1. To resolve a conflict between Circuit Courts of Appeals as to
the validity of a patent, this Court will determine independently
the factual issue of validity. P.
324 U. S.
322.
2. Grebe and Sanford Patent No. 1,877,504, Claims 1, 5, 7, 8 and
9, for a method of treating deep wells to increase production,
held invalid for want of invention. Pp.
324 U. S. 324,
324 U. S. 331.
In the described process, there was no patentable invention in
any of the following claims or any combination thereof: (1)
addition of an inhibiting agent to the hydrochloric acid solution
to prevent corrosion; (2) use of a dilute, rather than a
concentrated, hydrochloric acid solution; (3) use of the ordinary
pump tube instead of a specially protected supply pipe to introduce
the acid into the well.
3. The application of an old process to a new and analogous use
lacks the very essence of an invention. P.
324 U. S.
327.
Page 324 U. S. 321
4. The mere addition of water to dilute a known chemical
solution does not entitle one to a patent monopoly, at least unless
a definite dilution point or range is discovered corresponding to a
physical phenomenon. P.
324 U. S.
329.
5. The mere substitution of equivalents which do substantially
the same thing in the same way, even though better result may be
produced, is not such an invention as will sustain a patent. P.
324 U. S.
330.
6. That a claimed invention filled a long felt want and has been
a commercial success is relevant only when the question of
invention is otherwise in doubt. P.
324 U. S.
330.
139 F.2d 473 affirmed.
Certiorari, 322 U.S. 719, on cross-petitions by a patent owner
(petitioner in No. 50) and an alleged infringer (cross petitioner
in No. 61), to review the affirmance of a decree holding invalid
certain claims of a patent and dismissing the complaint in a suit
for infringement.
MR. JUSTICE MURPHY delivered the opinion of the Court.
In issue here is the validity of United States Patent No.
1,877,504, relating to "the treatment of deep wells, such as oil,
gas, brine, or water wells to increase the output therefrom,"
issued to John J. Grebe and Ross T. Sanford on September 12,
1932.
Petitioner, the owner of the patent, brought this suit against
respondent for alleged infringement. Both the District Court for
the Eastern District of Michigan and the Sixth Circuit Court of
Appeals held the patent invalid for want of invention, and denied
relief. 139 F.2d
Page 324 U. S. 322
473. Previously the Tenth Circuit Court of Appeals, in reversing
the judgment of the District Court for the Northern District of
Oklahoma, had held the patent valid and infringed in a suit brought
by petitioner against another party.
Dow Chemical Co. v.
Williams Bros. Well Treating Corp., 81 F.2d 495,
cert.
denied, 298 U.S. 690. The conflicting views of the appellate
courts concerning the validity of the same patent led us to grant
certiorari in this case, 322 U.S. 719, and oblige us to decide
independently the factual issue of validity.
Universal Oil
Products Co. v. Globe Oil & Refining Co., 322 U.
S. 471,
322 U. S.
473.
The stated object of the Grebe-Sanford patent is "to counteract
some preventable natural causes for the decline of yield of a well"
where the well has been drilled into a limestone or other
calcareous formation. As oil is pumped from a well, the underground
flow to the well decreases, and the yield declines until pumping is
no longer profitable. Yet it is known that, when that point is
reached, there often remains embedded in the rock formation a great
deal of oil unrecoverable by ordinary processes. Many methods have
been suggested to recover this hidden oil. The forcing of water or
gas into the rock formation, the heating of the surrounding rock,
and the use of explosives have all been proposed but found wanting
in one way or another.
