DOtJBLEDAYV. ROESS.
'IS?
DOUBLllDAY
v.
ROESS.
tOircuit Court, W. D. Pllnn,ylfJania. 1.
July Term, 1880.)
PATENTS FOR INVEN'rIONS-WHAT NOT PATENTABLE.
The mere bringing together of old devices, without any new and useful result being produced by their co-operation, is not patentable. 2. SAME-CoMBINATION-TuBING FOR OIL WELLS.
The combination in a patent for an improvement in tubular apparatus for deep wells, No. liO,919, being a mere aggregation of old devices, is patentable. .
In Equity·. AOHESON, D. J. On the fourteenth of November, 1865, letters patent of the United Staies No. 50,919, for an "improvement in tUbular apparatus for deep wells," were granted to M. J. Dickerson and Jacob Stuber. H; H. Donbleday, having acquired by 8seignments th6 exclusive ownership of the patent in and for the county of Venango, Pennthis action sylvania, on the third day of January, against Christian Rooss, oharging infringement within the' assigned: territory. The patentees supposed, and the assumption pervades every part of their specification, that they were the original inventors of a mode of. well packing by the use of 8i packing tube or casing exterior to and surrounding the eduction tube, the packing consisting of a seed-bag placed around the casing, at the desired point, closing up the annular space :between the casing and the walls of the WAll, whereby a surface-water chamber separate from the eduction tube was formed. This assumed invention was embodied in their first claim. But, beyond all question, the patentees were not the inventors of that mode of well packing; it had beenin previous use; and therefore, on December 29, 1879, the plaintiff filed in the patentoffice a disclaimer of the first claim of the patent. That left the second claim only, which is as follows: "(2) The combination and arrangement of the steam-pipe, J, stop-cock, K, and packing tube, C, substantially as described." Originally, oil wells and other deep wells were tubed with a single tube, through which the fluid was pumped, the packing or seed.bag surrounding it; and the specification of this patent states that where the wells are so packed, "if steam or air is used therein, the steam or air pipe must be carried through the seed-bag, and the hot steam will heat the pipe sufficiently to burn or shrink the seed-bag, oausing it v.11,no.7-47
7Q.Q·.·· "'\"f"J. to leak, so that the surface water will trickle through and injure and retard the working of the.:well. u -..T-o avoid this supposed difficulty, the steam-pipe, J, is carried down between the eduction tube and the casing in the Die-kerson alia Stnbetpatent The evidence shows p,urpose of stea.'?-ing oil wells is to . IDl?H :and;rfI)1ove such'paraf/ineas ,may have collected on the walls of the oil-bearing rock: the free flow,. of oil into the well. The beneficial effect of steaming was known at an early day. That oihvellslfereeteltmed prior to' ,the Dickerson and. Stuber invention, by 1nfla1Is L ofa steaili:pipb"funning 'downthrodkll' the seed-bag, 'is plainly admitted by their specification; and that they were successfully steamed in that modo is, I think, satisfactorily shown by tbie ':Un:d6ubtedly it wail mtlre 'con\1enient and preferable ,to carry. the steam-pipe down: between the eduetlon pijl"6 and the casing instead oLtllrongh the! packing. Diokerson' .and Stuber, W6lre,not toapplyia :paelcingtube.oioasing' to wells, and when they came to be cased it required no invention to carry down the steam.pipe,throughtheiopen space between'the tubes. No man o£·or.dinaryeintelligence would have applied the.sooam-pipe to a cased well otherwise. ,. Of the function of the stop-cock, K, the specification thus speaks: ,. Krepresents a stop-cockrwhich 'Is fitte4 into the bead cover of the well, and opens into the well so as to let off any gas which may collect therein. .A pipe is connected with this stop-c,ock which may, be led off ,to the boiler or furnace, and the gas used for fuel or for otller useful.p:Qrposes.'"
