Appendix — Cole v. Continental Oil Co.

Office- Supreme Court, U.S,

FILED

MAY 12 1061

ee Prete

no. 80-203%

IN THE

Supreme Court of the Hnited States

OcToBER TERM, 1980

JIMMY R. COLE, d/b/a JIM R. COLE &

ASSOCIATES and COLE DEVELOPMENT

COMPANY, INC.,

Petitioners,

versus

CONTINENTAL OIL COMPANY,

Respondent.

PETITIONERS’ SUBSTITUTION

APPENDICES A-C

B. R. PRAVEL

ALBERT B, KIMBALL, JR.

PRAVEL, GAMBRELL, HEWITT,

Kirk, KIMBALL & DopGE

1177 West Loop South

Suite 1010

Houston, Texas 77027

(713) 850-0909

Attorneys for Petitioners

Alpha Law Briel Co. One Main Placa, No. 1 Main St, Houston, Texas 77002

INDEX TO PETITIONERS’ SUBSTITUTION

APPENDICES A-C

Page

Petitioners’ Substitution Appendix A: Opinion of

United States Court of Appeals, Fifth Circuit,

— & Ge Be Se en erg A-1

Petitioners’ Substitution Appendix B: Memoran-

dum Opinion of United States District Court

for the Southern District of Texas, Houston

Division, dated March 8, 1978............. B-1

Petitioners’ Substitution Appendix C: Rule 35,

Federal Rules of Appellate Procedure; Local

PU I I is gw oc ce dkcoscwss: C-1

A-l

PETITIONERS’ SUBSTITUTION APPENDIX A

CONTINENTAL OIL COMPANY,

Plaintiff-Appellant, Cross-Appellee,

Vv.

Jimmy R. COLE, d/b/a Jim R. Cole & Associates and

Cole Development Co., Inc.,

Defendants-Appellees, Cross-Appellants.

No. 78-1961

UNITED STATES COURT OF APPEALS

Fifth Circuit

Jan. 12, 1981

Rehearing and Rehearing En Banc

Denied Feb. 12, 1981

Plaintiff appealed from a determination of the United

States District Court for the Southern District of Texas,

at Houston, Robert O’Conor, Jr., J., that its patent for a

seismic cable dept'»-controlling paravane was not infringed

by a device patented by defendant. Defendant cross ap-

pealed, challenging the validity of plaintiff's patent. The

Court of Appeals, Politz, Circuit Judge, held that: (1)

plaintiff's patent No. 3,375,800 for a seismic cable depth-

controlling paravane was valid; the paravane was neither

anticipated by the prior art nor were the claims obvious

to one ordinarily skilled in the art; (2) the creative

process existing prior to issuance of plaintiff's patent was

jn an embryonic stage, and it would be manifestly unjust

to characterize said patent as anything other than in-

A-2

novatively different and not readily obvious to a person

of ordinary skill in the field of marine seismology; (3)

defendant’s accused device infringed the range of equiva-

lents of plaintiff's patent; and (4) the doctrine of file

wrapper estoppel was inapplicable.

Reversed, rendered and remanded.

C. Frederick Levdig, John W. Kozak, H. Michael

Hartmann, Chicago, Ill., Frank B. Pugsley, G. Bryon

Jamison, Houston, Tex., for plaintiff-appellant, cross-ap-

pellee.

Pravel, Wilson & Gambrell, Albert B. Kimball, Jr.,

B. R. Pravel, Houston, Tex., for defendants-appellees,

cross-appellants.

Appeals from the United States District Court for the

Southern District of Texas.

Before RUBIN and POLITZ, Circuit Judges, and

SMITH,* United States District Judge.

POLITZ, Circuit Judge:

Continental Cil Company (Conoco) appeals the

determination by the trial court that its patent for a

seismic cable depth-controlling paravane is not infringed

by a device patented by Jimmy R. Cole. Cole cross-

appeals, challenging the validity of Conoco’s patent. We

disagree with the trial judge and conclude that Cole’s

device infringes, being equivalent in function and opera-

tion to Conoco’s paravane. We also conclude that Cono-

co’s patent is valid. We therefore reverse the decision of

* District Judge of the Northern District of Mississippi, sitting

by designation.

A-3

the trial judge, render judgment in favor of Conoco and

remand for further proceedings.

[1-3] The issues posited to us can be resolved by ap-

plying well-established principles which have been stated

and re-stated and, in the main, need only be capsulated.

The sine qua non of appellate review of patent litigation

is the notion that validity and interpretation are legal

questions based upon factual inquiries. When confronted

with pure questions of law, we are free to examine the

district judge’s answers and correct any error or oversight.

In contrast, factual questions resolved by the trial court

warrant deference and reversal is mandated only if the

findings are clearly erroneous. Fed. R. Civ. P. 52(a).

Although infringement normally is a fact question, legal

questions of construction can become so intertwined that

the clearly erroneous standard of review applicable to a

pure fact finding must yield. The appeal we now decide

falls into this latter category.

[4, 5] One form of infringement occurs when an

accused device incorporates a teaching literally read. An

infringement also occurs when a device appropriates a

prior invention by incorporating its innovative concept

and, albeit with some modification and change, performs

substantially the same function in substantially the same

way to achieve substantially the same result. The “doc-

trine of equivalents” shields the inventor from such abuse.

[6-8] The determination of equivalency involves an

examination of the scope of prior art, the essence or

“heart” of the invention disclosed and the step forward

the invention offers. A pioneer or generic patent which

opens a new path is entitled to broader protection than a

patent which merely improves upon that which is already

A-4

‘known. The ambit of equivalency is also limited by the

claims as made, amended or surrendered in the process

which make up the “file wrapper” and grounds the de-

fense of “file wrapper estoppel.”

These principles were essentially noted by us in our

recent decision in Weidman Metal Masters v. Glass Mas-

ter Corp., 623 F.2d 1024 (Sth Cir. 1980), and cases

cited therein, particularly Studiengesellschaft Kohle v.

Eastman Kodak Co., 616 F.2d 1315 (Sth Cir. 1980).

