88 F.2d 270 | 5th Cir. | 1937
Erie P. Halliburton and Halliburton Well Cementing Company, sued Johnston Formation Testing Corporation and E. C. Johnston for infringement of patent No. 1,930,987, which was applied for by John T. Simmons, alleged inventor, February 10, 1926, but not granted till October 17, 1933. Simmons before applying for the patent assigned an interest to Henderson, but within three months after the application was filed they had assigned first partially and then wholly to Halliburton. The patent covers a method and an apparatus for testing the productivity of formations encountered in drilling oil and other deep wells. The defendants also have patents, granted while the Simmons patent was pending in the Patent Office, under which the alleged infringing apparatus has been used and operations conducted. We read in the proceedings in the Patent Office the statement of Halliburton that twenty patents had been granted in this particular testing art while the Simmons patent was pending, which makes apparent the great activity at this period. It appears in the record that both Halliburton and Johnston and their companies make thousands of these deep well tests and no doubt there are others making them also. Evidently, since Halliburton claims all others to ,be infringers of the Simmons patent, the monopoly contended for would if established very seriously affect many persons and businesses. In Edwards v. Johnston Formation Testing Corporation (D.C.) 44 F.(2d) 607, affirmed (C.C.A.) 56 F.(2d) 49, the present defendants were sued by Edwards, the patentee in No. 1,514,585 issued November 4 1924, and therefore antedating the Simmons application some fifteen months. The holding was that neither Edwards nor Johnston were pioneers in the well testing art, that Edwards had not a basic patent, but was only an improver, and his monopoly was limited to his improvement. It is now claimed that the Simmons invention is basic at least in the employment of a single string of .
! Seven claims only were originally made by Simmons, all for an apparatus and none mentioning the single pipe string as an element. They are not here asserted to be infringed. Claims 8 to 19, inclusive, for method and apparatus, are relied on. They (or their predecessors) were twice rejected by the examiners as anticipated by other patents and twice rewritten in the effort to differentiate or narrow them. They were as now presented again rejected, but on appeal to the Board of Appeals they were allowed, and the patent issued. The decision of the Board of Appeals was followed by the District Judge in this case, but in Halliburton v. Honolulu Oil Corporation (D.C.) 18 F. Supp. 58, in the Southern District of California, Judge Cosgrave thought the method claims 8 and 18 were invalid and the apparatus claims if valid were to he restricted to the form disclosed and not infringed, following our conclusion in the case of Edwards v. Johnston Formation Testing Corporation, supra. We are of opinion that Judge Cosgrave’s conclusion is correct and will state as clearly and as briefly as possible our reasons.
The drilling of very deep wells by the rotary method which has come into extensive use only during the present century, and the methods of testing the strata pierced practiced before the invention of Edwards, including the use of packers, “rat-holes,” and sampling chambers, are described in the opinions in 44 F.(2d) 607, and 56 F.(2d) 49 and need not be repeated. Several of the older patents brought forward in this case were there discussed. What was said of them in relation to the Edwards and Johnston patents is largely true as to the Simmons patent which came into the same art at nearly the same time that Edwards and Johnston did. We will again discuss some of them as specially bearing on the Simmons’ claims. Of the method claims 18 is representative, as copied in the margin.
It would take no invention with such a change of purpose to substitute a valve that would not leak for the one that does leak on withdrawal. Nor do we think it would be invention for one having a Franklin device to use it to sample a well through drilling fluid instead of using it to flow the well through water or air above the packer. Especially after the disclosures of Cox, No. 1,347,534, July 27, 1920, and Edwards, No. 1,514,585 November 4, 1925, in this very art of testing strata in deep rotary drilled wells by sample taken through the drill stem, with their somewhat complicated devices, we do not think that recurrence for this new use to what is in substance the simple apparatus of Franklin ought to be the foundation for broad method claims such as are here put forth. We hold them, while perhaps not strictly anticipated, to involve no such invention as entitles to monopoly.
