Transcript of Record — Smith v. Hall

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TRANSCRIPT OF RECORD

Supreme Court of the United Sgates

OCTOBER TERM, 1936

No. 35

HALL BROTHERS

PETITION FOR CFRTIORARI FILED APRIL 21, 1936

CERTIORARI GRANTED MAY 25. 1936

j"“*°RARARRERERERIRETSSS

Fi 7 NOaaSEQU SRS NeP Ener

*

—_

OCTOBER TERM, 1936.

No. 35.

OF APPEALS FOR THE SEOOND CIRCUIT

SAMUEL B. SMITH, PETITIONER,

vs.

A. B. HALL AND L. C. HALL, po. 8. 4. HALL BROTHERS

"

a

3

OK WRIT OF CERTIORARI TO THE USITED STATES CIRCUIT cotURT

u INDEX

Record from D. ©. U. &, District of Connecticut—Contipued.

Narrative statement of evidence Continued.

Plaintiff's Exhibits : Original Print

38—Hearing on motion for prelimimary injunc-

tion, Smith ve. Hall Brothers........... co 66

Testimony of Joseph J. Taggart........... o 66

Almon B. Hall.............. 108 70

GUE | So ccdenccscegevstcpoccedescccss 116 81

Testimony of George MecConnaughey...... 119 88

Joseph I. Taggart........... 121 85

19—Afidavit of Joseph I. Taggart—January 19,

1986, Smith vs. Hall Brothers. Mebewwosess 127 90

1—Smith: patent No. 1,262,880 (copy)

(omitted in printing).............. 188

2—Supreme Court Opinion, Smith y. Snow 145 Bs

E

5

s

5

4—Diagram—Robbins Incubator—26I1.... 171 117

5—Diagram—Ropbins Incubator—s b o w-

ing arrangemenf of trays........... 172 118

6—Diagram—Robbins Incubator—ehowing

arrangement of fans............... 178 119

7—RBobbins Catalogue. pages 44 and 45

showing Robbins Model @2......... 174 120

8—Robbins Incubator Model #23........ 175 121

9—Robbins Incubator Model #23........ 176 122

10—Robbins Incubator Model #28......... 177 128

11—Robbins Catalogue page 12............ 178 124

12—Robbins Catalogue, page 11........... 178 125

13—Graph showing development of heat

._ Umits in Incubetion................. 180 126

14—Cireuit Court, Ninth Circuit, Optnion—

Waxham va. Smith................ 181 127

20—Affidavit of Joseph I. Taggart—February

20, 1985—Smith vs. Hal) Brothers....... 198 186

14—New Engiand Poultryman, January 15,

1985, pages 22 and 23.............. 201 141

15—Page 14, Robbins Catalogue........... 202 142

16—Robbins Patent Re. #18,984.......... 208 148

17—Report of special master, Smith va

ME cchacecesdene De cers en on 206 147

21—Stipulation as to testimony to be intro. ;

GOOBE nap ecccccccccscrcccccccceesevese 282 164

23—Supreme Court opinion, Smith va. Snow

(copy) (omitted in printing)........... 283

Supreme Court opizion, Waxham vs. Smith

(eopy) (omitted in p emg eeees s 255

Findings of D. ©. U. 8. Connecticut, No.

ee Hibasahse< See eee eeeeeereeaereeeeee 268

ae We eatin « D- c. U. 8,

cn © Reta tcacc: arte St 260

“> gale D. Cc. U. 8.

ineenvesénvesees coe 268

“F"—File wrapper, contents and drawing in the

matter of abandoned application of Milo

Hastings, No. 624,885 (copy) (omitted

(omitted in printing) ..

a ae ef ee ee eens tat paedens

°

mp

?

191

198

196

196 .

191

198

ie

os

206

207

208

208

MERE Suuueees

4.

[fol 1) | f

IN UNITED STATES DISTRICT COURT, DISTRIOT.OF

Equity. No. 2369

Samcme B. Sacrrx

oa |

A. B. Hatz and L. C. Hatz, d. b. 0. Hatz Baormnas.

<~.

Feb. 27.

Docket Extrsies—Continued

Arguments were heard and memorandum was

filed by Attorney for defendant. The Court

ordered orally that injunction issue forthwith

and scope or decree to be agreed upon by coun-

sel and submitted. Supersedeas bond of $25,-

000.00 to be filed by defendant on or before

March 4, 1935.

. Findings of fact filed.

. Decree filed and entered. (Hincks, J.)

. Injunction issued and with two certified copies of

same handed to the Marshal for service.

. Injunction returned showing service.

. Injunction bond in the sum of $25,000.00 filed.

Transcript of testimony filed.

. Motion of George D. Seymour for disappearance

and order allowing same filed and entered.

(Hincks, J.)

. Motion to ba defendants’ answer filed.

Amended answer. of defendants filed.

Specification under Rule 1 filed.

Order granting motion to amend answer filed and

entered. (Hincks, J.)

. Stipulation filed.

. Stipulation regarding taking testimony filed.

. Request for subpoena filed and subpoena issued.

. Defendants’ motion for leave to take deposition

of Reese V. Hicks and affidavit of Arthur E.

Paige filed.

. Memorandum of decision and order on defend-

ants’ motion for leave to take the deposition of

Ph es ene eategee. (Hincks,

J.) Copies mailed to attorneys of record.

. Subpoena for A. B. Hall returned showing serv-

ice.

. Hearing had on motion for preliminary injunc-

tion. One witness was sworn and testified on

behalf of plaintiff. Plaintiff’s exhibits 18 to 32,

Dooxet Exrams—OContinued

were sworn and testified for the defendants.

Witness Hastings was recalled, Defendants’

exhibits F and G were filed) Defendant rests.

Arguments were heard. Briefs to be — and.

reply brisfs if desired.

July 1. Brief on behalf of plaintiff filed and diel to

Judge Hincks. Copy of same mailed to Arthur

KE. Paige, Esq.

‘‘ 1. Brief for defendants filed and handed to Tudge

Hincks.

‘« 1. Exhibits H and I were filed andshanded to Judge

Hincks.

4. Corrections of report of the trial. proceedings,

etc., filed.

8. Supplemental brief for defendants filed and

handed to Judge Hincks.

‘‘ 8. Reply brief on behalf of plaintiff filed and handed

to Judge Hincks.

(fol. 4]

July 11. Corrections of report of the Trial Proceedings,

ete., filed.

‘15. Letter from Arthur E. Paige, dated July 13, 1935,

showing acceptance of some corrections of re-

port of trial proceedings, etc., and excepting

others, filed.

‘* 18. Opinion filed. (Hincks, J.)

‘* 27. Exceptions by plaintiff filed (re paragraph’7 of

finding of fact).

Aug. 12, Decree filed and entered and Attorney Arthur

E. Paige notified. (Hincks, J.)

‘‘ 14. Petition for appeal filed.

‘* @. Assignment of errors filed.

‘* 14. Statement of testimony under Rule 75b filed.

‘* 14. Bond on appeal filed.

‘* 14. Praecipe filed.

a seed allowing appeal filed and entered. =

‘« 15. Notice filed. sts

2

Docket Extais—Continued

1935. z

Aug. 15. Citation issued returnable thirty days from Aug-

gust 14, 1935, and with a copy of same mailed

to Rockwell & Bartholow. —

‘* 17. Citation returned showing service.

Sept. 4 Stipulation re. item 13-of praecipe filed.

‘* 4, Stipulation and ‘statement of testimony under

Rule 75b and certificate thereon by Judge

Hincks filed and entered.

‘* 12. Order extending time for appeal papers filed

and entered. (Hincks, J.)

‘* 12. Order for removal of exhibits filed and entered.

(Hincks, J.)

{fol. 5) Ls Unrrep Stares Disraict Court, Districr

or Conwzoticrt

In Equity. No. 2369

Samug. B. Suir, Plaintiff,

vs.

A. B. Haut and L. C. Hay, d. b. a. Hatt Broruens,

Defendants

Bru or ComPLaInt

To the Honorable the Judges of the United States District

Court for the District of Connecticut :

Plaintiff, for his bill of complaint, represents and states

as follogiit

I

That the plaintiff, Samuel B. Smith, is a citizen of the

United States and a resident of Cleveland, Ohio.

0

Upon information and belief that the defendants, A. B.

Hall and I. ©. Hall, are residents of the City of Walling-

ford, New Haven County, within the District of Connecticut,

.7 =. 3a.

That the jurisdiction of this court depends upon the

that this is a suit in equity arising under and

the patent laws of the United States.

IV

That prior to October 26, 1916, the plaintiff, |

Smith, was the first, original and sole inventor of cert&in

new and useful improvements in Incubators, not known or

used by others before his invention or discovery thereof,

not patented or described in any printed publication in this

or any foreign country prior to his invention thereof or

more than two years prior to October 26, 1916, not in public

use oF on sale in this country for more than two years prior

to said date, not abandoned, and not patented by Samuel

B. Smith or his legal representatives or assigns upon an

application filed more than twelve months prior to said

date.

V

That on October 26, 1916, the plaintiff, Samuel B. Smith,

filed in the United States Patent Office an application for

Letters Patent of the United States for said improvement

in Incubators.

VI

That prior to April 16, 1918, Samuel B. Smith assigned

the right, title and interest in and to the said invention and

{fol. 7] in and to any United States patent to issue thereon

to The Buckeye Incubator Company, a corporation of Ohio,

and that after dae proceedings upon the said application

for patent there was issued to The Buckeye Incubator Com-

. pany, aforesaid, United States Letters Patent No. 1,262,-

860 on April 16, 1918, whereby the exclusive right of mak-

ing, using and selling the said invention and improvements

throughout the United States for the term of said patent

was granted to The Buckeye Incubator Con , afore-

said, its successors or assigns, as will more ful aver

from the original or duly certified copies ‘of the sa

and assignment to be produced in court hérein. - :

Vil

That under date of April 29, 1927, ‘The Buckafe sqater

Company, aforesaid, being then the owner of the title in

6

and to the aforesaid Letters Patent, did sell, assign and

transfer to the plaintiff, Samuel] B. Smith, his heirs and

assigns, the right, title and interest in and to the said

Letters Patent as will more fully appear from the original

assignment or duly certified copy thereof to be produced in

court herein.

Vill

That the plaintiff and his predecessor in title, The Bnck-

eye Incubator Company, have been at all times the sole and

exclusive owners of the said patent.

Ix

That the said patented invention has proven to be of very

(fol. 8) great value, and the plaintiff has expended large

sums of money in the manufacture and sale of incubators

embodying the invention thereof. The incubators so manu-

factured and sold have acquired a high reputation and

utility and have proven to possess superior functions and

qualities over other incubators, and have been in great de-

mand due to the new and useful invention made by the

plaintiff in the art of incubating eggs.

x

That the patent in suit has been adjudicated in a large

number of suits brought thereon, and has been unanimously

held valid in such cases by the Circuit Courts of Appeals

of the Third, Sixth, Eighth and Ninth Circuits as will more

fully appear by reference to the decisions in the said

Courts.

xI

That in a case decided April 9, 1934, in the Circuit Court

of Appeals of the Ninth Circuit, known as Herbert H. Wax-

ham, Appellant v. Samuel B. Smith, A ee, the said pat-

ent was declared valid as aforesaid, Claim 1 of the

said patent held to be infringed by the incubator involved

x

Upon information and eee

A. B. Hall and L. C. Hall, prior

[fol. 9] the filing of the bill Fe Booe

possession of, and using in

place of business at Wallingford, Ne

necticut, one or more Robbins

similar to that found to be an infringemen

said patent in the case of Waxham v. Smith referred

above, which unauthorized use constitutes an infringement

or incubators, thereby infringing upon the righ

plaintiff as secured by said patent, all without the license or

consent of plaintiff.

Xi

That incubators manufactured and sold by the plaintiff

have been marked ‘‘Patented’’ together with the date and

number of the patent afcresaid, as required by the Statutes

of the United States, and that in addition the defendants

herein have been duly notified in writing of the patent

aforesaid and of their infringement thereof.

xI”

That by reason of the infringement complained of herein,

plaintiff has suffered, and is suffering, immediate and irrep-

arable damage and injury, and is without an adequate

remedy at law, and will continue te suffer such irreparable

damage and injury unless the defendants are restrained by —

an order of this Court from said infringing acts; that the

defendants have realized profits and gains in connection

with the infringing acts complained of herein, which of.

[fol. 10] right belong to this plaintiff and of which plain- |

tiff prays discovery. |

Wherefore the plaintiff prays: -

_1. That a writ of

2. That temporary and permanent injunctions be issued

out of this Court addressed to the defendants, A. B. Hal!

and L. C. Hall, and their workmen, employees, solicitors,

agents, attorneys and others claiming or holding under the

defendants, enjoining and restraining them from in any

manner directly or indirectly infringing upen the patent

3. That the defendants be required to account for and

pay to the plaintiff all the gains and profits acquired by

them and recompense the plaintiff for the damages sus-

tained by the plaintiff by reason of the infringement com-

plained of herein.

4. That the defendants pay the costs of this suit, and

that such other, further and equitable relief be granted to

the plaintiff as shall be found necessary or proper.

Samuel B. Smith, by Rockwell & Bartholow, His At-

torneys and Solicitors. Edmond M. Bartholow,

A. C. Ely, Ely & Barrow, of Counsel.

[fol.11] Duly sworn to by Samuel B. Smith. Jurat omit-

ted im printing.

[fol. 12] Iw Unsrrep Staras Distaicr Court

[Title omitted)

ANSWEB

Comes now the defendants above named, and, each an-

swering the bill of complaint of plaintiff herein, and reserv-

ing all right of exception and objection to the many uncer-

tainties and inaccuracies in said bill of complaint, avers and

says: :

Admits that the plaintiff, Sammel B. Smith, is a citizen

of the United States and a resident of Cleveland, Ohio.

0

par defendants admit that their

reaideant ult Hadas = is at Wallingford, Connecti-

9

cut, but deny that they or either of them have or has com

mitted any act of infringement there or at all.

i

Adeite that it thie Court han jortettelion, it has

because of the fact that this is a suit in equity alleged

[fol. 13] arise under and based upon the patent laws

the United States.

IV

Denies that prior to October 26, 1916, or at any time, the

plaintiff, Samuel B. Smith, was the first, original and sole

or any inventor of certain new or useful improvements in

incubators, or that the same was not known or used by

others before his pretended invention or discovery thereof,

or that the same was not patented or described in any

printed publication in this or any foreign country prior to

his alleged invention thereof or more than two years prior

to October 26, 1916, or not in public use or on sale in this

country for more than two years prior to said date or not

@ #bandoned, or not patented by Samuel B. Smith or his legal

~~ x epeesemtatives or assigns upon an application filed more

than twelve months prior to said date.

V

Defendant further denies that on October 26, 1916, the

plaintiff, Samuel B. Smith, filed in the Unjted States Patent

Office an application for letters patent of the United States

for said improvement in incubators.

VI

Defendant denies that prior to April 16, 1918, or at any

time, or at all, Samuel B. Smith assigned the right, title or

interest in or to the said invention or in or to any United

10

making, using or selling the said invention or improvements

throughout the United States.for the term of said patent

was granted to the Buckeye Incubator Company, or its

successors or assigns, or that the same more fully or at all

could cr would appear from the pretended original or duly

certified copies of the said patent and assignment, were

same to be produced in court herein; and thereunto and as

to each part of the allegations of said paragraph VI of the

bill of complaint other than in this paragraph admitted, de-

fendant calls upon plaintiff for strict proof thereof.

vil

Denies fhat under the date of April 29, 1927, or at any

time, or at all, the Buckeye Incubator Company, if it were

then the owner of the title in and to the aforesaid letters

patent, and which defendant denies, did sell, assiffn and

transfer to the plaintiff, Samuel B. Smith, or his-heirs or

assigns, the right, title or interest in or to the said letters

patent as would or could more fully or at all appear from

any original assignment or duly certified copy thereof which

might be produced in court herein.

Vill

Denies that plaintiff or his elleged predecessor in title,

the Buckeye Incubator Company, has been at all times or at

any time the sole and exclusive owner of the said patent.

(fol. 15] Ix

Denies that the said patented invention, if such there be,

proven to be of very great or any value; or that plain-

large sums of money in the manufacture

sale of incuba embodying the invention thereof;

or that the incubators so manufactured or sold have ac-

BRE

F

tft

that

bill of

denies

filling of the

Defendant

12

(fol. 17] rights of the plaintiff as secured by said patent or

alleged to be secured thereby, or that the same was without

of the plaintiff; and on the contrary,

defendant specifically alleges that such incubator or incu-,

: possession

;

pe ge gee A agree os gh 9 seeerher agi

in rather, in accordance with the description and

discloe re and claims of Reissue Letters Patent No. 18,984,

dated Uctober 1933, granted to John L. Robbins, of

Edgewater, , for Incubator, upon surrender of

original Letgera Patent No. 1,728,980, dated September 24,

1929, and of said original letters patent, and which said

reissue letters patent and original letters patent teach and

j “7 entirely different invention and construction and

mode of operation or method of use than that purported to

be set forth and claimed in said patent No. 1,262,860, and

which separate invention was discovered and produced by

said John L. Robbins long after the issuance of said patent

No. 1,262,860, and entirely independently of the teaching of

the latter, and is in no way servient thereto; whereby de-

fendant is partially or entirely. justified under said Robbins

reissue patent.

x

Defendant denies that by reason of the pretended in-

of in the bill of complaint, plaintiff

As a further, additional, separate or alterzative defense,

defendant alleges and avers that the subject-matter of said

patent No. 1,262,860, and of said claim 1 and each of the

tion and nature, and that said letters patent and each claim

thereof are, therefore, void for aggregation,

XV

As a further, additional, separate or alternative defense,

defendant alleges and avers that the subject-matter of said

patent No. 1,262,860, and each and every of the claims there-

of, was not novel or patentable at the time of the alleged

invention thereof by said Samuel B. Smith, as alleged in

said bill of complaint; but that said letters patent No. 1,-

262,860, and each and every of the claims thereof, is and

14

Number

3,019

120,253

[ fol. 20]

152,644

272,744

240,004

286,756

297,676

320,463

330,457

344,474

559,676

_ 591,870

410,110

United States Patents

Date Name

March 30, 1843 N. EB. Guerin

Oct. 24, 1871 H. Endemann

June 30, 1874 E. A. and C. W. Jones

Feb 20, 1883 A. H. Morgan

April 12, 1881 P. H. Bate

Oct. 16, 1883 C. F. Winkler

April 29, 1884 G. Conant

June 23, 1885 L. Cutting

Nov 17, 1885 C. Bassini & A. Heyden

June 29, 1886 J. W. Cam ampbell

May 5, 1896 T. BR. C. Christianso

Oct 19, 1897 F. H. Morgan

Aug. 27, 1889 J. H. Knowles & J. K. Proc-

tor

July 15, 1890 J.K. Proctor & J. H. Knowles

March 5, 1895 C. W. Schwartz, Jr.