Eventually, however, the idea was conceived of using acid to
dissolve the limestone, thus opening channels through which the oil
could flow into the well. This idea first appears to have been
developed in United States Patent No. 556,669, issued on March 17,
1896, to Herman Frasch, with a half interest being assigned to John
W. Van Dyke. The essence of this patent was the introduction into
the oil well of a large solution of hydrochloric acid under
pressure, with fresh water being added later to force the acid
further into the limestone. Frasch recommended the use of
commercial hydrochloric acid containing from 30% to 40% by weight
of the acid gas
Page 324 U. S. 323
HCl; he further recommended that the acid remain in the well for
twelve hours. A suitably arranged packer was to be used to confine
the acid to the lower or oil-yielding portion of the well hole.
Frasch also recognized that the hydrochloric acid was likely to
corrode the metal well equipment. Hence, the patent suggested that
the regular well tubing be removed and that an enameled or
lead-lined pipe be inserted to conduct the acid down into the well,
"or it may be otherwise made proof against corrosion." An
additional suggestion was that an alkaline liquid be introduced to
neutralize the acid after it had performed its function.
Frasch's method proved successful in disintegrating limestone
rock and increasing the flow of oil. The record shows that at least
fourteen commercial wells near Lima, Ohio, were treated with this
process in 1895 and 1896, resulting in substantial production
increases in most instances. Wide publicity was given to these
operations. But, despite this success, Frasch and Van Dyke soon
discontinued their work along these lines. The reasons for this
abandonment are not clearly disclosed by the record. Respondent
suggests personal reasons on the part of Frasch and Van Dyke, and
claims that the relatively undeveloped oil industry at that time
had little use for such an invention. Petitioner, however, contends
that Frasch's method was so cumbersome and expensive that it was
commercially impracticable; [
Footnote 1] such is also the reason advanced by the court
in the
Williams Bros. case, 81 F.2d at 496.
Page 324 U. S. 324
Whatever the reason for the failure of the Frasch method to
achieve widespread use, the Grebe-Sanford patent in issue claims to
be an improved method of treating wells with a hydrochloric acid
solution. The patent expressly recognizes the Frasch treatment, but
states that it was never generally adopted "due to the fact that
the acid attacks the metallic casing, pump tube, etc. about as
actively as the rock, and causes serious damage thereto." To meet
this alleged defect, the Grebe-Sanford patent proposes the use of a
hydrochloric acid solution containing "a small amount of a
substance capable of inhibiting attack of the acid upon metal
surfaces . . . with which it comes in contact." The preferred
inhibiting agent is one of several specified arsenic compounds, to
be added in the amount of from 1% to 5% of the weight of the
solution. Numerous other inhibitors are also suggested. The patent
further states that
"the strength of the aqueous hydrochloric acid solution in
general best adapted to the purpose in hand may be between about 5
percent and about 20 percent, and preferably should be between 10
and 15 percent, although other concentrations may be used if
desired."
Claim 8 (claims 1, 5, 7, 8 and 9 are in issue) best sums up the
preferred form of the Grebe-Sanford process:
"The method for increasing the output of an oil well which
comprises charging into the pump tube a quantity of a 5 to 20
percent hydrochloric acid solution containing a relatively small
amount of a corrosion inhibitor, expelling the acid from the tube
into the bore of the well by applying pressure thereon, permitting
the acid to act upon the rock formation surrounding the well cavity
and withdrawing the spent acid."
The parties differ as to the precise scope of the alleged
patentable improvement over the Frasch method of acidizing wells.
Respondent urges, and the two courts below held, that the sole
object of the Grebe-Sanford
Page 324 U. S. 325
process is simply to protect the well equipment from corrosion
by adding an inhibiting agent to the hydrochloric acid solution.
[
Footnote 2] Petitioner has
consistently claimed, on the other hand, that the patent specifies
three novel points which elevate the described process to the level
of an invention: (1) the addition of an inhibiting agent to the
hydrochloric acid solution to prevent corrosion; (2) the use of a
dilute, rather than a concentrated, hydrochloric acid solution, and
(3) the use of the ordinary pump tube, instead of a specially
protected supply pipe, to introduce the acid into the well.