In the. defendant's, oil wells, at the top of the casing, is a casinghead, in the sides of which are apertures to which are attached gaspipes provided with ordinary stop-cocks. When the tubing and are in position the top of the well ia gas tight, and the gas is led off by the pipes from thE! sides of the casing-head. The stea,m-pipe extends down the well, bef7ween the tubing and casing, to the oil rock, a.nd is connected. with the boiler. Between the boiler and the well a stop-cock is placed in the steam-pipe, so that steam can either be let into the well or shut off 'therefrom. The gas-pipe side of the carried to the furnace of the from boiler, so that the gas may.be burned as fuel in order to raise steam in the boiler. The, ,stop"cockon.tbp gas-pipe.is opened when it is desired to use gas from the well) and closed when it is desired to keep the gas m:the well, and no use of it is necessarily made during the process of.steaming, altllOugh,inasmuch as the gas is burned ,under the boiler, it may frequently happen, and it is generally the case,
-789 chat gas from tl1e ilJused under the boiler whilethewell'1s being steamed. ;It appears, thilrefore, that the dMendant has used and" is using -sUbstantially the elements of the combination embraced in the second claim of the patent sued on; but: whether he is answerable as 'an infringer depends upon the -determination' of the question whether the the packing tube, C, form a steam-pipe, J, the stop-cock, K, patentable combination. . " . We have already seen 'that the packing tube; C, was old, and that the steaming of oil wells by means'of a. pipe runningilown through the seed-bag, connecting the boiler with the lower part of the well, was successfully practiced prior to the alleged invention of Dickerson and Stuber, alia that it involved no invention to carry down the steam-pipe between the tube of a cased well. I need scarcely say that a stop-cock is one of the oldest and most common of devices, and is usually, if not necessarily, used wherever gas is conveyed by a pipe for use, either as fuel or for illuminating purposes. In fact no claim is here made for anyone of the three devices singly. What, then, have we intbiscase but a mere bringing together of old de. vices without any new and useful result being produced by their co. operation? That such a combination is not -patentable is well set. Hailes v. Van Wormer, 20 Wall. 353; Rcckendorfer v. Faber, 92 U. S. 357. The result produced, it is said in Pickering v. McCullough, 21 O. G. 75, must be due to "the joint and co-operating action of all the elements," otherwise it is only mechanical juxtaposition and not a vital union. Id. I think the present is clearly a case 'of the mere aggregation of devices within the principle of 'the authorities cited. -It is': indeed, insistedthat the stop-cock, K, acts as a regulator of the gas pressure in the well with reference to the use of steam or air therein, and if steam is to be used the well shouIa be free of pressure, which is effe9ted by opening the cock; and the plaintiff's expert witness, Ruel W. Hall, ventures to express the opinion that a well cannot be steamed, or at least not with the best results, 'without opening the gas-escape cocks. But the specification of tne patent does not assign to the stop-cock, K, the important function now claimed for it, and the evidence, I think, shows plainly enough that flO such service is performed by it or is needed. When oil wells were by a pipe running down through the seed-bag, there was no ·utlet whatever for the gas exceptthrotigh the valveg' oBhe oil-pumps. nfr Porteous testifies: "I have never found it necessary to use 1).uy
740
REPORTER.
appliances to facilitate the escape of gas while steaming my wells; and do not think it necessary to provide any means of escape for t.he gas in wells that would be benefited by steaming." Mr. Chandler testifies·: "I never knew ofa well where it was necessa,ry, and cannot comeive of a well existing in which is necessary, to have an exit for the gas when being $teamed." These witnesses. are experienced oil operators. I am well satisfied from the evidence of the entire truth of the aIlegation made by the defendant in' his answer, "that in steaming his wells he makes no use of the stpp-cock on the gas.-escape pipe, as he can 'properly steam his wells whether such stop-cock is opened or closed." Let a decree be drawn dismissing the plaintiff's bill, with
THE
CLINTONU.·
(District Cr;urt,.lJJ. D. Louisiana. April, 1882.) .\'DlIIIRALTy-MARSHAL'S COSTS.
Under section 829 of the Statutes the marshal is entitled to his commissions, when,after a seizure' In admiralty, the suit is settled, though wiihOut an order of sale. The commissions "ill be computed upon the amount paid in settlement. The Norma, Newt. 533, denied.' , , The RU88ia, 5 Ben. 84, and Tke Oity of Wa8hington,13 BIatchf, 410, follow?d.
J. Ward.Gurlcy, Jr., fOr thElmarshal. M. M. Cohen, for libellants. BILLINGS, D. J. The here presented is onanappeaUrom ·,the taxation Qf cOllts fOr the marshal by the clerk Under..that subdivision of section 829 of the Revised Sta,tutes which provides: "When· the debt or claim in admiralty is settled by the parties without a sale of the property, the marshal shall be .entitled W a commission of 1 per centum on the first $500 of the claim 91' decree, and one-half of. 1 per centum on the excess of any sum thel'eo{over S500: provided, that whenthe value of the property is less than the claim, such commission shall be allowed only on the appraised value thereof."
In this case, libel was filed to recover for salvage service. There was a seizure by the marsh,alunder admiralty process, and the property was released. on ,stipulation, when the claim was compromised, «<Reported by Joseph P. Hornor, Esq., of the New Orleans bar.
a