[9] In the case sub judice we are not favored with

“findings . . . sufficiently detailed to give us a clear

understanding of the analytical process by which ultimate

findings were reached and to assure us that the trial court

took care in ascertaining the facts.” Golf City, Inc. v.

Wilson Sporting Goods, Co., Inc., 555 F.2d 426, 433

(5th Cir. 1977). Instead, the trial court’s findings are

in the main conclusory. In this situation we routinely

would remand for more specific findings. However, “[t]his

failure is merely a hindrance and not a fatal error.”

Whitley v. Road Corp., 624 F.2d 698, 700 (Sth Cir.

1980). “Where the evidence is such that without weighing

the credibility of .c witnesses there can be but one reason-

able conclusion as to the result, the case can be taken

from the factfinding body.” Waldon, Inc. v. Alexander

Manufacturing Company, 423 F.2d 91, 93 n.3 (Sth Cir.

1970).

The record is replete with evidence fully establishing

the pertinent facts as they relate to infringement and

validity. In the interest of judicial and other economies

we are constrained to make the required factual collation

to which we apply the legal principles resolving this dis-

pute.

A-5

[10] The questions before the court concern the va-

lidity of Conoco’s patent, U. S. Patent 3,375,800 (the

’800 patent), and whether it is infringed by Cole’s patent,

U. S. Patent 3,931,608 (the ’608 patent).’

A. Factual Background

The invention which has bred this litigation was birthed

by the need to efficiently and economically locate struc-

tures beneath the ocean floor which are likely to contain

oil and gas deposits. Seismic survey crews first conducted

their tests on land, and later went offshore as the tech-

nology in this field advanced.

Whether on land or at sea, seismic surveys are made

by electronically transmitting sound waves down into the

subsurface where, on the rebound, the signals are received

and recorded on surveyor’s charts. The study of these

charts by persons with knowledge of subterranean geo-

logical formations leads to educated adumbrations as to

whether the area contains a structure which may ac-

commodate commercial quantities of oil and gas.

In marine seismic surveying the return sound waves

are received in the water above the ocean floor by in-

struments called hydrophones which are spaced along and

1. We adhere to the view that determination of the validity of a

patent should not be sidestepped for convenience by addressing only

the infringement issue when the question of validity is raised. See

Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143,

1145, 89 L.Ed. 1644 (1945) (“of the two questions [concerning

validity or infringement], validity has the greater public import-

ance”); Beckman Instruments, Inc. v. Chemtronics, Inc., 428 F.2d

555, 558 n.4 (Sth Cir.), cert. denied, 400 U.S. 956, 91 S.Ct. 353, 27

L.Ed.2d 264 (1970) (“when a challenge is made to the validity of a

patent in an infringement suit, that issue should ordinarily be taken

up first and infringement considered only if validity is decided favor-

ably to the patentee”).

A-6

are integral parts of a cable towed behind a survey boat.

Maintaining these hydrophones at a constant depth while

minimizing unwanted “noise” is essential to the accuracy

of seismic readings. Prior to Conoco’s paravane invention,

depth was controlled primarily by attaching floats and

weights to a neutrally bouyant cable. This equipment

tended to create substantial noise which interfered with

and distorted the return signals, markedly reducing the

accuracy and usefulness of information generated. A

further drawback inherent in displaying the cable by

means of floats and weights, in order to maintain a con-

stant depth, was the limitation in the area a crew could

survey in a routine day. In sum, not only was the pre-

paravane process slow, arduous and uncertain, but costly

delays were frequently encountered.

The ’800 patent claims a device co-invented by Cole

while he worked for Conoco as an electrical engineer.

The patent discloses a depth-sensing paravane (also called

cable levelers, cable controllers or “birds”) which can

be attached at spaced intervals to a marine seismic cable.

The paravanes take the cable to a pre-set depth and

maintain that depth while the cable is under tow. The

evidence is uncontroverted that the paravanes of the ’800

patent were a significant step forward in the technology

of marine seismography. The device not only affords pre-

cise depth control with a minimum of noise, but also

greatly increases speed in use. One witness with forty

years of experience in seismic surveying testified that

before using the Conoco paravanes, his surveying ca-

pacity was limited to 500 miles during a two month

period. With the use of Conoco’s paravanes, however,

this range increased to 2,000 miles. Several witnesses

emphasized the improvement in the accuracy of the seis-

A-7

mic readings resulting from the reduction in the noise

previously associated with controlling the cable depth.

Finally, aeceptance within the seismic survey industry

also reflects the value of this invention. Within a short

time after the paravanes became available a majority of

the marine crews throughout the world were using them,

including the crews of some of the largest companies.

B. The Patents in Suit

In resolving the issue of the validity of the Conoco

patent, and in conjunction with our review of the infringe-

ment issue, we must examine the physical function and

operation of three paravanes and certain accompanying

patent claims. The first, the ’800 patent, was co-invented

by Cole and Paul L. Buller while Cole was, as noted,

employed by Conoco. The second, the 608 patent, was

patented by Cole four years after he left his employment

with Conoco and went into business for himself. The

third paravane, relevant only insofar as it represents the

state of the prior art against which the validity of the

*800 patent is to be tested, is U. S. Patent 3,372,666

(the 666 patent or Baker patent) owned by Texas In-

struments.

1. Conoco Patent

The Conoco patent teaches an axial bore traversing

the center of the embodiment of the invention through

which the seismic cable passes. In other words, the para-

vane is placed concentrically around the cable. Because

of the cable’s length, usually one to two miles, it in-

evitably twists and turns while under tow. To prevent

this movement from spinning or flipping the paravanes,

each paravane is affixed by a pair of bearings, fore and

A-8

aft, which permits the cable to rotate freely. By connecting

the inner race of one or botn of the bearings to the cable,

the paravane is prevented from moving lengthwise along

the cable and thus maintains its proper spacing.

In the commercially preferred manifestation of Cono-

co’s invention, the cable-receiving bore penetrates through

the center of the paravane housing. The patent, however,

also discloses alternative designs in which the bearings

which form the bore for receiving the seismic cable are

offset from, but parallel to, the length of the main para-

vane housing. The depth-sensing and regulating mech-

anism, several variations of which are embraced by the

patent, can be interchanged in the various paravane

designs.

