Bryan v. Sid W. Richardson, Inc.

• Decision Date: 08 April 1958
• Docket Number: No. 16389.,16389.
• Citation: 254 F.2d 191
• Parties: Thomas E. BRYAN, Appellant, v. SID W. RICHARDSON, Inc., Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

254 F.2d 191 (1958)

Thomas E. BRYAN, Appellant, v. SID W. RICHARDSON, Inc., Appellee.

No. 16389.

United States Court of Appeals Fifth Circuit.

April 8, 1958.

Oscar A. Mellin, San Francisco, Cal., David M. Coover, Corpus Christi, Tex., E. Hastings Ackley, Dallas, Tex., Mellin, Hanscom & Hursh, San Francisco, Cal., for appellant.

Ira Butler, Herbert J. Brown, Charles L. Stephens, Gillis A. Johnson, Fort Worth, Tex., James C. Martin, Corpus Christi, Tex., for appellee.

Before RIVES, BROWN and WISDOM, Circuit Judges.

JOHN R. BROWN, Circuit Judge.

This appeal tests the correctness of the District Court's decree upholding validity of the dominant patent,¹ 162, and the continuation in part patent 903 and infringement on both by Bryan's device.

While Bryan's attack below took the full range of the typical infringer's defense, the case, after full trial and findings, comes to us considerably narrowed down.

The patents relate to the field of gas lift in the production of oil, the importance of which is attested by many such patents with which we have dealt.² In dealing, as most of them did, with the flow control valve itself, the emphasis has been on features which would assure continued regular performance of the valve under the high pressures and conditions encountered in view of the great cost in time and money as well as risk to the well itself when faulty valves have to be withdrawn and replaced. This was so because, up to the time of patent 162, there were but two principal types of control valve installations: (1) in a mandrel³ by which the valve was positioned in an offset housing external to the tubing; or (2) in the axis of the tubing itself.

Each had a significant advantage but both had severe disadvantages and limitations. While in (1) it is obvious that the full internal diameter of the tubing was left open, the only way to remove the valve was to pull⁴ the tubing so that the valve housing mandrel could be removed from the string, opened up, and the valve removed and replaced. On the other hand, while in (2) the faulty valve located axially in the tubing could be removed by wire line tools without pulling the tubing, the very presence of the control valve blocked the tubing so that numerous operations⁵ were prevented or could be done only by removal of all such valves. In addition, if control valves were installed in series, as they frequently are, one such valve could not be removed selectively. All valves above it had first to be removed.

The problem then was how to install valves which would be (a) removable selectively without pulling the tubing while (b) leaving the tubing open for operations.

Neither Bryan, the self-professed father of the gas lift art, armed with all of his patents and prior knowledge, nor anyone else had resolved it. It was, the District Court held on evidence which we deem overwhelming, solved by the patentees of 162. The patent discloses a combination which in non-patentese may be described generally. The mandrel was designed so that it was bulged out along one side. Within the mandrel this left a longitudinal area that was a continuation, without obstruction, of the tubing. In the internal space of the expanded portion provision was made for seating a conventional control valve so that, at a point below the seat, the port of the valve was exposed to the annulus. With the control valve in this position, the tubing was unobstructed and, at the same time, a portion of the valve (or its adaptor) was exposed within the mandrel for selective removal and replacement if necessary. This was to be accomplished by conventional and well-known devices, such as whipstocks and fishing tools, by which to effect the movement of the valve laterally to and from the axis of the tubing to the valve seat.

What had long been needed had now been found. What had been found, or its substantial equivalent, by commercial production beginning in 1952 became, and was, a great commercial success at the time Bryan introduced his device in 1954. Not surprisingly, what had long been unseen then became, retrospectively, perfectly obvious. And as a major stronghold in his system of fluid defenses below, Bryan took the usual tack that 162 was invalid as lacking in invention and novelty. Whether, under the specifications of error, the District Court's ruling adverse to him on this point is open to review as a technical matter, we need not determine. For Bryan, with a remarkable faculty for taking positions contrary to his own conduct which led the District Court to reject his testimony altogether,⁶ in extravagent language of his own subsequent patent application⁷ in 1954 boasted that he had made precisely the same great discovery.

