Full opinion text
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. 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. 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. 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. To these have been added certain special defenses: invention by another, fraud practiced upon the Patent Office which calls for a denial of any relief in a court of equity, and misuse of the patent through restrictive agreements, which render the patents unenforceable. 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. 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].” 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. 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 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.” 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. 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. A wider range of equivalents is permitted in a patent of a pioneer character. 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.” There has been no deviation from this interpretation of the meaning of the word since. In interpreting the claims of a patent we are not limited to the structure described. Nor is the mere reading of the claims upon a device determinative of infringement unless there is substantial identity of function, means and result. Identity of operation of a device is not conclusive unless it is arrived at in the same operative manner. 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, 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.” 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. Commercial success means nothing if there be no invention. 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.” 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, 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.’ ” 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 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. 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, 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.” -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.” For the same reason, an improver of a basic invention “without a license is an infringer, and may be sued as such.” 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. 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. 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.” 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 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 e'ause 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.” 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”. 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. 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. 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. 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 easing from the well.” n 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.” 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.” 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. Patent-ability does not attach to ideas but to their practical embodiment in completed inventions. 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.” 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. 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. 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 Mag-na-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. 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. 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-Teetor”) 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. 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. 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. These cases revive the doctrine that mere price advantage which does not involve the monopoly of a substantial portion of commerce is not illegal. 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.” 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%" 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 9 % feet with the jars closed and 10% 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 4% 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% inches and the smallest opening through which it will pass is 1% 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 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. 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 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. 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. Judgment will therefore be for the plaintiff, the exact terms to be contained in a separate decision filed herewith. Patented Nov. 14, 1950 2,530,308 UNITED STATES PATENT OFFICE 2,530,308 APPARATUS FOR DETERMINING MOVABILITY OF MEMBERS IN WELLS Philip W. Martin, Huntington Park, Calif. Application September 28, 1945, Serial No. 619,242 17 Claims. (Cl. 73 — 151) 1 My Invention relates to a device adapted to be lowered into a well for determining relative movement between parts in the well or for determining whether a selected portion of a pipe in a well is movable by observing whether a change 5 in the stress applied to the pipe produces a change In the form of the selected portion of the pipe in the well. One important utility of the invention is to find the point in the well where a casing, drill 10 pipe or tubing may be stuck by the measurement of the change in form of the casing, drill pipe or tubing when stress is applied thereto at the surface of the well or at a selected point within the well. A specific example of the utility of 15 the invention is where a drill pipe becomes stuck In the well at an unknown distance below the surface of the ground. If a pull is applied to the upper end of the stuck pipe, there will be an extension or stretching of the pipe throughout the 20 entire length thereof above the point in the well at which the pipe is stuck, but this pull upon the pipe will not produce an extension of that portion of the pipe which is stuck or which extends below the stuck part. 25 It is an object of the present invention to provide a device which may be lowered within the stuck pipe by which a workman at the top of the well may determine whether the portion of the pipe adjacent the device in the well moves or 30 stretches when a pull is applied to the upper end of the pipe. By lowering the device throughout . consecutive positions within the pipe the workman may make a number of observations of whether the pipe moves or stretches in response 35 to a pull applied to its upper end. Through use of the device he will observe that the pull on the pipe will