The' apparatus claims have a different status. They propose a new machine to better accomplish by its employment the useful result. The inventor Simmons, as already stated, put forth seven such claims as his conception of what he had invented. They are not alleged to be here infringed and we express no opinion about them. So soon as Halliburton acquired an interest in the invention, his attorneys added the much broader claims. Claim 15 copied in the margin is typical.
We have rested the decision upon the grounds already stated, but we have grave doubt that Simmons is the original and sole inventor of the method and apparatus sought to be patented. He gives a strange account of the conception and development of what is now said to be a revolutionary idea. It arose neither from experience, experiment, nor study. It was not either “a leap or a step” in the progress of the art, but a stumble in the dark. He says he was not thinking of testers at all, never saw one and knew nothing of them, but was thinking of a float valve to prevent a drill stem from collapsing. In September, 1925, he made a rough model of his rotary-valve tester out of two wooden spools, and about the last of October approached S. E. Carter, whom he had known twenty years, to furnish money to get a patent, which Carter said he would do so soon as he got in funds about the first of the year. In January Carter said he could not spare the money and Simmons went to Henderson, who advanced him $11 to have Eby Engineering Company in’the same town to make three blueprints, without dimensions, the bill for which is dated January 22, 1926. One of these was taken to a local machine shop and from it a blacksmith is said to have made forgings and a single machinist to have fabricated a full size tool all by February 2, on which date $60 was paid in full of an invoice worded “Special 4”x 6%” Rubber Packer as instructed $60.00.” Another blueprint was sent to Washington with application for the patent on February 10, 1926. Simmons says that Carter did not mention to him that he was helping one Philp, also an old acquaintance of both, in the same town and in the same machine shop to get made a similar full size tool and that the very same Eby Engineering Company had made Philp similar blueprints, one of which Philp had sent to Washington with application for patent on November 23, 1925. Carter, on the other hand, says that he and Philp had been working on the Philp tester since early in the spring or summer and the machine shop worked on it at odd times for many weeks, Carter not having money to pay for it; that Philp gave up his application for patent on receiving from his attorneys in Washington copies of the Cox and Edwards patents, and that the matter was then put in Simmons’ hands, he being in Carter’s employ. The secretary-treasurer and part owner of the machine shop, who severed his connection with it on November 30, 1925, testified fully by interrogatories to having had the tool made for Carter and Philp at odd times during the early part of 1925 before he left under a special arrangement for credit with Carter, and that they made the metal part but put no rubber packer on it. The judge ruled out his testimony that the metal part could not be made with all modern machinery for $60 and that the packer to go on the tool to hold the water back would cost $60 in his opinion. It does not appear why this testimony was excluded, but we think it ought to have been admitted. It fairly appears that the witness was in position to know the cost of machine work and packers and since no one testifies to making out the $60 invoice or why, if it referred to the whole tool, it should be described as a “rubber packer 4” x 6%",” language which is appropriate to a frustroconical rubber mass of diameter 4”at the small end and 6%" at the larger, but which does not well describe a metal tool several feet long with no such metallic dimensions. The machinist Butler mainly corroborates Simmons, though he admits that the working hours between the making of the blueprint and the receipt on the $60 invoice were hardly sufficient for the machine work, and that the time of himself and the machines at the usual rate would be worth several times $60. The former bookkeeper and the foreman of the machine shop both corroborate the ex-secretary-treasurer and Carter. No one says that more than one tool was ever made there. Philp got to the trial late and was restricted to surrebuttal testimony and did not get to say much. But his blueprint and the correspondence with his patent lawyers in Washington are in the record. We agree with the trial judge that Philp and Carter abandoned their interest in the whole matter, but we cannot think that this bookkeeper, this foreman, and the former secretary-treasurer of the machine shop who have no interest and are not im
The judgment is reversed and the cause remanded, with direction to dismiss the bill.
“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 earned 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 cognant fluid from the formation to enter the inlet, 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.”
“15. 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 sta- . tionary part connected to the packer and a relatively movable part connected to the pipe.”