CASES ADJUDGED

IN THE

SUPREME COURT OF THE UNITED STATES

AT

OCTOBER TERM, 1946.

HALLIBURTON OIL WELL CEMENTING CO. v. WALKER ET AL., DOING BUSINESS AS DEPTHOGRAPH CO.

ON REHEARING.

No. 24. Reargued October 23, 24, 1946.-Decided November 18, 1946.

1. Walker Patent No. 2,156,519 for an improvement over a past patent designed to measure the distance from the top of an oil well to the fluid surface of the oil, held invalid for failure of the claims to make the "full, clear, concise, and exact" description of the alleged invention required by R. S. § 4888, 35 U. S. C. § 33. Pp. 11-14. 2. A claim which describes the most crucial element in a "new" combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination is invalid as a violation of R. S. § 4888. Holland Furniture Co. v. Perkins Glue Co., 277 U. S. 245; General Electric Co. v. Wabash Appliance Corp., 304 U. S. 364. Pp. 8, 9.

3. As used in R. S. § 4888, the word "machine" includes a combination of old elements. P. 9.

4. The requirement of R. S. § 4888 for a "full, clear, concise, and exact" description in claims applies to a combination of old devices. Pp. 9-11.

5. Under R. S. § 4888, a patentee cannot obtain greater coverage by failing accurately to describe his invention than by describing it as the statute commands. P. 13.

146 F.2d 817, reversed.

Opinion of the Court.

329 U.S.

Respondent sued petitioner for infringement of Walker Patent No. 2,156,519. The District Court held the claims in issue valid and infringed by petitioner. The Circuit Court of Appeals for the Ninth Circuit affirmed, 146 F. 2d 817, and denied a petition for rehearing. 149 F. 2d 896. This Court granted certiorari. 326 U. S. 705. The case was affirmed by an evenly divided Court. 326 U. S. 696. A petition for rehearing was granted and the case was restored to the docket for reargument before a full bench. 327 U. S. 812. Reversed, p. 14.

Earl Babcock reargued the cause and filed a brief for petitioner. With him on the brief was Harry C. Robb.

Harold W. Mattingly reargued the cause and filed a brief for respondents.

MR. JUSTICE BLACK delivered the opinion of the Court.

Cranford P. Walker, owner of Patent No. 2,156,519, and the other respondents, licensees under the patent, brought this suit in a Federal District Court alleging that petitioner, Halliburton Oil Well Cementing Company, had infringed certain of the claims of the Walker patent. The District Court held the claims in issue valid and infringed by Halliburton. The Circuit Court of Appeals affirmed, 146 F.2d 817, and denied Halliburton's petition for rehearing. 149 F. 2d 896. Petitioner's application to this Court for certiorari urged, among other grounds, that the claims held valid failed to make the "full, clear, concise, and exact" description of the alleged invention required by Rev. Stat. 4888, 35 U. S. C. § 33,' as that statute was

1"33. APPLICATION FOR PATENT; DESCRIPTION; SPECIFICATION AND CLAIM.-Before any inventor or discoverer shall receive a patent for his invention or discovery he shall make application therefor, in writing, to the Commissioner of Patents, and shall file in the

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Opinion of the Court.

interpreted by us in General Electric Co. v. Wabash Appliance Corp., 304 U. S. 364.2 This statutory requirement of distinctness and certainty in claims is important in patent law. We granted certiorari to consider whether it was correctly applied in this case. 326 U. S. 705."

The patent in suit was sustained as embodying an improvement over a past patent of Lehr and Wyatt (No. 2,047,974) upon an apparatus designed to facilitate the pumping of oil out of wells which do not have sufficient natural pressures to force the oil to gush. An outline of the background and setting of these patents is helpful to an understanding of the problem presented.

In order to operate a pump in an oil well most efficiently, cheaply, and with the least waste, the pump must be placed in an appropriate relationship to the fluid surface of the oil. Properly to place the pump in this relationship requires knowledge of the distance from the well top to the fluid surface. At least by the latter 1920's problems Patent Office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery...."

2 Other alleged errors were urged in the application for certiorari and have been argued here, but since we find the question of definiteness of the claim decisive of the controversy, we shall not further advert to the other contentions.

3 This case was previously affirmed by a divided court, 326 U. S. 696, and upon petition for rehearing was restored to the docket for reargument.

327 U. S. 812.

Opinion of the Court.

329 U.S.

of waste and expense in connection with non-gusher oil wells pressed upon the industry. See Railroad Comm'n of Texas v. Rowan & Nichols Oil Co., 310 U. S. 573; Burford v. Sun Oil Co., 319 U. S. 315. It became apparent that inefficient pumping, one cause of waste, was in some measure attributable to lack of accurate knowledge of distance from well top to fluid surface. Ability to measure this distance in each separate non-gusher oil well became an obvious next step in the solution of this minor aspect of the problem of waste.

The surface and internal machinery and the corkscrew conformation of some oil wells make it impractical to measure depth by the familiar method of lowering a rope or cable. In casting about for an alternative method it was quite natural to hit upon the possibility of utilizing a sound-echo-time method. Unknown distances had frequently been ascertained by this method. Given the time elapsing between the injection of a sound into an oil well and the return of its echo from the fluid surface, and assuming the velocity of the sound to be about 1100 feet per second, as it is in the open air, it would be easy to find the distance. Not only had this sound-echo-time method been long known and generally used to find unknown distances, but in 1898 Batcheller, in Patent No. 602,422, had described an apparatus to find a distance in a tubular space. Obviously an oil well is such a space. He described a device whereby the noise from a gun might be injected into a tube; the returning echoes from obstructions agitated a diaphragm, which in turn moved a stylus. The stylus recorded on a piece of paper a graph or diagram showing the variant movements of the diaphragm caused by its response to all the different echo waves.

In the late 1920's the oil industry began to experiment in the use of this same sound-echo-time method for measur

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Opinion of the Court.

ing the distance to the fluid surface in deep oil wells. A product of this experimentation was the Lehr and Wyatt patent, upon which the present patent claims to be an improvement. It proposed to measure the distance by measuring the time of travel of the echo of an “impulse wave" generated by a "sudden change in pressure." The apparatus described included a gas cylinder with a quick operating valve by means of which a short blast of gas could be injected into a well. It was stated in the patent that the time elapsing between the release of the gas and the return of the echo of the waves produced by it could be observed in any desired manner. But the patentee's application and drawings noted that the wave impulses could be recorded by use of a microphone which might include an amplifier and an appropriate device to record a picture of the wave impulses.

This Lehr and Wyatt patent, it is therefore apparent, simply provided an apparatus composed of old and wellknown devices to measure the time required for pressure waves to move to and back from the fluid surface of an oil well. But the assumption that sound and pressure waves would travel in oil wells at open-air velocity of 1100 feet per second proved to be erroneous. For this reason the time-velocity computation of Lehr and Wyatt for measuring the distance to the fluid surface produced inaccurate results.

After conferences with Lehr, Walker undertook to search for a method which would more accurately indicate the sound and pressure wave velocity in each well. Walker was familiar with the structure of oil wells. The oil flow pipe in a well, known as a tubing string, is jointed and where these joints occur there are collars or shoulders. There are also one or more relatively prominent projections on the oil flow pipe known as tubing catchers.