produce a stretch therein until the device reaches the point at which the pipe is stuck in the well, but at the stuck point and therebeiow 40 the device will produce no indication of stretch in the pipe, thereby indicating to the workman the point at which the pipe is stuck in the well. When this point is determined a cutting off tool may be lowered into the drill pipe and the drill 45 pipe may be cut off at or immediately above the point at which it Is stuck in the well; whereupon the portion of the drill pipe above the cut may be pulled from the well. In the foregoing manner a great; deal .of time in the recovery of drill 50 pipe stuck in the well is saved, and the possibility of losing drill pipe in the well is minimized. It sometimes occurs that a pipe, for example, the drill pipe, may become stuck in a well at an intermediate point, the portions of the drill pipe 55 2 above and below that portion which Is stuck being free. It is possible by use of the invention to determine the length and position of that portion of the drill pipe which is stuck in the well. When this knowledge is obtained it will be possible, under some circumstances, to jar loose the portion of the drill pipe which is stuck by the firing of an explosive charge within the stuck portion; whereupon the drill pipe may be pulled from the well without the necessity of cutting it. It is an object of the invention to provide a device which may be lowered through consecutive positions within a well, this device having an anchor member equipped with means for connecting or affixing it to a part in the well, the device also having means associated with the anchor member which will indicate relative movement of another part In the well. For example, in the preferred form of the invention the device is provided with an anchor member having means for attaching it to one part of a pipe in the well and a means which will indicate relative movement of another or adjacent part of this pipe when the value of the stress applied to the pipe is changed. It will be understood that when a pull is applied to the upper end of a pipe, the change in the stress applied to the pipe will produce an elongation or extensile change in form of the pipe, and that when the value of this stress is changed — for example, a decrease in the stress — the change in the form of the pipe will consist in contraction or shortening of all portions of the pipe in which the stress is relieved. Also, the stress applied to the pipe to deform the same may be torsional instead of tensile, under which circumstances all portions of the pipe between the stuck point and the point at which the stress is applied will deform in torsion or, in other words, twist, thereby changing the relation of consecutive portions of the pipe, such changes in relation being observed or indicated by the device. These changes in torsional relation will be indicated when the torsional stress is applied and when it is relieved. A further object of the invention Is to provide a device of the general character referred to in the foregoing having associated with the anchor means thereof a means which responds to relative movement or change in relative position of another part in the well to produce an indication of this relative movement, the invention having means for transmitting to a workman at the top of the well knowledge of the indication and therefore knowledge of the relative movement whereby the workman may determine whether th*« 2.530.308 3 stress applied at the top of the well has accomplished relative movement of the part to which the anchor is connected and another part adjacent thereto. A further object of the invention Is to provide 5 a device of the character set forth in the preceding paragraph wherein the relative movement between parts in a well produces an electrical effect, which electrical effect is employed at the top of the well to produce an indication of the 10 relative movement. A further object of the invention is to produce a device of this character wherein relative movement between the parts in the well produces sound vibrations which are transmitted to the 15 top of the well where they may be observed or recorded. A further object of the invention Is to produce a device of this character wherein relative movement of adjacent parts in the well is em- 20 ployed to change the resistance of an electrical resistance element which controls the electrical potential in a circuit which extends to the top of the well, there being means at the top of the well responding to the variations in the electrical 25 potential of the circuit to produce a sensible indication of the relative movement of the parts in the well. A further object of the Invention is to provide a device of the character set forth in the fore- 30 going having two relatively movable members or anchors, with means for connecting these members to separate parts in the well, so that relative movement of the parts in the well will produce relative movement of the members con- 35 nected thereto, the device also having means for indicating to an operator at the top of the well relative movement of the members. A further object of the invention Is to provide a testing device of the character set forth herein 40 having a normal form of electromagnet for producing attachment of one or more parts of the device to a metal wall, such as the metal wall of a pipe in the well, this electromagnet being of such slender form that the testing device may be 45 made of a diameter which will pass through the opening through devices or tools such as are employed in wells, such, for example, as a spear, It being possible, therefore, to lock the spear to the pipe in the well so as to transmit force to the 5Q pipe and to lower the device into or through the spear for the purpose of making observations of relative movement of parts either above or below the point in the well where the pipe or an intermediate part of the pipe may be fixed against 55 movement. An important utility of the invention is to determine the length of pipe that is securely cemented in a well. In one of its forms the device employs only one magnet for attachment to the $0 pipe in the well, there being a microphone connected to the device for picking up sound resulting from movement of the pipe in the formation. Further objects and advantages of the invention will be brought out in the following part of 55 the specification. Referring to the drawings which are for illustrative purposes only, Fig. 1 is a schematic view showing a preferred embodiment of my invention in a pipe which 70 extends down into a well. Fig, 2 is an enlarged sectional view of the upper portion of the device. Fig. 3 is an enlarged sectional view of the lower portion of the device. 