Jan. 28, 1896 J. K. Proctor

Dec. 25, 1894 Reissue patent to J. K. Proc-

tor

Jan. 28, 1902 V.S. Bell

Sept. 23, 1902 . Scott

April 14, 1903 . Hawkins

fuopoon

Th

4

See e

3

g

8

RH RON dro MoO <

June 16, 1908 rna

C. Koons

March 23, 1909 C. Coons

Feb 15, 1910 H. Klinks

June 16, 1914 O. Olson

May 4, 1915 G. E. Goldstein

Nov. 16, 1915 8S. Van Keuren

Dec. 28, 1915 Thos. B. Freas

Nov. 21, 1916 F. Fallington

July 31, 1877 8S. Renwick

Feb. 3,.1880 E. 8. Renwick

Jan. 23, 1883 H. Altenbrand

United States Patente—Continued

Date Name

3, 1883 G. Lumpp

9, 1886 S. Renwick

22, 1890 J. K. Proctor & J. H. Knowles

21, 1891 F. Frey& A.M. Wayne —

6, 1897 . P. Jones

15, 1898 orge Kutz

1898 G. 8. Newsom

. M. Day

. 8.. Newsom

. Wiebe -

. Schmidt & H. Schutterle

. ©. Cogburn

. W. Zimmer

Di Domenica and A. Ami-

ot be}

1,075,747

1,086,903

Herd ja

1,158,447

1,195,705

360,223 ‘

843,909 1907 F. M. Peters & H. H. Hung-

erford

917,483 . 6, 1909 C. C. Peck

946,911 18, 1910 @. C. Andrews

Foreign Patents

155,917 (German) Nov. 7, 1901 KE. Stulik

117,089 " Feb. 4, 1901 Mann

Publications

A book by Milo M. Hastings (pages 104-105), entitled —

‘‘The Dollar Hen’’, published by the Arcadia Press, N. Y.,

[fol. 22] 1909. A copy is in the Public kabeery in New

York, N. Y.

An article entitled ‘‘Indoor Chicken Factories”, pub-

lished in the Boston Sunday Globe, of Boston, Mass., issne

of November 10, 1912. A copy is in the office of the Boston

Globe, at Boston, Mass.

An article entitled ‘‘Hatching Chickens by Wholesale’’,

published inthe Technical World, at Chicago, Illinois, in

the issue of April, 1913, (pages 248-249). A copy is = the

Public Library, New York, N. Y.

16

An article entitled ‘‘Incubator’’ appearing on pages 652-

653 of Ure’s Dictionary of Arts, Manufactures and Mines,

published i in London, England, by Longmans, Green & Co.,

in 1867. A copy is in the Public Library at Minneapolis,

Minnesota.

An article entitled ‘‘ Incubator’’, appearing on pages 1177

and 1178 of Knight’s American Mechanical Dictionary, Vol.

Il, published at Boston, Mass., by Houghton, Mifflin &

Company, in 1884.

An article entitled ‘‘Ventilator’’, appearing on pages

2704 and 2705 of Knight’s American Mechanical Dictionary,

Vol. I, published at Boston, Mass., by Houghton, Mifflin

& Company, in 1884, and particularly the cut (Fig. 6960)

appearmg on page 2705, entitled ‘‘Seetional View of the

Senate Wing, United States Capital, showing the Pressure

and Exhaust Ventilating Apparatus’’; and the description

thereof, which appears on the said page directly below said

cut.

And other publications, now unknown to these defend-

ants, but which, when discovered, they pray leave to add by

amendment to this, their answer in this suit.

[fol. 23] XVI

Further answering, the defendant, on information and

belief, and as a separate, additional and alternative de-

fense, avers that the said Samuel B. Smith patent in suit,

1,262,860, of April 16, 1918, alleged to be applied for Octo-

ber 26, 1916, is, as to the relied upon claim 1 and each

method claim thereof, invalid and of no effect in law, for

the reason that the alleged invention, or method of hatch-

ing eggs disclosed in said patent and pointed out in the

method claims thereof, had been put into public commercial

use by the said Samuel B. Smith in the: United States, at

Attica, Ohio, and at Cleveland, Ohio, at dates more than

two years before the said Samuel B. Smith filed in the

- Patent Office his said application which matured into his

said alleged patent here in suit, and this usage or prac-

tice of said invention was effected by said Smith at said

places in incubators designed and built by him, or under

his direction; and the hereinbelow named persons whose

residence appear opposite, their respective names, had

of the said usage of said machines, at said

places, to wit:

Samuel B. Smith, Cleveland, Ohio,

James W. Miller, Bucyrus, Ohio,

Albert H. Wilson, Toledo, Ohio, —

Edward H. Uhle, Cleveland, Ohio,

Mr. and Mrs. Carrick, Cleveland, Ohio;

and the defendant further alleges that one or more of

said incubating machines used by said Smith at Attica,

{fol. 24} at Cleveland, Ohio, for carrying into effect his

method of hatching eggs disclosed in said patent in

and pointed dit ie tolled dedees deol was referred to

and described in a newspaper article published in the

Sunday Plain Dealer, of Cleveland, Ohio, in its issue of

Sunday, February 23rd, 1913, entitled ‘‘Mammoth Ineu-

bator will turn ont 20,000 Chicks per Week’’, and also, in

an article published in the Cleveland Leader, of Cleveland,

Ohio, Sunday, February 22nd, 1914, entitled ‘‘Cleveland

Boasts Largest Hatchery’’.

XVIil

Farther answering, the defendant, on information and

belief, avers that the said Samuel B. Smith patent in suit

1,262,860, of April 16, 1918, applied for October 26, 1916,

is, as to. the method claims thereof, invalid and of no ef-

fect in law for the reason that the alleged invention or

method of hatching disclosed in said patent and

pointed out in said relied upon claims thereof, had been

put into public use in the United States on Walter B. Davis’

farm at Brooklyn, N. Y., and at Muskogee, Okla., and at

Port O’Connor, Texas, by Milo M. se 4 of New York

City, at dates more than two years before the said Samuel

B. Smith filed in the Patent Office his application which.ma-

tured into said patent here in suit, and said usage of said

invention was effected by said Milo M. Hastings in incn-

bators designed and built by him or under his direction,

and the hereinbelow named persons, whose residences ap-

pear opposite their respective names, had knowledge of

said usage, to wit:’the following three persons had knowl-

(fol. 25] edge of said usage on the Walter B. Davis farm

at Brooklyn, N. Y., namely:

Milo M. Hastings, White Plains Road, Tarrytown, N. }

Walter B. Davis, Jersey City, N. J.,

Edgar Chambless, 122 Bast 94 St, New York, N. Y.;

2—35

18

and the following four persons had knowledge of the said

usage at Muskogee, Okla., to wit:

C. T. Brewer, Muskogee, Okla.,

Mr. and Mrs. John G. Lieber, Muskogee, Okla.,

Edward Hastain; Phoenix, Arizona,

Reese V. Hicks, Kansas City, Mo.;

and the defendant further alleges that the structure aud

mode of operation of said Hastings incubator used by him

at Muskogee, Okla., was described in an article entitled

‘‘The Mam-oth Incubator Out-Mammothed’’, published at

Topeka, Kansas, in a periodical entitled ‘‘Poultry Cul-

ture’’, issued for February, 1912, Vol. XV. No. 5, pages 7,

14 and 15 thereof, copy in U. S. Department of Agricul-

ture Library, Washington, D. C.; and the following per-

sons had knowledge of said usage at Port O’Connor, Texas,

to wit:

Milo M. Hastings, White Plains Road, Tarrytown, N. Y.,

E. T. Powers, Port O’Connor, Texas.

XVII

The defendant, further answering, avers, on informa-

tion and belief, that the said Samuel B. Smith patent in

suit, 1,262,860, of April 16, 1918, is, as to the method claims

{fol. 26] thereof, invalid and of no effect in law, for the

reason that said Samuel B. Smith was not the true, orig-

inal and first inventor of the method of hatching eggs,

disclosed in said patent and pointed out in said method

claims thereof, but that, on the contrary, Milo M. Hastings,

of White Plains Road, Tarrytown, New York, was the

true, original and first inventor of said method of hatch-

ing eggs, and was using reasonable diligence in adapting

and perfecting the said invention and had reduced the

same to successful practice in the United States before

the same was invented or produced by said Samue! B.

Seaith, ae! thet eid pibent to bait was unjustly granted

on an application surreptitiously and illegally filed by said

Samuel B. Smith and was unjustly and illegally issued in

the name of the ~:~ i es alas

signee of said Samuel ] Smith.

Farther answering, defendant avers and alleges that, as

an additional, further or separate defense, the subject-

ae ee

matter of said Letters Patent No. 1,262,860, in

valid and void as to the claims thereof, and in

thereof by said Samuel B. Sinith, ov olleget fa

of Complaint ; and that each of said claims, and

ters patent, is and are invalid and void ‘ford the reason th

the subject-matter thereof had been invented, known, made

and publicly used by or on behalf of Rolla Lawry, then of

(fol. 27] Pacific, Missouri, and now of Port Chester, N. Y.,

and Roy F. Fullington, then and now of Clifton Hill, Mis-

souri, prior to the alleged inventiou or discovery thereof

by said Samuel B. Smith, or more than two years prior to

the application of said Samuel B. Smit. for said Letters

Patent No. 1,262,860, at said Pacific and Clifton Hill, Mis-

souri, and elsewhere, by said Rolla Lawry and said Roy

F. Fullington, and others on their behalf, whereby such

subject-matter of said claims and each thereof, and of said

Letters Patent No. 1,262,860, in entirety, was not novel and

patentable and did not amount to invention at the time of

the alleged invention thereof by said Samuel B. Smith,

and whereby said Samuel B. Smith was not -original

and first inventor or discoverer of any material or substan-

tial part thereof.

xx

Further answering, defendant avers and alleges, as an

additional, further, alternative or separate defense, that .

said Samuel B. Smith surreptitiously or unjustly obtained

said Letters Patent No. 1,262,860, in suit, for that which

was, in fact, invented by another, Rolla wry, then of

Pacific, Missouri, and now of: Port r, New York,

who was using reasonable diligence in adapting and per-

fecting the same, both before and after the time of the

alleged invention thereof by said Samuel B. Smith, and

who made, constructed, assembled and publicly used, an em-

bodiment thereof prior to the time of said alleged inven-

tion thereof by said Samuel B. Smith.

{fol. 28} - XXT

Defendant further alleges and avers, as an additional,

further, alternative or separate defense, that said Samuel -

’ B. Smith surreptitiously or unjustly obtained said Letters —

invented by another, Be F. Pullen d then and now of

Missouri, who was using reasonable diligence

in adapting and perfecting the same, both before and after

the alleged i

th, and who made, constructed, assembled and pub-

used, or caused to be made, constructed, assembleu

publicly used, an embodiment thereof prior to the time

:

xx

Defendant further alleges and avers that said patent No.

1,262,860, if valid, has been so narrowly construed in the

Third and Sixth and Eighth Judicial Circuits that in said

cireuits any incubator possessed or used by defendant as

in the bill of complaint alleged could not in any respect

or particular infringe said Letters Patent No, 1,262,860,

or any claim thereof.

XXII

As a further, additional, separate and alternative de-

fense, defendant alleges and avers that in the course of

the prosecution of said application for said patent No.

1,262,860 in the Patent Office, claims were so repeatedly

cancelled and amended and modified and substituted for,

[fol. 29] and said Samuel B. Smith did so specifically dis-

avow any breadth or scope for his pretended invention

therein concerned, that said patent No. 1,262,860 must be

very narrowly construed, if at all valid, and plaintiff is

estopped from contending for said patent No. 1,262,860

any material or substantial scope or breadth of invention

whatsoever or whereby said defendant could or could have

in any respect respect or particular infringe or infringed said let-

about to expire, and that it is t

injunctions thereunder, and, honed: das “

is without equity with any cause of action pric to

set up therein.

Wherefore, defendant prays that the bill F

may be dismissed with costs allowed to defendant, and for

[fol. 30} such other and further and just relief as to the

Court may seem just and proper. _.

A. B. Hall. Louis C. Hall. Kvis, Hndeon & Kost

of Counsel, Union Trust Bldg., Cleveland,

Raymond Ives Blakeslee, Solicitor and of

for Defendant, 433 South Spring Street, Loe*An-

geles, California.

Ly Ustrep States Disraicr Court

{Title omitted]

Motion ror Pretaamarny Inguncriox

the prayer of the Bill of Complaint, be

(fol. 31] may be practicable and convenient

directed to the defendants, A. B. Hall and L. :

Hall Brothers, enjoining them from i

same fdr sale to others, or of otherwise disposing of said

incubators.

The reasons for this motion are fully set forth in the

affidavit of Mr. Joseph L Taggart and the Brief on Behalf

of Plaintiff filed concurrently herewith.

submitted, Samuel B. Smith, by Rock-

well & Bartholow, Attorneys and Solicitors. A.

L. Ely, of Counsel.

{fol. 32] Ins Unrrep Statzs Disraict Court

[Title omitted ]

_ Onrpg on Morton vor Pagitoamary Issunocriox

Upon motion by the plaintiff in this proceeding, it is

hereby Ordered:

1. That the accompanying Motion for Preliminary In-

junction in this case be set for hearing at 12 o’clock on

February 13th, 1935, at a term of this court to be held in

the U. 8. Court House and Post Office Building in New

Haven, Connecticut.

2. That the service of this order upon defendants shall

be made on or before January 25, 1935.

3. That defendants shall serve upon plaintiff’ 8 counsel

any papers which defendants desire to use in opposition

to this motion on or before February 4th, 1935; and that

plaintiff shall serve upon defendants any reply papers

en ee

Carroll C. Hicks, U. 8. District Judge.

New Haven, Conn., January 23, 19385.

[fol. 33] ‘Rervzy on Sznvice or Warr

ing a true and- correct copy thereof with Gertrude. Barbor

invchange of office by request of L. C. Hall, at Wall gford,

Conn., in said District on the 25th day of January, A. D..

Jacob D. shia ec: 8. Marshal, by Joseph M.'Park,

1935.

[fol. 34] Ix Untrep States Dwraicr Court |

[Title omitted]

Derzwpant’s Jorusper or Iesus

Come now defendants above named, by their solicitor

and counsel, Raymond Ives Blakeslee, of Los Angeles, Cali-

fornia, and with respect to all and singular showings and ‘

papers filed by plaintiff on his motion for preliminary in-

junction, and order thereon, herein, including affidavit of

J. L. Taggart, and with respect to each part and the whole

thereof, traverses and denies same, in any and all respects,

save and except, only, with respect to the decision of the

Supreme Court of the United States heretofore entered

in the cause of Waxham v. Smith, et al., but denies that

the same has controlling effect upon this Court pending

the determination. of the Petition for Rehearing to the |

Supreme Court now pending in said Waxham case, and

See enn ne, MiSmane orate: Nims Simm: eran

soever, or could have, with respect to any incubator or

method of using same of defendants not ‘Gatore the Court

in said Smith, et al. v. Waxham cause. ;

fol. 35 will also

f F Defendants rely upon the md ton eed

td other showing snd authoritise cited. }

bbe

_Datid, Los. Angeles, California, February 13th, 1986. :

+ agen Ives Blakeslee, Solicitor & Counsel, for

Approved as to form. A. L. Ely, Solicitor for

B. M. Kent, Solicitor for Defendants.

Clerk's certificate to foregoing paper omitted in printing.

{fol. 38] In Umrrap Srates Dusraicr Cover

[Title omitted]

Insuxcrion

to me in the Unitéd

of Connecticut that

intiff, Samuel B. Smith, of

000.00), the bond to be approved by the Clerk of the Court

and by a surety company qualified and doing business in the

State of Connecticut, conditioned upon the full payment by

defendants of any damages and costs which may be ad-

judged against the -defendants by reason of the infringe-

ment of plaintiff’s patent by defendants in the use of any

infringing device from January 23, 1935, to April 16, 1935.

[fol.40] Witness, The Honorable Carroll C. Hincks, Judge

of the United States District Court for the District of

Connecticut this 28th day of February, 1935, in the one

hundred fifty-ninth year of the independence of the United

States.

C. E. Pickett, United States District Court.

A true copy. Attest: C. E. Pickett, Clerk. (Seal.)

I~ Unrrep Srares Disraicr Court

[Title omitted]

Morton ror Leave To AMEND ANSWER

Now come the Defendants, by their attorneys, Arthur E.

Paige-and Frank E. Paige, and submit that the Defendants

use incubating. equipment purchased.from Robbins Incu-

bator Company of 1523 Stout Street, Denver, Colorado,

[fol. 41] which manufactured it. That the manufacturer

agreed to adequately defend said Defendants against any

litigation for infringement of Letters Patent based upon

the possession and use of said equipment by said Defend-

ants'and warranted to save said Defendants harmless from

any such litigation.

That pursuant to said warranty, said mannfacturer em-

ployed R. I. Blakeslee and B. M. Kent to enter an appear-

ance for Defendants in the above entitled case and to pre-

sent an adequate defense in their behalf.

That, Pere ssag that the defense which has been 80 far

?

be

27

Defendants by Messrs. Blakeslee and Kent is in fact a

garbled copy of an Answer prepared and filed by said

Blakeslee in the case of Samuel B. Smith v. Fontana Farms

Company, pending as Equity No. 244M in the United

States District Court for the Southern District of Cali-

fornia, Central Division. That, consequently, the Answer

- on behalf of these Defendants is extensively erroneous in

its reference to these individual - defendants as ‘‘it’’

throughout the entire Answer and in the denial in para-

graph’ XI ‘‘that defendant, prior to or within six years of

the filing of the bill of complaint.or at any time or in any

manner, was in possession of or was using in the hatch-

ing of eggs, at a place of business in Fontana, California’.

{fel 42] These Defendants are not charged in Plaintiffs’

Bill herein with any use in Fontana, California.

Therefore, and in view of the additional matter pleaded

by Plaintiff re his Motion for Preliminary Injunction, these

Defendants move for leave of the Court or Judge to amend

their Answer to the form appended hereto.

Arthur E. Paige, Frank E. Paige, Attorneys for

Defendants, 2312 Spruce Street.

Philadelphia, Pa., May 3rd, 1935.

AEP/CER.

