Lane-Wells Co. v. MO Johnston Oil Field Serv. Corp.
| Decision Date | 24 April 1950 |
| Docket Number | No. 11965.,11965. |
| Parties | LANE-WELLS CO. v. M. O. JOHNSTON OIL FIELD SERVICE CORPORATION. M. O. JOHNSTON OIL FIELD SERVICE CORPORATION v. LANE-WELLS CO. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Harris, Kiech, Foster & Harris, Ward D. Foster, Los Angeles, Cal., for Lane-Wells Co.
Hill, Morgan & Farrer, Wm. M. Farrer, Los Angeles, Cal., Mellin & Hanscom, Oscar A. Mellin, San Francisco, Cal., for M. O. Johnston Oil Field Service.
Before HEALY and BONE, Circuit Judges, and DRIVER, District Judge.
This action was brought by M. O. Johnston Oil Field Service Corporation, herein after referred to as plaintiff, for a declaratory judgment that a patent, No. 2,029,491, granted to W. G. Lane February 4, 1936 on an application filed December 20, 1932, was invalid. Lane-Wells Company, a corporation, the owner of the patent, herein called defendant, by its counterclaim charged the plaintiff with infringement. The district court held the patent valid but not infringed and both parties appealed. Plaintiff appealed from the holding that claims 7-9, inclusive, and 11-14, inclusive, of the Lane patent were valid, and defendant appealed from the decision that the patent was not infringed.1
The Lane patent is for a gun type formation tester for well bores. The claims in issue on this appeal are combination claims.2 They describe a device to be lowered in to a well bore to sample the fluid in the adjacent formation. The device consists of a gun mechanism for firing projectiles through the well casing, thus providing channels through which the fluid in the formation may flow into the well bore, a packer mechanism to pack off and isolate the section of the bore to be sampled and a sample receiver means for receiving and entrapping for withdrawal fluid entering the well bore through the channels formed by the projectiles fired from the gun mechanism.
It is conceded that all of the separate elements of the tool described in the patent claims, the packer, the gun mechanism for perforating the well casing and the sample receiver, were old and well known in the art at the time Lane first made his formation tester.3 If the device involves invention, therefore, it must be by reason of the combination of the old elements. It is claimed that putting together the old elements does constitute a new and patentable combination tool. Instead of using the casing perforator gun and the packer with the sample receptacle separately, Lane conceived the idea of putting together the gun, packer and sample receiver. The combination tool would be attached to a string of drill pipe or the like and lowered into the bore. The gun would then be fired and a sample of the formation fluid taken into the receiving tube all in one operation. When the old elements were used separately the gun was first lowered into the bore and fired, was then removed, the packer and tester were lowered into the well, the packer was set and the fluid sample taken. The average depth at which formation fluid tests are taken in the California fields is 4,500 feet and, so the trial court found, in the operation of separately running the perforator gun and formation tester there is an interval of several hours between the firing of the gun and the reception of the fluid sample in the tester.
We think that the bringing together of the old elements as was done in the Lane patent did not rise to the level of invention. It did not require more than the exercise of mechanical ingenuity of one skilled in the prior art.4 The ease and simplicity with which the bringing together of the old elements can be accomplished is illustrated by the method of construction of plaintiff's accused device. Although, as the district court found, no gun type formation tester was ever constructed in substantial accordance with the drawings and specifications or having substantially the mode of operation of the Lane patent, the plaintiff, beginning in 1943, constructed and extensively operated commercially his accused combination tool. It was made by joining together by means of ordinary screw threads a standard Johnson Formation Tester (consisting of a packer and formation sample receiver tube) and a perforator gun. Defendant contends that certain advantages would result from the use of its combination tool, such as saving time and expense of operation, and in some circumstances the recovery of a less diluted and more representative sample of formation fluid. The claimed advantages are considerably minimized in certain detailed findings of the trial court which we shall set out in the margin (see footnote 11, infra), but assuming for the moment that the Lane tool has such advantages it would not on that account be patentable. It is not sufficient that the device be new and useful. It must also be an invention or discovery.5
It is also our conclusion that the Lane device constituted only a bringing together in juxtaposition of old and well known elements; that whatever advantageous results were thus accomplished were not different in character from the aggregate results of the old tools; and that in the Lane device there was lacking that mutuality of action, that joint, cooperative functioning of the old elements to produce a new and different result, which is essential to raise a mere aggregation to the level of a patentable combination.6
Defendant reminds us of the rule, recognized by this court, that the questions of novelty and invention of a patented device are questions of fact7 and defendant argues the findings of the trial court that the Lane patent involves novelty and invention should not be disturbed if the findings are supported by substantial evidence and not clearly erroneous. We accord full recognition to the rule but consider that for a number of reasons it is not determinative of the issues in the present case.
Although the district court found that the Lane patent disclosed a combination that was new and useful, the findings express doubt that the combination involved more than a mere aggregation of old elements or more than the ingenuity of a mechanic skilled in the art.8 In the conclusions of law the court reiterated its doubts as to patentability but stated that the doubts had been resolved in favor of the defendant because of the presumption of validity arising from the issuance of letters patent by the patent office.
The trial court indicated by its treatment of the issue of infringement that it did not regard the Lane device as a patentable combination of packer, perforator gun and sample receiver of the breadth and character claimed by the inventor in the patent.9 The Court held the patent to be "of a class as to which there is no room for equivalents," and limited the patent claims to "the precise device shown in the patent." The trial court's holding in that regard, as the defendant points out in its brief in support of the cross appeal, in practical effect rendered the Lane patent invalid and unenforceable. It clearly appears from the record that "the precise device" shown in the specifications and drawings of the patent was not of any practical commercial utility without additions or modifications such as the ones to be found in the plaintiff's accused combination tool.10
Moreover, in its detailed and comprehensive findings of fact, the trial court in effect negatived much of the claimed advantageous results of the Lane device, thus, to say the least, adding weight and supports to its generally expressed doubts as to patentability.11 For example, the court found that the Lane patent shows no means of bringing the fluid sample in the formation tester to the surface and that if a swab or bailer were used to recover the sample as much time would be consumed as in the separate use of the perforator gun and tester. The court also found that although in making a formation test by the separate use of gun and tester from one to five per cent more filtrate water from the drilling mud would enter into and dilute the formation fluid than in the combined use of gun and tester, such one to five per cent dilution would not ordinarily disadvantageously affect the test in determining the nature and characteristic of the native formation fluid.
In the situation disclosed by the record, therefore, we do not hesitate to express the opinion that the trial court erred in reaching the conclusion that the Lane patent involved invention.
Our decision as to invalidity of the Lane patent makes it unnecessary for us to consider the question of infringement.
That part of the judgment which holds claims 7-9, inclusive, and 11-14, inclusive, of the Lane patent to be valid is reversed.
1 Another patent, Spencer No. 2,092,337, was included in the action, but no appeal was taken from an adjudication of its invalidity by the district court.
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