Southern States Equip. Corp. v. USCO Power Equip. Corp.

• Decision Date: 31 December 1953
• Docket Number: No. 14206,14286.,14206
• Citation: 209 F.2d 111
• Parties: SOUTHERN STATES EQUIPMENT CORP. v. USCO POWER EQUIPMENT CORP. et al. USCO POWER EQUIPMENT CORP. et al. v. SOUTHERN STATES EQUIPMENT CORP.
• Court: U.S. Court of Appeals — Fifth Circuit

209 F.2d 111 (1953)

SOUTHERN STATES EQUIPMENT CORP. v. USCO POWER EQUIPMENT CORP. et al.

USCO POWER EQUIPMENT CORP. et al. v. SOUTHERN STATES EQUIPMENT CORP.

No. 14206, 14286.

United States Court of Appeals, Fifth Circuit.

December 31, 1953.

Arnold Drennen, Birmingham, Ala., J. Matthews Neale, Washington, D. C., Francis A. Drennen, Birmingham, Ala., Drennen & Drennen, Birmingham, Ala., Strauch, Nolan & Diggins, Washington, D. C., of counsel, for USCO Power Equipment Corp.

Henry L. Jennings and Needham A. Graham, Jr., Birmingham, Ala., Jennings & Carter, Birmingham, Ala., of counsel, for Southern States Equipment Corp.

Before HOLMES and RIVES, Circuit Judges, and KENNAMER, District Judge.

RIVES, Circuit Judge.

This suit was originally brought by Southern States Equipment Corporation against USCO Power Equipment Corporation, its officers and directors, charging infringement of Letters Patent Nos. 2,466,374 and 2,489,750, through the manufacture and sale of electric switches by defendants alleged to incorporate the inventions of the patents. The complaint further charged contributory infringement of said patents by J. B. Lankford, Jr., Austin Lankford, and Philip E. Lankford, individually and as co-partners doing business as East Birmingham Bronze Company, because of their manufacture and delivery of castings to defendants for use in the switches charged to infringe.

Plaintiff is a Georgia corporation having its factory and offices in Hampton, Georgia, where it is engaged in the manufacture and sale of electric switches, fuses, power connectors, and other automatic and special control electric devices. It was originally incorporated under the laws of Alabama and was engaged in manufacturing operations at Birmingham, Alabama, from 1916 until December, 1945, when it moved to Hampton, Georgia, and re-incorporated.

The corporate defendant was originally incorporated under the laws of Alabama as Utilities Supply Co., Inc., in January, 1946,¹ its name later being changed to USCO Power Equipment Corporation. Its officers and directors, named as individual defendants, were former employees of plaintiff's predecessor Alabama corporation who had held various positions of trust and responsibility in that organization² when it was engaged in manufacturing operations at Birmingham, Alabama. When the plant facilities were moved to Hampton, Georgia, in December, 1945, they left plaintiff's employ and, together with the Lankfords, organized the defendant corporation for the purpose of entering the electric equipment manufacturing field on their own.

The application for Patent No. 2,466,374 was filed December 14, 1946 and issued April 5, 1949 to John R. Caldwell and Thomas E. Curtis of Hampton, Georgia. Patent No. 2,489,750 was applied for on January 10, 1947 and issued November 29, 1949 to the same parties, together with Olan Richardson of Atlanta, Georgia. All patentees have assigned their rights and interests under the patents in suit to plaintiff corporation. Only Claims 2, 3, 5 and 7 of Patent No. 2,466,374 and Claim 1 of Patent No. 2,489,750, set forth in pertinent part in the margin,³ are involved in this suit.

Both patents reveal improved types of electric switches used to connect and disconnect current on high voltage transmission lines and designed to carry voltage ranging from 15,000 volts up to 230,000 volts or more. Due to the high voltages carried, very heavy pressure between the switch blade and its contacts and a comparatively strong force is required to disconnect the switch blade, particularly when the operating parts are corroded or frozen during icy weather. The switches are generally operated by means of a vertical pipe rotated by a handle located near the ground which can be operated manually. For purposes of this review, and without detailed reference to the patent drawings, claims and specifications, the general structure of both patents in suit may be described as revealing a twist blade type high voltage electric switch in which the switch arm is first moved into its closed circuit location and afterwards heavy pressure is developed between the switch arm and its stationary jaw contacts by rotating the switch arm, bringing into engagement the flat end or protuberances on the switch arm so as to bear against the contacts. In opening the switch, the reverse action occurs. The distinctive feature of the devices, mainly relied upon, is their employment of a rocker, or "gin pole lever", with connections therefrom to the switch arm, to rotate and move the switch arm from closed to open position and vice versa. Switches made in accordance with Patent No. 2,466,374 have not been manufactured commercially or sold by plaintiff corporation, but the switch illustrated in Patent No. 2,489,750 has been produced in quantity and sold to the trade.