U.S. Patent 3,375,800

Conoco’s commercially preferred design

with paravane housing placed

concentrically around cable.

=———-

US. Patent 3,375,800

Conoco’s alternative design with paravane

offset from but parallel to cable.

CELL Lhd ,

A-9

2. Cole Patent

In 1972 Cole departed his employment with Conoco,

He made several efforts at developing a paravane and in

1976 secured the ’608 patent which is the basis of this

infringement suit. After wading through a maze of in-

sensate semantics we are convinced that the Conoco and

Cole paravanes are conceptually and functionally identi-

cal. We are notably unimpressed by the testimony of the

expert offered by Cole purporting to meaningfully dis-

tinguish the two devices. Both are equipped with an

internal depth-sensing mechanism connected to a pair of

vanes which operates to seek and maintain a predeter-

mined depth. Both paravanes are structured and operate

to counteract upward, downward and rotational forces.

Both permit the cable to rotate freely. Lastly, both limit

the noise produced in accomplishing depth control and

constancy.

{11] In patent validity and infringement litigation the

task of discerning reticent dissimilarities is as imperative

as noting the more visible similarities. In this vein we

note that Cole’s model dffers from Conoco’s commercial

version in the following respects. First, the accused para-

vane is offset from the cable. Second, because the para-

vane is offset from the cable, the rotational capability is

achieved by mounting the paravane on the cable through

bearings located in collars which permit free movement

of the cable. Third, approximately one out of every four

paravanes sold by Cole comes equipped with an upper

flotation device.

A-10

U.S. Patent 3,931,608

Cole’s paravane with optional

upper flotation housing.

EY .,

"

U.S. Patent 3,931,608

Cole’s paravane without upper

flotation housing.

—==->S-—~———

C. Patent Validity

[12] Relying on the Baker Patent’ issued in 1968,

and on a 1965 working model of Baker’s device, Cole

2. Cole submits for consideration three additional patents as evi-

dence of the prior art: Dorsey, U.S. Patent 1,625,245; Hammond,

U.S. Patent 2,401,929; and Paslay, U.S. Patent 2,465,696. We find

that the extent of dissimilarity between each of these patents and the

’800 patent far exceeds that between the Baker and Conoco inven-

tions. As our further discussion reflects, the degree of dissimilarity is

sufficient to defeat any resort to prior art in challenging the validity

of the ’800 patent.

Although it may be true, as Cole contends, that a certain degree

of visual similarity exists between the three earlier patents and the

Conoco patent, this alone does not support a finding of similarity in

structure and function. Important dissimilarities are also readily

apparent—dissimilarities we find instructive in determining the prior

art. The Paslay patent, for example, teaches the affixation of a

drogue-type paravane at the end of the seismic cable, with an op-

A-ll

maintains that: (1) Conoco’s paravane was anticipated

by the prior art, and (2) the ’800 patent claims were

obvious to one ordinarily skilled in the art.°

1. Anticipation and the Prior Art

In 1965 Buford M. Baker, an employee of Texas In-

struments, conceived a seismic cable depth-controlling

apparatus (the “Baker working model”). An in-house

sketch prepared for the patent department of Texas In-

tional paravane which may be attached to the cable directly behind

the boat by means of a secondary cable, Neither paravane is situated

concentrically around nor rotatably attached to the seismic cable.

The Dorsey drogue-type paravene similarly can only be rigidly

attached to the end of a seismic cable and does not contain a bore

through which the cable fs cape Finally, the Hammond patent, which

discloses the use of multiple apparatuses at staggered intervals along

parallel cables at two different depths, refers us back to the Dorsey

tent. The cables apparently are depth-controlled by a paravane

ted at the front of each cable. Given the above basic difference

between the Conoco and the three earlier patented devices, we find it

to further explore this avenue of purported prior art.

The earlier patents r by Cole accentuate the extent of the

peer y & encountered in solving the problem of efficiently and eco-

romically gathering accurate seismic readings in water. This evidence

tends to enhance the novelty of the ’800 patent. See Reynolds v.

Whitin Mach. Works, 167 F.2d 78 (4th Cir.), cert. denied, 334 U.S.

844, 68 S.Ct. 1513, 92 L.Ed. 1768 (1948) (21 patents cited by

defendant to prove lack of novelty of plaintiffs’ invention). The ’800

patent solved the problem the others failed to solve.

3. Adopting both grounds advanced by Cole, the district court

intimated a finding of invalidity in the following statement:

If plaintiff’s patent pr . « » Were construed as plaintiff

contends .. . the claims . . . of the “800” patent in suit [would

read] squarely on the peg mene disclosure and also the prior

Baker working model in ence,

Not only is this statement unsupported by the evidence, it is in-

far mem with - he sng beggar ore A the sty = —_

infringement “ es necessity o' upon the issue o

invalidity of Canis patent.” The Shel Sadpuent signed by the

district judge, which Conoco states was prepared by counsel for Cole

and over its objection, contained the reference to the invalidity

of the ’800 patent, an issue that apparently had not been decided.

A-12

struments contained the instruction: “Streamer [seismic

cable] is free to rotate at attaching point.” The invention

ultimately issued as the ’666 patent three years later,

predating the ’800 patent by less than three weeks, The

rotatability feature was not part of the disclosure of the

Baker patent application. Instead, the 666 patent teaches

that the device is “clamped” to the cable.

[13] The defense of anticipation derives principally

from 35 U.S.C. § 102(a) which provides:

A person shall be entitled to a patent unless—(a)

the invention was known or used by others in this

country, or patented or described in a printed publi-

cation in this or a foreign country, before the in-

vention thereof by the applicant... .

It has been held repeatedly that not only is the defense

of anticipation strictly a technical one, but that unless all

of the same elements or their equivalents are found in

substantially the same situation where they do substanti-

ally the same work in the same way, there is no anticipa-

tion.* Applying this definition to the state of the prior art

in the instant case, we reject Cole’s contention that the

800 patent was anticipated by either the Baker working

model or the subsequent ’666 patent.