Ins Unrrep Srares Disraior Court

[Title omitted ]

Amenpsep AnswsR

Defendants, without waiving any bi ht which may be

based upon any imperfection in Plaintiff’s Bill, for answer

thereto say:

[fol. 43] I. Defendants admit that the Plaintiff is a citi-

zen of the United States and a resident of Cleveland, Ohio.

I. Defendants admit that their residence and place. of

business.is at Wallingford, Connections te ae

Seer eran ene 0k bas enenitted. any ot 084 n

mont thatt-or-slacwhere.

28

ITI. Defendants admit that if this Court has jurisdiction

in this case it is because it is a suit in equity alleged to arise

under and be based upon the patent laws of the United

States.

IV. Defendants deny all of the allegations of paragraph

IV of Plaintiff’s Bill. .

V. Defendants admit that on October 26, 1916, the Plain-

tiff filed in the United States Patent Office an application

for Letters Patent of the United States for an Improvement

in Incubators.

VI. Defendants admit that pursuant to said application

Letters Patent of the United States No. 1,262,860 was

granted April 16, 1918, to Samuel B. Smith, as assignor to

The Buckeye Incubator Company, a corporation of Ohio, but

deny all of the other allegations of paragraph VI of Plain-

tiff’s Bill.

Vil. Defendants deny all of the allegations of paragraph

VU of Plaintiff’s Bill.

VIII. Defendants deny that Plaintiff or his alleged pre-

decessor entitled The Buckeye Incubator Company has been

[fol. 44] at Sll times the sole and exclusive owner of said

patent. ,

IX. Defendants deny all of the allegations of paragraph

IX of Plaintiff’s Bill. On the contrary, Defendants allege

that incubators manufactured and used by the Plaintiff in

accordance with the invention of said Letters Patent have

not only proven to be inferior to other incubators but de-

structive of life in a. large percentage of the eggs incubated

therein.

X. Referring to paragraph X of Plaintiff’s Bill, Defend-

ants admit that the patent in suit has been adjudicated in

& large number of suits but deny that it has been unani-

pero held valid in such suits. On the contrary, Defend-

ante allege that in the case of The Buckeye Incubator Com-

Samuel B. Smith v. William F. Hillpot, reported

said patent was held to be not infringed in many of said

suits.

XI. Defendants admit all of the allegations of paragraph ©

XI of Plaintiff’s Bill.

XII. Defendants deny all of the allegations of paragraph

XII of Plaintiff’s Bill. On the contrary, Defendants allege

that the method of hatching employed by them is essentially

different from that defined in claim 1 of said patent in suit

both in the several steps therein defined and in the condi-

tions under which said steps are effected, and in the result

thereof, and that the incubator structures they employ are

(fol. 45] essentially different from any structure disclosed

in said Letters Patent in suit. That the incubators used by

Defendants are constructed and arranged im accordance

with the disclosures of Letters Patent of the United States

Reissue No. 18,984 dated October 31, 1933, granted to John

L. Robbins of Edgewater, Colorado, for Incubator, upon

surrender of original Letters Patent No. 1,728,980 granted

September 24, 1929, to him.

XIII. Referring to paragraph XIII of Plaintiff’s Bill,

Defendants admit that they were duly notified in writing of

the patent in suit and of their alleged infringement thereof,

but deny the other allegations of said paragraph.

XIV. Defendants deny all of the allegations of paragraph

XIV of Plaintiff’s Bill and particularly that they or either

of them have realized any profits or gains in connection

with any act of infringement complained of in Plaintiff’s

Bill, and deny that Plaintiff has any right to the suniaped

contemplated in said paragraph.

\_XV. Defendants aver that the Plaintiff, Samuel B. Smith

named in the patent in suit, was not the first or original

. inventor of anything disclosed in said Letters Patent No.

1,262,860 in suit that was new or useful or that was not

known or used or patented or described in printed publica-

tions before his alleged invention or discovery thereof, and

that the subject matter of said patent is anticipated by and

involves no invention over the prior state of the art as dis-

closed by the following Letters Patent and publications:

30

[fol. 46] Letters Patent of the United States

Number Date Name

3,019 Mar. 30, 1843 N. E. Guerin

120,253 Oct. 24, 1871 H. Endemann

152,644 June 30, 1874 E. A. andC. W. Jones

193,616 Jnly 31, 1877 E.S. Renwick

217,148 July 1, 1879 E. 8. Renwick

240,004 Apr. 12, 1881 F. H. Bate

271,184 Jan. 23, 1883 H. Altenbrand

272,744 Feb. 20, 1883 A. H. Morgan

280,490 July 3, 1883 C. Lumpp

286,756 Oct. 16, 1883 C. F. Winkler

297,676 Apr.; 29, 1884 G. Conant

320,463 June 23, 1885 L. Cutting

330,457 Nov. 17, 1885 C. Bassini & A. Heyden

335,961 Feb. 9, 1886 E. 8S. Renwick

344,474 June 29, 1886 J. W. Campbell

360,223 Mar. 29, 1887 E. H. Johnson

410,110 Aug. 27, 1889 J. H. Knowles & J. K. Proctor

426,321 Apr. 22, 1890 J.K. Proctor &J.H. Knowles

432,282 July 15, 1890 J. K. Proctor&J.H. Knowles

456,407 July 21, 1891 F, Frey &T. M. Wayne

Re. 11,460 Dec. 25, 1894 J. K. Proctor ;

535,178 Mar. 5, 1895 G. W. Schwartz, Jr

553,728 Jan. 28, 1896 J. K. Proctor

559,676 May 5, 1896 T. B.C. Christianson

586,068 July 6, 1897 W. P. Jones

591,070 Oct. . 19, 1897 P. H. Morgan

599,145 Feb. 13, 1898 George Kutz

{fol. 47] ;

614,493 Nov. 22, 1898 C. 8. Newsom

691,837 Jan. 28, 1902 V.S. Bell

709,650 Sept. 23, 1902 C. P. Scott

725,079 Apr. 14,1908 O. C. Hawkins

745,458 Dec. 1, 1903 F.C. Perkins

789,719 May 16, 1905 J, M. Day

798,697 ‘Sept. 5, 1905 F.C, Perkins

28,181 Aug. 7, 1906 G. H, Boyd

151 Oct. 2, 1906 O. 8. Newsom

@ Feb. 12, 1907 FM. Potere & H.

885,328 Apr. 28, 1908 E. F. Osborne

: | $1

Letters Patent of the United States—Continued

ii

ly

4, 1915

. 2, 1915

- 16, 1915

. 29, 1915

. 22, 1916

. 21, 1916

Foreign Letters Patent

117,069 (German) Feb. 4, 1901 J. Mann

155,917 (German) Nov. 7, 1901 E. Stulik

[fol. 48] Publications

The publications identified in paragraphs XIX and XX

- of this Answer.

A book’ by Milo M. Hastings (pages 104-105), entitled

“The Dollar Hen’’, published by the Arcadia Press, N. Y.,

1909.. A copy is in the Public Library in New York, N. Y.

An article entitled ‘‘Indoor Chicken Factories’’, pub-

lished in the Boston Sunday Globe, of Boston, Mass., issue .

; 10, 1912. A copy is in the office of the Boston

i

WWE ROPNPONSNNNOO dD

=a

HT ETEETD

OFT St bt © ty

we

E

i

in 1867. A copy is in the Public Library at Minneapolis,

Minn.

An article entitled ‘‘Incubator’’, apearing on pages 1177

and 1178 of Knight’s American Mechanical Dictionary, Vol.

II, published at Boston, Mass., by Houghton, Mifflin & Com-

pany, in 1884.

An article entitled ‘‘Ventilator’’, appearing on pages

2704 and 2705 of Knight’s American Mechanical Diction-

ary, Vol. III, published at Boston, Mass., by Houghton,

. Mifflin & Company, in 1884, and particularly the cut (Fig.

6960) appearing on page 2705, entitled ‘‘Sectiona: View of

the Senate Wing, United States Capitol, showing the Pres-

{fol. 49] sure and Exhaust Ventilating Apparatus’’; and

the description thereof which appears on the said page

directly below said cut.

And other publications, now unknown to these Defend-

ants, but which, when discovered, they pray leave to add

by amendment to this, their Answer in this suit.

XVI. Answering Plaintiff’s additional pleadings pre-

sented on motion for preliminary injunction herein; De-

fendants admit that in the case of Samuel B. Smith, Peti-

tioner, v. E. H. Snow, etc., the Supreme Court of the United

States, in a decision dated January 7, 1935, set forth in

Plaintiff’s Exhibit 2 of record in this case, construed the

patent in suit upon assumptions of what were relevant

scientific facts set forth in said decision and held only claim

1 of said patent valid in view of said assumptions when in-

terpreted tobe limited in the manner set forth in said de-

3s

the Plaintiff in this case), on a Motion for Preliminary

emuilan supported by the same evidence and arguments

adduced on Plaintiff’s motion for preliminary ‘edenaien ie in .

this case, refused to grant such injunction, and his decision

was not reversed by the United States Circuit Cott of

Appeals for the Ninth Circuit, to which an appeal was taken

by the Plaintiff herein.

XVII. Defendants deny all allegations made to this

Court, on behalf of Plaintiff, to the effect that the alleged

invention disclosed in the Smith Patent 1,262,860 in suit is

broadly a method of incubation. On the contrary, each of

the three method claims 1, 2, and 3 of said patent is specif-

ically limited to ‘‘a method of hatching a plurality of eggs’’.

Defendants submit that said ‘‘method of hatching’’ as con-

strued and interpreted by the Supreme Court of the United

States with reference to claim 1 of said patent in the deci-

sions cited on behalf of Plaintiff is certainly limited to the

maintenance of endothermic and exothermic eggs in heat

exchanging relation in the same inclosure and in an atmos-

phere maintained at the same uniform temperature

throughout the entire period of gestation which, with ordi-

nary chicken eggs, is twenty-one days.

XVIII. Defendants deny all allegations made to this

Court, on behalf of Plaintiff, to the effect that Plaintiff’s

Exhibit 13 illustrates relative progressive conditions of in-

[{fol. 51] cubation characteristic of the invention disclosed

in the patent in suit. On the contrary, Defendants allege

that such allegations are grossly misleading, for the reason

that the relative endothermic and exothermic conditions of.

an incubating egg illustrated in said Plaintiff’s Exhibit 13

are impossible to produce or attain under the conditions

of artificial incubation specified in the patent in suit and

to which claims 1, 2, and 3 thereof are certainly limited.

XTX. Defendants allege that each of the claims of the

patent in suit is invalid and void for the reason that the

subject matter thereof was in public commercial use by the |

Plaintiff, Samuel B. Smith, at Attica, Ohio, and at Cleve-

land, Ohio, more than two years before the application for

anid patent ‘was filed in the Patent Office, and. thet euch

3—35

prior public use was within the knowledge of the following

named persons:

Samuel B. Smith, the Plaintiff.

James W. Miller, residing at Bucyrus, Ohio.

Albert H. Wilson, residing at Toledo, Ohio.

Edward H. Uhle, residing at Cleveland, Ohio.

Mr. and Mrs. Garrick, residing at Cleveland, Ohio.

That the construction and arrangement of said incubating

structures used by the Plaintiff Smith at Attica, Ohio, and

at Cleveland, Ohio, to effect the method of hatching eggs

disclosed in said patent in suit and described in the method

claims thereof, are described in an article published in the

newspaper entitled ‘‘Sunday Plain Dealer’’, published at

[fol. 52] Cleveland, Ohio, in ‘the i issue of Sunday, February

23, 1913, entitled ‘‘Mammoth Incubator will turn out 20,000

Chicks per Week’’, and also in an article published in the

‘*Cleveland Leader”, of Cleveland, Ohio, on Sunday, Feb-

ruary 22, 1914, entitled “*Cleveland Boasts Largest Hatch-

ay

xX. Defendants aver that the patent in suit is invalid

and void as to the method claims thereof, for the reason

that the method therein described was put into public use

in the United States more than two years before the appli-

cation for-said patent in suit was filed in the Patent Office,

by Milo M, Hastings, now residing at Tarrytown, N. Y.;

such use having been successfully effected by Milo W. Hast-

ings in incubators designed and built by him or under his

direction on the farm:of Walter B. Davis, at Brooklyn, in

the State of New York, and at Muskogee, in the State of ,

Oklahoma, and at Port O’Connor, in the State of Texas.

That such method of use on the farm of Walter B. Davis

was known to three persons, namely : .

Mite, Santings, reakding st White Plains Road, Tarry-

town,

Walter B. Davis, residing at Jersey City, N. J.

‘Bagar Chambless, residing at 122 E. 34th Street, New

York, N.Y. | z

‘That such method of nse at Muskogee, Oklahoma, was |

known to four persons, namely : ¥

te BORE SRA

Milo M. Heating, residing at White Plains Rd., Tarry-

town, N. Y. +z

'B. T. Powers, residing at Port O’Connor, Texas,

XXI. “Defendants aver that said patent in suit is, as to

the method claims thereof, invalid and void, for the reason

that the Plaintiff, Samuel B. Smith, was not the true, onig-

inal, and first inventor of the method of hatching

closed therein but that, on the contrary, said

“i

Fe

¥.

af

H

-e

ie

Court of Appeals for the Third Cdeastt, and vopetes | in 24

Fed. (2d) 341. That in the prosecution of that appeal, in

order to secure a reversal of the decision of the lower court

holding claims 1 and 2 of said patent in suit invalid and

[fol. 55] void, said Plaintiff Smith acquiesced in the narrow

construction and interpretation of those claims by the U. 8.

Cireuit Court of Appeals in the Third Circuit.

Wherefore, Defendants pray that the Bill of Complaint

may be dismissed with costs allowed to Defendants, and for

such other and further relief as to the Court may seem just

proper.

A. B. Halil and L. (. Hall, d. b. a. Hall Brothers, by

Arthur E. Paige, Frank E. Paige, Their Attorneys,

2312 Spruce Strept.

Philadelphia, Pa., May 3rd, 1935.

AEP/OBL

{fel. 56] Is Usrren Srares Deraicr Cover

{Title omitted]

Slee Vepatinn isn: 06 Matnanive Geegieeneso2 E\vipence

It is ‘heteby stipulated by and between Counsel for the

parties that the annexed ‘‘Statement of Testi-

ey Benbaey 75(b)*’ be substituted for the ‘Statement

B

2

¢

y”

st

{fol 57) In Uperm> Stare Dsrssor Cover san rate Dernisor

or ComNECTIOUT :

In Equity. No. 2369

Samuz. B. Sarra, Plaintiff,

v.

A. B. Haut and L. C. Ha, d b. a. Hatt Baorusns,

Defendants

Narriuzive Statement of Evidence

The following is Defendants-Appellants’ condensed state-

ment in narrative form of the testimony introduced upon

the trial made in pursuance of Equity Rule 75(b) and lodged

in the Clerk’s office for the examination of Plaintiff as pro-

vided by said Rule.

An opening statement was made by Counsel for Plaintiff,

said Counsel stating that Plaintiff would rely upon claim 1

of the Letters Patent in suit. Plaintiff then offered the fol-

“lowing echibits, all of which were admitted and received

in evidence :

Orrers 1x Evipence

Plaintiff’s Exhibits Nos. 1-17 inclusive, exhibits which are

attached to affidavits of Joseph I Taggart. As Plaintiff’s

Exhibit No. 18 the testimony on the Motion for Preliminary

Injanction. As Plaintiff’s Exhibit No. 19, the first affidavit

of Joseph L. Taggart dated January 19, 1935. As Plaintiff’s,

Exhibit No. 20, the second affidavit of Joseph L Taggart

dated February 20, 1935. As Plaintiff’s Exhibit No. 21, a

re eee Te (0) Se wre bn Sia cage of

Sa acre cease, wich regard fo tap

_ se; (b) title to patent in suit as alleged i

i sa waphgh gg yt Aor ah

38

Aumow B. Hatt, called as an adverse witness on behalf

of Plaintiff, being first duly sworn, testified as follows:

Direct Examination.

By Mr. Ely:

I am one of the Defendants in this case and reside in

Wallingford, Connecticut, where, with my brother L. C.

Hall, we operate a commercial hatchery under the firm

name of Hall Brothers. I have been engaged in the com-

mercial hatching of eggs for about 25 years and have always

been located in Wallingford. I attended the International

Baby Chick Convention at Minneapolis in 1929, and it was

at the convention or right after the convention that I pur-

chased my first Robbins incubator. Prior to the purchase

of the first Robbins 23 in 1929, we used the Hall Mammoth

Incubator which is known to the trade as a sectional hot

water type incubator. We have no connection with the

company manufacturing the Hall incubator. It was one of

the standard incubators on the market at the time. We had

an entire machine consisting of a number of small sections.

[fol. 59] In each section the eggs were set in one layer at

one time, and the machine was known as a still air machine

as it had no means of propelling a current of air over the

eggs. That was the best incubator I knew about on the

market of that type.

I believe it was in September, 1929, that we purchased

our first Robbins machine on a trial basis to determine

whether it had some advantages over the old sectional type,

and ran the original 23 during the balance of the 1929 sea-

son, testing it in comparison with the sectional type incuba-

tor we had used before. We were contemplating replacing

our old sectional types with a more modern draft type in-

cubator. We merely operated the machine in a commercial

way. .As a result of such trial, we purchased additional

Robbins incubators. The Robbins 23 incubator which we

received in 1929 had a single chamber in which the eggs

were carried through the full 21 days, and said incubator

was provided with a large drum at ene side in which the.

eggs were set i the first 18 days of the hatching period.

Lge the alg gy pears to be shown in the photograph

Exhibit No. 11, our 23 incubator having a cabi-

net net subuianially as shown in that photograph and having

a 8

on the right hand side a large tilting drum with a

racks in it. Plaintiff’s Exhibit No. 9.appears to

drum filled with trays, and I do not see any difference

tween the drum shown in that picture and the one

in our Robbins 23. Plaintiff’s Exhibit No. 10

drum in the opposite tilted position. We set eggs

drum at intervals of three and four days a part, in

{fol. 60] words, we set partial capacity of that drum

a week, and.after each batch of eggs had

drum for 18 days they were taken over and :

stationary hatching trays at the left. At the rear

chamber there were located two large fans which are sh

in Exhibits Nos. 11 and 12. On the rear wall, as shown in

i

FEEFE

fF

air through the openings. The incubator had adjustable

slides on the back so that the amount of fresh air taken

in could be varied. The incubator also had small openings

on the top for the discharge of foul air but said foul air

openings were not used always.

