Majority
delivered the opinion of the Court.
, This suit presents questions of validity and infringement of Patent No. 1,930,987 applied for February 10> 1926 by Simmons and, after assignment, issued October 17, 1933, to Halliburton. It is for a method and apparar. tus for testing productivity of formations encountered in oil and other deep wells drilled by the rotary method.
The writs were granted, on petition of defendants Honolulu Oil Corporation, Ltd. et al. and cross-petition of plaintiffs Halliburton, et al., to review a decree[1] of the circuit court of appeals for the ninth circuit holding that the method claims are valid and infringed and to that extent reversing a decree[2] of the district court of. southern California holding that the method and apparatus claims are invalid.
There was an earlier suit for infringement of the same patent brought by these plaintiffs in the federal court for the eastern district of Texas against other defendants. That court sustained the patent and found it infringed. The circuit court of appeals for the fifth circuit reversed.[3] It held the method claims invalid for lack of invention and that, while the apparatus claims may define a simplifying improvement upon which a combination patent might rest,, the apparatus was not of such character as to be infringed by the accused tool of defendants.
1 98 F. 2d 436 .
2 18 F. Supp. 58 .
3 88 F. 2d 270 .
The method claims are 8 and 18. Claim 8 is as follows: “A method of testing the productivity of a formation encountered in a well containing drilling fluid, which includes lowering an empty string of pipe into the well through the drilling fluid, to adjacent the formation, the pipe carrying a packer[4] and having a valved inlet at its lower end which is closed while the pipe is being lowered, setting the ■ packer above the formation to seal off the drilling fluid from the formation, opening the valved inlet after the packer is set to permit cognate fluid[5] from the formation to enter the pipe, closing the valved inlet against the entrance of fluid from the well by movement of the pipe, raising the pipe so closed to remove an en
4 Webster’s New International Dictionary, 2nd ed., 1935: “packer ... A device to pack the space between the wall of a well and the pipe or between two strings of pipe in a well.”
5 That is, oil, gas, water, or other fluid encountered in formations penetrated by the bit.'
The apparatus claims in suit are 9 to 17 inclusive and 19. Claim 15 is typical: “Apparatus for testing the productivity of a formation encountered in a well containing drilling fluid, comprising a single empty string of pipe to be lowered into the well through the drilling fluid to adjacent the formation to be tested, a packer lowered into the well by said string of pipe for sealing off the drilling fluid from the formation to be tested, said packer adapted to be positively pressed against the walls of the formation to seal off the same, means at the lower end of said string of pipe to receive fluid from, said formation including an inlet opening into said pipe below said packer and a valve structure for controlling the inlet, said valve structure having a relatively. stationary .part connected to the packer and a relatively movable part connected to the pipe.”
Sustaining the claims in suit, the district court for eastern Texas found: Plaintiffs have a large business under the patent in suit. Prior to the discovery there was no apparatus or method' in use for testing^ productivity of formations in wells containing drilling fluid except by putting in a casing and removing the fluid. This patent
6 “18. A method of testing the productivity of a formation encountered in a well containing drilling fluid involving the insertion of only a single string of pipe into the well to make a test, which includes lowering a test string into the well through the drilling fluid with a packer carried by the string and a valve inlet at the lower end of the string closed against the entrance of fluid from the well, setting the packer above the formation and opening the valve to permit cognate fluid from the formation to enter the inlet, closing the valve to prevent the subsequent entrance óf fluid from the well through the inlet and releasing the packer, and raising the test string with the inlet closed against entrance o'f fluid from the .well to remove an entrapped sample.”
In this suit the trial court found: The Franklin Patent No. 263,330, dated August 29, 1882, anticipates both the method and apparatus covered by the patent in suit. The use of a packer is necessarily implied from the language of the Franklin patent. Without one, that device could not perform the functions attributed to it. - Plainly, it may be used as a tester; for by its use the contents of the producing stratum, sealed off from the -rest of the well and unimpeded in its entry -into the rat-hole by pressure of the rotajy mud, can be brought undiluted to the surface by a mechanism almost duplicating that shown by the patent' in suit. A packer to separate one stratum of the oil well from another is old in the art.
And it also found: The Cox Patent No. 1,347,534, dated July 27, 1920, and the Edwards Patent No. 1,514,-585, dated November 4, 1924, substantially disclose the method and device claimed in the patent in suit. The object of these patents, like that of the one in suit, was to ascertain. productivity ;of the stratum being drilled. There was no actual commercial use of the device disclosed and claimed in the patent in suit. It was impractical, due to difficulty in operating at .increased length. The inventor himself was employed to devise improvements in the valve structure. If valid at all, the patent must be restricted to its precise form. The method claims are invalid for want of invention. In important respects, defendants’ devices differ in operation from the device disclosed and claimed by the patent in suit; they are not infringements of it.
