Unhairing Co. v. American Fur Refining Co., 1905, 198 U.S. 399, 406-407, 25 S. Ct. 697, 49 L. Ed. 1100.

[15] Westinghouse v. Boyden Power Brake Co., supra, Note 14, 170 U.S. at pages 561-562, 18 S.Ct. at page 718.

[16] Smith, Kline & French Laboratories v. Clark & Clark, 3 Cir., 1946, 157 F.2d 725, 729; Walker on Patents, Deller Ed., 1937, §§ 247, 471. Indeed, the present tendency is to give the full benefit of liberal equivalence to worthy patents which may not be in the pioneer class. In a leading case the Supreme Court has stated:

"One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism and would be subordinating substance to form. It would deprive him of the benefit of his invention and would foster concealment rather than disclosure of inventions, which is one of the primary purposes of the patent system.

"The doctrine of equivalents evolved in response to this experience. * * * The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U.S. 647, 655, 25 L. Ed. 945, although the area of equivalence may vary under the circumstances. * * * What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was." Graver Tank & Mfg. Co. v. Linde Air Products Co., 1950, 339 U.S. 605, 607-609, 70 S. Ct. 854, 856, 94 L. Ed. 1097. (Emphasis added.)

[17] "Patents are not limited to the structure described and shown, but the invention may be embodied in various forms. A transposition or rearrange-of the parts as set forth in a patent is an embodiment of the patented invention and does not avoid infringement unless form, location of sequence is essential to the result or to the novelty of the claims." Apex Electrical Mfg. Co. v. Maytag Co., 7 Cir., 1941, 122 F.2d 182, 187. (Emphasis added.)

And see, Borg-Warner Corp. v. Mall Tool Co., 7 Cir., 1954, 217 F.2d 850, 853.

[18] Grant v. Koppl, 9 Cir., 1938, 99 F.2d 106, 110; Atlantic Refining Co. v. James B. Berry Sons Co., 3 Cir., 1938, 106 F.2d 644, 650; McRoskey v. Braun Mattress Co., 9 Cir., 1939, 107 F.2d 143, 147; and see, Braun, Inc. v. Kendall-Lamar Corp., 2 Cir., 1941, 116 F.2d 663, 665; Apex Electrical Mfg. Co. v. Maytag Co., supra Note 17; Schnitzer v. California Corrugated Culvert Co., 9 Cir., 1944, 140 F.2d 275, 276; Pointer v. Six-Wheel Corp., 9 Cir., 1949, 177 F.2d 153.

[19] John Waldron Corp. v. Equitable Paper Bag Co., Inc., 3 Cir., 1939, 106 F.2d 724; Air Devices, Inc. v. Air Factors, Inc., 9 Cir., 1954, 210 F.2d 481, 482.

[20] 35 U.S.C.A. § 281.

[21] "Commercial success is really a make-weight where the patentability question is close." Jungersen v. Ostby & Barton Co., 1949, 335 U.S. 560, 567, 69 S. Ct. 269, 272, 93 L. Ed. 235.

And see, Goodyear Tire & Rubber Co., Inc., v. Ray-O-Vac Co., 1944, 321 U.S. 275, 279, 64 S. Ct. 593, 88 L. Ed. 721. Between 1946 and September 1, 1957, according to the books of McCullough, the operation of the device has brought to the Company a total income of $5,250,247.82. Of this amount, sales in the United States amounted to $4,689,361.50, sales in Canada to $345,208.80, and sales in foreign countries other than Canada, amounted to $215,677.52. During this period, Martin has received as royalties $259,557.35.

[22] McLean v. Ortmayer, 1891, 141 U.S. 419, 428-429, 12 S. Ct. 76, 35 L. Ed. 800; Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 1945, 324 U.S. 320, 330, 65 S. Ct. 647, 89 L. Ed. 973; Leishman v. General Motors Corp., 9 Cir., 1951, 191 F.2d 522; Jungersen v. Ostby & Barton Co., supra, Note 21, 335 U.S. at pages 567-568, 69 S.Ct. at page 272; Container Corporation of America v. M. C. S. Corp., 9 Cir., 1957, 250 F.2d 707.

"But commercial success without invention will not make patentability." Great Atlantic & Pacific Tea Co. v. Supermarket Corp., 1950, 340 U.S. 147, 153, 71 S. Ct. 127, 130, 95 L. Ed. 162.