The electric switches manufactured and sold by the defendant corporation, which are alleged to infringe the patents in suit, are those illustrated in figures 1 to 9 of the Gilliland and Turnham Patent No. 2,575,707 and physically revealed by the USCO model GT-1R switch in evidence as plaintiff's exhibit No. 3; those switches illustrated in figures 10 to 14, inclusive, of the Gilliland and Turnham Patent No. 2,575,707; and defendants' model GT switch, as pictured in drawings, plaintiff's exhibits Nos. 4 and 5 and defendants' exhibit No. 2b.⁴

Insofar as material to this appeal, the defenses urged were: invalidity of the patents in suit, either as disclosing no patentable invention or as anticipated by the prior art; and lack of infringement.⁵ The District Court held (1) that both patents in suit were valid; (2) that defendants infringed Claims 2 and 3 of plaintiff's patent No. 2,466,374 by their manufacture and sale of their model GT switch; (3) that Claims 2, 3, 5 and 7 of Patent No. 2,466,374 were infringed by defendants' manufacture and sale of their type GTH electric switches illustrated in figures 10 to 14, inclusive, of the Gilliland, et al Patent No. 2,575,707; (4) that defendants' switches manufactured in accordance with figures 1 to 9 of the Gilliland Patent No. 2,575,707 (USCO Models GT-1R and GT-2R switch) do not infringe plaintiff's Patent No. 2,466,374; (5) that plaintiff's Patent No. 2,489,750 was not infringed by any of defendants' switches; and (6) that the defendants, John B. Lankford, Jr., Austin Lankford, and Philip E. Lankford, who furnished castings for use in defendants' switches, "had no knowledge, purpose or intent that such castings would be used in a combination which would infringe plaintiff's patents", and were, therefore, not guilty of contributory infringement.

On the main appeal, appellant attacks the trial court's holdings of non-infringement under (4) (5) and (6), above, insisting that, in failing to find infringement as to those accused devices, the court has too narrowly construed the patent claims and so limited the doctrine of equivalents as to actually deprive appellant of the fruits of its invention; that defendants' devices copy substantially the structure and teachings of the patents in suit, any structural differences therein involving only immaterial mechanical alterations which do not avoid infringement; and, finally, that the Lankfords, in view of their admitted manufacture and sale of castings for the infringing switches, which castings concededly have no other use, are guilty of contributory infringement as a matter of law. Appellees' cross-appeal, of course, attempts to upset the trial court's holding (1) above, as to the validity of both patents in suit, as well as its findings of infringement under (2) and (3) above. They argue that both patents are invalid either as embodying no invention or because anticipated by structures revealed in the prior art, particularly the patents to Koppitz No. 1,560,998, Caldwell No. 2,276,257, and Froland No. 2,303,119. While urging a reversal of the trial court's holdings of infringement as to their model GT and GTH switches on the theory that they reveal a substantially different structure from the patents in suit and operate upon a different principle, appellees insist that the evidence and exhibits fully justify an affirmance of the court's holding of non-infringement as to their models GT-1R and GT-2R switches under its holdings (4) and (5) above; finally, that under the applicable authorities, the court was fully justified under its holding (6) above in refusing to find contributory infringement on the part of the Lankfords.

A jurisdictional issue is raised by appellant's motion to dismiss appellees' cross-appeal as untimely filed. The trial court originally entered judgment on June 10, 1952, which, through inadvertence failed to incorporate its conclusion, of law No. 7, that "defendants' switches as exemplified in plaintiff's exhibit 3, in figures 1 to 9 of Gilliland Patent 2,575,707, plaintiff's exhibit 2C, do not infringe any of the claims in suit of Patent 2,466,374." On June 19, 1952, appellant filed its motion purporting to be under Rule 60(a), F.R.C.P., 28 U.S.C.A., requesting the court to correct the "clerical error in the judgment", so as to include therein the court's conclusion of law No. 7 above. On June 25, 1952, the court, in response to appellant's motion, "ordered that the said judgment be amended to include said determination", and reentered the same judgment which it had previously entered on June 10, 1952, adding thereto the omitted conclusion of law No. 7. Thereafter, on July 11, 1952, thirty-one days after entry of the defective judgment of June 10, 1952, appellees filed their notice of appeal from those portions of the amended judgment of June 25, 1952, adverse to them.

Appellant's motion to dismiss appellees' cross-appeal is predicated on the mandatory and jurisdictional thirty day time limitation for appeal under Rule 73(a), F.R.C.P. See Marten v. Hess, 6 Cir., 176 F.2d 834; also Continental Casualty Co. v. United States, for Use of Schaefer, 9...