Kilgore Mfg. Co. v. Triumph Explosives

• Decision Date: 19 March 1941
• Docket Number: Civ. A. No. 502.
• Citation: 37 F. Supp. 766
• Parties: KILGORE MFG. CO. et al. v. TRIUMPH EXPLOSIVES, Inc., et al.
• Court: U.S. District Court — District of Maryland

37 F. Supp. 766

KILGORE MFG. CO. et al. v. TRIUMPH EXPLOSIVES, Inc., et al.

Civ. A. No. 502.

District Court, D. Maryland.

February 6, 1941.

Supplemental Opinion March 19, 1941.

Joseph T. Brennan, Brown & Brune, and Charles Ruzicka, all of Baltimore, Md., and Toulmin & Toulmin, of Dayton, Ohio, for plaintiffs.

Harold F. Watson and Watson, Cole, Grindle & Watson, all of Washington, D. C., and Raphael Walter, of Baltimore, Md., for defendants.

CHESNUT, District Judge.

In this patent infringement case, I have separately filed findings of fact and conclusions of law. This opinion will therefore be limited to comments on the most essential features of the case.

The three patents in suit relate to a special kind of pistol and fixed ammunition therefor to fire signal lights or flares, especially for use by combat and other aviators. A brief history of the development of the art will afford a helpful background for the understanding of the patents.

The need for signal lights and flares adapted for the use of aviators was clearly demonstrated in the World War of 1914-18, but the instruments and devices then used were rather crude and unsatisfactory. From time to time after 1918 various ideas were advanced in foreign and domestic patents and publications bearing upon the general subject of improvement of such devices; but nothing in the way of a substantial improvement was perfected until the advent of the plaintiff's patents in suit in this case, in 1928. Prior thereto the commonly used devices consisted of the Very pistol which was a breech-loading mechanism to fire a signal flare requiring the use of two hands; and also there was in more limited use a form of device affixed to the fuselage or some part of the body of an airplane which could be fired by hand. In April, 1928 the Ordnance Division of the United States War Department prescribed the general nature of desired improvements in such signal devices. What they wished to have was (1) a pistol or similar device which could be wholly operated by the aviator's using his right hand alone, leaving the left hand free to steer the plane; and (2) a device from which the flare or signal could be fired in any direction, up or down or sideways; and (3) ammunition which, if the firearm misfired when held overboard from the plane by the aviator, could nevertheless be released, without bringing the pistol back into the body of the plane for unloading, with possible fire hazard therefrom.

The patentees in this case, who had had previous long experience with military pyrotechnics, devoted themselves to the study of the problem for the production of a pistol and ammunition which would meet the several problems later set up by the requirements of the War Department. The result was that they produced within a year or so a pistol and fixed ammunition therefor which, upon test by the War Department, fully met its requirements, and shortly was adopted by the Department as "limited standard equipment". On March 20, 1928 the patentees simultaneously filed two patent applications, one for the device of the pistol, the other for the fixed ammunition, which were treated as co-pending patent applications and were finally granted on the same day, May 7, 1928, Nos. 1,712,382 and 1,712,383. The patentees continued to work upon refinements and improvements of the device with the result that they filed subsequent patent applications one of which constitutes the third patent in this case granted February 20, 1934, No. 1,947,834. Somewhat later the patentees and the War Department entered into an agreement whereby in time of emergency (now existing) the War Department was permitted by the patentees to have the devices manufactured, not only by the patentees or their licensees, but by others selected by the War Department, upon the payment of a moderate, reasonable royalty. Since 1928 the pistols and ammunition patented have been widely used, and the gross receipts from sales therefrom have exceeded a million dollars; and since 1928 there has been no new and better device produced.