4. See Steelcase, Inc. v. Delwood Furniture Co., Inc., §78 F.2d

74, 78 (Sth Cir.), cert. denied, 440 U.S. 960, 99 S.Ct, 1503, 59

L.Ed.2d 773 (1978) (“The test for anticipation . . . requires a show-

ing of actual identity in the prior art... .”); Yoder Bros., Inc. v.

California-Florida Plant Corp., 537 F.2d 1347, 1377 (Sth Cir. 1976),

cert denied, 429 U.S, 1094, 97 S.Ct. 1108, 51 L.Ed.2d 540 (1977);

Ziegler v. Phillips Petroleum Company, 483 F.2d 858, 868 (Sth Cir.),

cert, denied, 414 U.S. 1079, 94 S.Ct. 597, 38 L.Ed.2d 485 (1973);

Harrington Manufacturing Co., Inc. v. White, 475 F.2d 788 (Sth

Cir.), cert. denied, 414 U.S. 1040, 94 S.Ct. 542, 38 L.Ed.2d 331

(1973); Van Gorp Mfg., Inc. v. Townley Industrial Plastics, Inc.,

464 F.2d 16 (Sth Cir. 1972).

A-13

{14-16] Our conclusion that the Conoco device was a

breakthrough in the seismic industry and was not pre-

cursored by the Baker working model and its progeny

rests on several bases. First, a presumption of validity

arises from the issuance of a patent, see Beckman Instru-

ments, Inc. v. Chemtronics, Inc., 428 F.2d 555 (Sth

Cir.), cert. denied, 400 U.S, 956, 91 S.Ct. 353, 27 L.Ed.

2d 264 (1970). This is especially so in a case such as

that before,us where the same patent examiners simultane-

ously reviewed the allegedly contending applications, see

McCutchen v. Singer Company, 386 F.2d 82 (Sth Cir.

1967). See also 35 U.S.C. § 102(e), codifying the rule

enunciated in Milburn Co. v. Davis etc. Co., 270 US.

390, 46 S.Ct. 324, 70 L.Ed. 651 (1926) (date patent

application is filed is used for the purpose of anticipating

a subsequent invention). Although McCutchen, 386 F.2d

at 85, supports the presumption of validity once a patent

issues without the suggestion of interference by the Patent

Office, Beckman, 428 F.2d at 561, goes one step further

and reasons that if there is no evidence that the Patent

Office considered a particular prior art, the presumption

of validity is mitigated. See also Parker v. Motorola, Inc.,

524 F.2d 518 (Sth Cir. 1975), cert. denied, 425 US.

975, 96 S.Ct. 2175, 48 L.Ed.2d 799 (1976); Gaddis v.

Calgon Corporation, 506 F.2d 880 (Sth Cir. 1975).

Despite the simultaneous review by the same examiners,

we shall, for present purposes, presume that the Patent

Office did not consider the Baker patent before issuing

the Conoco patent and subject both patents to an examina-

tion in that light.

[17] Of particular importance from Cole’s viewpoint

is the reference to rotatability in the Baker working model.

This critical revelation soon vanishes, however, in light

A-14

of evidence indicating the intended or inadvertent sup-

pression of the invention. Baker’s description of the ex-

perimental model tested during the summer of 1965

appeared in a “Patent Disclosure Instruction and Cover

Sheet’ which he privately submitted to the patent depart-

ment of Texas Instruments. It did not become public

information. We cannot ascribe the label “prior art” to a

private intracorporate communication of this nature. See

Stamicarbon, N. V. v. Escambia Chemical Corporation,

300 F.Supp. 1209, 1215 (N.D. Fla. 1968), aff'd as modi-

fied, 430 F.2d 920 (Sth Cir.), cert. denied, 400 U.S. 944,

91 S.Ct. 245, 27 L.Ed.2d 248 (1970) (“secret uses

which are not publicly known or disclosed do not con-

stitute ‘prior art’ under the provisions of 35 U.S.C.

§§ 102 and 103”).

[18,19] We similarly reject Baker’s ’666 patent as

prior art. Accepting per arguendo the contention that the

rotatability feature noted in the private sketch of Baker’s

working model is analogous to that component of the

800 patent, imputing that similarity to the 666 patent

when the patent disclosure teaches otherwise would be

inappropriate. The fact that the "666 patent described the

point where the paravane is attached to the seismic cable

as a “clamp,” rather than a rotatable apparatus, cannot

be dismissed in the words of Cole’s witness as “just an

oversight by the patent attorney.” We cannot measure

the anticipatory effect of a patent by speculating as to

what might have been gleaned from it. We must remain

within the four corners of the patent’s disclosures. See,

e.g., McCullough Tool Company v. Well Surveys, Inc.,

343 F.2d 381 (10th Cir. 1965), cert. denied, 383 U.S.

933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966); Illinois

Tool Works, Inc. v. Continental Can Company, 273 F.

A-15

Supp. 94 (N.D. Ill. 1967), aff'd, 397 F.2d 517 (7th

Cir. 1968).

We further note the overwhelming evidence adduced

at trial reflecting not only the substandard operational

capability of the Baker invention, but also the rudimen-

tary level of technical development achieved. During

experimental runs the Baker device had a tendency to

oscillate, occasionally “porpoising” out of the water. In

the words of Baker’s supervisor, “innovative engineering”

was needed to reduce the Baker concept to practice and

develop it into an operationally useful device. See United

States v. Adams, 383 U.S. 39, 50, 86 S.Ct. 708, 713, 15

L.Ed.2d 572 (1966) (“An inoperable invention or one

which fails to achieve its intended result does not negative

novelty.”). Accordingly, we find that the prior art does

not invalidate the ’800 patent.

2. Obviousness

(20, 21] Cole next alleges that the ’800 patent claims

were obvious, thereby rendering the patent invalid under

35 U.S.C. § 103. In contrast to the defense of anticipa-

tion, which speaks only to the novelty of an invention,

the defense of obviousness raises the question of inven-

tiveness. Section 103 provides:

A patent may not be obtained though the invention

is not identically disclosed or described as set forth

in section 102 of this title, if the differences between

the subject matter sought to be patented and the

prior art are such that the subject matter as a whole

would have been obvious at the time the invention

was made to a person having ordinary skill in the art

to which said subject matter pertains. Patentability

A-16

shall not be negatived by the matter in which the

invention was made,

Thus, while the ultimate question of patent validity is one

of law, the analytical method to be utilized by courts con-

fronted with the question of obviousness includes basic

factual inquiries into the scope and content of the prior

art, the differences between prior art and the claims at

issue, and the level of ordinary skill in the pertinent art.

See Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684,

15 L.Ed.2d 545 (1966); John Zink Co. v. National Air-

oil Burner Co., 613 F.2d 547 (Sth Cir. 1980).

[22] A substantial portion of our prior discussion con-

cerning anticipation by the prior art is pertinent in re-

solving the question of obviousness. Because of the novel-

ty-inventiveness dichotomy, however, prior art may result

in an invention being obvious even though not anticipated.

See e.g., Harvey v. Levine, 322 F.2d 481 (6th Cir. 1963);

Amphenol Corporation v. General Time Corporation, 397

F.2d 431 (7th Cir. 1968).

[23] The linchpin is not whether the individual com-

ponents of the ’800 patent were obvious at the time of

the invention, but whether the aggregation produced a

new or different result or achieved a synergistic effect.

See Ingersoll-Rand Company v. Brunner & Lay, Inc.,

474 F.2d 491, 496 (Sth Cir.), cert. denied, 414 US.

865, 94 S.Ct. 125, 38 L.Ed.2d 117 (1973). See also

Adams v. United States, 380 F.2d 622, 625, 165 Ct. Cl.

576 (1964), affd, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.

2d 572 (1966) (“While the use of any of the individual

components . . . may have been obvious at the time of

the invention, the invention as a whole was not obvious.

. . .”). In addition to the several patents Cole raised

‘A-17

which we have noted above as non-dispositive, the re-

maining semblance of prior art against which the ’800

patent must be compared is the Baker patent. As pre-

viously recognized, the Baker patent does not teach util-

ization of a rotatable seismic cable. It is also evident

that Baker and other Texas Instrument employees in-

volved in the invention possessed not only ordinary, but

most likely extraordinary skill in the art. Yet by the time

Conoco obtained the ’800 patent in 1968, Baker and his

co-workers had spent over three years trying unsuccess-

fully to produce a functional paravane.°

[24] Having compared the Conoco paravane with the

prior art, we are convinced that the creative process

existing prior to issuance of the ’800 patent was in an em-

bryonic stage. It would be manifestly unjust to charac-

terize the ’800 patent as anything other than innova-

tively different and not readily obvious to a person of

ordinary skill in the field of marine seismology. We find

‘the ’800 patent valid and proceed to assay the district

judge’s holding that the ’608 patent did not infringe.

D. Infringement

The final issue is whether Cole’s "608 patent infringes

Conoco’s *800 patent. The allegation stems from five

claims of the ’800 patent, numbers 1, 2, 4, 22 and 25,

the most controversial and inclusive of which reads in

part:

5. The contemporaneous failures of those who are experts in the

art tend to indicate that an invention is not obvious. See e.g., Illinois

Tool Works, Inc. v. Continental Can Company, 397 F.2d 517 (7th

Cir. 1968). The failures experienced by the Baker group were not

mere construction infirmities requiring only slight modifications, but

were design defects requiring innovative engineering.

A-18

1. A paravane . . . comprising: a housing having

a bore means along its length thereof... .

The parties to this case as well as the district judge put

much emphasis on the interpretation to be accorded this

language. We do not find a strictissimi interpretation

necessary given the liberal construction warranted by the

doctrine of equivalents.

[25, 26] We accept the finding of the district court that

sutlicient differences exist between the Conoco and Cole

inventions to avoid literal infringement. We underscore,

however, that it is precisely because “minor modifications

are . . . sufficient to avoid literal infringement,” Weid-

man Metal Masters v. Glass Master Corp., 623 F.2d

1024, 1026 (Sth Cir. 1980), that the protection afforded

patentees by the doctrine of equivalents must not be

emasculated by too quick a stroke of the judicial pen.°

6. Recognizing the important role played by the doctrine of

equivalents in protecting patent claims trom the enterprising minor

deviations of invention “pirates,” the Supreme Court in Graver Mjg.

Co. v. Linde Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855-56, L.td.

1097 (1950), stated:

In determining whether an accused device or composition in-

fringes a valid patent, resort must be had in the first instance to

the words of the claim. If accused matter falls clearly within the

claim, infringement is made out and that is the end of it.

But courts have also recognized that to permit imitation of a

patented invention which does not copy every literal detail

would be to convert the protection of the patent grant into a

hollow and useless thing. Such a limitation would leave room

for—-indeed encourage—the unscrupulous copyist to make unim-

portant and insubstantial changes and substitutions in the patent

which, though adding nothing, would be enough to take the

copied matter outside the claim, and hence outside the reach of

law. 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 ap rare type of infringe-

ment. To prohibit no other would place the inventor at the mercy

of verbalism and would be subordinating substance to form, It

A-19

1. Doctrine of Equivalents

[27, 28] We are cognizant that a finding of equivalence

is a determination of fact. Ziegler v. Phillips Petroleum

Company, 483 F.2d 858 (5th Cir.), cert. denied, 414

U.S 1079, 94 S.Ct. 597, 38 L.Ed.2d 485 (1978). In

this case, however, the breadth of the doctrine of equiva-

lents is a question of law because it concerns the construc-

tion of the ’800 patent. See Coupe v. Royer, 155 US.

565, 15 S.Ct. 199, 39 L.Ed. 263 (1895). Our perception

of the doctrine of equivalents is best expressed by this

Supreme Court teaching:

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 pur-

pose and in every respect. In determining equiva-

lents, 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 equiv-

alents. Consideration must be given to the purpose

for which an ingredient is used in a patent, the

equalities it has when combined with the other in-

gredients, and the function which it is intended to

perform.

Graver Mfg. Co. v. Linde Co., 339 U.S. 605, 609, 70

S.Ct. 854, 856, 94 L.Ed. 1097 (1950). Once the frame-

work for determining equivalency had been erected, it

becomes readily apparent that the Cole device has in-

fringed the range of equivalents of the ’800 patent.