And that court decreed that as to all claims in suit, the patent is invalid.
The opinion of the circuit court of appeals for the fifth circuit considers the questions of invention here involved. In substance, it says:
Packers and pipes with valves in them have long been in use to get what is below the packer free from what is above and without removing what is above. ’ Whether a large quantity from a finished well- or. a simple sample from an . unfinished well does not materially alter the method. Water has always beep encountered in oil wells; the drilling fluid is only very muddy water voluntarily put and kept in the well for special reasons. Expansible and removable packers with pipes through them to. reach the oil, gas, or other desired fluid beneath and rat-hole packers set by th.e weight of the pipe pressing them down and removable by simply lifting them are shown in earlier patents.[7]
The simplicity of the method in suit along with all its operations, was reasonably disclosed in the old patent to Franklin. There is the single pipe, with a packer mentioned, but function esteemed so familiar as to need no emphasis, capable of being lowered into and'withdrawn from a well, with the entrance into or escape from the pipe
7 The opinion refers to Stewart, No. 171,589, December 28, 1875; Stewart, No. 230,080, July 13, 1880; Koch, No. 208,610, October 1, 1878; Bloom, No. 785,933, March 28, 1905; McCready, No. 1,522,197, January 6, 1925; and Cooper, No. 1,000,583, August 15, 1911.
Franklin did not intend to get a sample by raising the pipe, but intended to keep from getting a sample by making the valve a leaky one that would let the contents escape as the pipe is raised. He expected to get what was below by natural flow just as Simmons, applicant for the patent in suit, says that is to be preferred. It would be no invention to substitute a valve that would not leak for one that was.intended to and does leak on withdrawal. It would be no invention to use the Franklin device to sample a well instead of using it to flow the well. Especially after the disclosure of Cox and Edwards in the art of testing by sample taken through the drill stem with their somewhat complicated devices, recurrence for this new use to what is in substance the simple apparatus of Franklin ought not to be the foundation for the broad method claims here put forth. While perhaps not anticipated, they involve no such invention as entitles to monopoly.
The apparatus claims have a different status. They propose a new machine to better accomplish' the useful result. They were rewritten to state for the first time that only a single string of pipe is to be used. In view of the oil well art, the omission of the Edwards second pipe to maintain circulation involves no such invention as to give a monopoly-of all single string testers as is here
The circuit court of appeals for the ninth circuit, upon considerations in substance the same as those suggested in the opinion of the circuit court of appeals for the fifth circuit, held that the apparatus claims of the patent in suit were anticipated by the patent to Franklin. But, holding, that invalidity of apparatus claims does not negative discovery of method or process, that court in substance said:
The Franklin patent directs the pipe to be lowered into the well and the valve to be Operated by movement of the pipe so as to control the flow of oil. It teaches that the tube can be kept empty by closing the valve while it is being lowered and. that it should be closed prior to its removal. The device is to be used in a flowing well which, of course, contains no drilling fluid. At the time of that patent the rotary method of drilling was unknown. Its purposes were to provide a method of keeping the tubing closed while being lowered into or removed from the well and means of temporarily closing the tubing to allow the gas in the well to obtain sufficient head so that the well would flow. There is disclosed no use for taking entrapped samples from unfinished wells containing drilling fluid. .There is no suggestion of this last step of the patented process; the device was evidently intended to be permanently attached to the tubing of the well.
.Simmons, applicant .for the patent in suit, faced the problem of providing a method of testing an oil well with
• The Simmons discovery constituted invention. It disclosed what had not been thought possible in' the art, that is, that such a device could be set in a well containing drilling fluid not in circulation long enough to make the test; it substituted a much better process than had been in use. The discovery was' that a well could be safely tested by lowering a single string of pipé equipped with a valve packer and strainer and that it was not necessary to set the casing permanently and bail out the drilling fluid; or, if a test were attempted without permanently, setting the casing, it was not necessary to provide an extra string of pipe for circulation of the drilling fluid.
1. Plaintiffs, insisting that the apparatus claims are not invalid for lack of invention, emphasize the fact that the Franklin apparatus was intended to be used to govern flow of a finished well and not for testing, productivity of formations encountered in drilling; they maintain that it is not adapted to the last mentioned usé without significant changes and they suggest that even a very slight change is enough, to give patentability to the changed apparatus if the change is foreign to the purposes of the Franklin apparatus and dictated by those of the apparatus in suit’. They say that the essential features of the latter, not found in the Franklin patent, are a packer so related to the inlet that it may seal off the formation to be tested from the hydrostatic pressure of the inud-laden fluid standing in the well during the testing operation, a valve so positioned with respect to the packer inlet that when closed it will entrap the entire flow of the cognate fluid to result from natural pressure in' the formation
The specification of Franklin’s pátent states that his invention consists, in providing a device which can be connected with the tubing of the well above a “packer.” On ample evidence, the trial and appellate courts found that packers to separate the producing strata from the others were old in the art, and that the use of a packer, substantially as the same exists today, is necessarily implied from the language of the Franklin patent. Detailed description by, Franklin was unnecessary. Loom Co. v. Higgins, 105 U. S. 580 , 586.