Assuming, without deciding, that petitioner's version of the
alleged improvement is correct, however, we hold that no one of
these three claims and no combination thereof evidences that degree
of skill and ingenuity which constitutes the essential ingredient
of a true invention.
(1)
The addition of an inhibiting agent. It is clear
that the Grebe-Sanford suggestion that an inhibiting agent,
preferably an arsenic compound, be added to the hydrochloric acid
solution presents no patentable advance over the prior art.
Petitioner makes no claim that the inhibiting agent in any way
affects the chemical action of the acid on the limestone rock; it
states merely that the inhibitor acts so as to prevent or restrict
the corrosive effect of the acid on the metal well tubing and
equipment. But, long before the Grebe-Sanford process was patented,
it had been known that inhibiting agents could be used to protect
metals from acid solutions. More particularly, it
Page 324 U. S. 326
was well known that arsenic compounds mixed with hydrochloric
acid solutions acted as effective inhibitors, and numerous patents
embodying that principle had been granted. [
Footnote 3] Various inhibitors were available on the
market at the time of the conception of the Grebe-Sanford process,
and were used extensively in the commercial pickling of iron and
steel products in acid solutions and in the transportation of acids
in metal containers.
There was evidence, moreover, that, in 1928 and 1929, the Gypsy
Oil Company had successfully used inhibited hydrochloric acid to
remove scale from certain of its oil wells drilled in sandstone
formations. This process was based upon a report made on behalf of
the Mellon Institute at Pittsburgh at the request of the Gypsy Oil
Company, which had been bothered by the formation of scale on the
metal well equipment. The report, after noting that "the selection
of a solvent was a simple matter" and that "the commercial use of
inhibitors for the protection of metals in acid solutions is not
new," recommended the removal of the scale by the use of a
hydrochloric acid solution treated with an inhibitor obtainable on
the market. Even if petitioner be correct in labeling this Gypsy
Oil Company use as an abandoned experiment not amounting to
anticipation, it is significant that the use of an inhibitor to
check the hydrochloric acid from corroding the metal well equipment
while attacking the scale suggested itself without trouble.
Thus, prior to the patenting of the Grebe-Sanford process in
1932, the following facts were manifest and elementary
Page 324 U. S. 327
to anyone skilled in the art: (a) hydrochloric acid would
dissolve limestone and increase the production of oil wells, as
demonstrated by the Frasch patent; (b) hydrochloric acid would also
corrode metal with which it came in contact; (c) arsenic compounds
and other chemicals could be added to hydrochloric acid to inhibit
this corrosive effect, and (d) inhibited hydrochloric acid could
effectively be utilized to remove scale from metal well equipment
without corroding the metal. A representative of the Pure Oil
Company then suggested to Grebe and Sanford the possibility of
acidizing oil wells to increase production. The latter, from their
knowledge of brine well acidizing and of corrosion inhibition,
immediately recommended the use of hydrochloric acid containing an
inhibitor. Grebe and Sanford at this time apparently did not know
about the Frasch patent. But, spurred by the suggestion of the Pure
Oil Company, they worked out the process in issue on the basis of
known facts and reactions.
All the Grebe-Sanford process taught was the obvious fact that
hydrochloric acid could be inhibited to prevent corrosion while
being used to dissolve limestone rock pursuant to the Frasch method
of acidizing wells. No new mental or physical operation was
required to add, as suggested by the Grebe-Sanford process, an
arsenic compound of from 1% to 5% of the weight of a hydrochloric
acid solution. No new or unexpected results were obtained by the
addition of such an inhibitor. It was perfectly plain to an expert
that the metal well equipment would thereby be protected from
corrosion. The Grebe-Sanford method, in short, involved in this
respect no more than a mere application of an old process of
inhibition to a new and analogous use of protecting metal well
equipment from corrosion when the well is being acidized to
increase production. Such a process lacks the very essence of an
invention.
See Electric Cable Joint Co. v. Brooklyn Edison
Co., 292 U. S. 69,
292 U. S. 79-80;
Paramount Publix Corp.
v.
