Bryan v. Garrett Oil Tools

• Decision Date: 17 July 1957
• Docket Number: No. 16053.,16053.
• Parties: Thomas E. BRYAN, d/b/a Bryan Gas Lift Equipment Company, Appellant & Appellee, v. GARRETT OIL TOOLS, Inc., Appellee & Appellant, GARRETT OIL TOOLS, Inc., Appellee & Appellant, v. Thomas E. BRYAN, d/b/a Bryan Gas Lift Equipment Company, Appellant & Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

245 F.2d 365 (1957)

Thomas E. BRYAN, d/b/a Bryan Gas Lift Equipment Company, Appellant & Appellee, v. GARRETT OIL TOOLS, Inc., Appellee & Appellant, GARRETT OIL TOOLS, Inc., Appellee & Appellant, v. Thomas E. BRYAN, d/b/a Bryan Gas Lift Equipment Company, Appellant & Appellee.

No. 16053.

United States Court of Appeals Fifth Circuit.

June 10, 1957.

Rehearing Denied July 17, 1957.

Robert F. Davis, Washington, D. C., Charles M. McKnight, Tulsa, Okl., Stevens, Davis, Miller & Mosher, Washington, D. C. for plaintiff, appellant-appellee.

Thos. E. Scofield, Kansas City, Mo., James T. Wright, Houston, Tex., Dyche, Wheat & Thornton, Houston, Tex., Charles F. Potter, Spruiell, Lowry, Potter & Lasater, Tyler, Tex., of counsel, for appellant-appellee.

Before HUTCHESON, Chief Judge, and TUTTLE and JONES, Circuit Judges.

TUTTLE, Circuit Judge.

These are cross-appeals from a judgment of the district court which had upheld the validity of one patent owned by plaintiff and one patent owned by defendant and had found infringement as to each, while holding that another of plaintiff's patents was invalid and not infringed by defendant; each party appeals from all parts of the judgment adverse to it.

All the patents involved relate to the design and operation of certain valves used in the extraction of oil from wells by the so-called "gas-lift" method. In order to cause oil to flow from a well which by itself does not generate sufficient pressure to push the fluid to the surface it is possible to force gas into the oil under pressure, which results in a mixture of lower density light enough to rise to the well head. Alternately, a slug of gas may be introduced under a mass of oil, which, upon expanding, will push the oil above it to the surface. Customarily the gas is introduced by lowering a string of tubing into the casing to form thus two concentric passages; the outer passage is sealed off at the bottom, permitting oil to rise within the tubing while gas may be pumped into the casing around the tubing, and, through holes in the tubing, into the oil. The problem is to regulate the flow of gas through these holes into the oil in such a manner that the optimum gas-oil ratio is obtained for a given flow — which may be determined either by the capacity of the well or by extraneous limits on the desired rate of extraction. For this purpose a great variety of valves and ancillary control systems had been devised. The valves involved in the present suit are, unlike those of earlier designs that had to be manipulated from the surface, automatic, in that their opening and closing is determined by certain combinations of pressures and velocities of flow in the gas and in the oil, and thus it is possible to control them indirectly by proper adjustment of the gas pumped into the well.

In challenging or supporting the six ultimate determinations of the trial court on the validity and infringement of three patents the parties appear almost to run the gamut of the legal issues that are peculiar to patent litigation. However, the points raised as to each are largely separable and permit an individual examination of each such principal conclusion.

I. Validity of Bryan Patent No. 2,145,918.

Claim No. 9 of the Bryan Patent No. 2,145,918 (hereinafter Bryan '918), the only one of the claims of this patent here at issue, concerns the placing of an automatic, intermittent valve into the tubing in such a manner that it can from time to time be lifted out for inspection, repair, or replacement. It reads as follows:

"9. In combination with a conduit for removing liquid from a well, said conduit having a lateral opening therein in communication with a source of gas under pressure, a valve adapted to be lowered into said conduit for controlling flow through said opening and having a part adapted to removably seat within said conduit and to form a sealed connection with the inner end of said opening when so seated."

In the accompanying disclosures and illustrations this removable valve is always described as being enclosed in a slightly tapered housing which fits into a correspondingly tapered collar fixed in the tubing in such a way that the hole through the tubing and collar corresponds with an appropriate hole and groove in the housing and in the valve through which the gas may pass from outside the tubing into the valve, and, if that is open, into the oil standing in the tubing. At the top of the housing there is an appropriately shaped "spear" that can be engaged by a "fishing tool" from the surface for the purpose of pulling the valve and housing up through the otherwise unobstructed tubing. The valve is so arranged that some oil can flow up through it from the lower part of the well which penetrates to the producing formation.

