Martin v. Ford Alexander Corporation

160 F. Supp. 670, 117 U.S.P.Q. (BNA) 378, 1958 U.S. Dist. LEXIS 2542
CourtDistrict Court, S.D. California
DecidedMarch 10, 1958
Docket13289
StatusPublished
Cited by11 cases

This text of 160 F. Supp. 670 (Martin v. Ford Alexander Corporation) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Martin v. Ford Alexander Corporation, 160 F. Supp. 670, 117 U.S.P.Q. (BNA) 378, 1958 U.S. Dist. LEXIS 2542 (S.D. Cal. 1958).

Opinion

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 An-geles, 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 Mov-ability 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 in *674 fringement. 4 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 Mm 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 ease 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:

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Bluebook (online)
160 F. Supp. 670, 117 U.S.P.Q. (BNA) 378, 1958 U.S. Dist. LEXIS 2542, Counsel Stack Legal Research, https://law.counselstack.com/opinion/martin-v-ford-alexander-corporation-casd-1958.