Page 324 U. S. 328
American Tri-Ergon Corp., 294 U.
S. 464,
294 U. S. 473;
Cuno Engineering Corp. v. Automatic Devices Corp.,
314 U. S. 84,
314 U. S.
89.
The fact that, prior to 1932, no one had apparently thought to
use an inhibitor while acidizing an oil well to increase production
cannot inject into the Grebe-Sanford process the attributes of an
invention. Especially is this so since there is no evidence of
anyone's trying unsuccessfully to inhibit hydrochloric acid for
such purposes. He who is merely the first to utilize the existing
fund of public knowledge for new and obvious purposes must be
satisfied with whatever fame, personal satisfaction, or commercial
success he may be able to achieve. Patent monopolies, with all
their significant economic and social consequences, are not
reserved for those who contribute so insubstantially to that fund
of public knowledge.
(2)
The use of a dilute, rather than a concentrated,
hydrochloric acid solution. Petitioner lays great stress on
the fact that the Grebe-Sanford process suggests the use of a
dilute hydrochloric acid solution containing only 5% to 20% HCl
(preferably 10% to 15%). It is pointed out that Frasch's patent
called for the use of commercial hydrochloric acid, which contains
from 30% to 40% of HCl, and that, in some of his treatments, from
27% to 28% was actually used. Petitioner claims that the dilution
recommended by the Grebe-Sanford process substantially reduces the
viscosity of the acid, greatly slows its reaction on limestone
(thus allowing the acid to open up channels distant from the well
hole instead of spending itself immediately and entirely on the
nearby rock), and greatly reduces its corrosive action on iron and
steel. [
Footnote 4]
Nothing appears in the Grebe-Sanford patent claims, however, to
support the thesis that dilution is part of the
Page 324 U. S. 329
alleged invention. The main concern seems to have been directed
at the failure of Frasch to recommend the use of an inhibiting
agent. The suggested strength of the Grebe-Sanford solution is
merely the one "in general best adapted to the purpose in hand,"
and it is said that "other concentrations may be used if desired."
Apparently dilution is recommended since the inhibiting agent can
act more effectively with a weaker acid, which is obviously less
corrosive than a more concentrated acid. At the same time, the
recommended dilution allows the solution to be of a strength such
that the soluble salts formed by its action on the rock will remain
dissolved therein. The patent does not state that an acid outside
the range of 5% to 20% strength will fail, and no affirmative
advantage over the Frasch method is claimed insofar as the strength
of the acid is concerned.
But, even assuming that a dilute solution is an ingredient of
the alleged invention, we can find none of the elements of true
invention adhering thereto. The mere addition of water to dilute a
known chemical solution does not entitle one to a patent monopoly,
at least unless a definite dilution point or range is discovered
corresponding to a physical phenomenon.
Kwik Set, Inc. v. Welch
Grape Juice Co., 86 F.2d 945, 947. No such discovery was made
here. The advantages said to accompany a dilute solution do not
correspond to any particular dilution point or range. The patent
recommends that the acid be diluted to a 5% to 20% strength, but it
is recognized that "other concentrations may be used if desired" to
achieve the purpose at hand. Such a broad and indefinite
specification as to dilution is fatal to a claimed invention.
(3)
The use of the ordinary pump tube. The
Grebe-Sanford patent mentions the use of the ordinary pump tube to
convey the acid to the bottom of the well hole, whereas the Frasch
patent had contemplated withdrawal of
Page 324 U. S. 330
the ordinary pump tube in favor of a smaller and specially
protected supply tube. But this is, at most, an incidental and
unimportant part of the Grebe-Sanford method, as is recognized by
the statement in the patent that "it is not necessary, however, to
add the acid solution through the pump tube, as any other
convenient way may be employed." No new function is performed by
the pump tube that it not performed by the Frasch supply tube; both
merely convey the acid to the bottom of the well hole. Any
advantage in cost or simplicity which the use of the ordinary pump
tube may give is the result of the use of an inhibitor in the acid,
rather than any intrinsic merit of the pump tube. It is elemental
that the mere substitution of equivalents which do substantially
the same thing in the same way, even though better results may be
produced, is not such an invention as will sustain a patent.