At the trial much evidence was introduced by both parties bearing on the question whether or not any valves with the tapered housing had ever been successfully used. Plaintiff Bryan testified confidently that a number had been installed, though he was vague as to times and places, and those of his witnesses who definitely testified to the success of the valves were not sure whether they were the ones with the tapered housing or those of a later design. Witnesses for the defendant testified that to their knowledge none of the tapered valves had ever been used, that different type valves had been used on the occasions as to which Bryan had testified that the tapered ones had been used successfully, and that it could be demonstrated from theoretical considerations that the valves were inoperative.

The trial court found that plaintiff Bryan was the inventor of this design and that it had not been anticipated either by prior patents or by prior use or publication. However, he also found as follows:

"9

"One of the essential elements of valve described in claim 9 of Patent No. 2,145,918 was a part adaptable to removable seat and to form a sealed connection when so seated. * * *.

"11

"The valve structure covered by claim 9 of Bryan Patent No. 2,145,918 is inoperative."

and therefore concluded:

"3

"Bryan Patent No. 2,145,918 is invalid as to claim 9 thereof because the valve structure covered by the claim is inoperative."

Garrett insists that the patent is limited by the disclosure and illustrations to a tapered design, and by the terms of the claim itself to a design which simultaneously seats and seals, for it is asserted that the only patentable novelty lay in the latter feature. It is further contended that the tapered design is inoperative because if the taper is designed so as to permit removal of the valve by a pull from the top it will not be able to hold the valve seated against the upward pressure of the oil, only a restricted amount of which can flow freely from beneath — and this inherent defect has allegedly been demonstrated in practice. But even if not restricted to the tapered design, Garrett alleges that no operable alternative involving simultaneous seating and sealing has yet been devised.

On the subsidiary issue of whether any tapered valves had ever been used successfully we must accept the implied finding of the trial court that no such past use has been demonstrated, since this is merely a matter of the credibility of the witnesses and of the weighing of conflicting evidence — and on the record here such a finding by the trial court is not clearly erroneous.

We do not, however, agree with the implied legal conclusion of the district court that claim 9 of the Bryan '918 patent was limited to tapered housings — since the claim itself does not so state and we see no reason for limiting the coverage to the design of the preferred embodiment. Nor do we think that the claim covers only devices in which the seating and sealing functions are performed simultaneously, i. e., by the same mechanical contrivance, as is of course true of the tapered design. A reasonable interpretation of "a part adapted to removable seat * * * and to form a sealed connection" is that the valve housing ("a part") have attachments that will seat or position the valve and also have some that will seal it in the conduit. Thus interpreted Bryan's later valve designs, using latches and sealing cups, as well as Garrett's valves discussed below, show an operable embodiment of the patent which is thus valid.

II. Infringement of Bryan Patent No. 2,145,918.

The valves of the defendant Garrett Oil Tools, Inc., denominated "W-OBP" valves, and illustrated in its trade catalogue, are used to control the entry of gas from the outside to the inside of tubing placed into a well for oil lift purposes, and are designed so that they may be retrieved from the well without removing the entire tubing. To this end their housing is of basically cylindrical design with a snap or spring ring near the lower end which fits into a groove in the collar in the tubing and permits vertical positioning so that the hole through the tubing will line up with an entry port into the valve; several O-rings are placed along the perimeter of the housing to prevent the flow of oil past it when the valve is seated in the socket, i. e., to seal it. The trial court followed Finding of Fact No. 9 supra, with the following determination:

"10

"The `W-OBP\' valves of Garrett Oil Tools, Inc., as shown in its 1954 catalog, which are the valves Plaintiff alleges infringe claim 9 of Patent No. 2,145,918, do not have a part to removably seat and form a sealed connection when so seated as required of the valve described in claim 9 of Patent No. 2,145,918. In other words, the `W-OBP\' valves do not have a sealing seat."

and concluded:

"4

"Claim 9 of Bryan Patent No. 2,145,918 is not infringed by any of the valves manufactured and sold by the Defendant, Garrett Oil Tools, Inc."

However, as we indicated above in sustaining the validity of the patent, we do not believe that claim 9 is limited to a "sealing seat" as long as some provision is made for both sealing and seating...