[23] Goodyear Tire & Rubber Co., Inc. v. Ray-O-Vac Co., supra, Note 21, 321 U.S. at page 279, 64 S.Ct. at page 594. Judge Learned Hand expressed the same idea in almost identical language many years ago, in Traitel Marble Co. v. U. T. Hungerford Brass & Copper Co., 2 Cir., 1927, 18 F.2d 66, 68. We may well apply to Martin and Brookes the words of The Barbed Wire Patent, Washburn & Moen Mfg. Co. v. Beat 'Em All Barbed-Wire Co., 1892, 143 U.S. 275, 283, 12 S. Ct. 443, 446, 36 L.Ed. 154:

"In the law of patents it is the last step that wins. It may be strange that, considering the important results obtained by Kelly in his patent, it did not occur to him to substitute a coiled wire in place of the diamond shape prong, but evidently it did not; and to the man to whom it did ought not to be denied the quality of inventor. There are many instances in the reported decisions of this court where a monopoly has been sustained in favor of the last of the series of inventors, all of whom were groping to attain a certain result, which only the last one of the number seemed able to grasp." (Emphasis added.)

[24] Motion Pictures Patents Co. v. Universal Film Mfg. Co., 1917, 243 U.S. 502, 510, 37 S. Ct. 416, 418, 61 L. Ed. 871. And see, Mercoid Corp. v. Mid-Continent Co., 1944, 320 U.S. 661, 665, 64 S. Ct. 268, 88 L. Ed. 376.

[25] See cases cited in Note 11.

[26] The Telephone Cases, Dolbear v. American Bell Tel. Co., 1888, 126 U.S. 1, 8 S. Ct. 778, 782, 31 L. Ed. 863.

[27] The Telephone Cases, supra, Note 26, 126 U.S. at page 535, 8 S.Ct. at page 782. In a later case, which came from the Ninth Circuit, the Court said:

"It is not necessary, in order to sustain a generic patent, to show that the device is a commercial success. The machine patented may be imperfect in its operation; but if it embodies the generic principle and works, that is, if it actually and mechanically performs, though only in a crude way, the important function by which it makes the substantial change claimed for it in the art, it is enough." Hildreth v. Mastoras, 1921, 257 U.S. 27, 34, 42 S. Ct. 20, 23, 66 L. Ed. 112.

[28] The Telephone Cases, supra, Note 26, 126 U.S. at pages 535-536, 8 S.Ct. at page 782.

[29] Temco Electric Motor Co. v. Apco Mfg. Co., 1928, 275 U.S. 319, 328, 48 S. Ct. 170, 173, 72 L. Ed. 298; United States v. Line Material Co., 1948, 333 U.S. 287, 291, 68 S. Ct. 550, 92 L. Ed. 701.

[30] Aluminum Company of America v. Thompson Products, 6 Cir., 1941, 122 F.2d 796, 799; Haynes Stellite Co. v. Chesterfield, 6 Cir., 1927, 22 F.2d 635, 638.

[31] The Telephone Cases, supra, Note 26.

[32] Potts v. Creager, 1895, 155 U.S. 597, 607-608, 15 S. Ct. 194, 198, 39 L. Ed. 275.

[33] Kennicott Co. v. Holt Ice & Cold Storage Co., 7 Cir., 1916, 230 F. 157, 160; Jones v. Sykes Metal Lathe & Roofing Co., 6 Cir., 1918, 254 F. 91, 96; Cincinnati Rubber Mfg. Co. v. Stowe Woodward, Inc., 6 Cir., 1940, 111 F.2d 239, 242.

[34] See the writer's recent opinion in Elrick Rim Co. v. Reading Tire Machinery Co., D.C.Cal.1957, 157 F. Supp. 60, where the validity of a process patent was attacked because of alleged improper use of the word "emulsion". See, Tubular Service Engineering Co. v. Sun Oil Co., 5 Cir., 1955, 220 F.2d 27, 31, in which the Court had this to say of an attempt to circumscribe a patent by attaching to some of the elements of the device designations that the inventor did not use in his claims:

"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." (Emphasis added.)

[35] See cases in Note 32.

[36] We quote from the record:

"The defendants contend that that combination comprised the lowering cable, pipe stretched or torques, detecting means, connecting means between the pipe, and the detecting means, electronic or electrical conductors, surface circuitry and indicating means.