Dunbar v. Myers, 94 U. S. 187,
94 U. S. 199;
Smith v.
Nichols, 21 Wall. 112,
88 U. S. 119.
Finally, petitioner claims that the Grebe-Sanford process has
filled a long felt want and has been a commercial success. But
these considerations are relevant only in a close case where all
other proof leaves the question of invention in doubt.
Smith v.
Hall, 301 U. S. 216,
301 U. S. 233;
McClain v. Ortmayer, 141 U. S. 419,
141 U. S.
428-429. Here, the lack of invention is beyond doubt,
and cannot be outweighed by such factors. Moreover, there is an
absence in this case of any long felt want or of any recognized
problem that had baffled the contemporary art. There is no evidence
that anyone with knowledge of the Frasch method and with knowledge
of the use of inhibitors in hydrochloric acid ever tried
unsuccessfully to use the Frasch method with inhibited hydrochloric
acid. Nor is there any proof of fruitless demands and efforts to
prevent corrosion while acidizing oil wells. Whenever the need
arose to prevent corrosion in the use of hydrochloric acid, whether
for purposes of pickling, scale removal or oil
Page 324 U. S. 331
well acidizing, the addition of inhibitors was suggested
immediately and without effort. The great fund of public knowledge
was simply drawn upon the first time the problem was considered,
resulting in the obvious process described in the Grebe-Sanford
patent.
Since we conclude that the Grebe-Sanford patent is invalid for
want of invention, we need not consider respondent's cross-petition
raising questions as to whether respondent's process infringed the
patent.
Affirmed.
* Together with No. 61,
Halliburton Oil Well Cementing Co.
v. Dow Chemical Co., also on certiorari to the Circuit Court
of Appeals for the Sixth Circuit.
[
Footnote 1]
Petitioner argues that (1) Frasch used concentrated acid that
was so corrosive as to compel the use of the costly and cumbersome
expedient of removing the ordinary well tube and inserting a
special acid supply pipe; (2) concentrated acid being less
effective than diluted acid in reacting on the limestone rock, the
production increases achieved by Frasch were too small to justify
the expense of the treatment, and (3) viscous spent acid was
difficult to remove under the Frasch method from the pores of the
rock, and hence blocked or lessened the flow of oil to the well
hole.
[
Footnote 2]
One of petitioner's experts testified that the main claim of the
Grebe-Sanford patent is the addition to the hydrochloric acid of
some material which will inhibit the action of the acid, and that
the claimed result "would be limited apparently to the equipment,
rather than to the well itself." He stated further that the
suggested inhibitors "would have no effect on the acid, in
connection with its reaction upon limestone," and that they "have a
specific function on the metal equipment used in connection with
the well treatment."
[
Footnote 3]
See, for example, Patent to Beneker, No. 914.916
(1909); Patent to Gravell, No. 1,678,775 (1928). For patents
involving the use of inhibitors other than arsenic compounds,
see Patent to Holmes, No. 1,470,225 (1923); Patent to
Rhodes, No. 1,746,677 (1930); Patent to Rhodes, No. 1,746,678
(1930); Patent to Vignos, No. 1,750,651 (1930); Patent to Harrison,
No. 1,766,602 (1930); Patent to Corson, No. 1,773,953 (1930);
Patent to Calcott, No. 1,785,513 (1930); Patent to Burke, No.
1,789,805 (1931).
[
Footnote 4]
There was evidence introduced to the effect that a hydrochloric
acid solution is much more corrosive when it contains 30% HCl than
when it contains from 5% to 20%.