Ingersoll-Rand Company, Plaintiff-Appellant-Cross v. Brunner & Lay, Inc., Defendant-Appellee-Cross

474 F.2d 491
CourtCourt of Appeals for the Fifth Circuit
DecidedApril 4, 1973
Docket72-2026
StatusPublished
Cited by27 cases

This text of 474 F.2d 491 (Ingersoll-Rand Company, Plaintiff-Appellant-Cross v. Brunner & Lay, Inc., Defendant-Appellee-Cross) is published on Counsel Stack Legal Research, covering Court of Appeals for the Fifth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ingersoll-Rand Company, Plaintiff-Appellant-Cross v. Brunner & Lay, Inc., Defendant-Appellee-Cross, 474 F.2d 491 (5th Cir. 1973).

Opinion

CLARK, Circuit Judge:

Invalidity for obviousness 1 is the broad subject of this patent appeal. A subsidiary issue is joined on the trial court’s application of the doctrine of file wrapper estoppel. The imitator who was successful in the court below cross-appealed from the court’s refusal to award it attorney’s fees. 2 Because we reverse the trial court’s determination of obviousness and its invocation of an estoppel against the patentees, the attorneys’ fee issue is eliminated; but the case must be remanded for an accounting.

United States Letters Patent No. 3,424,479 issued to J. D. Ditson and James F. Cantrel, the assignors of the plaintiff, Ingersoll-Rand Company, on a coupling and rod system for rock drills. The present action was instituted to enjoin the defendant, Brunner & Lay, Inc., from manufacturing and marketing a drill rod which was alleged to infringe Claims 4 and 5 of the 479 patent. 3 No issue was raised as to the novelty or utility of the device covered by these patent claims. 4 Nor is infringement an issue on this appeal. 5 The complaint sought injunctive relief against continued infringement and an accounting for damages. Brunner & Lay counterclaimed for declaratory judgment of patent invalidity and sought general relief. Brunner & Lay now contends that In-gersoll-Rand’s assignors were guilty of fraud in the procurement of the patent and that the trial court abused its discretion in refusing to allow Brunner & Lay to recover attorneys’ fees incurred in defense of the litigation.

*494 Background of the Patent

A percussion drilling rod, as described in the patent claims, is a thick steel tube usually 10 feet in length and iy2 inches in outside diameter, which forms a connection between a hammer on one end and a bit on the other end in an equipment system used to drill holes into rock formations for the purpose of setting dynamite charges. A simple analysis of the physics of the system discloses that rapid hammer blows are struck on the upper end of the drilling rod, which then drives the bit attached to its lower end into the dense material being drilled. As heavier and more efficient hammers and better bits were developed and deeper hole capacity was required, rods were strengthened and were provided with threaded sections at both ends to facilitate attachment to the hammer and bit and to enable interconnection between drill rods. Modern day drill rods not only transmit the enormous force of the rapid heavy hammer blows to the bit, but also serve to carry a stream of air down their bore and through the center of the bit to blow chips and debris back up and out of the hole.

Technology which brought improvements at the hammer and bit ends, made rod breakage due to metal fatigue and wear of threads the most acute equipment problems in this field. When drill rod breaks occurred the equipment operator either had to abandon the broken rod and bit and start a new hole with new equipment, or he had to retrieve the broken section and recondition or replace it. Rods with worn threads similarly had to be reconditioned or replaced. Prior to the marketing of present patented rod, the two principal solutions were to (1) use rods made of relatively low strength steel, which, while subject to breakage, could be reconditioned at the job site by cutting additional threads; or (2) use rods of high strength treated steel which did not break as often, but could only be reconditioned at a machine shop. Although breakage may occur at any point throughout the length of the rod, most breakage failures and wear outs oc-cured within the threaded areas at the ends.

The Patent in Issue

In May of 1965, J. D. Ditson applied for a patent on a coupling and drill rod system. On January 11, 1966, a eontinu-ation-in-part patent application was filed by Ditson and James F. Cantrel with the verified explanation that Cantrel had conceived and reduced a portion of the invention to practice. This joint application eventuated in the grant of the 479 patent to Ditson and Cantrel. The claims in issue here (see footnote 3 above) taught the construction of a drill rod which had a continuous roll-formed thread with a groove in its crest over the entire length of the rod. Illustrative diagrams from the patent grant are appended to this opinion.

Pertinent to the claims involved here, the specifications of the patent provided that among the objects of the invention was to provide a system which would enable the use of high strength rods that could be reconditioned in the field. Other advantages in greater inherent strength and more efficient transmission of energy were said to result from the manner in which the rod and its accompanying coupling member would operate. Specifically, the uniformity of cross-section was described as advantageous in eliminating stress raising factors and possible causes of premature rod failure associated with points of variation in rod cross-section. The process of reconditioning a failed or broken rod was stated to be simplified because it required only the cutting off of the failed or broken portion with a steel saw. This was said to enable the rod manufacturer to initially employ special materials and unusual heat treatment and finishing processes in the fabrication of the rod without consideration of the field reconditioning problems that had previously limited use of such strengthening processes and materials.

*495 The Standard of Review

Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), blocks out the equation to guide our detailed fact-law analysis of the trial court’s conclusion that claims 4 and 5 of the 479 patent were erroneously allowed upon an obvious device.

While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. at 155, 71 S.Ct. at 131, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art axe to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

Here the controlling facts are undisputed. Our task is to set them into the formula standard and calculate the result.

The Prior Art

The art involved is that of metallurgy, in general, and the formation of steel rods for percussion drilling, in particular.

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Bluebook (online)
474 F.2d 491, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ingersoll-rand-company-plaintiff-appellant-cross-v-brunner-lay-inc-ca5-1973.