"The defendants contend that that entire combination is to be found in the Crites patent, U. S. 2,250,703, the Ennis patent, U. S. 2,228,623, the Ruge patent, U. S. 2,216,975, 2,359,072 and 2,392,293, the Kinley patent, 1,654,819, the Lamberger patent, 2,275,532, the Vacquier patent, U. S. 2,281,960, the Sweet patent, U. S. 2,078,426, the Johnson patent, 2,300,384, the Brandon patent, 2,322,343, the Silverman patent, 2,422,806, the Silverman patent was a strain gauge used in an oil well for measuring the amount of strain on drill collars. This patent had attachment members used in an oil well, it had everything, your Honor please, except the detachable holding means of the plaintiffs.

"Now, the detecting means used here by everyone are admittedly old, and they are also disclosed in the Crites patent, U. S. 2,250,703, the Ennis patent, 2,228,523. * * *

"In other words, magnetostrictive strain gauges, resistance-type strain gauges, and variable inductance type strain gauges, are there all made equivalent for the purpose of detecting movement of pipe in a well, and it was demonstrated in the court, your Honor, by means of the model EP of the Ruge patent, and the model BY of the Howes patent that all of those devices are equivalent for detecting movement of pipe in a well.

"The use of belly springs as a holding structure is disclosed in the Kinley patent of springs, No. 1,654,819; the Vacquier patent, No. 2,281,960, Nos. 18, and the Brandon patent, No. 2,322,343. * * *

"Many, many methods are disclosed for attaching devices to structures for detecting movements or strain. Mechanical gripping means are disclosed in the Sweet patent, U. S. Patent No. 2,078,426. The dogs or slips are disclosed therein Item 21.

"The Lamberger patent, U. S. No. 2,275,432, screws. The Johnston patent, No. 2,300,384, slips. The Ruge patent, U. S. 2,392,293, set screws."

[37] Indiana & Illinois Coal Corp. v. Clarkson, 7 Cir., 1937, 91 F.2d 717, 721.

[38] Walker on Patents, Deller Ed., 1937, § 21.

[39] Measuregraph Co. v. Grand Rapids Show Case Co., 8 Cir., 1928, 29 F.2d 263, 275; see, Dyer v. Sound Studios of New York, 3 Cir., 1936, 85 F.2d 431, 432.

"A mere idea, of course, is not patentable, and the abandonment of a mere experiment to put an idea into concrete form and practical operation will constitute no impediment to a future patentable disclosure." Indiana & Illinois Coal Corp. v. Clarkson, supra Note 37, 91 F. 2d at page 721.

[40] 35 U.S.C.A. § 102(f). As stated in a famous case:

"The invention or discovery relied upon as a defense, must have been complete, and capable of producing the result sought to be accomplished; and this must be shown by the defendant. The burden of proof rests upon him, and every reasonable doubt should be resolved against him. If the thing were embryotic or inchoate; if it rested in speculation or experiment; if the process pursued for its development had failed to reach the point of consummation, it cannot avail to defeat a patent founded upon a discovery or invention which was completed, while in the other case there was only progress, however near that progress may have approximated to the end in view. The law requires not conjecture, but certainty. If the question relate to a machine, the conception must have been clothed in substantial forms which demonstrate at once its practical efficacy and utility." Coffin v. Ogden, 1873, 18 Wall. 120, 124, 85 U.S. 120, 124, 21 L. Ed. 821. (Emphasis added.)

The Howes attempts were experimental and speculative. Martin and Brookes produced real inventions. See, Pointer v. Six-Wheel Corp., 9 Cir., 1949, 177 F.2d 153, 157-158.

"It is not sufficient to constitute an anticipation that the device relied upon might, by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such functions." Topliff v. Topliff, 1892, 145 U.S. 156, 161, 12 S. Ct. 825, 828, 36 L. Ed. 658. (Emphasis added.)

[41] 35 U.S.C.A. § 282(1). And see, cases cited in Note 7.

[42] United States v. Murdock, 1933, 290 U.S. 389, 394, 54 S. Ct. 223, 78 L. Ed. 381. See, Marks v. Polaroid Corp., 1 Cir., 1956, 237 F.2d 428, 436.