In 1937 the plaintiff in this case, the licensees of the patentees, sold a substantial amount of the patented production to the Glenn L. Martin Co., of Maryland, manufacturers of airplanes. In 1939 Glenn L. Martin Co. wished to obtain an even larger number of the same devices for resale to the Turkish government; but this time Glenn L. Martin Co. invited competitive bids from the plaintiff and from the defendant, Triumph Explosives, Inc., a Maryland corporation, with plant at Elkton, Maryland. This latter corporation had previously unsuccessfully endeavored to sell devices of the same general nature to the War Department as an alternate on bids. For the new order for the Glenn L. Martin Co. the defendant much underbid the plaintiff, and obtained and filled the order and was paid for it. The total consideration for the new order, which however included in larger part articles not covered by the patent, was about $70,000. The defendant guaranteed Glenn L. Martin Co. against damages for infringement. The defendant also agreed to furnish Glenn L. Martin Co. with a certificate that the articles furnished on the order would operate satisfactorily in accordance with the United States War Department requirements for similar devices. This patent infringement suit has resulted from the action of the defendants in filling this new order. The vice-president of the defendant company testified that its agents had for some years prior to 1939 been working on the problem of developing a device of its own of this general nature but had not succeeded in making any sales of its product before the order from the Glenn L. Martin Co. and have not made or sold any such articles since then, having no orders therefor.

If the patents are valid, it is my opinion that the defendant's devices sold to the Glenn L. Martin Co. were clearly infringements of the first and second patents. A mere superficial inspection of the competing products indicates at once their substantial similarity. It is true that on close inspection some differences in detail of construction appear, but there is no substantial functional difference, and the differences appear to be at least substantial equivalents as determined by the patent law. The more important and possibly more difficult question is whether the plaintiff's patents are valid, in view of the prior art and alleged anticipatory foreign and domestic patents. From the arguments of counsel and the study of the prior art as revealed in patents and publications, I think it may be assumed that the plaintiff's patents do not contain any one essentially new and novel element or principle of mechanics, and the basis of patentability is therefore a combination of old elements which it is claimed have achieved a new and useful or at least a greatly improved result.

The patented device may be described in simple, nontechnical patent language, in the following way. It comprises a large heavy metal pistol, with more or less conventional or usual features of trigger and spring actuated hammer for firing, with a very short large calibre smooth bore barrel, into which is loaded from the muzzle a much longer aluminum metal cylinder, forming in effect an elongated or auxiliary barrel. The cylinder fits closely but slidably into the barrel of the pistol, and is held therein by a spring latch device which fits into an annular groove at the base of the cylinder which acts automatically in fastening and holding the cylinder in the pistol; but which may be released by the pressure of the thumb of the right hand after the pistol is fired, when it is desired to drop out the cylinder or to unload the pistol. The metal cylinder, which is called the cartridge case, is closed at both ends, but contains in the base an inserted blank cartridge to be exploded by the force of the pistol hammer when the trigger is pulled. The metal cartridge case contains another aluminum metal cylinder concentric with the outer cylinder or cartridge case, which is known as the projectile case; the latter, in turn, contains a candle or flare attached to a folded parachute. When the pistol is fired, the blank cartridge at the base of the outer cylinder explodes the powder and the force of the explosion shoots the projectile case from the cartridge case, the latter remaining fixed in the barrel of the pistol. When the powder in the blank cartridge at the base of the cartridge case expels the projectile case, it also fires a delayed action fuse inserted in the base of the projectile case, and after the projectile has been shot into the air, this fuse ignites a powder charge in the projectile case, which in turn shoots or projects the contents of the projectile case — that is, the candle or flare and the parachute — into the air. Then the parachute gradually opens and suspends the burning candle which has been ignited in the action. The cartridge case, containing the projectile case and its contents, is called "fixed ammunition" because it is a single unit loaded into the pistol at one time, and is thus distinguished from earlier forms of loading a firearm, such as a gun or cannon, where the powder is first placed in the muzzle and the shot or ball is separately rammed home on top of the powder.

In practical operation, the metal cylinders constituting the fixed ammunition are placed in a rack in the cockpit of the plane, in convenient reach of the right hand of the aviator, with the bases up. The pistol is also placed accessible to his right hand. The aviator then grasps the butt of the pistol with his right hand and places the open barrel over the base of the cartridge case and presses it down until the cartridge case becomes automatically fixed and held by the operation of the spring latch. The aviator then holds the pistol outside of the cockpit and fires it with his right hand in any direction desired. If the discharge is effective the aviator...