L believe that the letter appearing on ‘Robbins Catalog

C is a true copy of a letter dated May 28, 1930, written and

mo by me and addressed to The Robbins Incubator Com-

(A photostatic copy of said letter was offered as

. Plaiatiff’ s Exhibit No. 23.) By May, 1930, we had pur-

chased and installed seven Robbins No. 23 incubators i im our

plant, and had purchased and installed three No. 17’s. The

#23 contains approximately 23,000 eggs and the #17 con-

tains something over 17,000 eggs. There was no difference,

except size, between the #23’s and the #17’s. The #17

had the same tilting drum on the right and hatching trays

on the left, fans on the back wall and ventilation openings.

We set eggs in the same staged incubation in the No. 17’s

as was our practice in the No. 23’s.

The letter reproduced on page 63 of Robbins Catalog D

is a true reproduction. of my letter dated June 15, 1931, 2 and

the facts stated therein are true. (Plaintiff offered. the

(fol. 61] reproduced copy of said letter as Plaintiff's Ex-

hibit No, 24.) We added two No. 62 multi-hatchers, each

No, 62 multi-hatcher having the capacity of two No. 10

separate hatchers. After the purchase of the No. 62 multi-

hatchers, we left vacant the space occupied by the hatching

trays in the old 23’s and used the old 23’s for incubation .

40

only and did our hatching in the No. 62 multi-hatchers. In

June, 1931, we had 350,000 egg capacity. In operating these

hatchers we did not change the system of setting or make

- any other changes in the old 23’s. Instead of hatching the

eggs in the racks to the left we simply put them in our new

#10 hatchers. We changed gradually over to the Robbins

incubators. :

I do not recall when we stopped using our old sectional

machines as we tapered off from the use of the sectional

machines as we went over into the Robbins. At the end of

the 1932 hatching season I wrote another letter to Robbins

Incubator Company and Piaintiff’s Exhibit No. 25 appears

to be a true copy of that letter. From the letter dated May

26, 1932, it would appear that we had discontinued our old

hot ‘water equipment by that date; although I do not recall

when we dismantled the last of the old sectional equipment.

In other words, we destroyed and scrapped it. We aver-

aged from 10 to 15% greater hatches of the eggs set by

using Robbins machines instead of the old ‘sectional type.

I mean, assuming we had a 60% hatch in the old sectional

type, we got a 70 or 75% hatch in the Robbins equipment.

That is, 70 to 75% of all eggs set, is what we were getting

in our Robbins equipment. The copy of the letter dated

October 6, 1933, appears to be-a true copy of a letter which

[fol. 62] I wrote to Robbins Incubator Company on that

date and the facts stated therein are true. (A photostatic

copy of said letter dated October 6, 1933, was offered as

Plaintiff’s Exhibit No. 26.) We scrapped our sectional ma-

ehines prior to October 26, 1933.

During the year 1933, we added 250,000 egg capacity to

‘our plant: We added four Model 62’s consisting of two

incubators of 26,000 egg capacity each. With each of the

two 26,000 egg capacity incubators there was what is known

asa No. 10 hatcher. The hatches were increased somewhere

between 10 and 20%, probably 10%, by use of the Robbins

machines, and our total capacity was approximately 650,000

after ~ ro of the four Model 62 machines.

The letter reproduced on page 3 of a folder known as

‘‘Robbins News’’ of September, ier is a correct repro-

duction of a letter I wrote on August 25, 1934, and the facts

stated therein are trne.. The check reproduced above the

letter is a of our cheek for 5,000.00

to The Robbins | tor Company. (The folder entitled

41

‘‘Robbins News’’ was offered as Piaintiff’s Exhibit No.

27. |

T1004, we ndéed a standard Robhies Model: Ne. iden:

sisting of four 26-I incubators and two of the No. 10 hateh-

ers. We increased our egg capacity to 750,000. I do not

know whether this purchase was made before or after the

decision of the Circuit Court of Appeals for the Ninth Cir-

cuit, and the purchase was not made with the object of help-

ing out Robbins. When we purchased our first Robbins in

1929, I knew that the Robbins machine was a comparatively

new machine on the market and that the Smith machine had

[fol. 63] been on the market for a number of years before

Robbins I saw the Robbins machines at the Minneapolis

Convention and I knew the Smiths were on display there.

I knew the Smith was on the market for a number.of years

before we bought the Robbins., We had an agency and

sold a number of Robbins machines in this territory, for

which sales we collected a commission.

I sponsored, but was not the author of, an article en-

titled ‘‘Ten Years Growth of a Connecticut Hatchery’’ in

an issue of the New England Poultryman dated April 15,

1935, and i believe that the statements contained in the

article about production are substantially true. (When

pages 25, 118 and 119 of said New England Poultryman

dated April 15, 1935, were offered in evidence by Plaintiff,

they were objected to by Counsel for Defendants on the

ground that they had no bearing upon the question of in-

fringement. ‘he objection was sustained by the Court and

an exception noted’ Said exhibit was marked Plaintiff’s

Exhibit No. 28 for identification. )

We received instruction manuals of Robbins electrical in-

‘cubators from time to time shortly after the separate hatch-

ers were put on the market, and said manuals contained a

typewritten insert as follows: ‘‘We, therefore, most ur-

gently recommend that from now on you transfer the eggs

in the Robbins incubator at the end of the 19th day. We

realize it might be difficult for some of you to break away

from the old established method of testing eggs on the 18th

day, but we are sure you will find our recommendations

- worth while.’’ Hall Brothers, in operating the so-called

separate hatchers, do not carry their eggs in the incubating

(fol. 64) drums until the 19th or 20th day, but it is our prat-

tise to remove them at the end of the 18th day,

42

I am not familiar with the publication entitled ‘‘Smith’s

Chickagrams’’ shown me, nor do we receive it regularly

from the Smith Incubator Company, nor do I recall Smith

having sent me a copy of this particular issue containing

a notice of the Robbins case in California. (Said publica-

tion ‘‘Smith’s Chic-agrams’’ dated August, 1930; was

marked Plaintiff’s Exhibit No. 29 for identification. )

We received a letter dated August 10, 1932, afid a letter

dated April 11, 1934 (said letters and registry receipts

being respectively offered in evidence as Plaintiff’s Ex-

hibits Nos. 30 and 31.)

An organization know as the Hatcherymen’s National De-

fense League was organized as a sincere desire on the part

of Robbins users to protect themselves against the apparent

racketeering of Samuel B. Smith. The organization was —

formed of a number of Robbins users, and I was Treasurer

of that organization. The purpose of the organization was

to collect funds to combat litigation on the Smith patent

against Robbins users. Funds were received by the Hatch-

erymen’s National Defense League. The Hatcherymen’s

National Defense League is not contributing to the defense

of this case nor are any of the funds of the Hatcherymen’s

National Defense League being used to defend this case.

Mr. Guy A. Leader, of York, Pennsylvania, was President

of the Hatcherymen’s National Defense League, and K. I.

Miller, of Lancaster, Missouri, was Vice-President.

(The witness Hall was not cross examined regarding that

testimony.)

[fol.65] Josepx 2 TaccartT, called as a witness on behalf

of Plaintiff, being first duly sworn, testified as follows:

Direct Examination.

By Mr. Ely:

I am 47 years of age and reside at Cleveland, Ohio. I

am Assistant General Manager of the Smith Incubator |

Company, in charge of research and experiments, and the

installation and operation of incubators in the field. I

Seo!

have oversight of this patent litigation and have testified =

as an expert with respect to the patent in suit in a number

of cases. I was present and testified as an expert in con- ©

o

rE HEE

fii $i

to this patent the incubators that were thorn

a single layer incubator as the eggs were arranged at one

level and set at one time. In the patent, the eggs are

a number of levels and are set. at consecutive times, 80

that when filled, the incubator will contain eggs in a num-

ber of different stages of incubation. That is the first fea-

ture of the patent. The second feature is that a blast of

[fol. 66] air was applied to the eggs so that there are defi-

nite air currents through the machine of sufficient

current of air strong enough to all pa

to equalize the temperature, those are re

are in this patent.

I will describe, with reference to Plaintiff's ’s Exhibit No.

Susan Whar ae wr b frat tecaa ios aaa

of incubation. When an egg is first

ic deve ey. Daten tae easel @ teal ties 1 aanae

as low as 98. After about the fourth or fifth day the embryo

within the egg is developing heat in an increasing quantity

each day up to the seventeenth day. This animal heat _

which is developing becomes great enough to overcome the _

ee ee a

\

—

day the egg is giving off heat to the incubator. It is gener-

ating heat in excess of what is being absorbed so that after ©

the tenth or eleventh day the egg becomes exothermic while *

prior to that time it is endothermic.

The area colored red in Plaintiff’s Exhibit 13 represents

: [fol. 67] excess units of heat generated by the egg that ©

must be given off by the egg to bring it down to incubating ~

temperature. The area colored blue represents units of -

heat that must be absorbed by the egg to keep it at incu-

bating temperature. The red area is represented by two |

different shades, the heavier portions representing the units

of heat given off during the period up to the eighteenth day.

The heat generated from the eleventh to the eighteenth

day is over twice the heat unite that must be absorbed dur-

ing the first ten or eleven days.

‘Robbins Model Na. 26 differs from Robbins Model 23

in that the horizontal hatching trays at the end of the ma-

chine have been removed and the turning rack has been

enlarged so that it takes up the entire space. The first

Model 26s that were put on the market differed from the

Model 23s only in4hat the turning rack is longer. There -

was no difference in the direction of the current or the air

movement in the Model 25-I over Model 23. In both these

incubators the air moves outward from the fans circumfer-

entially until it strikes the wall ceiling, and floor. Then it

goes to the front of the incubator and is thrown back to

the egg trays and to the fans again, moving in continuous

cycles. : '

On the eighteenth day the embryo has been developed to

a point where it is no longer necessary to turn the eggs,

and-it is about ready to pip. It can move about in the shell -

on its own accord and has passed the stage where it needs |

careful attention. It can stand more grief from that period

on than it could up to that period.

Plaintiff’s Exhibits 4, 5 and 6 correctly show the con- |

struction of Robbins 26-I incubators and were made to -

(fol. 68] scale from a Model 26-I.. The speed of rotation

of the fan is snbstantially the same as in Model 23 and

the location of the intake openings are also substantially ~

the same. One-sizth of the capacity of the drum is set at ~

about three to four days’ intervals. <

Plaintiff’s Exhibit 29 for identification, ‘‘Smith’s Chicka- 3

grams’’ dated August, 1930, is a hous? organ that was put |

Waxham case. After the District Court affirmed

ision i e Waxham case we sent j

:

since then and have been marked with a notice of the pat-

ent. I produce a patent plate that has been placed upon

the machines since 1925 and bears the notice ‘‘This. incu-

[fol. 69] bator ts manufactured under United States Pat-

ents Nos. 1,262,860, April 16, 1918, and 1,543,130—June 23,

1925’’. This plate was on the commercial machines manu-

factured by Smith in 1929. (Said plate was offered in evi-

dence as Plaintiff’s Exhibit 32.)

The propulsion of a current of air in both the Smith and

Robbins incubators keeps the temperature of the air sub-

stantially uniform. It will pick up heat units from the

eggs that are warmer than the air and will give up heat

units to the eggs that are cooler than the air. In the Rob-

‘bins incubators Models 17, 23, 26-1, and 1254 the air passes

over eggs which are in the exothermic and endothermic con-

fiition and it does not make any difference whether or not

eggs are taken ont after they have reached the nineteenth

day. The capacity of: Model 125 is 125,440 eggs including

the hatching unit ‘of approximately 18,000 egg capacity.

Model 125 consists of 4-No. 26-Is and two No. H-10e. It

— six settings. About 18,000 eggs are set at one

Cross-examination. : 3

By Mr. Paige: g

“When I testified about ‘‘incubating temperatures’’ on @

direct examination, with reference to the y soecarl Plain- %

tiff’s Exhibit No. 13, I meant a temperature of 99° F. My =

experience has been that it is 99° F. With the atmosphere 4

in the inclosure of the incubator at 99° F., the eggs do

not get up to that temperature until about the tenth or a

eleventh day. It will vary with different breeds and may ~

vary as much as twenty-four hours, depending upon the ©

condition of the eggs at the time they are set and the ©

breed. The temperature of the ggs on the eighteenth day ~

- {fol. 70] is approximately 100° %., although it may vary, —

depending upon the conditions, the strength of the air cur- ©

rent, the amount of evaporation, and other things of that |

kind. Depending upon the type of incubator, the embryo -

within the egg will attain a maximum temperature as high ~

as: 104° F., some of them 108° F. I have seen them higher

than that. I have seen them as high as 105° F. The state-

ment in line 40 on page 1 of the Smith patent in suit ‘‘The

temperature of circulating air should be such as will pre-

vent the eggs in the early stage of incubation from falling

below 100 degrees,’’ refers to the temperature of the eggs.

The temperature of the air in tlie incubator would have

to be higher than 99° F. to attain that condition. I do not .

think I recently testified before Judge Geiger in Milwaukee —

that it would have to be 102° F. I think my testimony there

was to this extent: That apparently nobody recognized the ©

fact that the temperature of the eggs went down as low as |

it does at the early stages of incubation because I cannot ©

find any literature on that at all. The temperature of the |

incubators at the date of this patent was considered 100° —

F. As we have increased the humidity, changed the humid- +

ity, we have also changed the tempergture so that at the ~

present time in the Smith we reco: a temperature of —

99° F. in the air and a wet bulb

85° to 90° F. depending upon the time, and those things |

make it possible to operate at lower temperatures than we ©

formerly thought was possible. In accordance with my 4

tests, experiments, and long rience, it would be neces- 34

sary to maintain the air in a Smith incubator at at least é

(fol. 71] 100-44° F., perhaps 100-%° F. to maintain the @

that varies from ~

what was the effect of main

eee ee hcbr that he eae

KF, as desoribed in the patent, dam

your inquiry as to whether or not I

the present method of hatching which is

the trade as the Smith patent. In 1928 we discovered. that

it was possible to maintain the humidity very much higher

. than we had been maintaining it in the past, and with that —

humidity we had to be careful to keep the temperature at

99° F. We had recommended it before that, as much as

four or five years, but the success was not proved to its -

present state until after we increased the humidity. The

humidity was discovered about ten years after the Smith

pe issued. The method of hatching now recommended

to Smith users is different from that shown in the Smith

patent in that respect. With our present knowledge and

{fol. 72] present humidity, if you subjected eggs to such

a temperature of air that they do not fall below 100° F. in

the early stage or first ten days, it would be fatal to

tically all of the eggs. That was my discovery. Tn the Wax.

ham case I testified that ‘‘Even with the proper humidity,

.. $9-24°, it-is too hot for a Smith incubator.’’ The scientific

facts were not known at the time the Smith patent issued

and it was then generally supposed that the temperataré of

the air at 100° F. would keep the eggs at 100° F. We have

gs discoveries since that time to show. that the forego-

a

mended a temperature of 99, and in the earlier stages it

was hard to hold it. down. In the early incubators it %

es ie a sie ae It was |

Var Sew _ S ‘$

‘By Mr. Ely:

There is a definite relationship | Bétween humidity and -

temperature. As you increase the humidity you can lower

the temperature. The increase of the humidity has been ©

an improvement since the issuance of the Smith patent,

and if you had less humidity your temperature would be

higher. In our old practice we had a lower humidity and

a slightly higher temperature, In smaller machines it would

(fol. 73] perhaps be possible with a lower humidity to oper-

ate properly keeping the eggs at a temperature between

100° and 105° F., but I dé not think it would be possible with

as large a machine as we use. The temperature at 100° and

105° F., referred to in the Smith patent, is the temperature

of the egg, of the embryo. This matter of increasing the

humidity came along about 1928, and the Smith incubators

had been in successful operation—as ‘‘Smith Incubators’’

—for approximately five years prior to that time. Buckeye

incubators, which are licensed under the Smith patent, had

been in successful operation for ten or eleven years before

this improvement of increasing the humidity. Buckeye

started manufacturing incubators under the Smith patent

in 1917 and Smith started on the market with his incu-

bators in the Summer or Fall of 1922. The discovery or

improvement by increasing the humidity did not come along ©

until about 1998. The been a considerable question —

on that and the exact unt did not work out until about ;

1928.

‘*By the Court:

Q. I thonght you said on cross examination that.although »

Buckeye operated it at.an egg temperature of 100° as early |

as 1917 or 1918, that Smith advised a 99° temperature a8

early as 19231”’ ‘

It was found that With more egg capacity and perhaps.

a little different air movement, we had to go lower. )

not to worry about-it if it did not go over a hundred.

When we put-out a relative humidity with a higher point,

then we had to give them definite instructions not to let

it go above 99%4° F. They set it at 99° and kept it there

or as negr as they could.

Recross-examination.

By Mr. Paige:

I did not testify before Judge Geiger to the effect that

you had to increase the humidity when you raised the tem-

perature and that it required more humidity in the atmos-

phere at 100° F. than it did at 99° F. I am certain that you

increase the humidity as yon lower the temperature. If you

endeavor to carry out the instructions of the Smith patent by

having the temperature in the incubator high enough, in ex-

{fol. 75} cess of 100° F. to insure that the eggs in the early

stage would not fall below that temperature, the destructive

effect of that high temperature upon the eggs would not be

compensated for by increasing the humidity of that atmos-

phere at that high temperature. There would not be any way

of helping that condition and you are dealing with a fact

that wae not known in 1917. 7

4—35

Redirect examination.

By Mr. Ely: -< |

‘This matter of the temperature of the eggs and so forth |

which has just been discussed was raised in practically -

all of the other cases, including the Waxham and’ Snow

cases.

Derenpants’ Proors ‘

An opening statement was made by Counsel for Defend-

ants, said Counsel stating that evidence would be adduced

in this case which had not been before or considered by the

Supreme Court.

Miro Mrzton Hastines, called as a witness on behalf of

Defendants, being first duly aworn, testified as follows :

Direct examination.

By Mr. Paige:

Defendants’ Counsel asked the witness the following

question :

‘*Q. Mr. Hastings, on May 3rd, 1911, an application,

Serial No, 624,885, was filed in the United States Patent

{fol. 76] Office for an Improvement .in hatchery for the

eggs of domestic fowl. That record includes these state-

ments:

‘My invention is that of a hatchery in which I secure bet-

ter ventilation and a more uniform temperature through-

out the hatching chamber by substituting a forced draft for

gravity drafts.

‘Ventilation I secure throngh cracks around the door of»

the hatching chamber or other small openings in any part

of the air circuit. The air being constantly in motion re- |

quires less rejuvenation than dead air. :

‘The problem has been to enable the incubating opera-}

“That application was signed merely, ‘Milo Hastings’.

Do you who that filo Hastings was?”’