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.

A-20

2. File wrapper estoppel

[29] Finally, we address the applicability of the doc-

trine of file wrapper estoppel. This doctrine prevents a

patentee from reclaiming through the doctrine of equiva-

lents that which was voluntarily surrendered by the nar-

rowing of the language of the patent claims in order to

avoid prior art cited by the Patent Office. The district

judge concluded the doctrine applies. We disagree, being

of the opinion that the range of equivalents has not been

so limited as to preclude a finding of infringement by the

Cole patent.

[30] The original application for the ’800 patent was

filed in December 1966 and embraced only the com-

mercially preferred design with the paravane placed con-

centrically around the seismic cable. In April 1967, a

continuation-in-part application was filed which included

other manifestations of the invention. The district judge

concluded that the original claims were broad enough to

cover the accused device, but that the continuation-in-

part constituted a disclaimer which now estops Conoco

from asserting that which it previously surrendered. We

reject the district judge’s conclusion for three reasons.

First, in Hunt Tool Company v. Lawrence, 242 F.2d 347

(5th Cir.), cert. denied, 354 U.S. 910, 77 S.Ct. 1296,

1 L.Ed.2d 1428 (1957), we noted that a patent applicant

is not presumed to have narrowed his claim more than

was necessary to satisfy the Patent Office’s challenge.

Second, in the case before us, there is no evidence in the

file history that the Conoco application was amended be-

cause of the Patent Office’s rejection based on prior art.

Third, because the ’800 invention solved a sophisticated

and stubborn problem in the field of marine seismology,

A-21

which had long remained unresolved despite vast research

and development efforts conducted over a number of

years, a broader degree of protection is to be afforded

‘under the doctrine of equivalents than that ascribed by

the district judge."

Cole contends that on the basis of file wrapper estoppel,

his 608 patent does not infringe the following language

of Claim No. 1 of the ’800 patent: “a housing having a

bore means along its length thereof.” He emphasizes that

the housing structure of the 608 paravane does not have

a bore means (that portion of the paravane that receives

and allows rotation of the cable) along its length. His

argument rests largely on the trial judge’s finding that the

collars securing the main body of the paravane to the

cable do not constitute part of the housing. Were we to

agree that the doctrine of equivalents is to be narrowly

applied it would be necessary to carefully analyze these

terms. Because we hold that broad protection is to be

accorded the ’800 patent claims we find it unnecessary to

engage in that exercise.

The '800 and 608 patents involve more than a simi-

larity in result. The evidence “establish[es] substantial

identity of means, operation and result.” Foster Cathead

Company v. Hasha, 382 F.2d 761, 765 (Sth Cir. 1967),

cert. denied, 390 U.S. 906, 88 S.Ct. 819, 19 L.Ed.2d

7. We do not go so far as to classify the '800 patent as a pioneer,

i.e. “a patent covering a function never before perforined, a wholly

novel device, or one of such novelty and importance as to mark a

distinct step in the progress of the art,” but neither «lo we consider

the invention to be “a mere improvement or perfection of what had

before.” Westinghouse v. Boyden Power Brake Co., 170 US.

37, 561-62, 18 S.Ct. 707, 718, 42 L.Ed. 1136 (1898). The ‘800

patent falls someplace in between, as does the measure of protection

to be afforded to it.

A-22

872 (1968), quoting C. Pigott, Equivalents in Reverse,

43 Journal of the Patent Office Society 291-92 (1966).

The "608 patent infringes the ’800 patent.

The decision of the district court is REVERSED. We

hold that Conoco’s patent, U.S. Patent 3,375,800 is valid

and that it is infringed by Cole’s patent, U.S. Patent

3,931,608. The case is REMANDED for further pro-

ceedings consistent with this opinion.

REVERSED, RENDERED and REMANDED.

B-1

PETITIONERS’ SUBSTITUTION APPENDIX B

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

CIVIL ACTION NO. H-75-1288

CONTINENTAL OIL COMPANY

v.

JIMMY R. COLE, D/B/A JIM R. COLE &

ASSOCIATES AND COLE DEVELOPMENT

COMPANY, INC,

MEMORANDUM

Plaintiff, Continental Oil Company (“Conoco”) sues

for infringement under the Patent Laws of the United

States, Title 35 U.S.C. against Jimmy R. Cole, d/b/a

Jim R. Cole & Associates (“Cole”) and Cole Develop-

ment Company, Inc. (“Cole Development”). This Court

has jurisdiction of the parties and of the subject matter

of this action by virtue of U.S.C. § 1338 and § 2201.

Venue is properly laid in this district under Title 28

U.S.C. § 1406(b). Defendant Cole alleges that plaintiff's

patent is invalid and alternatively that defendant's patent

does not infringe.

Defendant, while an employee of plaintiff, obtained

Patent No. 3,375,800 (hereinafter the “800” patent).

The “800” patent is a device for maintaining an under-

water seismic cable at a constant depth while being towed

by a ship. After leaving, Conoco, defendant obtained

Patent No. 3,931,608 (hereinafter the “608” patent)

B-2

on an improved underwater cable water controller, which

device is the alleged infringing apparatus. Defendants’

manufacture and sell two models of their cable depth

controllers, one of which is shown in Fig. 1 of defend-

ants’ United States Patent 3,931,608, and the other of

which is shown in Fig. 3 of the same patent. The differ-

ence between the two models is that the Fig. 3 model

includes an additional flotation tube assembly T. The

evidence shows that a vast majority of the defendants’

cable depth controllers which have been manufactured

and sold are of the type shown in Fig. 1 of U. S. Patent

3,931,608, in which the housing H is located to one side

of the streamer or cable K.