75 4 Fig. 4 is a section taken as indicated by the line 4 — 4 of Fig. 2. Fig. 5 is a cross section taken as indicated by the line 5 — 5 of Fig. 2. Fig. 6 is a cross section taken as indicated by the line 6 — 6 of Fig. 3. Fig. 7 is a schematic view showing an alternative form of the invention. As an example of the utility of my invention I have, in Fig. 1, shown a pipe 10 stuck in a well 11 at the height or position 12. The pipe 10 is representative of any member which may be employed In a well, movement of which within the well will impart to a workman information as to conditions within the well. For example the pipe 10 may be a casing, drill pipe or tubing. 10a may be referred to as the stuck portion of the pipe and 10b may be referred to as the free portion of the pipe. It will be understood that when the pipe Is standing in the well without any pull exerted on its upper end, the lower part 13 of the free portion 10b will be under compression due to the weight of the pipe portion 10b extending upwardly therefrom, and that the upper part 14 of the free portion 10b will be substantially unloaded due to weight of the metal in the pipe. If a pulling stress is applied to the upper end of the pipe 10 which projects from the upper end of the well, the free portion 10b will be elongated an amount depending upon upward pull applied to the pipe. The unit change in form, or elongation, In the free portion 10b of the pipe will be substantially constant throughout its entire length for the reason that the change in stress applied to the pipe due to the upward pull thereon will be substantially the same throughout its entire length above the set portion 10a. That is to say, if an upward pull of 10,000 pounds is applied to the upper end of the free portion 10b, the change in stress throughout the entire length of the free portion 10b will be 10,000 pounds and therefore every portion of the pipe 10 above the stuck portion 10a will elongate due to the change In stress thereon. The testing device 15, shown In Fig. 1, consists of vertically spaced upper and lower members 16 and 17 connected together by a slender tubular part 18 so that they may have relative movement, this device 15 being supported by a cable 19 so that it may be moved through consecutive positions within the pipe 10. As shown in Fig. 2, the lower end of the cable 19 is connected by a cable clamp 20 to the upper end of the member 16. The cable 19 has an insulated conductor 21 extending therethrough, the lower end 22 of the conductor 21 being connected to one side of a variable resistance element 23 which in the form of the invention disclosed consists of a microphone of standard type employing carbon granules as a variable resistance means. The opposite side of the resistance element or microphone 23 is connected through a fixed current limiting resistance 24 with the metai wall of the member 16, which member 16 is grounded to the cable 19. The microphone 23 is carried within the upper cylindric body part 25. A pair of spaced bars 26 are connected by bolts 27 to the lower flattened extension 28 of the body 25. By bolts 29 the lower ends of the bars 26 are connected to the lower cylindric body 30 of the fnember 16, which body 30 has an axial openipg 31 threaded at 32 to receive the upper end of the tubular connecting member 18. -.In the vertically elongated space 33 between the bars 26 there is a vertically elongated electromagnet 34. 2,530,308 5 6 The electromagnet 34, as shown in Figs. 2 and 5, has a vertically elongated soft iron core 35 of U-shaped cross section. As shown in Fig. 5, this core 35 has a base plate 36 disposed substantially on the center line of the tool and a pair of out- 5 wardly extending side plates 37 which project at 38 slightly beyond the cylinder defined by the outer curved surfaces of the side bars 26, so that these side plates 37 of the core 35 project slightly from the member 16 for engagement with the io wall of the pipe into which the testing device is inserted. An electromagnet winding 39, in the form of a vertically elongated loop, is wound upon the base plate 36 of the core 35, as shown in Fig. 2, the vertical extension of the winding 39 extending 15 respectively within the spaces provided between the side plates 37 of the core 35 and the side bars 26. The lower member 17 of the device includes a similar electromagnet 34 and therefore the re- 2o spective parts of this electromagnet 34 of the lower member 17 are designated by the same numerals as employed in conjunction with the upper electromagnet 34. The lower electromagnet 34 is held between side bars 26' of non-magnetic metal, 25 such as brass or bronze, these side bars 26' being of identical form to the side bars 26, and being connected at their upper ends by bolts 27' to the upper cylindrical body portion 40 of the lower member 17, and being connected at their lower 3g end by bolts 29 to the lower body 41. The upper cylindrical body 40 has an upwardly spaced opening 42, threaded at its upper end to receive an axially bored plug 43 through which the lower tubular part 44 of the connecting member 18 has 35 limited sliding movement. The part 44 has an axial opening therethrough and at its lower end has a flange 45 which is disposed between upper and lower compression springs 46 and 47 which are received within the opening 42 below the plug 40 43. The springs 47 and 46 yieldably position the flange 45 in an intermediate position in the opening 42 so that the lower member 17 may have relative movement with respect to the upper member 15. 4S As shown in Figs. 3 and 6, the part 44 which passes through the plug 43 has a keyway 48 therein which is engaged by a yieldably supported key 49 positioned in a recess 50 in the plug 43 between a pair of compression springs 51, the 50 outer end of the recess 50 being closed by a threaded plug 52. The purpose of the key 49 is to maintain the upper and lower magnets 34 in alignment when no torsional strains are produced between the upper and lower members 16 55 and 17, the key 49 being yieldably supported so that there may be torsional relative movement between the upper and lower members 16 and 17. The plug 43 has an opening 53 in which a small body 54 is slidable, this body 54 having a needle 60 55 engaging the surface of the part 44, there being a spring 56 behind the body 54 for urging the needle 55 into engagement with the member 44. The surface o