[43] See cases cited in Note 6. And see, Morton Salt Co. v. G. S. Suppiger Co., 1942, 314 U.S. 488, 491-494, 62 S. Ct. 402, 86 L. Ed. 363; International Salt Co., Inc. v. United States, 1947, 332 U.S. 392, 397-398, 68 S. Ct. 12, 92 L. Ed. 20.

[44] Workmen's Compensation & Insurance, California Labor Code, Section 3201 et seq.

[45] California Labor Code, § 5705(a); Riskin v. Industrial Accident Commission, 1943, 23 Cal. 2d 248, 254-255, 144 P.2d 16. And see, Scott v. Pacific Coast Borax Co., 1956, 140 Cal. App. 2d 173, 178-179, 294 P.2d 1039, interpreting the words "arising out of employment" or "in the course of employment". California Labor Code, §§ 3600-3601. The difficulties which might arise if an employee is loaned to another is illustrated in a noted California case in which the fact of injury by one in the employment of another employer was concealed from the employee. The employee was permitted to sue the special employer, after discovering the concealment. Kimball v. Pacific Gas & Electric Co., 1934, 220 Cal. 203, 30 P.2d 39.

[46] Times-Picayune Co. v. United States, 1953, 345 U.S. 594, 624-626, 73 S. Ct. 872, 97 L. Ed. 1277; Technical Tape Corp. v. Minnesota Mining & Mfg. Co., 2 Cir., 1957, 247 F.2d 343, 357-358. See, Cutter Laboratories, Inc. v. Lyophile-Cryochem Corp., 9 Cir., 1949, 179 F.2d 80, 92-94.

[47] Whitwell v. Continental Tobacco Co., 8 Cir., 1903, 125 F. 454, 459-461.

[48] Stearns v. Tinker & Rasor, 9 Cir., 1958, 252 F.2d 589.

[49] Air Devices v. Air Factors, Inc., 9 Cir., 1954, 210 F.2d 481, 483. And see cases cited in Note 19; Swan Carburetor Co. v. Chrysler Corp., 6 Cir., 1942, 130 F.2d 391, 393.

[50] A case which arose in the 7th Circuit has a very important bearing upon this phase of the case. The patent related to a slug rejecting device. The infringing device modified a previous model which had been held to infringe the patent by causing the finger instead of the cradle projection of the device to move when it was necessary that one of two move while the other be fixed. This departure was held a mere transposition of motion of cooperating parts of the device. We quote in full this portion of the opinion:

"In the later models defendant has so arranged the parts as to move laterally, during the operation of rejection of the under-weighted coin, the arm or finger of Claim 21, instead of the cradle projections themselves, in order to remove the intercepted coin and cause it to drop down the rejection passage, the pathway for the rejected slugs. In other words, the stripping finger is moved instead of the cradle, which remains fixed. Thus, in one device, the cradle moves; in the other, the finger. In both, however, they must act in co-operation. There is no difference in results. The operation necessarily requires that one element remain fixed and the other move. We cannot see that it involved any conception of a different mechanical principle or method of operation to make the moving part the finger instead of the cradle. In other words, the movement of each toward or away from the other must be relative as to each other, such as makes it possible that both move transversely to each other or that either one be fixed and the other movable. This, we think, is a mere transposition of motion of cooperating parts of the devices of the patent, equal to and corresponding with what the patent prescribed, within the purview of the courts' decisions in Hildreth v. Mastoras, 257 U.S. 27, 42 S. Ct. 20, 66 L. Ed. 112; Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 40-43, 50 S. Ct. 9, 74 L. Ed. 147; Blake v. Robertson, 94 U.S. 728, 24 L. Ed. 245; Tratsch v. Chicago Lock Co., 7 Cir., 72 F.2d 482, 485. This court said, in the last mentioned case: `The only question presented, therefore, is whether appellant avoids infringement by placing the abutment member P and S1 on the slide instead of on the guide, and by forming the elongated slot D in the guide instead of the slide, and we are convinced that the question must be answered in the negative. In appellant's devices there is a mere reversal or transposition of parts used in the patent, but they produce the same functions in substantially the same way, and accomplish the same result as the patent.' The language quoted is directly applicable to the devices held not to infringe." National Rejectors, Inc. v. A.B.T. Mfg. Corp., 7 Cir., 1951, 188 F.2d 706, 708-709. (Emphasis added.)

And see, Brown v. Brock, 4 Cir., 1957, 240 F.2d 723, 728.

[51] See cases cited in Note 29.