In this predicament Bryan's very able counsel now likewise champions the idea of novelty. But confining novelty to the manner in which the valve is moved laterally and is seated or unseated, he now levels the concentrated attack on the claims. Here again it is accompanied with that traditional flexibility seemingly inherent in the art of patent law in which, for validity the protest is that the claim is too broad, while for infringement it is to be narrowly and literally applied. That attack is here centered on the principal Claim⁸ No. 1 on the ground that it is so broadly stated as to define the invention solely by statements of function and result. We do not agree.

The novelty was not, as Bryan claims, the mechanism by which the tool could be laterally shifted to insert or retrieve the valve. The novelty, as the Court found, was the "* * * combination of co-acting elements of a side-pocket mandrel and shifting tool which left open the tubing bore and yet had full selective retrievability of flow control units. Under prior-gas lift apparatus this had not been possible before." Bryan's contention that a, b, c of Claim 1, note 8, supra, are, or may be, old in the art, does not make the patent for a combination invalid. A combination whether composed of all old, or some old and some new elements, is patentable if it achieves an altogether new and useful result. Cameron Iron Works, Inc., v. Stekoll, 5 Cir., 242 F.2d 17; Robertson Rock Bit Co. v. Hughes Tool Co., 5 Cir., 176 F.2d 783. The life of such a combination is not to be destroyed by excision of its several parts without benefit of anaesthesia, nor is the cause of its vitality to be discovered by the prosector's retrospective dissection. Jeoffroy Mfg., Inc., v. Graham, 5 Cir., 206 F.2d 772, 776.

Nor does that cause the means portion of d and e of Claim 1, note 8, supra, to infect the whole new combination with a virus of invalidity. E-I-M Co. v. Philadelphia Gear Works, Inc., 5 Cir., 205 F.2d 28, 29. The Court, on ample evidence, found that d and e, relating to the movable elements, referred to well-known devices such as kickovers, centralizers, whipstocks or slanted guides and other tools or devices, such as wire lines, knuckle joints, jars, threading and latching for selectively seating or removing the valve.

The word "means" is no shibboleth. To be sure, it, or its equivalent synonyms, cannot be used to describe the invention at the very point of novelty for to do so would then be to define invention in terms of the result. But where the novelty of the combination — here the "stationary element or receiving section consisting of a side-pocket mandrel as an integral part of the tubing string * * capable of selectively receiving, seating, and disgorging a flow control unit * * lowered from the surface * * *" is adequately disclosed with definable limitations, other and well-known elements need not be described in structural detail. Section 112 of the Patent Act of 1952, 35 U.S.C.A. § 112, expressly⁹ permits it. If Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3, caused either a real or psychosomatic¹⁰ infirmity in the body of the prior law, it is plain that Section 112 was meant as a sufficient transfusion to restore vitality to the principles before and since pronounced.¹¹

When the claim with this language in it is construed in the light of the disclosures of the patent, it does not grant a monopoly on every means or mode by which that result could be achieved. As the Act phrases it, these are confined to corresponding structures or acts described in the specification and equivalents thereof. Our discussion of infringement will demonstrate that the Court's findings of equivalency on these elements is likewise supported.

The Court's holding of validity of 162 was adequately supported by facts and was correct. Bryan v. Garrett Oil Tools, Inc., 5 Cir., 245 F.2d 365, 371; Georgia Kaolin Co. v. Thiele Kaolin Co., 5 Cir., 228 F.2d 267; Jeoffroy Mfg., Inc., v. Graham, 5 Cir., 206 F.2d 772.

Validity of 903.

For the reasons discussed concerning 162, the claims in suit¹² of continuation patent 903 satisfy the requirements of invention and novelty. Like the dominant patent 162, it comes here with the presumption of validity. 35 U.S.C.A. § 282; Jeoffroy Mfg., Inc., v. Graham, 5 Cir., 219 F.2d 511, 519.

In 903 the flow valve receiving section of the mandrel was designed to take advantage of the known principle of balanced pressures. In the drawings of 903 and the disclosure, there was an external recess in the wide part of the mandrel. Above and below the recess there was a circular opening through which the valve was inserted and thus sealed. When installed, the bottom end of the valve with its port opening into the tubing was inside the mandrel below the recess, and the top portion of the valve was inside the mandrel above the upper recess. The port of the valve for admission of gas from the annulus was exposed in this recess. This was a useful improvement as a sub-combination in the combination, the novelty and usefulness of which involved the employment of double seats above and below the point where the mandrel opened onto the annulus.

But, Bryan says, that since it is his...