Plaintiff claims that defendants wilfully infringed five

claims of the “800” patent by the manufacture and sale

of a seismic depth control appartus and, further, that

defendants induced the purchasers of the accused ap-

paratus to use it in an infringing manner. The claims

of the “800” patent on which Conoco asserts infringe-

ment read as follows:

1. A paravane for a seismic cable adapted to be

towed substantially horizontally through water, com-

prising: a housing having a bore means along its

length thereof, said bore means of a size to receive

said seismic cable and allow rotation of said seismic

cable without rotation of said housing while trans-

mitting upward and downward forces between the

housing and the adjacent portions of said cable;

bearing means for securing the housing onto said

seismic cable against movement of said housing

along said cable; and means carried by the housing

including at least one vane for maintaining the para-

B-3

vane at a predetermined depth ir the water as the

paravane is moved through the water by the cable

and for counteracting upward, downward and turn-

ing forces imposed on the housing, whereby the para-

vane maintains the adjacent portions of the said

seismic cable at said predetermined depth.

2. A paravane as defined in Claim 1 wherein said

last mentioned means includes: ballast carried by

the housing below the cable to counteract turning

forces imposed on the housing; depth sensing means

carried by the housing; and adjustable diving means

carried by the housing, engaging the water and con-

nected to the depth sensing means for varying the

depth of the paravane in response to the depth

sensing means.

4. A paravane as defined in claim 2 wherein said

adjustable diving means comprises: diving plans

rotatably secured to the opposite sides of the hous-

ing; and means interconnecting the diving planes

for uniform adjustment of the diving planes in re-

sponse to the depth sensing means.

22. Apparatus for maintaining a seismic cable

at a predetermined depth as the cable is being towed

substantially horizontally through water, comprising:

a plurality of paravanes secured in spaced relation

along the cable, each of said paravanes comprising:

a housing having a bore means along its length

thereof, said bore means of a size to receive said

seismic cable and allow rotation of said cable with-

out rotation of said housing while transmitting up-

wurd and downward forces between said housing

and adjacent portions of said cable; bearing means

B-4

for securing said housing onto said cable against

movement of said housing along said cable; and

means carried by the housing including at least a vane

for maintaining the paravane at a predetermined

depth in the water as the paravane is moved through

the water by the cable and for counteracting upward,

downward and turning forces imposed on the hous-

ing, whereby the paravane maintains the adjacent

portion of the cable at said predetermined depth.

25. A paravane for an elongated member adapt-

ed to be towed substantially horizontally through

water, comprising: a housing having a bore means

along its length thereof, said bore means of a size

to receive said elongated member and allow rotation

of said elongated member without rotation of said

housing while transmitting upward and downward

forces between the housing and the adjacent portions

of said elongated member; bearing means for secur-

ing the housing onto said elongated member against

movement of the housing along said elongated mem-

ber; and, means carried by the housing including at

least a vane for maintaining the paravane is moved

through the water by said member and for counter-

acting upward, downward and turning forces im-

posed on the housing, whereby the paravane main-

tains the adjacent portion of said predetermined

depth.

Defendants maintain first that the “800” patent is in-

valid for obviousness. Secondly, as the five claims of the

“800” patent in suit cannot be construed to describe

either model of cable depth controller that defendants

sell, defendants have not infringed the “800” patent.

B-5

Thirdly, the file history of the “800” patent and the

amendments made to seccure the patent create a “file

wrapper estoppel” which prevents plaintiff from now

contending that these claims cover defendants’ device.

Collateral to the issue of non-infringement are several

purely legal issues raised by defendant Cole: (1) there

exists an implied royalty-free license to manufacture and

sell defendants’ devices since plaintiff has granted li-

censed users of cable depth controllers the unrestricted

right to have such depth controllers made by others, (2)

with respect to acts performed outside the territorial

limits of coverage of the United States Patent Laws,

there can be no infringement and (3) piaintiff’s alleged

knowledge of material and relevant prior art and its

failure to disclose such art to the Patent Examiner during

the prosecution of the patent in suit renders this an ex-

ceptional case under 35 U.S.C. 285 entitling defendants

to an award of their attorneys fees.

The “800” patent is a combination patent, i.e. it is

a patent in which all of the individual elements are old

and the asserted novelty resides in the combination of

those elements. The patent must be strictly confined to

the particular combination claimed. Patents on a simple

combination of known mechanical elements, such as the

patent in suit, are difficult to obtain and they are not

easily infringed. Foster v. Hasha, 382 F.2d 761, 766

(Sth Cir. 1967). For plaintiff to sustain a charge of

infringement by defendant, defendant’s tools must in-

clude all elements explicitly recited in the claim. Omission

of a single element in such a claim clearly avoids in-

fringement. Deepsouth Packing Co. v. Laitram Corp.,

406 U.S. 518 (1972); Marvin Glass v. Sears, 448 F.2d

60, 61 (Sth Cir. 1971).

B-6

In addition to direct infringement, there can be in-

fringement under the doctrine of equivalents. This doc-

trine must be applied narrowly to the particular simple

combination patent claimed because they are difficult to

obtain and should be sustained. Hughes v. Magnolia

Petroleum Co., 88 F.2d 817, 33 (Sth Cir. 1937); Stewart-

Warner Corp. v. Lone Star Gas Co., 195 F.2d 645 (Sth

Cir. 1952); Sisko v. Southern Resin and Fiberglass Cor-

poration, 248 F.Supp. 797, (S.D. Fla. 1965), aff’d 373

F.2d 866 (Sth Cir. 1967).

To establish equivalency for the purpose of showing

infringement of the five claims of plaintiff's patent by

defendant, plaintiff must prove that defendant’s tools are

substantially identical with the arrangement defined in the

claim as to structure, mode of operation and results

attained. Ziegler v. Phillips Petroleum Co., 483 F.2d 858,

868 (Sth Cir. 1973); Harrington Manufacturing Co.,

Inc. v. White, 475 F.2d 788, 796 (Sth Cir. 1973), cert.

denied, 38 L.Ed.2d 331 (1973); Marvin Glass & Asso-

ciates v. Sears, Roebuck and Company, 448 F.2d 60, 61

(Sth Cir. 1971).

However, before plaintiff may reach the question of

equivalency, he must deal with limitations imposed upon

his own patent under the doctrine of file wrapper estoppel.

An invention is construed not only in the light of its

claims, but also with reference to its file wrapper or

prosecution history in the Patent Office. Ziegler v. Phillips

Petroleum Company, 483 F.2d 858, 870 (Sth Cir. 1973).

