Rucker Co. et al. v.
copyright 1997 Donald M. Cameron, Aird & Berlis
At p. 309:
While there is substantial agreement as to the facts it is the interpretation of them and the application of the jurisprudence, some of it still controversial, to the legal issues on which this decision must be based. The first issue on the patent infringement claim is concerned with the interpretation of the patent claims drawn in what is known as a "Jepson" manner and whether the patent is for the packing element only as Mr. De Vries the expert witness testified, being sole witness on this issue, or whether since the packing element cannot function alone without the curved outer housing into which it fits the patent must be considered as being for the entire assembly, in which event there is jurisprudence to the effect that infringement of a part of it does not constitute infringement. Subsidiary to this is the discussion of what weight the court must give to an expert's evidence which is not binding on the court. Should defendant succeed on this issue that would be the end of the matter.
The second issue in connection with patent infringement is whether what defendant admits doing constitutes repairs or whether it is a manufacturing operation. It is conceded that purchasers of an element are not obliged by law to have repairs in the nature of reconditioning done by plaintiffs or an agent authorized by them, but if what defendant is doing is manufacturing then this would be an infringement of the patent if the patent is for the packing element alone as plaintiffs contend.
Turning to the claims, the introductory statement says: "The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows." Claims 1, 3 and 5 commence with the words: "In a blowout preventer adapted for use on an oil well rig, and having a housing provided with a well tool receiving port and a curved inner surface extending beyond the receiving port" and then go on to describe in considerable detail the resilient sealing means and translating means (i.e., the packing element) co-operating with the curved inner surface of the housing. Claims 2 and 4 refer back to the "apparatus" of claims 1 and 3, respectively, then go on to explain the translating means in detail. Claims 6, 7 and 8 all refer back to "The apparatus of claim 5" and go on to explain resilient sealing means further. Claim 5 which has already been quoted in extenso is the key claim dealt with in evidence. It is plaintiffs' position that while admittedly the packing element would be of no use by itself and has to operate inside the housing, and that the two are designed to work one with the other it is evident that the patent is directed to the packing element and that the words "in a blowout preventer" merely indicate that it is for use in a blowout preventer in conjunction with a compatible housing element, and that in fact the words "in a blowout preventer" merely mean "for use in a blowout preventer" with a housing compatible with the packing element. Certainly all the details of the claim are with respect to the packing element except for the references that it must mate with the curved inner surface of the housing. The packing element is what plaintiffs seek to protect as being an invention and what defendant has allegedly copied. There is no suggestion that defendant attempted to make housing elements and while, as previously stated, there is no evidence as to whether they are protected by a separate patent, plaintiffs do make them. There is no suggestion that defendant has infringed plaintiffs' blowout preventer taken as a whole, including both the packing and housing element.
Although as previously stated the wording of the patent leaves much to be desired, the word "apparatus", for example, being used in different paragraphs of the patent claims, just as the words "dependent tube" were used in the disclosure whereas the words "vent pipe", "vent tube" or "tube" were used in the claim in the Scully Signal Co. v. York Machine Co. Ltd. case, supra, and although the claims in the patent in issue are drawn in the wide and somewhat imprecise form of what are known as Jepson claims, apparently favoured in the United States, the resultant ambiguity making the patent somewhat difficult to interpret, I have reached the conclusion after reviewing the jurisprudence and evidence that the real nature of the invention is the packing element for use in a blowout preventer, which in order to function has to be enclosed in a compatible housing element, but that this does not make it a combination patent. This was the evidence of the expert witness De Vries and while the court is not obliged to accept it I have independently reached the same conclusion.
There is no issue as to whether the packing elements made by the defendant are substantially identical to plaintiffs'. They are adapted for and are used in compatible housing elements to form plaintiffs' blowout preventers. While they may not be subjected to as rigid a test as those manufactured by plaintiffs and plaintiffs suggest that they may be of inferior quality this is not the issue. Defendant's customers for them appear to be satisfied as much of defendant's business is repeat business from the same customers. Defendant contends that it does not make them for general sale, however, and at least since 1982, the time of the institution of the present proceedings, it makes them only on order for customers who turn in a used packed element for what defendant designates as "repair". It does, however, have a catalogue referring to spherical rubber packing elements indicating that it will completely repair and return them and a price list indicating for exchange only.
While there is some doubt as to whether the customer gets back the identical element which he delivered for rebuilding, since the teeth, which are all that is left after the old rubber is burned off may be mixed in a bin with teeth from other elements sent by the customer at the same time for repair, and in an occasional rare instance a broken or damaged tooth has to be replaced by one obtained from another source, I do not believe that anything turns on this. Defendant is not in the business of making these infringing packing elements for sale, but this does not give it a licence to manufacture such elements in infringement of plaintiffs' patent, even though the customers themselves have an implied licence when they buy the initial element from plaintiffs to have them repaired where they choose. The licensee may even procure entirely new parts for a machine he has acquired. The real issue is whether what defendant is doing in connection with the packing element is repair or manufacture.
Applying this jurisprudence I have little doubt that defendant's activities in the present case constitute manufacture rather than repair. All that is left of the packing element sent for reconstruction is really the teeth, all the rubber having been burned away. They are then assembled in the same manner as plaintiffs' packing element in a mould with new rubber, any damaged components or teeth being substituted if necessary, although this rarely takes place. This really results in a new merchantable article and cannot be considered as a repair.
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