(fol. 77] (The question was objected to on the ground that

the best evidence should be the introduction of the applica-

. Cooley, was offered in evidence as De-

t F. The offer was objected to by Counsel

on the ground that its admission in evidence

olly immaterial to all issues of the case and on the

ground that an abandoned application is not an anticipa-

or of the prior art. In answer to the Court’s

; *s Counsel informed the Court that no ob-

not certified. Counsel for Defendants informed the

t Defendants’ Exhibit F was not offered as an

‘anticipation or part of the prior art, but as documentary

‘cn, ending to corroborate the testimony of Defend-

‘ffel. 78) ante’ «

ae RO SR, Prey

52

a da :

Before filing this application I put into practical use in

the

Brooklyn, New York, the method of hatching which is de-

scribed in that application and in the papers on record con- }

cerning it. @his was done at Mr. Davis’ poultry farm,

Kings Highway, Brooklya, New York. I built, an incubator

for Mr. Davis and was paid for building it and operating it ©

money which I received from Mr. Dayis ©

included the-sale to him of the right to use that method of ©

for a time. The

hatching. After I had built the incubator for him I-oper-

ated that hatchery for him. This was about in the Spring

of 1911. The building was in the\Wintér of 1911 probably

mostly in the month o ebruary. We started hatching in

March and I left there sometime in May and the incubator .

was still in operation at*the time I left. The method of -

hatching that employed in the hatchery that I directed

for Mr. and concerning which I licensed him to use,

consisted of placing the eggs in superimposed layers, many

trays one above the other, circulating the air through that

chamber by means of a fan, and operating to place the eggs

in the chamber at frequent.intervals. I would say the aver- |

age interval was twice a week, and continuing in the same *

chamber to incubate the eggs in the various stages of incu-

bation and to hatch them in the same chamber. The method

of hatching was a success, which we demonstrated, by hatch-

ing in comparative tests with Cyphers’ machine, which was |

then considered ‘as the standard make. The hatches were .

equally as 8 good i in the new style machine as in the Cyphers’

(fol. 79] machine manufactured by The Cyphers Incubator

Company, a loading make of that machine.

About two months’ continuous hatching was checked

under my direction in this hatchery directed for Mr. Davis,

with eggs put in as we received them, averaging about twice

a week. I do not remember the exact number of hatches,

but it would amount to a three weeks’ period. Mr. Davis -

had a farm of his own and we were also buying eggs and it © ‘:

‘was continuous. Mr. Davis had whieh hens on that ponltry @

es

:

abont 59%. I hg rte be sure of that

comparative test by dividing 1 lot of

in hers machine and some in the

would not be sure of it exactly but my

machines hatched about equally well

was about 59%. .

- I left the employ of Mr: Davis in the latter part

.which was after I had filed this applicatio& for paten

the incubator that I built for Mr. Davis there was 9 fan

which forcible circulation of air was effected. The air was

artificially heated by a gas heater and the temperature con-

trolled by both therznostatic and gas pressure regulators.

*‘Q. Of course, you have to have a door to get in and out

(fol. 80] of that incubator. Do you recall what was the

construction of that door?

“A. Ido.

“Q. Did-it permit the ingress of a restrictéd amount of

air or not?

“*A. Tt did. ,

*Q.. Did that incubator have any means for letting the

foul air out?

‘tA. It did,

“*Q. Was that a wide opening or a restricted opening ?

‘A. A restricted opening.

‘*Q. I think you have clearly indicated that there’ was

what is known in this art as staged incubation, by saying

that you had the eggs put in there at intervals of twice a

week.

“Mr. Ely: I don’t recall that. Will you ask him the direct

question, please. :

“Q. Did you have staged incubation in that incubator?

“A. We did.”’

We practiced staged incubation in the incubator during

the entire time we were operating it. |

The Edgar Chambless whose name appears asa witness

om my application was a personal friend to I dis-

iosed my invention. He is still alive but I do not know his

dress... It was customary for Mr. Davis to have a good

gil an advertising booklet entitled’ ‘‘Davis Poultry

“which I have before me. The booklet contains a

picture showing a large sign ‘‘Davis Poultry Farm. Fresh

Eggs.’’ The catalog states ‘‘ Visitors Weleome’’. :

I could not say whether the booklet was published during

the time I was there or not- It was in use at that time, the

pictures are all familiar, and I remember seeing that cata-

[fol. 81} log in circulation and given out. The book cor-

rectly illustrates the layout of that Poultry Farm. On the

eighth page of that booklet there is a photographic repro-

duction at the bottom, and the persen at the left is a friend

of mine by the name of Orvis, Editor of ‘‘The Poultf?

Digest’’ which was published in New York. I had prev-

iously explained my méthod of hatching to Mr. Orvis and

he introduced me to Mr. Davis to give ne an opportunity to

contact Mr. Davis and to build an incubator.

(The advertising booklet entitled ‘‘Davis Poultry Farm’’,

copyrighted 1911, was offered in evidence and objected to on

the ground of immateriality. The Court reserved its ruling

and stated that the same ruling should follow that the Court

would make upon the admissibility of the application. Said

advertising booklet was marked Defendants’ Exhibit G for

identification. )

The incubator and the method of hatching that I sold to

Mr. Davis was in use when I left his employ.

Cross-examination.

By Mr. Ely:

is is not my first appearance in these Smith litigations.

in person and testified before his Honor, Judge

I have never known the ont-

fy

:

a

fife

testifying in the case of Smith v. James and Smith v. Simms

that the hatcher was built for 6,000 eggs but that there was

no need to operate at the time because we were not en

(fol. 83] gaged in the hatching business but only running

a private poultry farm. That at no time while I was there

was the hatcher run to capacity and, in fact, it was never

run to more than one-third capacity.

36

ing letter will testify,’’ appearing on page 252 of the record

in the Cooley case. This is a publication which I got out, |

and the statement therein that I had run a hatchery of

16,000 egg capacity during 1910-1911 is an exaggeration +

and was not true. - ;

Mr. Dav¥is had a very large house and part of that house

was used for operations in connection with the poultry *

farm. The incubator was in the cellar of the house shown =

on the fourth page of the booklet and not in any of the =~

[fol. 84] other buildings shown. My incubator was built in =

the same cellar of the same house where Mr. Davis had his

other incubators. Ithink that it is correct that I testified

in the Simms and James cases that I did not operate this

thing as a public use but kept it secret because my appli-

cation for patent had not yet been filed...

In about the year 1917, I went out to Ohio and was em-'.

ployed by a man by the name of Hoppel to build an incn-

bator for him. My answer to your question as to whether ©

or not I recall testifying, “1 tried out a method of hatching

there very much more hke the Smith Buckeye device than .

I had.used in the past’’ on page 121 of the Cooley Record, —

speaking of the Hoppel operations in 1917-18, is that I re- —

member so testifying that the fan was used for the circula- ©

tion of air. I remember testifying in the case of Smith v. ~

James, on- page 113 of the Record, ab follows: :

‘*As a matter of fact, this use at the Davis Hatchery was ©

not a public use, was it, it was kept secret! é

‘*A. It was in the residence of Mr. Davis, in the cellar. ©

09 DPN EG pests 49 od

has not been in existence since about 1912 or 1913.

Redirect examination.

By Mr. Paige: :

I was twenty-seven years.old when my application for

patent was filed. I prepared the application myself and

had had no experience whatever in preparing applications

for patent. |

58

time. I lived in the building to which Mr. Ely referred as,

a house in his cgoss-examination of Mr. Hastings. We had |

room of the House and

how

head of ‘‘The Poultry Digest,’’ introduced Mr. Hastings to

r. Hastings said that he ‘vould build an incubator ~

which would supplant all the.\Cyphers stuff. We had not ©

had very good luck with the Cyphers so we Were very glad -

to try another brand and we did) Mr. Orvis’ picture is ©

shown at page 8 of the booklet entitled ‘‘Davis Poultry ©

Farm.’”’

There were plenty of other visitors to the farm while I: ©

[fol. 87] had it, and it was my practice to extend a welcome ©

te visitors. I absolutely welcomed hundreds of them—

thousands. Although we had there approximately 5,000 ©

hens, we only used a few of our own eggs in the incubators.

I got most of the eggs for the incubators from a Mr. George ©

Howard, af Bound Brook, New Jersey. He shipped them |

to me about twice a week,one or two crates as he may have —

had them. He had a superior brand of eggs. f

Mr. Hastiags built his incubator out of wood and cork.

Various other things were used in the construction, includ-

ing a gas heater, an electric fan, two governors were in-

stalled—I rememeer that thoronghly—one was a linotype —

governor to control the gas. It was a mercury-controlled ©

governor, as used on a linotype casting machine, and when

it got hot enough the heat shut it off automatically. Mr.

Hastings had a thermostatic control also, but I insisted he |

3

4

<

fe

4

2 §

i

2 .

F

EF

B

g

;

i

(fol. 88} together, and in that way we positively

that the temperature was the same throughout

tor. We used’

“Q. You put them in twice a week!

“A. At least.’’

My orders and agreements with Mr. Howard were. that

he was to ship me as many as he could at different times

very fine hens. Some days we would get one crate,

some days we would get two or three crates, and

to do that for ;

January of 1911 he be-

Py

60

Hastings was his own boss, so to speak. I did not overlook

him carefully at all. My principal business was linotypist#

and in my establishment I operated eight linotype machines=- =

day and night and I employed thirty people in 1910, 1911,

1912, and 1913. : :

**Q. Was this Incubator used sunder your direction and’:

this method of hatching under your direction after Mr. }

Hastings left?

‘*A. Oh, yes.’’

We had the incubator in the cellar of the house until

December of 1913 when I abandoned the farm, and I then

removed everything from the cellar. I leased, did not own,

the farm. When other things took up all spare cash and [

lost quite a lot of money in the aviation business I thought ©

I would ¢lose up all outside places and get back to the lino-

type business. I lost all my money in an investment in the

aviation business at that time and as a result I had to dis-

pense with the farm Before we turned back this rented

property to the owner, I completely cleaned out the cellar,

[fol. 90] the incubators in the cellar. My nephew actually

did the physical work. |

Other people besides Mr. Francis Orvis came there and

saw this incubator and the method of hatching while I had

it going. A great many peoplé came down who were my

guests on Sunday. We had quite a party every Sunday.

The number of people would run into many hundreds—per-

haps a couple of thousand. Sometime there would be as

many as 200 guests on.a Sunday. I remember one Sunday

I slaughtered over 200 chickens to feed them. There were

about 78 people at one table alone. We had four dining —

rooms and then we had something over. :

Cross-examination.

By Mr. Ely:

1-ctesiaiiebsaaunitaih tn Mut Seviay th teen dl Salle

v. Cooley, but I do not remember a very great deal of the,

testimony. I never saw my testimony printed or anything ®

and I do not even know the disposition of the case. Mri

Paige did not show me the printed testimony before I v

on the stand today and I did not know it was in print u

vod muadioned ta. Tt was probably in 1926 that T testif

Pi a

e °

in the case but ‘I do not remember. When I cleaned out

the farm I did not destroy the Cyphers incubators but took

them out and carried them off by truck. The Hastings-in-

cubator was a large thing and it had to be destroyed. I do

not recall anything about burning it, and I instructed my

nephew to remove it. I do not remember testifying :

‘Everything was knocked to pieces and put out in the back —

and burned up”’ but I do recall that I itstructed my

{fol. 91] nephew to destroy the incubator and remove*it.

I did not see it burned. I wasn’t there. I insist that I

instructed my nephew to take it out. I don’t rédall that

testimony that you say is there. Maybe I di. In the copy

of my testimony in the Cooley case which you hand me I

see the statement ‘‘Everything was knocked to. pieces and

put out in the back yard and burned up along with a bunch

of other trash.’’

Redirect examination.

By Mr. Paige: |

The Cyphers incubators were 300 egg Sores incubators

and were quite portable, so that you could pick them up and

move them out. The incubator built by Hastings was a

very large affair and we could not take it ont without de-

stroying it.

' Recross-examination.

¢ By Mr. Ely:

I instructed my nephew to remove the stuff from the’

cellar and clean up the cellar generally. I discontinued the

poultry business in 1913 and I do not know if another in-

cubator was ever built lke it as I did not go into any other

plant. + ‘

Isanzt E, Davis, called as a witness on behalf of Defend-

ants, being first duly sworn; testified as follows:

Direct examination. z

By Mr. Paige:

Lam the wife éf Walter B. Davis, and I read the honk

| ER ae Read te which | is entitled cstins Poultry Farm”’

we “

62

[fol. 92] and which is marked for identification as Defend.

ants’ Exhibit G. I know there were a good many copies

made an agreement with Mr. Hastings in the Winter at the

beginning of 1911 about the putting up of an incubator at

the Davis Poultry Farm. I saw the incubator many time

and it was located in the cellar af the farmhouse where

there were other incubators. I know they made tests as t

the comparative merits of the old incubators and the new

incubator but I was not there when they made the tests

Mr. Hastings was in Mr. Davis’ employ in making this im

cubator and supervising its operation less than a year. |

do not remember any mere definite time as I did not pay

much attention. I was a bookkeeper and cashier in Mr,

Davis’ linotype place in New York City and all bills were

paid through me. I remember that monthly paymieng

were made by Mr. Davis to Mr, Hastings. As I recall it,

we paid him a certain amount each month and his living

expenses were allowed, and we paid for all material. The

bills were paid through my office. I think that Mr. Davis

paid Mr. Hastings a bonus when he left, but I have for.

gotten and do not remember. The incubator was used by

Mr. Davis after Mr. Hastings left and was operated by

manager we had down there by the name of Miller. I d

not know how long he ran it after Mr. Hastings left. Is

answer to your inquiry:

#@ ‘‘Q. Do you remember what was the nature, what was

the method of hatching in there; how the eggs were places

in that incubator?

{fol.93] ‘*A. Well, I was in the incubator several ti

They seemed to be in ‘all stages on tiers—shelves.

“*Q. Shelves one above the other?

“Q. eye tyler etary 9 Fehr

‘eA. Yes. ’

‘*Q:. That is what they call in this case staged incubaticog’

About how often were fresh eggs put in that incubator, &

you recall? :

‘‘A. At least twice a week.

_ “The Court: Are you testifying from what you pe

ally observed?

‘Phe Witness: Yes, personally.

‘The Geurt: I thought you were in the office? _

“The Witness: Well, I went down every week to check

pe Court: Did you go down twice a week?

‘“The Witness : No, but I know how the eggs came in from

Bound Brook.’’

* I kept the books for the hatcher business, as well as for

the linotype business and kept track of the receipt of the

eggs. I know Mr. Davis gave up the poultry farm because

he had lost so much money we could not keep it, but I have

forgotten when that was.

(No cross-examination. )

[fol. 94] Mno Mrton Hastines, recalled as a witness on

behalf of Defendants, being previously duly sworn, testified

By Mr. Ely:

I quite obviously furnished information, furnished some-

thing probably,.for the article in the Boston Sunday Globe

of November 10, 1912, reproduced in the Cooley Record

which you hand me. I do not know where the writer of the

article got the information for the statement in the article

ee the winter 1910-1911, a small plant was con-

on the Davis Poultry Farm in Brooklyn, New

the idea demonstrated. This plant was not

- open to the public as its workmanship was crude and the

to the Patent Office not completed.’’ I prob-

furnished many previous clippings. There was much

publicity. at that time.

Tcammot: remember this individual or what I furnished

jie

him individually. There was much publication at that date.

do thet recall that I testified that I furnished the infor-

oa on which this article wag published in the Boston

mt

I remember testifying in the case of Smith v. James igf

answer to the question on page 174 of the Record: =

‘‘And you have always been motivated, have you not, by,

a comparison of the success which Dr. Smith obtained ang:

the failures you obtained? <

‘*A. I think it natural that an original inventor, & malt

[fol. 95] who believed himself to be the original inven

of a basic principle, which another man later develops a

attempts to monopolize, would feel some element of resent |

ment that he did not share in such-return.”’

Aumown B. Hatt, called as a witness on behalf of Defend-

ants, being first duly sworn, testified as follows:

Direct examination.

By Mr. Paige:

The temperature of the atmosphere in the incubators we

used during the incubation process is 99° F. The per-

centage of moisture in that inicubator is from 35 to 45%,

The temperature of the atmosphere in the separate hatch-

ers is 98° F. The percentage of moisture in the separate

hatcher is from 65 to 80%. Since the Fall of 1930 we have.

entirely used the system of keeping the eggs in the incv-

bators for eighteen days and then transferring the eggs to

the separate hatchers. Sizice the Fall of 1930 we have not

conducted a method of hatching in a single chamber i

which there is staged incubation and in which the eggs are

hatched. eng Be ie wick we have oe Mh

employing for the last few years, over the method er .

before, is that. we can control the temperature in the i <=

cubator at ‘a different degree we do the temperature”

of the separate hateher. This is true of the perce 5.

of moisture and-is an advantage. It is also an advantagé.

{fol. 96} as we get better hatches. I would say that we ge

(ig ee ios

hatcher, as |

of eggs set that we ha

Sait i vane ‘

in a closed chamber, otherwise like our ordinary p ti

other words, our percentage of hatch was 4% ps distin-

guished from 85 to 90% in our ordinary method of hatch-

We operate our incubators at 99° F. and in the Robbins

machine 994%4° F. would not damage the eggs completely.

It might cut down the percentage and quality of the chicks.

By quality I mean the chicks would be dried out, and would

be.smaller: They debilitate.

Cross-examination.

By Mr. Ely:

A 5% hatch would be a substantial improvement. When

we went from 70 to 75% that was a substantial improve-

ment in hatching. I recall in the letter of June 15, 1931, I

said, referring to those separate hatghers : ‘‘We feel that we

have obtained slightly better hatches and greater uniform-

ity than were possible with this new equipment.”’

[{fol. 97] Orpzr Aprnovinea Nasaaziva STaTEMENT OF THE

Evmence

The foregoing narrative statement of the evidence is

hereby allowed and approved, and the same is hereby ordered

filed as a statement of the evidence to be included in the Rec-

ord on appeal in the above styled cause, as provided in para-

graph (b) of Equity Rule 75.

Carroll C. Hincks, U. 8. D. J.

Dated September 4, 1935, New Haven, Conn.

66

[fol. 98) Piarntirr’s Exuisir No. 18.

JoszgPx J. Taccart, was called 4s a witness on behalf of

the defendants, and having been duly sworn, testified as

follows:

By the Clerk:

Q. 1. What is your full name?

A. Joseph J. Taggart.

Q. 2. Where do you live?

A. Cleveland, Ohio.

Direct examination.

By Mr. Toulmin:

3. You have just given your name, Mr. Taggart?

Yes, sir.

4. And your residence?

Cleveland, Ohio.

5. What is your occupation!

. IT am Service Man for the Smith Incubator Company.