After prosecution of his patent, an applicant is precluded

by the doctrine of file estoppel from thereafter ignoring

restrictive terminology added to the patent and attempting

by the doctrine of equivalents to interpret the claims as

B-7

though the limitations were not present. Graham v. John

Deere Co., 383 U.S. 1, 33 (1966); Schriber Co. v. Cleve-

land Trust Co., 311 U.S. 211, 220-1, (1940); Weber

Electric Co. v. Freeman Electric Co., 256 U.S. 668, 677

(1920); Smith v. Magic City Kennel Club, 282 U.S. 784,

789 (1930); Ziegler v. Phillips Petroleum Co. 483 F.2d

858, 870 (Sth Cir. 1973). The doctrine of file wrapper

estoppel applies whether the restriction added subsequent

to application to the Patent Office were proposed by the

Patent Examiner or the applicant. Dry Hand Mop Ce.

v. Squeez-egy Mop Co., 17 F.2d 465, 466 (Sth Cir.

1927).

The file wrapper of plaintiff's patent in suit reveals

that the only claims broad enough to cover defendants’

structure were cancelled and replaced by more limited

claims. Each of the structural differences between defend-

ants’ structure and plaintiff's claims in suit were a result

of amendatory language submitted during prosecution of

plaintiff's patent in suit in the Patent Office. Accordingly,

as a matter of law under the doctrine of file wrapper es-

toppel, plaintiff cannot now assert that the amended

claims cover what has been eliminated from coverage

during prosecution before the Patent Office.

The broadest claim of the “800” patent which is asserted

in this litigation is claim 1. The following elements of

Claim 1 have not been included in the defendants’ model

Fig. 1 or defendants’ model Fig. 3:

(a) Defendants’ device does not have “a housing

having a bore means along its length.” This is be-

cause the dictionary definition of “housing” is “in

mechanics, a frame, box, etc. for containing some

part.” The only “housing” in the defendants’ cable

depth controllers is the housing H shown in Figs. 1

B-8

and 3 of U. S. Patent 3,931,608, but it does not

have “a bore means along its length” as required

by Claim 1. Therefore, the structure, “a housing

having a bore means along its length”, cannot be

found in defendants’ cable depth controllers.

(b) The collars 20 of the defendant’s device can-

not be considered a “housing” in accordance with

the dictionary definition because they are not for

“containing some part”.

(c) There is no “bearing means for securing the

housing onto said seismic cable” in the defendants’

cable depth controller because the housing does not

have any bearing means in defendants’ cable depth

controllers.

(d) The vanes P of the defendants’ cable depth

controller are not carried by the housing H, but

instead are mounted on a separate body S which is

attached to the housing H and therefore defendants’

cable. depth controllers do not have the “means

carried by the housing including at least one “vane

as recited in Claim 1.

Since the other claims have more elements than Claim

1 and since each of the other claims, 2, 4, 22, and 25 have

the foregoing elements which are not found in defendants’

cable depth controllers, none of the claims, 1, 2, 4, 22

and 25 of the “800” patent in suit are infringed by

defendants’ cable depth controllers.

Although the model shown in Fig. 3 of defendants’

patent 3,931,608 may look more like the plaintiff's cable

depth controller of the “800” patent in suit than the Fig.

1 model of U. S. Patent 3,931,608, the evidence is that

the flotation device T is only added in a very limited

number of cases and could be omitted entirely, but it does

not add any additional element which would cause the

B-9

Fig. 3 model of defendants’ cable depth controller to

come within the claims 1, 2, 4, 22 and 25 of the “800”

patent in suit.

If plaintiffs patent claims 1, 2, 4, 22 and 25 were

construed as plaintiff contends so that the collars 20 of

defendants’ cable depth controllers were considered as the

“bore means” of the housing H, such conclusion would

necessarily lead to a reading of the claims 1, 2, 4, 22 and

25 of the “800” patent in suit squarely on the Baker

patent disclosure and also the prior Baker working model

in evidence.

In view of the above factual determination, this Court

finds that neither of defendants’ devices infringe the “800”

patent. Such finding precludes the necessity of passing

upon the issue of invalidity of Conoco patent. The Court

further finds that this is not an exceptional case under 35

U.S.C. § 285 by virtue of misrepresentation to the Patent

Office. Therefore, defendant Cole is not entitled to attor-

ney’s fees under 35 U.S.C. § 285.

Defendants’ attorney will draft a judgment in accord-

ance with the memorandum opinion for submission to

this Court.

Signed at Houston, Texas, this 8th day of March,

1978.

/s/ ROBERT O’CONOR, JR.

Robert O’Conor, Jr.

United States District Judge

C-1

PETITIONERS’ SUBSTITUTION APPENDIX C

UNITED STATES COURT OF APPEALS

Fifth Circuit

DENIALS OF REHEARING EN BANC

(Rule 35 Federal Rules of Appellate Procedure; Local

Fifth Circuit Rule 12)

Group 1—Denials where no member of the panel nor

Judge in regular active service on the Court

requested that the Court be polled on rehear-

ing en banc.

Group 2—Denials after a poll requested by a member of

the panel or a Circuit Judge in regular active

service,

Group 3—Denials on the Court’s own motion after a

poll requested by a member of the panel or a

Circuit Judge in regular active service.

Title Docket Date of Citation of

GROUP 1 Number Denial Panel Decision

Baker v. Metcalfe ......... 80-1626 2/17/81 + N.D.Tex., 633

F.2d 1198

Concerned Democrats of S.D.Fla., 634

Florida v. Reno ........ 80-5482 2/ 9/81 F.2d 629

Continental Oil Co. v. Cole .78-1961 2/12/81 S.D.Tex., 634

F.2d 188

Palaez Del Casal v. Eastern S.D. Fla., 634

Air Lines, Inc. .......... 79-2953 2/18/81 F.2d 295

U.S. v. Chagra .......506 80-1506 2/ 2/81 W.D. Tex., 636

F.2d 311

5 te «Seer 79-5577 2/ 6/81 ~=S.D.Fla., 633

F.2d 581