Dow Chemical Co. v. Williams Bros. Well Treating Corp.

• Decision Date: 25 February 1936
• Docket Number: No. 1285.,1285.
• Citation: 81 F.2d 495
• Parties: DOW CHEMICAL CO. v. WILLIAMS BROS. WELL TREATING CORPORATION.
• Court: U.S. Court of Appeals — Tenth Circuit

81 F.2d 495 (1936)

DOW CHEMICAL CO. v. WILLIAMS BROS. WELL TREATING CORPORATION.

No. 1285.

Circuit Court of Appeals, Tenth Circuit.

January 10, 1936.

Rehearing Denied February 25, 1936.

Arthur C. Brown, of Kansas City, Mo., and Russell Wiles, of Chicago, Ill., for appellant.

Wilbur J. Holleman, of Tulsa, Okl. (N. A. Gibson and J. H. Maxey, both of Tulsa, Okl., on the brief), for appellee.

Before PHILLIPS, McDERMOTT, and BRATTON, Circuit Judges.

McDERMOTT, Circuit Judge.

Appellant here, plaintiff below, is the owner of United States Patent 1,877,504, issued September 13, 1932, upon application filed June 30, 1932. The object of the invention is to increase the recovery of oil from wells in a limestone formation, and is attained by injecting an inhibited hydrochloric acid (HC1) into the formation, which eats away the retaining rock structure and frees the oil. The genius of the invention is in the use of a reagent with the acid which inhibits its action on the metal casing and tubing of the well without affecting its powers on the rock formations. Having conceived the idea, extensive experimentation was carried on to demonstrate its utility before applying for the patent. The patented process met with instant and overwhelming success, the list of the wells treated under contract with plaintiff covering page after page of closely set pages of the record. The process was being used at the time of the trial in 16 oil producing states. In Kansas alone, 535 wells were treated and the treatment increased their production 225.1 per cent. Among its customers are many of the great oil companies.

The claims of the patent specify the use of HC1 with an inhibiting reagent, some of them specifying within limits the proportions of acid, reagent, and water in the solution, and three claiming the step of forcing the solution into the rock formation under pressure. Claims here relied upon are 1, 5, 7, 8, and 10. Claim 7 will serve to illustrate:

"The method for increasing the output of an oil well which comprises introducing into the base of such well a 5 to 20 per cent hydrochloric acid solution containing a relatively small amount of a corrosion inhibitor, permitting the acid to act upon the rock formation surrounding the well cavity while applying pressure upon the solution and withdrawing the spent acid."

Defendant infringes if the patent is valid. Plaintiff brought this action to enjoin further infringement and for an accounting. The conventional defenses were interposed. After a trial, the court found there was no invention in light of the then state of the art, and that the claims had been anticipated by prior patents and public use. The bill was dismissed.

1. Invention. The use of various reagents with acids to inhibit their action on metals without impairing their other powers has been known and widely employed since 1883, and many patents have issued, claiming processes using inhibited acids.¹ In 1928 the Gypsy Oil Company, as will be seen more fully later, experimented with an inhibited acid to clean gypsum scale from pumping apparatus.

In 1896 Frasch obtained a patent (No. 556,669) upon the method of increasing the flow of oil by the use of acids to eat away the retaining limestone structure. Frasch's process contained the steps of forcing raw HC1 under pressure into the rock formation to release the oil. Not using an inhibited acid, Frasch specified means to protect the casing, which was to place in the well, inside the casing, an enameled pipe, lined and covered with two soft rubber tubes, and sealing the crevices between the pipe and the irregular hole in the rock below the casing with a packer to prevent the acid rising in the hole. This made it necessary to pull the tubing. After treatment, and before pumping was resumed, traces of acid left in the well were neutralized by an alkaline. Frasch's method was cumbersome and expensive, and probably impracticable because of the inherent difficulty in adequately sealing off the acid at the bottom of the hole. In any event Frasch's patent met with no commercial success.

What plaintiff did was to combine the Frasch idea of using acid to dissolve retaining limestone in an oil well, with the inhibited acids long used in the steel industry. Does that simple conception involve invention?