6. Of which Dr. Smith is President?

. Yes, sir.

7. Dr. Smith, the patentee, in this litigation?

Yes, sir.

Q. 8. And the plaintiff here?

Perererere

’ 9. You represent Dr. Smith as plaintiff here in this

Court, and you came with Mr. Ely, did you not?

A. Yes, sip.

Q. 10. You are familiar, are you not, with the Buckeye

Incubator Company of Springfield, Chio, as the exclusive -

Q 11. And you are familiar with the exclusive license ~

arrangement with the Buckeye Incubator Company, that

‘ i

A. 26,000 Model 26-I which hatches and some eggs.

Do you refer to more than 261 or only 26-I

er to 26-I, and I have also seen: larger hatcher

and other machines.

. 14. These other models, 23 and 17, are 17,000

A. Model 23,528. |

Q. 16. That is approximately?

A. Yes, ‘sir.

Q. 17. Are you familiar, Mr. Taggart, with the license

contracts that exist between the Buckeye Incubator Com-

pany and Dr. Smith?

A. Yes, sir.

Q. 18. I hand you what is dated as a contract on 29th

of April, 1927, and will ask you if that is the 1927 contract

of license af the Smith patent in suit, that exists between

® the Buckeye Incubator Company and Dr. Smith?

A. That is not a photostatic copy, it is typewritten. It

appears to be a copy of the contract.

Mr. Toulmin: We offer that to be marked in evidence as

Defendants’ Exhibit A.

(Received in evidence and marked ‘‘ Defendants’ Exhibit

A’’)

The Court: It is not fully identified; I suppose we can

accept it subject to verification.

Mr. Toulmin: I think we can, your Honor. I think there

is no denial about the contract.

(f

ol. 100] The Court: I assume it is a fair copy, without

comparison?

Mr. Toulmin: Yes, sir.

The Court: Unless called to my attention——

_ Mr. Toulmin: Yes, sir.

Q. 19. I will hand you supplement agreement made at a

later date in 1923 between Dr. Smith and the Buckeye Incu-

feat Pan: Teferring to the 1927 agreement ; do you re-

if one

know there is some such contract, do you not? :

there is a contract about that time, yes, sir.

And it referred back to the 1927 contract, did it

‘and you can advise the Court without doubt that —

there is existing today an exclusive license under the Smith —

patent in suit, as described heretofore—as to the patent,

is that correct? £

A. Yes, sir. The Buckeye Incubator Company was given

exclusive license on the lower sizes, and Smith retained the

upper sizes, and Smith retained, according to the con-

tract—— o

Q. 23. And that exclusive license agreement or agree-

ments, are in existence today, are they not, Mr. Sager

A. Yes, air.

Mr. Toulmin: I ask this be marked Defendants’ Exhibit

B. I think these contracts are unnecessary in view of the

witness’ admissions of title.

(Received in evidence ard marked ‘‘ Defendants’ Exhibit

B”’.)

{fol. 101] Cross-examination.

By Mr. Ely:

XQ. 24. Mr. Taggart, are you familiar wherein the legal

title. of the patent resides?

A. Dr. Smith. -

X Q. 25. And Dr. Smith is connected with the Smith i

Incubator COmpany, and is manufacturing incubators of ©

the larger sizes, is not that sot :

A. Yes, sir.

X Q 26. He manufactures from 20,000 on up?

X Q 27. And the 26-I, which you say has about 26,000 ©

ee oe aa eent £

x te ‘And the 17,000 and the 17 and 23-1, 17,000 ant

“_ ys appr sly, in what field does that fall!

: o

x

XQ 2. And the duty of pursuing infringers under the

rests in whom? ‘att BHD .

A. Dr. Smith. | ;

_ XX Q.°80. And who gets the recoveries?

A. Dr. Smith.

X Q. 31. Do you know that these things that you are

testifying to, are facts within your own knowledge? *

, A. Yes, sir. | |

X Q. 32. Therefore, the particular incubators which are

involved in this case, do not fall within the field which has

been licensed to Buckeye?

A. That is correct. :

X Q. 33. And Buckeye has only the exclusive license to

the incubators of 16,500 and less?

A. Yes, sir, that is all. io

Redirect examination.

By Mr. Toulmin:

R. D. Q. 34. As a matter of fact, Mr. Taggart, Dr. Smith

does not do any manufacturing, using or selling, himself, at

[fol. 102] all; is that correct? ~

A. He does do all or a great deal of thé organization.

R. D. Q. 35. He does not do it himself?

A. In which he owns all the stock.

RB. D. Q. 36. He does not do it himself, does he?

A. he manufactures personally.

RB, - 37. Does he now manufacture and sell person-

ally, y through a corporation? .

A. am not real sure-of the exact set-up of that. He

himself and has a selling organization, which

is the Smith Incubator Company. -

- BD. Q 38 Has he any manufacturing corporation?

_ A. You have got me. Ido not mow.

70

Mr. Toulmin: That ie all Your Honor, I have here an

authority I did not have time to get in my brief. I only

came into this case with the papers last Monday morning.

{ do not make that as an excuse, but I ask the Court’s in-

duigence. There is a case in 11 Fed. (2), page- 214-216,

by aodge Learned Hand, to the effect that this title ques-

tion can be gaised at any time, even after final decree. That

is the au referred to.

/

f ee

(fol, 103} So much for those two questions. I now would

like to call Mr. Hall on the stand on the question of the

facts. Mr. Hall, will you take the stand, please.

Aumow B. Hat, was called as a witness on behalf of the

defendants, and being first duly sworn, testified as follows:

Direct examination.

By Mr. Touilmin:

Q. 1. Where do’ you reside? .

A. Wallingford, Connecticut.

Q. 2. Mr. Hall, you are one of the defendants in this

Q. 5. pati

A. Poultry raiser and hatching chicks.

Q. 6. And make of incubator are you now using!

A. Robbins Electric Incubator. :

Q.7. Are you separating hatching or ycu are |

not situation? “s

- 71

Q. 10. Did yon immediately start at that time to practice

separate hatching exclusively, or did you come to it at a

later time?

A. We came to it in about September, 1931.

(fol. 104) Q.11. Smce September, 1931, have you prac

ticed anything other than separate hatching?

- A. No.

Q. 12. Prior to adopting separate hatching, had you used

any Robbins machines that did not have the separate

hatcher! |

A. Yes. J

Q. 13. Will you tell the Court now as to the separate

hatcher, just what is the separate hatcher procedure, the

construction of it, so that the Court will get first hand

from you what this case is all about. Just'turn and tell the

Court.

a eggs are incubated in the incubating compart-

ments for 18 days, and then they are transferred to separate

trays into an entirely separate machine with separate parts,

and they are carried there at three days until they are en-

tirely hatched.

The reason for doing that is both economical and sanitary.

We get better results in doing that for the reason that in

the incubating machine we run a temperature of approxi-

mately 994 degrees, and the humidity of 35 to 50 per cent.

In the second hatcher we run a temperature of 98

and humidity of around 80. These are conditions which are

more desirable for eggs of the different stages of incuba-

tion, and it results in a different quality of chicks and a

higher percentage of hatch _

For sanitary reasons we can after every hatch clean out

the separate hatchers and all the dirt from the hatching,

because in the separate hatcher there is no dust or shells

{fol. 105] and hatch in separate compartments. .

| . _Q 14. Will you tell the Court what is the reason for this

A

7 precaution of the sanitation, as to why- you

se separate hajcher for that purpose?

, ® main reason is for Pulorum diseasé, such as is-

from the breeding of the egg to the chick, and

72

there should: not be any of that disease in one hatch, and —

the fact that you do not completely eliminate the dirt be-

tween the hatches, and that eliminates the chances of carry-

ing it over into another hatch. Then, there are certain . |

fungus diseases that can be established in a machine that —

would carry over from one hatch to another, and that is |

entirely eliminated by this process.

Q. 15. In the incubator portion of this hatcher incubator

combination, in the incubator box, do you move the eggs

at any time from the time you first place them in the cabi-

net until you remove them about the 18th day?

A. We have them out once and test out the infertile eggs,

about the 7th day.

Q. 16. Do you change the position of the eggs after you

také out the poor ones?

A. No, we do not change them.

Q. 17. Then, at the end of the 18th day, where do yon

place these eggs in the trays?

A. They are transferred to the hatching tray and from

that into the separate hatching compartment.

Q. 18. About how long does it take to do that?

A. It takes possibly three or four minutes to remove the .

trays from the incubator and then the process of trans-

ferring them from one type of tray to the other, and that

takes 20 to 25 minutes for the 26 machines.

(fol. 106] Q.19. During that period are the doors of the

incubator open or closed?

A. They are open for about two or three minutes.

Q. 20. during that period the eggs that are being

placed on the rack which is to be conveyed over to the

separate hatcher, are those eggs in the open room or in

a special heating compartment?

A. They are in a cabinet, and they are not exposed _ en-

tirely to the room temperature.

Q. 21. And where is this compartment located with re-

spect to the incabator and the hatcher? x

A. It is on casters that are moved from one machine to ©

the other. £

Q. 22; It is an open frame-work for supporting the trays?

A. That is right.

Q. 23. And daring the period of 20 to 30 minutes, as the §

ays ee ee eee een TO, the eggs |

the subjected to room temperature?

A. Partially.

8 .

Q. 24. Did you adopt this separate hatcher combination

by reason of this patent infringement suit? <<

A. No. - ‘

Q. 25. What were the sole reasons that you adopted the

separate hatcher combination?

A. For the production of a higher quality chick and

getting a higher percentage of hatch and eliminating dis-

ease and make complete sanitation possible.

Q. 26. Mr. Hall, in the hatcher itself, do you have eggs of

more than one age?

A. No.

Q.27. They are just eggs of one age only in the hatcher?

A. That is right.

Q. 28. And the conditions of temperature and moisture

are different, I believe you testified, in the hatcher as com-

pared with the conditions of temperature and moisture in

the incubator?

A. That is right.

[fol. 107] Q.29. What is the reason for the differenceg in

the temperature and moisture in the incubator with re-

spect to the hatcher?

A. The eggs in the incubator require a higher tempera-

ture and a lower moisture as compared with the hatcher.

A hatcher requires high moisture and lower temperature.

Q. 30. Why is that, Mr. Hall?

_ A. It results in a more normal condition of the hatch.

We get a better quality chick and slightly higher percentage

of hatch.

Q. 31. That is based on your experience ont here at your

plant?

A. Yes.

Q. 32. You say a better quality of chick and higher hatch

as compared with what machines?

__ A. In the machine in which the chicks were hatching in

the same compartment as being incubated.

_ Q. 33. Of the type you had formerly before you. adopted

- the separate hatcher? —__

A. Yes. a.

_ Q.34. Do your men go inside the compartment either of

‘the hatcher or incubator when they are moving the eggs!

| RR. Ray: T object to that as ittennterial,

“Mr. Toulmin: I think it is quite material.

.

* sé

74

Mr. Ely: The Supreme Court has held that 23 was an

infringement, and they did not go into that either. I do ~

not see any reason for dragging this thing all through ©

again. The Supreme Court has spoken as to No. 23.

Mr. Toulmin: Never on the separate hatcher.

Mr. Ely: This has nothing to do with the separate

hatcher.

[fol. 108] Mr. Toulmin: It has everything to do with the

separate hatcher.

The Court: Will you read the question.

(Last question repeated as recqrded. )

The Court: I think that the defendant is entitled to show

his practi¢e. Admitted.

A. No, they do not.

By Mr. Toulmin:

Q. 35. Mr. Hall, will you state to the Court whether you

have in contemplation any changes in your machines or the

sales of the machines or movement of the machines out of-

the jurisdiction of this Court?

A. Not a thing.

Q. 36. Will you ‘tell the Court briefly something about your

financial worth and financial responsibility?

A. We have been in business for 24 years and our pres-

ent assets as of November 30th, are $244,731.19. We have

current assets at that time of $124,679.09. We had current

liabilities of $57,559.87.

Q. 37. Your condition today is substantially shown by

these figures?

A. I think so.

Mr. Toulmin: That is all. You may have the witness. . ~

The Court: Those figures lead to a net worth of whet

if you have it computed?

Mr. Bly: No bond has been posted, your Honor, and 1

call your attention to that.

The Court: You ee ee % Seteee

liabilities of fifty ahs thousand pilus?

The Witness: Yes, I have those figures here.

(fol. 109] The Court: Were those current liabilities or

‘The Witness: Current liabilities, yes.

The. Court: Have you any aggregate liabilities to corte- .

spond with the a assets?

The Witness: total’ net worth, $140,670.15.

Cross-examination.

By Mr. Ely:

XQ. 38. Your concern is not a corporation, ie it?

A. No.

X Q. 39. Just two brothers?

A. Yes.

X Q. 40. What is the other brother’s name?

A. Louis C.

The Court: The figures you have given are the firm fig-

ares?

The Witness: Yes. .

Mr. Ely: That is the assets of both of yout

The Court: That is the assets of the firm, as I understand

it, disregarding your personal financial condition.

The Witness: Correct.

By Mr. Ely:

XQ. 41. Before you had these No. 26 incubators with

the separate hatchers, Mr. Hall, you operated the Robbins

23, did you not?

A. Yes, sir.

X Q. 42. And you are familiar with that, of course, and

with the operation of the Robbins 23?

A. Yes.

X Q. 43. How long did you operate those?

A. We operated those from September, 1929, was the

first time. |

XQ. 44. Up antil when?

A. Up until about September, 1931.

{fol.110] XQ. 45.»That is the incubator you understand

which was involved in what is known as the Warham liti-

gation, yon understand that?

‘A. Yes.

(EQ. 46. In that Robbins No. 23, you did not go into the

mm any Gute?

“7EQ.47. That is to say, as far as the 26 and the 28 are

ene they are the same in that respect?

4,

>t

76

A. Yes.

X Q. 48. And in operating the Robbins 23, you took thé:

crays out of the incubating cabinet at the 18th day, you®

took them out into the atmosphere of the room at the time,

so that you could retray them for the hatching of the chicks,

is that so? _ PS

A. Yes. :

X Q. 49. In that respect there is no difference betwen

the Robbins 23 and your present practice?

A. In that respect only.

X Q. 50. In that respect there is no difference?

A. Only in that respect. 2

X Q. 51. Mr. Hall, in this Robbins 26 that you are now

using, you have a large tilting drum in which the eggs are

held from the first to the 18th day,.is that not so? |

A. Yes.

X Q.:52. And the Robbins 23 which was involved in the

Supreme Court Opinion, had a large tilting drum in which.

the eggs were set from the first to the 18th day, is not that_

so? .

A. Yes. :

X Q. 53. And in that respect, the 23 and the 26 are not:

. different? x

A. In that respect only. |

X Q. 54. Yon have had several ‘‘onlys’’ already, and

I advise you to drop the word ‘‘only’’ for a moment. In.

the operating of the 23, you set the eggs at intervals of: :

three days apart, did you not, in the tilting drums? ss

A. No, not necessaril-. 4 |

X Q. 55. You set them at short intervals, short of the

total 18 day period? <

A. We set them two days a week.

[fol. 111] X Q. 56. That is, you would set them three and

then four days, is that correct, your interval would }

‘three and four days? Be

X Q. 57. In your Robbins 26, how do you set your eggst:

A. We set them two days a week. Z

' KXQ.58. The same as you did in the operation of your 2

A. Yes. %

x dl Tn that respect there is no difference between tl

23: ;

A In ry respect _

es :

=

XQ, 60. Again you say ‘‘only’’, In the Rebbins 28, you

sees 06 ttn Tane ai the beck which srapeied tera

through the chamber, did you not! ar

A. Yes, — 5

X Q. 61. And in the Robbins 26 you have one fan, is that

correct, or two, which is it?

A. Two fans.

X Q. 62.. And the space which was tay - up by the Hatch.

ing racks of the 23 has now been taken up by increasing the

size of the drums, so that you have a larg-r drum in the

26 than you had in the 23, is that right?

you had eggs in staged incubation, had you not?

We have them in certain stages.

X Q. 64. You have them in more than one stage in this

tilting drum, is that correct?

A. Yes. :

X Q. 65. And some of those eggs have just been put into

the tilting drum and some have been in for a period of say

from 15 to 18 days, is that not so?

A. Yes. :

X Q. 66. And that is to say, as you understand it, some

of those eggs are cold eggs and are absorbing heat, and

some are giving off heat, is that sof

0

A. Yes.

X Q. 63. And when you were operating the Robbins 26

A.

. A. I assume so.

X Q. 67. You have no cause to dispute that statement

{fol. 112] that the egg passes from the heat gbsorbing to

the heat giving-off stage at the 11th day?

A. I do not know where the distinction is.

X Q. 68. That is to say, if you set all your eggs at one

_ time in the 26 incubators, you would have them all reach-

ing the heat generating stage at the same time, would you

A. Yes.

7 x Q. 69. And you would have them when yon first started

in all in the heat absorbing stage at the same time?

. 2% Q. 70. You have by your principle of operation of the

+.

#%you have a balance or an attempt to balance those two

Begperties of the eggs, you have some eggs that are absorb-

ar pala are heat generating in operating your 26?

5D 80.

78

X Q. 71. And there are small openings at the back of®

the fans to take in a certain amount of fresh air and there

ieee ee OP eens Pt Oe San ee

air, is not that so?

A.-There are openings, but they are not necessarily used.

in that way. |

X Q. 72. But you have openings for the interchange of

air from the outside atmosphere to the interior of the in-

cubator?

A. Yes.

The Court: Was that true both of the 23 and the 261

The Witness: Yes, there are openings, but as a matter

of practice only the openings in the back of the machine

are regularly used.

The Court: You are speaking now of which model, both

models?

The Witness : Both models.

(fol. 118] By Mr. Ely:

X Q. 73. There is no difference between the two models

in that respect?

A. No.

X Q. 74, When did you first receive notice? Do you re

call when you first received notice of infringement of the

patent in suit?

A. No, I do not.

X Q. 75. Do you recall whether it was approximately in

August of 1930 that you were first notified of infringement?

A. I do not recall.

X Q. 76. At the time you were first notified of infringe-

ment, you Were using the Robbins 23’s?

A. I do not recall.

x _— you recall] that fact?

X Q. 78. Do you not recall the fact that after you re--

mesg => nce gl galiaaamaeladias

@<s

a.

ae

s

g

é

Q. 80. When did you say you switched over from

23 to the 267

I do not recall receiving any notice.

. 81. Will you answer my question, please? ,

We put in our first separate hatchers in 1931, early

A.

x

A.

1981.

x

. 82. And you went over completely to the separate

hatcher idea when?