Franklin’s specification states that the device containing the valve should be “preferably . . . above the packer” and that “it may be placed deep in the well and thereby obtain considerable advantage.” This indicates a valve just above the packer as is true with respect to the patent in suit. But even assuming the contrary, in view of prior art as disclosed by the Cox and Edwards patents, the location of the valve as indicated by the patent in suit is mere mechanical contrivance and not invention. Hollister v. Benedict & Burnham Mfg. Co., 113 U. S. 59 , 73.
It is assumed, as claimed by plaintiffs, that the valve of the Franklin device was made so that it would let the contents of the pipe escape while it was being taken out of the well. But by mere substitution of a tight valve for a leaky one the device would be made to hold and bring up samples from the formation below the packer. The difference between the Franklin valve, leaking while being drawn from the well, and that of the patent .in suit,, purposely made to close tightly, is not an essential or patentable element.
In wells where there exists natural pressure in the formation below the packer sufficient to force the fluid to
The apparatus claims are invalid.
2. As used in the statute,[8] “useful art” includes method which in this case is used interchangeably with process; “machine” includes apparatus.[9] Having held the apparatus not new, we come to the .question whether claims 8 and 18 cover any new method or process.[10] These claims relate to “a method of' testing.” The claims relating to the device call it an “apparatus for testing.” In the method claims[11] and in some relating to apparatus,[12] the phrases just quoted are followed by identical words: “the productivity of a formation encountered in a well containing drilling fluid.”[13] The elements to be employed in taking the steps constituting the method are essentially the same as those constituting the apparatus. The process consists of “lowering an empty string of pipe,” “setting the packer,” “opening the valved inlet,” “closing the valved inlet,” “raising the pipe so closed to remove an entrapped sample and. the packer from the well.” The result to be achieved by the method claimed to be new is precisely the same as that for the attainment of which the apparatus found to be old was contrived.
8 35 U. S. C. § 31 .
9 Corning v. Burden, 15 How. 252 , 267.
10 See Risdon Locomotive Works v. Medart, 158 U. S. 68 , 77, 79. Expanded Metal Co. v. Bradford, 214 U. S. 366 , 383. Tilghman v. Proctor, 102 U. S. 707 .
11 Claims 8 and 18.
12 Claims 13, 14, 15, 16, 17, 19.
13 To show identical subject matter in the two sets of claims, defendants present an analysis of method claim 18 and apparatus claim 19 in parallel arrangement as follows’: 18. A method of testing the productivity of a formation encountered in a well containing drilling fluid involving the insertion of only a single string of pipe into the well to make a test, which includes lowering' a test string into the well through the drilling fluid' with a packer carried by the string and a valve inlet at the lower end of the string closed against the entrance of fluid from the well, setting the packer above the formation ... closing the valve to prevent the subsequent entrance of fluid from the well through the inlet and releasing the packer, and raising the test string with the inlet-closed against entrance of fluid from the well, to remove an entrapped sample. 19. An apparatus for testing the productivity of a formation in a well containing drilling fluid, comprising a string of pipe [a string of pipe] to be lowered into the well through the drilling fluid to adjacent the formation . . . and to be raised out of the well to remove the entrapped sample, . . . a packer carried by the pipe as the pipe is lowered into the well ... an inlet to the pipe communicating with the well below the point at which the packer seals off the well, [the packer is] adapted to be seated by manipulation of the pipe to seal off the well above the formation, said packer adapted to be positively pressed against the walls of the formation to seal off the same, and means for controlling the inlet to permit fluid from the formation to enter the pipe while the packer is set and to prevent fluid from entering the pipe after the packer is released and the pipe is being raised out of the well [to remove the entrapped sample].
The method claims are invalid.
The'part of the decree of the circuit, court of appeals brought up by defendants’ petition is reverse'd. The part brought up by plaintiffs’ petition is affirmed. The decree of the district court is affirmed:
No. 466, reversed.
No. 4^9, affirmed.
The Chief Justice took no par-t in the consideration, or decision of this case.
Cases cited
- Loom Co. v. Higgins 105 U. S. 580 p. 559
- Hollister v. Benedict & Burnham Manufacturing Co. 113 U. S. 59 p. 559