At first blush, the conclusion seems irresistible that no inventive genius was employed in substituting an inhibited acid, long known in the steel industry, in the Frasch process. On the other hand, the stubborn fact remains that plaintiff was the first to solve a problem which has baffled all the scientific skill at the command of the oil industry for generations. Looking backward, it seems inconceivable that the simple idea disclosed by this patent was not hit upon many, many years ago; yet the fact remains it was not. It has been authoritatively decided that reward to inventive genius must not be denied because the invention is one which, viewed in retrospect, seems so simple that it is difficult to say that genius attended its conception. A broader view must be taken, and the philosophical must give way to the practical. For example, the idea of putting an electric fan in an incubator, Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721, and of a coiled barb instead of a straight one on a wire fence, Barbed Wire Patents Case, 143 U.S. 275, 283, 12 S.Ct. 443, 446, 36 L.Ed. 154, have both been held to involve inventive genius. In the latter case, it is said:

"But it is plain from the evidence, and from the very fact that it was not sooner adopted and used, that it did not, for years, occur in this light to even the most skillful persons. It may have been under their very eyes; they may almost be said to have stumbled over it; but they certainly failed to see it, to estimate its value, and to bring it into notice. * * * Now that it has succeeded, it may seem very plain to any one that he could have done it as well. This is often the case with inventions of the greatest merit. It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention."

The District Court for the District of Maryland dealt with a patent which seemed, looking backward, to be so simple as to be obvious to all. It affirmed the closely reasoned opinion of Judge Soper who used this language, apposite here:

"Schaub's idea was a simple and complete solution of the problem that the art had been considering for many years, and it was close at hand. But was it obvious to persons skilled in the art? If so, as the plaintiff pertinently inquires, why did not Worden, the foremost expert in nitrocellulose solutions, or Duncan, or Denayrouze, or Poulton, or the Dupont Company, discover it and disclose it to the world? To bring the problem home to the parties in this suit, why did not the Sterno Corporation, which has been the most active dealer in solid alcohol in this country since 1914, introduce this useful improvement in the manufacture of its product. None of these experts and practical men made the discovery, although vitally interested in the problem, and it follows that their failure was due to lack of the inventive ability on this particular point which the patentee possessed. Diamond Rubber Co. v. Consolidated Tire Company, 220 U.S. 428, 434, 31 S.Ct. 444, 55 L.Ed. 527; Eibel Process Co. v. Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523." Theroz Co. v. United States Industrial Chemical Co. (D.C.) 14 F.(2d) 629, 634, 635, affirmed (C. C.A.) 25 F.(2d) 387, certiorari denied 278 U.S. 608, 49 S.Ct. 12, 73 L.Ed. 534.

Mere substitution of material may or may not involve invention. If a new result, or an old result in a better way, is accomplished through inventive genius, it is no defense to say that it but involved a substitution of materials, particularly when experimentation is required to demonstrate the practical value of the article used. Walker, in his work on Patents, says in § 66:

"If the substitution of materials involved a new mode of construction, or if it developed new properties and uses of the article made, it may amount to invention. And substitution of materials may constitute invention, where it produces a new mode of operation, or results in a new function, or in the first practical success in the art in which the substitution is made, or in increased efficiency or in a decided saving in cost of operation. So also, where the excellence of the material substituted could not be known beforehand, and where practice shows its superiority to consist not only in greater cheapness and greater durability, but also in more efficient action, the substitution of a superior for an inferior material amounts to invention."

To get a broad view, we look to the situation as it was when the patent was applied for. For many years it had been known that but a small percentage of the oil in the reservoirs of the earth was recoverable by pumps. Many expedients to increase that recovery were in use. Nitroglycerin was used to break down the rock structure; methods employing the principles of the vacuum were tried; natural gas was injected into the sands under pressure through master holes or abandoned wells. A modicum of success attended all these efforts. There was a real need for any process which would either increase the ultimate recovery from the sands, or do the same work at lesser cost.

That this need was met by this process is demonstrated by its instantaneous and overwhelming adoption by the industry. The acute interest of the industry is indicated by the fact that during the 75 days elapsing between the application and the patent, letters of inquiry were received from the Stanolind, the National, the Indian Territory, the Gulf, the Union, the Empire, the Continental — great oil companies which have staffs of scientists at their service....