A. In September, 1931.

X Q. 83. In regard to this matter of sanitation, are you

familiar with the operation of the Smith Incubators as they

are on the market now?

A. No.

The Court: Just a moment. I am not sure that it has

[fol. 114] any importance, but I understand Mr. Hall to

say on direct examination that the defendant began using

the separate hatchers in January, 1931.

The Witness : That is correct.

The Court: And just now I understood you to say in

August.

The Witness: You are mistaken.

The Court: You began using them in January?

The Witness: Yes, and we completed the change over in

September, 1931.

By Mr. Ely:

X Q. &. You are not familiar then with the fact that in

the Smith incubator, the incubating department is cleaned

up after every hatch and fumigated?

A. No.

X Q. 85. This matter of the B. W. D., which is Bacillary

White Diarrhea, which you referred to as Pulorum disease,

that is contracted by the chick by breathing the down or in-

fected down?

A =

X Q. 86. You do not know that fact?

A. No.

(Witness excused. )

‘Phe Court: We will take a short recess.

.

ae

Ue.

oa

s

sb

(After a short recess.)

Mr. Ely: I wish to ask Mr. Hall another question.

[fol. 115} Aumow B. Haz, resumed the stand.

By Mr. Ely:

X Q. 87. You gave the figures as to the assets of

firm. In-those figures, to what extent have you include

these incubators?

A. At their inventory value.

X Q. 88. What is that?

A. I could not say.

X Q. 89. You have included these incubators in your tes.

ures of the assets? &

A. Certainly. +

X Q. 90. Have you a statement showing how you arrive

at those assets?

A. No. x

X Q. 91. From what were you giving your figures?

* A. From a bank balance sheet.

XQ. 92. And was that the amount that you gave the bank

balance?

A. That is the bank balance statement. It is the bank

statement. —

X Q. 93. The statement to the bank that you made?

A. Yes.

X Q. 94. In which you listed your various assets, is that

correct? :

A. Not the various, but the total. .

bd. a 95. You listed the items of your assets in this sts ¥:

ment to the bank and that is what you have been testifyi

from, is that right?

A. They are not itemized. ; #

X Q. 96. However, the incubators are included in yout t

“hp aap ae Cs NO a el

Poros Spee iY

Mr. Touh in; Iam almost at the end of this proof, if you

ae te haat a ees re + ee rif

Mr. Ely: Do I understand that I will have the opportunity

to put a rebuttal witness on?

The Court: Surely. 7

Mr. Toulmin: I have some publications here on an if-

_ portant qnestion, and one is on the embryology of the.

chick, and this 18 day, and the reason for transfer, and two

others on the disease question. I have photostats of the

_ pertinent pages that I would like to have in evidence. |

Mr. Ely: I object to them. We have not been furnished

copies of that. aig)

Mr. Toulmin: You have had them before. -

Mr. Ely: Not in this case. 5

The Court: Show themi to counsel. He may waive his ob-

on.

ae. Toulmin : I have not had time to get additional copies,

but I will get them. i

. -Mr. Ely: All right. :

Mr. Toulmin: We offer in evidence a photostat of the

title page of the book ‘‘The Development of the Chick,’’ by

Frank R. Lillie, Professor in the University of Chicago, and

photostats of pages 210, 211, 218, 219, 290, 221 and 232 as

our Defendants’ Exhibit C. .

The Court : Is it objected to? °

Mr. Ely: Yes. I object to that as immaterial. ;

[fol.117] The Conrt: Do you waive any objection as to

its competency? :

_ Mr. Ely: They are publications that have to do appar-

_ ently with some status of diseases, but I do not see what it

‘has to do with the issues of this case. They have not been

<The Court: If they are offered in this form, what about

» the opportunity to cross-examine?

<M. ‘Toulmin: They are technical publications that are

id ih the trade. nek |

ir. Ely: The authors are not here, and I object to it

me VO urt: They are surely not competent if the objection

e&

Mr. Ely: I press the objection. ’

Mr. Toulmin: Then your Honor rules out the Exhibit C?

The Court: Do you wish to have it marked- for identifica-

tion?

Mr. Toulmin: Yes. It may be marked under the rule

so that I will take an exception.

The Court; It is conceded, is it not, that the offers have

not been previously brought to the attention of counsel?

Mr. Toulmin: Not in this particular case. They are

quite standard publications and have been in these cases.

(The same was thereupon marked ‘‘ Defendants’ Exhibit

C for Identification.’’)

Mr. Toulmijn: I likewise offer as Exhibit D, to which the

same set of gircumstances will apply, the Agricultural Ex-

[fol]. 118] periment Station Bulletin of the Kansas State

Agricultural College, Technical Bulletin No. 21, of Novem-

ber, 1926, and the title page, and pages 3, 46, 47, 48 and 49.

Mr. Ely: Same objection.

The Court: Same ruling.

Mr. Toulmin: And the same tender and exception.

(The same was thereupon marked ‘‘ Defendants’ Exhibit

D for Identification.’’)

Mr. Toulmin: We offer as Exhibit E the cover page of

the Journal of American Veterinary Medical Association

of February, 1926, and pages 628, 629, 630, 631, 632, 633,

634, 635, 636, 687, 638, 639 and 640 and 641 as the entire

exhibit. _

Mr. Ely: Same objection.

The Court: Same ruling.

Mr. Toulmin: Same exception.

(The same was thereupon marked ‘‘ Defendants’ Exhibit

E for Identification.’’) ;

Mr. Toulmin: Your Honor, I am through with the fact~

proof that I have to offer in this matter. Does your Honors

care to hear me on the argument of the facts! 3

The Court: I would rather close the evidence before pro-

ceeding on arguments. Has Mr. Ely any evidence!

Mr. Ely: Yes. -

[fol. 119} PLamrtivr’s Resurrat Proors ed

Groncz MoCownavoney, was called as a witness in re-

buttal on behalf of the plaintiff, and having been first duly

sworn, testified as follows:

Direct examination.

By Mr. Ely:

Q. 1. Mr. McConnaughey, where do you reside?

A. Cleveland, Ohio.

. 2, Mr. MeConnanghey, you are a practicing attorney

oduitte’ to the Bar in Ohio?

. And your present position?

am attorney for the plaintiff here.

And how long have you been Dr Smith’s attorney?

or eight years. °.

. 5. And in that capacity you.bave been familiar with a

of this litigation that has gone on with regard

th patent?

e.

Do you recall app

own his

Q.7. Following that decision did you notify various users

the Robbins machine of the decision and of their infringe-

again there was a reopening of that case,

recall, and it was decided again by the Master hold-

‘patent valid and infringed; do you recall that?

8, sir,

120] Q. 11. Following that decision on the reopen-

did you again notify the various users of Robbins ma-

..

84

A. I did.

Q. 13. And what was the date of that, do you recall?

A. That was in July of 1931.

Q. 14. Then you recall that the Distriet Court affirmed

the Master’s holding that the Robbins Incubator was an in-

fringement of the Smith patent and the Smith patent was

valid, do you recall that?

A. Yes, sir.

Q. 15. What was the date of that?

A. July, 1932. .

Q. 16. Following that did you notify the users of the Rob-

bins machine including this particular defendant of its in-

fringement?

A. I did.

Q. 17. Then you recall that the Circuit Court of Appeals ©

of the Ninth Circuit affirmed the decision of the District

Court; do you recall about the date of that?

A. That was in 1933.

Q. 18. Following that, did yon send the same notices of

infringement out to various Robbins users including this

particular defendant?

A. I did.

Q. 19. And then when the Supreme Court passed upon the

Robbins incubator in January, and handed down its de-

cision on January 7, 1935, were notices then sent to this

defendant?

A. There were.

Q. 20. They were sent immediately after the docialon:

were they not?

A. That is correct.

Q. 21. A thatter of about four days as I recall?

A. Between four and ten days.

Q. 22. And they were sent to this particular infringer?

A. That is correct.

[fol. 121] -_Q. 23. Have you ever had any reply from this |

defendant the decision in the Supreme Court Was

85

Josmrn I, Taccanr, was called as a witness on behalf of

the plaintiff, in rebuttal, and. having been previously duly

\ sworn, testified further as follows: feito’

Direct examination.

By Mr. Ely:

Q. 1. Mr. Taggart, you have testified and qualified as an

expert on incubation, and also a patent expert in these vari-

ous cases that involve the Smith patent?

A. Yes, sir.

Q. 2. And you testified in the Waxham case in California

as an expert?

A. Yes, sir.

Q. 3. And a practical expert as well as a technical patent

expert? !

A. Yes, sir.

Q. 4. And you also testified in the Snow case in the same

manner?

A. Yes, sir.

Q.5. That was the one tried before Judge Molyneaux in

Minnesota, and later went through the Eighth Circuit and

on up to the Supreme Court?

A. Yes, sir:

Q.6. Mr. Taggart, this matter of so-called sanitation in

{fol. 122] the separate hatcher, this Pulorum disease that

Mr. Hall referred to, just how is that transmitted?

A. Pulorum disease is the one disease that can be carried

from the mother

and develop through incubation. At the time the chick

hatches or cuts its way out of the shell, it will simply be

ed with these germs, and as the chick dries, they will

be released to the air and spread about throngh the in-

@ or and be breathed in by other chicks. The dther

ck 3 infected by way of the lungs.

AM

‘ ‘

‘ere predent. The fact that there is & sépa-

nothing to do with that at all.

Q. 7. That is to say, the presence of eggs that are un-

broken, that is, eggs from the first to the 18th day, does # Pe

not assist in any way to the propagation of the disease, the .

embyro within the egg shell can not contract the disease °

from an infected chick that may be in the same chamber?

A. No, sir

Q. 8. Whos you go over into a separate hatcher you have

all the chicks hatched in the same environment?

A. Yes, sir.

Q. 9. And what is the difference in spreadability, if I may

use that word,.of the disease in an incubator of the type

shown in the Smith patent, where all the eggs are in from

[fol. 123] the first to the 21st day, and the separate hatcher

where the chicks are only during the hatching time?

A. There isno advantage one way or the other as far as

spread taking place.

Q. 10. The disease germs are found upon down réleased’

by the chick carried into the air and then breathed by

another chick?

A. That is. correct.

Q. 11. Can those germs get through the egg shell?

A. No, sir

Q. 12. They are only transmitted then from chick to

chick in the hatching compartment?

A. That is righ

Q. 13. What abdut the matter of sanitation of the Smith

incubator ; is the separate hatcher any better as far as the

sanitation is concerned than it is in a Smith incubator?

A. As far as the germs are concerned, there is no advan- |

— wha‘ in the separate hatcher. The sanitation can

in one machine just as wel) as in another. :

"ois Explain that further. What do they do to sani-—

’

ae

B.. ts. a.

87

Q.17. Therefore, there is no advantage so far as sanita-

tion is concerned in the separate hatcher idea over the

Smith?

A. None whatsoever.

[fel. 124] Q.18. Let us assume for a moment that an in-

cubator such as the Robbins 26 Incubator, were filled with

eggs all at one time, and there are about 26,000 eggs you

say in the incubator?

A. Yes, sir.

Q. 19. And how much heat are those eggs generating

from the 15th to the 18th day?

A. The amount varies from day fo day, but on the 18th

day they would be generating about 10 B. T. U’s. per piece

a day in 24 hours. .

Q. 20. And that is to say, if you had your eggs all set at

once in the Robbins Incubator, when you got to the 18th

day, how much heat would be generated by those eggs?

A. It would be better than 20,000 B. T. U’s. per hour.

Q. 21. That would be difficult to keep the incubator coo}?

A. It renders it impossible as the ‘incubator is con.

structed to keep it cool. ;

Q. 22. In the regular operation of the 26, what effect have

the cool eggs in the same incubator compartment?

A. They help to balance this excess heat and tend to keep

- it substantially balanced between the cool and the warm, 80

that it is not necessary to add a great deal of heat, nor is it

necessary to add very much refrigeration.

Q. 23. It is not necessary to add a great deal of heat when

you start off?

A. After you once get the eggs warmed up for the first

or two, that is, eggs that are put in cold, there is heat

- added at that time, but when the machine is in operation

there is an addition.

Q. 24. Come back to the assumed operation, and yon fill

this 26 with eggs at one time, what would be your condition

_ 8 far as the application of heat is concerned!

_ A. You would have to have heat continuo ily during the

‘figst 10 to 11 days.

Gol. 125) Q. 25. Then what is the benefit of having the

E. ge in the staged incubation in the 26 incubator?

bie to put a large volume of eggs in a small com-

<2

-_**

88

partment so that they can be incubated economically. You

take advantage of the laws of nature in doing so.

Q. 26. And what is the advantage of having some cold

eggs in? :

A. It helps to keep the warm eggs cooled in the proper

temperature.

Q. 27: And the circulation of the air, what does that do?

A. The circulation of the air equalizes the temperature

between the eggs at different stages.

Mr. Ely: That is all.

Cross-examination.

By Mr. Toulmin:

X Q. 28. Mr. Taggart, in the Smith machine as I under-

stand it, when you start up the machine, you operate it

continuously through the succession of hatches that you

may wish to hatch with the machine, is that correct?

A. Yes, sir.

X Q. 29. You do not shut down the machine between

hatches, do you?

A. No, sir

X Q. 30. When you come to clean your machine, you do

not shut the machine down after a hatch and clean it and

then start it up again with the Smith machine!

A. You can start the fans off for a short period to pick

up the down with the vacuum cleaners. Some do and some

do not. At the present time, we recommend that they do.

X Q. 31, But you do not shut the machine down com-

pletely and clean it out, everything, and take the eggs out

between hatches!

A. No, sir.

X Q. 32, In the defendants’ incubators and hatchers, sail

ticularly in with the hateliery, after the hatch

(fol. 126] is taken off of the, separate hatcher, all the ees

ay taken ait ot hie cae |

A. Yes, but not out of the 26.

X Q, 33. And the egg are taken out of the hatcher!? 3

A. Out of the hatéher, but mot out of the incubating unit.

X Q. 34: Let us ourselves to the hatcher.

Mr, Ely: There is no use going into detail on that.

—

X Q. 35. Will you tell me whether all the eggs are taken

out of the defendants’ hatcher after a hatch? :

A. Yes. : :

XQ. 36..And after they are taken ont the hatcher is

cleaned out and the hatcher has a sanitary provision ap-

plied to it?

A. Yes, sir.

X Q. 37. And then later they pnt in a new batch of eggs

and they are again hatched?

A. Yes, sir.

XQ. 38. And they are again cleaned out?

A. Yes, sir.

Mr. Toulmin: That is all.

Redirect examination.

By Mr. Ely:

R. D. Q. 39. In the operation of the Smith, you clean out,

fumigate, and when you move your eggs down to the next

hatch, it is all clean down underneath there?

A. Yes, sir.

Mr. Ely: Supplementing my objection to Mr. Toulmin’s

remarks, of course there is no claim that the hatcher is in

issue.

‘ The Court: I understand that.

(Witness excused.)

The Court: Any further evidence!

Mr. Ely: No.

Mr. Toulmin: No.

90

[fol. 127] Piarmrtirr’s Exurerr No. 19

¥

. 5

Iw tHe Unrrep States Disraicr Court, District or =

CoNNECTICUT

In Equity. No. 2369

Samuzy B. Sarru, Plaintiff,

vs.

A. B. Haut and L. C. Hatt, d. b. a. Hatt Broruens, Defend.

ants

Arripavit oF JosepH I. TaGccart

Strats or Oun10,

County of Cuyahoga, ss:

Joseph I. Taggart, being first duly sworn, deposes and.

says as follows:

I am a resident of Cleveland, Ohio, and Assistant Gen

eral Manager of The Smith Incubator Company, which

a corporation of Ohio, owned and controlled by Samuel E

Smith, the inventor and owner of the patent in suit :

plaintiff in this cause. I have been connected we

plaintiff and The Smith Incubator Company since the y

1923 in various capacities, and am thoronghly familiar

all phases of incubation, both from the commercial opera

tion of hatcheries and from the technical or biological fac

of incubation. Prior to my connection with the rinintift f

was a graduate of Ohio Wesleyan University, where I spe

cialized in zoology and studied incubation from the theoret

(fol. 128] ical side there. I have continued the intensivg

study of this subject since that time to the present. a

I am thoronghly familiar with the Smith patent in :

No. ae ee, eee O8 S peadtion’ expert ©

to said patent in a large number of patent «

; wat RX, “44 7.

Sida uateredd to cheve teens stein dada,

of the United States on writs of certi-

ham caiee aro attached hereto and marked Exhiita 2 and

3, respectively.

I have been informed and believe that the defendants,

business in the commercial incubation of eggs. I

visited the place of business of the defendants May 23, 1934.

At that time I inspected the several incubators which were

then located in the defendants’ hatchery. Mr. A. B. Hall,

-one of the defendants herein, showed me around the plant,

and I discussed with him the construction and mode of oper-

[fol. 129] ation of the incubators in the plant.

The defendants had, at that time, a capacity of approxi-

mately 600,000 eggs in the incubators in the plant. As it

was then late in the hatching season, only about half of this

capacity was then in operation, but Mr. Hall told me that,

dnring the height of the season, all of the capacity was used.

The incubators which the defendants were then using are

"what are known as Robbins Incubators, with the constrac-

fon and mode of which I am familiar as an incubator —

Maced upon the market by The Robbins Incubator Com-

pany of Denver, Colorado, which is, I am informed, owned

and operated by John L. Robbins of Edgewater, Colorado.

fh my conversation with Mr. Hall he advised me that the

‘method of operating these incubators was the same as rec-

@mmended by the manufacturer.

ae: ) defendants had in their plant the following Robbins

apabato eet We Oe model number applied by

3-#17

4-#23

aS Approx. 16-#261 (or #26-I)

we inenbators are substantially alike in constraction

! A of operation, the principal differences being

92

that, in the models #17s and #238, the eggs are

within the same cabinets during the full twenty-one ist

hatching period, while in the #26Is the eggs are remo re

on the eighteenth day, or just prior to the completion

incubation, when the chicks are ready to emerge from #

[fol. 130] shells, whereupon they are placed in separa

cabinets for the actual emergence of the chicks.

For the purpose of illustrating the construction and me ra

of operation of all of these incubators, I have selected t

#261 incubator, shown in exhibit drawings attached heretae

Exhibit 4 is a vertical cross-section at the side of an

rack. Exhibit 5 is a longitudinal vertical section on th *

line A-A of Exhibit 4. Exhibit 6 is a similar section ¢

the line B-B of Exhibit 4.

