Signal Mfg. Co. v. Kilgore Mfg. Co.

• Decision Date: 28 July 1952
• Docket Number: No. 12892.,12892.
• Citation: 198 F.2d 667
• Parties: SIGNAL MFG. CO. et al. v. KILGORE MFG. CO.
• Court: U.S. Court of Appeals — Ninth Circuit

198 F.2d 667 (1952)

SIGNAL MFG. CO. et al. v. KILGORE MFG. CO.

No. 12892.

United States Court of Appeals, Ninth Circuit.

July 28, 1952.

C. A. Miketta, W. W. Glenny, Los Angeles, Cal., for appellants.

Warren H. F. Schmieding, Columbus, Ohio, Allan D. Mockabee, Los Angeles, Cal., for appellee.

Before MATHEWS, HEALY and POPE, Circuit Judges.

MATHEWS, Circuit Judge.

In the United States District Court for the Southern District of California, The Kilgore Manufacturing Company, an Ohio corporation, hereafter sometimes called Kilgore, brought an action against Signal Manufacturing Company, a California corporation, hereafter sometimes called Signal. The complaint¹ was in two counts. Count 1 charged Signal with infringing a patent (No. 1,947,834) owned by Kilgore — a patent containing 23 claims. Signal filed an answer and an amended answer and served interrogatories and requests for admissions.² Kilgore answered the interrogatories and requests for admissions³ and caused four depositions⁴ to be taken.

Thereafter, on motion of Signal and Charles Schneider, a citizen of California, Schneider was made a party defendant, and Signal and Schneider were permitted to, and did, file a second amended answer, denying that they (Signal and Schneider) infringed the patent,⁵ alleging that the patent was invalid and praying that the complaint be dismissed. The second amended answer contained a counterclaim denominated as such,⁶ praying for a declaratory judgment holding the patent invalid and not infringed by Signal and Schneider and for costs and attorneys' fees.

Kilgore replied to the counterclaim,⁷ a trial was had,⁸ findings of fact and conclusions of law were stated, and a judgment was entered which held claims 1-9 and 12-23 of the patent invalid,⁹ dismissed count 2 of the complaint,¹⁰ held claims 10 and 11 of the patent valid and infringed by Signal and Schneider, enjoined such infringment, ordered an accounting of profits and damages, purported to dismiss the counterclaim,¹¹ held that Kilgore should recover costs and reserved decision as to other matters. Signal and Schneider have appealed.

Appellants (Signal and Schneider) do not complain or seek reversal of that part of the judgment which held claims 1-9 and 12-23 of the patent invalid and dismissed count 2 of the complaint. They do complain and seek reversal of other parts of the judgment, their contention being that they should have judgment holding claims 10 and 11 of the patent invalid and not infringed by them and ordering, adjudging and decreeing that appellee (Kilgore) take nothing by the action, and that they recover costs and attorneys' fees.

The patent was applied for by Louis L. Driggs, Jr., and Henry B. Faber on September 19, 1931, was issued to them on February 20, 1934, and was acquired by appellee in July, 1947. The action was brought on October 16, 1947. The judgment was entered on February 1, 1951. The appeal was taken on February 17, 1951. The patent expired on February 20, 1951.¹²

The patent was for an alleged invention of Driggs and Faber. The specification of the patent stated: "This invention relates to flare signals.¹³ It is the object of this invention to provide a flare signal and a detachable cartridge case therefor detachable from a holder or other firing mechanism. In particular, it is the object of this invention to provide a flare signal contained within a metallic case¹⁴ having an integral base and side walls, the base being heavier than the side walls and the structure being preferably formed of a one-piece, drawn aluminum body, or other material of light weight and strength. In particular, it is the object of this invention to provide such a flare signal which may be interchangeably mounted within a cartridge case from which it can be expelled by a powder charge,¹⁵ such cartridge case being detachably mounted in and forming a portion of the barrel of a firing pistol. It is a further object to provide such a flare which can be used with a breech-loading pistol, as well as with a muzzle-loading pistol. * * *"

Several devices, each purporting to embody Driggs and Faber's alleged invention, were described in the specification and pictured in the accompanying drawings. Each device consisted of a combination of parts. Some of the combinations included cartridge cases. Each cartridge case was a cup-like structure consisting of a metal tube and a metal disk whereby the tube was closed at one end, the tube constituting the wall of the cartridge case¹⁶ and the disk its base. Some of the cartridge cases were designed for use in a breech-loading pistol.¹⁷ Others were designed for use in a muzzle-loading pistol.¹⁸

Each cartridge case designed for use in a breech-loading pistol had a base the diameter of which exceeded that of its wall, so that a part of its base projected outwardly from its wall, the projecting part constituting a flange.¹⁹ When such a cartridge case was placed in firing position in the barrel of a breech-loading pistol adapted to receive it, the flange rested against the rear end of the barrel and prevented the cartridge case from moving out of firing position.

Each cartridge case designed for use in a muzzle-loading pistol had a base the diameter of which did not exceed that of its wall. Consequently it had no flange. However, it had around its base an annular groove. When such a cartridge case was placed in firing position in the barrel of a muzzle-loading pistol adapted to receive it, a spring-pressed "nose," which projected through a wall of the barrel and was part of a "finger" pivoted on the pistol,²⁰ entered the groove and prevented the cartridge case from moving out of firing position.

The 23 claims of the patent described 23 combinations each of which Driggs and Faber claimed as their invention. However, we are here concerned only with claims 10 and 11 of the patent; for, as indicated above, all other claims of the patent were held invalid by the District Court, and that holding is not complained of. Claims 10 and 11 were as follows:

"10. In combination, a cartridge case having a base with an annular groove, a propelling charge chamber and a fuse mounted therein, said base carrying side walls, a telescopically-arranged shell mounted therein having a relatively heavy integral base and thin side walls, a fuse in the base of said shell communicating with the propelling charge of the cartridge case on one side and with an expelling charge in the shell on the other side, a flare and a parachute in said shell, and means to prevent the collapse of said parachute.

"11. In combination, a cartridge case having a base with an annular groove, a propelling charge chamber and a fuse mounted therein, said base carrying side walls, a telescopically-arranged shell mounted therein having a relatively heavy integral base and thin side walls, a fuse in the base of said shell communicating with the propelling charge of the cartridge case on one side and with an expelling charge in the shell on the other side, a flare and a parachute in said shell, and means to prevent the collapse of said parachute, and detachable closure means for said shell engaging said means for preventing the collapse of the parachute."

Thus each of these claims described, and was limited to, a combination which included a cartridge case having an annular groove, which is to say, a cartridge case designed for use in a muzzle-loading pistol.

Appellants manufactured and sold a device an exemplar of which was received in evidence as Exhibit 2.²¹ That device consisted of a combination of parts. The combination included a cartridge case having a flange, which is to say, it included a cartridge case designed for use in a breech-loading pistol. It...