I also attach hereto, as Exhibit 1, photostatic copy of

pages 44 and 45 of Robbins Incubator Manufacturing Come

pany’s Catalogue which shows two of these Model 261 incge

bators (at the left) in conjunction with the cabinet (at thi:

right) in which the eggs are placed at the close of the he . 3

ing period, as explained above. The descriptive mati

contained on the same page is noted, as the manufactn

there states that these #261 incubators operate upon tH A

same principle as the incubator involved in the Ws ae

suit, referred to above.

For the purpose of comparison with the structure i

volved in the Waxham suit, I attach hereto, as Exhibigf

8, 9 and 10, photographs of the Robbins #23 Incubate

which was involved in that suit. Exhibit 11 is a photostal

a AS ae mh i,

of page 12 of a Robbins Catalogue, illustrating the #2

incubator showing the tilting drum or rack with the egg.

trays removed. This view shows, at the rear, the fans t

in that incubator, and Exhibit 12 is a photostat of ano ne , ;

page of the Robbins Catalogue which shows the fans re.

om a The tilting drum (at the ri

ja Exhibits 4 and 6 dese, fresh alr inlets are Jeol

| moves oewacly, strikes the front i

“here i is no central corridor, the ice of egg trays be-

a SF eae Oe canine of Gn Onan. Share ae

no curtains or similar means of guiding air currents

aet in motion by the fans. Two fans are placed on the side

wall at the back of the chamber. They turn continuonsly,

and are so constructed and operated as to propel currents

of air, which proceed along the sides and the ceiling and

[fol. 132) floor of the chamber to the front wall, where they

are-deflected in the direction of the fans and there ‘drawn’

them throngh the central part of the chamber.

Less-than 1% of the air passes ont throngh the fonl air

exits in the course of making the described circuits, so that .

there is circulation and recirculation of the air within the

chamber. The evidence supports the finding of the special

master and of the.two courts below that the currents of air

sefin motion by the fans flow continuously along defined

“The petitioner’s machine thus employs every essential

ofthe. patented method as it is defined by Claim ae

‘Tdisoussed with Mr. Hall the manner in which the eggs

re get in the operation of the defendants’ incubators. He

coe ne Saredenls os Sle caer by aattng

ae or conenity of ensh, dram: 95 omai-weekiy, in-

Sarsiag

94

times staged incubation is being practised. As the we

in the drum are in all the different stages of embryo devd

opment, about one-half of the total egg content of the ix

bator will be ‘‘endothermic’’ or in the heat abeorbing stage

and the other half in the ‘‘exothermic’’ or heat generating,

[fol. 183] stage. No particular order or arrangement @&

the eggs as to age is observed or followed. The placing

cf the eggs on the eighteenth day in a separate chick 5 3

ducing cabinet does not affect the operation, which is tht

same as carried on in the incubating drum in the #23 inca,

bator. As was said by the Supreme Court in the W

case (Ex. 3, p. 1):

The method of setting the eggs in the incubating <

and the manner and means for propelling the air throu

those éggs in the #261 Incubator is identical with the of 4

slow evaporation of the water content of the egg.

seen, the amount of heat which is absorbed by

‘during the first ten or eleven days is greater than

tenth of eleventh day, the heat given off by the egg is in

excess. For this reason the eggs are said to be ‘‘endother-

mic’’, or heat absorbing, during the first ten or eleven days,

and -“‘exothermic”’, or heat generating, thereafter, The

area colored blue represents heat units absorbed, and the

area colored red the heat units given off. The darker shade

of red indicates the heat units which are given off by an

egg after it passes into the ‘‘exothermic’’ phase and up to

- the eighteenth day (at which time the defendants transfer

the eggs to the chick preducing cabinet). The comparative

areas of the blue and dark red portions of the chart demon-

strate that approximately 2% times as much heat is given

off by the eggs from the tenth (or eleventh) day to the eigh-

teenth day, as is absorbed by the eggs in the earlier stages

of inenbatiou.

The defendants, by transferring the eggs to another com-

partment at the eighteenth day, do not lose the beneficial

(fol. 135] results obtained by arranging the eggs in staged

ineubation in a chamber in which the air is circulated with

sufficient velocity to equalize the temperature of ‘‘endother-

mis’’ and ‘‘exothermic’’ eggs. The defendants operate and

ute the invention of the Smith patent by the use of the Rob-

bits’ #261 Incubators in the procedure stated. The defend-

aiits employ a substantial copy of the Smith method, and

de not avoid infringement by segregating the eggs which

eee

» cabinet.

i g particularly to claim 1 of the patent (Exhibit

oe . e defendants hatch ‘‘a plurality rs eggs’’ by the use

of 4 #261 Incubators. The eggs are arranged

feat lovels,’” as is shown the arrangement of

Oxs.4and5). The operations ofvthe defendants

dares anya wary restricted open-

re t capacity for the aSreakery of foul air with-

cit Of moisture,” The defendants apply to the

es rr nt of heated air’’ created by the fans and

“y is other than variations of temperature.’’ The

| aes maar martes paateaaaienaaaass

96

the eggs in repeated cycles or circuits. The current of g

is ‘‘of sufficient velocity to circulate, diffuse and maint

the air throughout the chamber at substantially the »

temperature.’’ The air in the defendants’ incubators @

‘‘vitalized’’ and the ‘‘moisture conserved.’’ By the g

circulation and recycling of the air ‘‘the units of heat wae

be carried from the eggs in the more advanced stage of imp

cubation to those in a less.advanced stage.’’ The incubatem:

[fol. 136] operates ‘‘for the purpose specified’’ in the Smifi

patent, namely, the incubation and hatching of eggs. rs

Nor do the defendants avoid the use of the Smith prog

ess by removing the eggs from the drum after thy

eighteenth day of incubation, for in the drum are fou 4

eggs in different stages of incubation, both ‘‘endothermig®:

and ‘‘exothermic,’’ so that the equalization of temperat

between the cooler and warmer eggs is carried on at

times, and units of heat are carried from eggs in the ‘‘mog

advanced’’ stage of incubation to ‘‘those in a less advange

stage,’’ as called for by claim 1.

The Smith patent has been held valid by various Cow

of Appeal and by the Supreme Court, as noted on page

of Exhibit 2. I have examined the Answer filed herein, az

have examined the prior patents set up in paragraph X

thereof. The major part of the said patents have been oc

sidered in one or more of the several litigations on t

Smith patent, and have been held not to anticipate the p

ent. Such additional patents as are cited do not add any

thing to the prior art which has been repeatedly considere

The last three publications cited in this paragraph w

considered in the Snow case and held not to anticipate @

Smith patent.

The first three publications referred to in the same x J 7

graph, and the alleged prior use and publications, referrec '

in paragraphs XVII and XVIII, relate to the so-called Hai

ings’ prior use, and have been considered in the cases.

Wolf v. Buckeye, 296 F. 680 and Buckeye v. Cooley, 17 &

(2) 453, and held not to anticipate the Smith patent. S.

(fol. 137 ] prior uses and publications in paragraph

the Answer relate to the alleged prior use by the pat

Smith, and have been considered in substantially all of €

‘cases involving the Smith patent, and particularly in

Snow and Waxham cases. This allaged prior use is,

frug*s

8 _ 2 4

CR PES Nee AR

: Aentveilige, BPs Atala sig 4 tia Se

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the Ninth Circuit in Waxham v. Smith, 70 F. (2) 457.

of * a . E hibit 1a

* ‘The patent in suit expires April 16, 1935. The infringe-

ment by the defendants is continuing and is threatened to

continue unless enjoined by this Court. I am informed, and

believe, that since my visit to the plant of the defendants

they have added to their equipment by the purchase and use

of a large number of additional incubators of approxi-

Inately 125,000 egg capacity, of the same style as the #261

- Gescribed herein. It is very important and urgent that the

question of infringement by the defendants be determined

‘at once, and that an injunction issue against the defendants

{fols. 138-144] before the beginning of the hatching season,

which will start about February 1, 1935. Users of the Rob.

bins incubators and users of similar incubators in all parts

of the country are persisting in infringement by the use of

imcabators operating upon the same principle as the defend-

mts’ incubators, and it is essential to the enforcement of

ee Smith patent that the questioris here involved be de.

awed as s00n as possible. The damage which is being done

t@ the plaintiff is serious and irreparable, and unless the

> ifr nt can be enjoined at once the loss to the patentee

may not be resovered.

eS Joseph I. Taggart.

e. Sworn to and subscribed before me this 19th day of

January, 1935. (Signed) Walter C. Kelsey, Notary

Public. Com’n Expires Mar. 15, 1937. (Seal.)

‘PM dibdit 1, Smith patent No. 1,262,860, omitted in printing

‘ereppeers at side folio 951 of ‘he James record.

98

[fol 145] Exumerr 2—Wanraz C. Kutany

.

Ip Tae Sureeme Covust or THE Untrep Srares, Octosng

Tem, 1934 ES

No. 102

Samua_ B. Sucre, Petitioner,

@

vB. S

E. H. Syow and E. H. Snow, Doing Business as Snow's.

Harouerms and Sxow’s Incusator Company s

On Writ of Certiorari to the United States Circuit Court’

of Appeals for the Eighth Circuit Z

(January 7, 1936)

Mr. Justice Stone delivered the opinion of the Court:

Certiorari was granted, — U. 8. —, to review a decree of ;

the Circuit Court of Appeals its the Eighth Circuit, 70 F.

(2d) 564, which reversed the decree of the district court :

held valid, but not infringed, the first claim of the Smith

Patent, No. 1,262,860, of April 16, 1918, for an improved.

apparatus and method for the incubation of eggs.’ ‘

[fol. 146] Court of Appeals for the Ninth Circuit held the

same claim valid and infringed in Waxham v. Smith, 70.

F. ey 457, in which case certiorari was also granted, ar

: : The patent has been extensively litigated. Claim 1 “

been held valid and infringed in Buckeye Incubator Co.

Wolf, Loe Seg eel Ae gh pyr C. A. 6th) ; Bucks’

eye Incubator Co. v. Cooley, 17 F. (2d) 453 (C. C. A. Sed)

Miller Hatcheries, Inc. v. Buckeye Incubator Co., 41 fe >]

(2d) 619 (C. C. A. 8th); Smith v. Jensma, 1 F. Supp. ¢

(D. C.); Waxham v. Buith, 70 (2d) 457 (C. C. A. sth)

U. 8. —. The question thus presented is one of the scope

Only so much of the patent as relates to a method for

incubation is now involved. Correct appreciation of the

contentions made requires a brief exposition of the well-

_ known phenomens which attend the incubation of eggs

under natural conditions. - | ,

The period for hatching of the domestic hen is

twenty-one days. The eggs ce ead at the beginning of the

period of incubation, although at that time generation has

already progressed slightly. Continuation of this process

and successful incubation depend upon the application of ,

heat to the eggs, and the maintenance of their temperature

at not less than body heat, about 100° F., and not more

. than 105° F.. Any substantial divergence from this range

of temperature results in deterioration or death of the

embryo, and consequent failure of the hatching process. If

the temperature is maintained within this range, the eggs

during the first ten days of the period absorb heat required

to generate and maintain the life of the embryo. The eggs

are then said to be endothermic or heat absorbing. From

(fol. 147] the eleventh day until the end of the period the

embryo has developed to a point at! which the egg gene-

rates more heat than is needed to keep the embryo alive.

the excess heat is given off to the surrounding air or to

. objects in contact with the eggs, if at a lower temperature

-_ The development of heat accompanies the oxidation of

food elements within the egg, in consequence of which\ it

"gives off carbon dioxide during the period of incubation

absorbs oxygen from the external air, both of which

ass through the shell of the egg and its lining membrane.

During the period of incubation there is also gradual

@¥aporation of moisture from the egg, which tends to re-

Gape its temperature slightly. The best results are ob-

tained if the total evaporation during incubation does not

exeeed about 15%. Evaporation in excess of that amount

_ ‘Meets the embryo adversely, the chick when hatched being

artificial incubation therefore involves con-

F to three principal requisites; the maintenance of

sae? temperature during the period of incubation, the.

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prevention of excessive evaporation of moisture, and th

supply of an adequate amount of oxygen, which involve

also the removal from the incubator of the carbon dioxidg

which results from oxidation of the contents of the egg.

The artificial incubation of eggs is an ancient art.* I

appears to have been known to the Egyptians two thousani

years ago, and for a comparable period to the Chine

[fol. 14s), Until Smith, the patentee, carried on his experi-

- ments, the effort had been-generally to reproduce as nearly,

as practicable the natural conditions of incubation. If

practice eggs, in relatively small number, seldom more thar

three hundred and usually less, were placed, on the same iS

level, in a cabinet with heating means above the eggs, s

that the temperature above the eggs was maintained at

higher point, about 103° F., than that below. To sect

the requisite exposure of the eggs to the higher ware

ture, it was necessary, in the course of incubation, to tart

the eggs frequently, as is done by the hen in nature. Pre

vision was made ‘for supplying fresh air to the cabin

and for humidifying the air within the cabinet. All i

cubators were of the still air type; that is to say, the on ¥

= vement of ajr within the incubator was that caused hb

iraations of temperature at different points within

cabinet, resulting in some traiismission of heat by radiation

or convection. The opinion seems to have prevailed

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ing the cabinet was harmful. Successful operation of this

method required nice adjustments of the oe means a

Smith conceived the idea, embodied in his patent, of s

ting the eggs in staged incubation within the cabinet

. applying to them, in convenient arrangement for that puré;

pose, a current of heated air, propelled by means othel |

en ‘Staged incubation is the successive sé¥

, eee ot teist intervals of abow

‘first day there woul

e temperature of the introduced

*

manner. It was novel and invo

_ Barbed Wire Patent Case, 143 U. 8/275, 283; Krements v.

fol. 150] The 8. Cottle Co., 148 U. ‘8. 556, 559, 560.

_ That it was invention is not seriously disputed here, and

of the many courts which have passed on the patent none

has denied its validity. The new method had certain

Marked advantages over earlier ones. It was possible to

' €arry on the process of incubation continuously by placing

fresh eggs in the incubator at intervals, as those of the most

_Mdvanced stage hatched and the new born chicks were re-

moved. It was possible.to apply heated air to the eggs at

# constant temperature, thus avoiding the necepsity of

Yarying by nice adjustments the temperature of the applied

_ iif 80 as to conform to the varying temperatures of the

igg@e as they passed through successive stages of incuba-

We As the egg racks or trays could be placed in tiers, in-

aieed. of.on a single level, it was possible to arrange them

compactly and greatly increase the number of

a sie fle incubator. Before staged incubs “Ge.

“ieees: by Smith, it had not been practi

: Mors.of a capacity of more than about

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733

102

eggs. By use of the new method it is possible to ope

successfully an incubator containing as many as 52,

eggs, and the percentage of eggs successfully hatched }

artificial incubation has been materially raised. ’

The commercial success of the new method was immed s

ate and striking. At first the inventor devoted himself tg;

developing his own hatchery for the use of the new method.

it was the largest in existence, with a capacity of ovep:

1,000,000 eggs. In 1922 he began the manufacture and sal’

of the new incubator. In ten years he, and a corporatiog:

(fol. 151) which he had orgahized for the purpose, h ‘

made sales of incubators aggregating about $24,000,004,

having 8 a ng capacity of over 188,000,000. The olf:

type of incuba ion, with egge arranged at a single level, a ;

in a single stage of incubation, had thus become obsolete. |

That the method employed in the Smith type of incubate :

was novel and revolutionary in the industry is not chalk.

lenged. The question presented here is what scope may

rightly be given to Claim 1 of the patent; whether the

petitioner has drafted it in such form as to secure the fruits”

of his invention. Claim 1 reads as follows: ,

**1. The method of hatching a plurality of eggs by ar.

ranging them at different levels in a closed chamber anil

restricted openings of sufficient capacity for the esca

foul air without undue loss of moisture and ten a 4

current of heated air, said current being created by means

other than variations of temperature and of sufficient

velocity to circulate, diffuse and maintain the air through

out the chamber at substantially the same tempera

whereby the air will be vitalized, the moisture conse

and the units of heat will be carried from the eggs in

more advanced stage of incubation to those in a less ade

vanced stage for the purpose specified.’’ 3

It will be observed that the claim, standing by itself, at;

serts the essential elements of the method of incubatiag}

to be: (a) the arrangement of the eggs at different le

in staged incubation in a closed chamber, having restri

[fol. 152} openings of sufficient capacity for the escape

foul air without undue loss of moisture ; (b) the applicat

to the eggs of heated air in a current created by m

other than variation of temperature; and (c) as m

the boundaries of the claim, thecurrent of air is to

proper scope of Claim 1, and to

determine whether the characteristic features of respond-

ents’ incubator come within its scope. Respondents main-

tain that the'claim is restricted -in its scope in the manner

indicated above (a) by the disclosures of the patent itself,

(b) by the prior art, including the patentee Smith’s own

{fol. 153} prior public usage, and (c) by estoppels arising

from the file wrapper record of the patent.

1. The court below rested its decision on its interpreta-

tion of Claim 1, read in the light of the disclosures of the

patent, as restricting the patented method to a particular

arrangement of the eggs, whereby the current of heated

air, after being introduced into the cabinet, first comes in

contact with the eggs in the most advanced stage of in-

@ubation. It reached this conclusion by comparison of that

. part of the claim, which speaks of the units of heat as being

“earried from the eggs in the more advanced stage of in-

" Subation to those in a less advanced stage,’’ with the speci-—

‘@eations, which disclose an arrangement of the eggs such

‘Sat the introduced current of heated air first passes to

‘MBO More advanced eggs. As respondents’ incubators have

- @@eack arrangement of the eggs, and as in consequence the

R@feed draft of heated air does not reach the eggs in any

“@eteenlar order, the court held that the respondents do

> Ril

104

The patentee, obedient to the command of the statute

(R. 8. § 4888), gave such description of the manner of usiz

his discovery as would enable others skilled in the art 4

use it. The specifications first describe generally ¢

method by which the eggs in staged incubation are arrange

in tiers and subjected to forced circulation of heated

through the incubating chamber. The patent states: ‘‘

temperature of circulating air should be such as will pre

vent the eggs in the early stage of incubation from falli

below 100° and the speed of velocity of the circulating aj

[fol. 154] should be such as to carry the heat away from:

the eggs in the later stage of incubation and thereby hol§-

the temperature of those eggs at 105° or slightly below a

It is manifest that the temperature will remain practically

the same throughout the column of eggs, but the air

impelled with sufficient velocity to carry the heat away

from the eggs which happen to be in the advanced ste .

of incubation.’’ The drawings and specifications show the.

eggs arranged in tiers on either side of the chamber, with)

an open space or corridor between, at the top of which @4

revolving fan forces the air downward in the open spe *

of the corridor. Above the fan is a valve-controlled ait-

intake for the introduction of fresh

This text is long and has been trimmed here. Open the source document for the complete record.