# Transcript of Record — Smith v. Hall

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Transcript of Record
- **Published:** January 1, 1937
- **Citation:** 301 U.S. 216

## Text

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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.

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. 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? nce gl galiaaamaeladias

@ 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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100

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

eaR gs Sy
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 air and above the ae

7.

ia tidak dict se;

¥

of eggs on either side are shown ‘‘outlets for the rel
of foul air * “* ° of such restricted capacity as
prevent the undue escape of moisture.’’ >

It is true that drawings and specifications indicate a par: |
ticular arrangement of the eggs from the top to the bottom:
of the tier’ of trays, according to the stage of the incubating}
process, the eggs being arranged progressively from the
least advanced, placed at the top, to the most advanced;
placed at the bottom of the tiegs. They indicate also tha
as the eggs most advanced arghatched, they are to be ree
placed by moving downward the trays containing the seve
eral successive settings of eggs which are in earlier stages.
of incubation. They also speak of a ‘‘column’’ of air @
such speed as to keep the temperature substantially w
form, and show curtains hanging from the top of the cha
ber covering the ends of the trays on either side ‘of ¢
[fol. 155} Seer er oe ean eS point « chert distas

With this arrangement the air would be propelled d !
ward tothe floor of the chamber, gaining access to the oi

i?

105
by passing beneath the ends of the curtains to the trays of
eggs'at the bottom of the tiers. So much of the air as was
introduced through the intake would thus reach the mere
advanced eggs first. It would then be deflected upward

thé egg trays to the top of the chamber, and so
much of it as did not pass out through the restricted capa-
city outlets located at the top of the tiers of trays would
be returned to the fan to be propelled again through the
described circuit. ; ;

‘We may take it that, as the statute requires, the specifi-
cations just detailed show a way of using the inventor's
method, and that he conceived that particular way described
was the best one. But he is not confined to that particular
mode of use since the claims of the patent, not its specifica-
tions, measure the invention. Paper Bag Patent Case, 210
U. 8.405, 419; McCarty v. Lehigh Valley R. Co., 160 U. 8.
110, 116; Winans v. Denmead, 15 How. 330, 343. . While the
claims of a patent may incorporate the specifications or
drawings by reference, see Snow v. Lake Shore Railroad
Company, 121 U. S. 617, 630, and thus limit the patent to
the form described in the specifications, it is not necessary
to embrace in the claims or describe in the specifications
‘ali. possible forms in which the claimed principle may be
reduced to practice. It is enough that the principle claimed
is exemplified by a written “description of it and of the
manner of using it ‘‘in such full, clear, concise, and exact
{fol. 156] terms’ as will enable one “‘skilled in the art to
make, construct, compound and use the same.”’

Here the specifications showed an arrangement of the
eggs and a means of guiding the current of air so that it
Would reach the most advanced eggs first. But neither the
‘afFangement nor the means of guiding the current -of air

ate requisite to the application of the principle which Smith

‘diseovered and claimed. Without either, the heated air
may be given, as Claim 1 prescribes, ‘sufficient velocity to
aren diffuse and maintain the air throughout the cham-

er-at substantially the same temperature whereby *° * °
PUnits of heat will be carried from the eggs in the more
Se eeced stage of incubation to those in a less advanced
3mm."’ Claim 1 made no mention of -curtains or any col-
‘Mimof air or means of guiding the current of air, and the
“epmtor made no claim for any particular arrangement of
GPBSs, except that they should be at different levels.

foul ehh

BiG > :

Moreover, while the specifications and drawings she
particular arrangement of the eggs and a particular diy
tion of the current, nowhere in specifications or claim, i
stated either that the direction of the current is ma
or, what is the equivalent, that the order in which it re
the eggs is material. w
Only “by resort to the assumption that heat units ¢
not be carried'from the more advanced to the cooler
less advanced eggs, unless the initially introduced air f
came in contact with the more advanced, is it possible!
support the conclusion of the court below and read @
claim as calling for a particular arrangement which we
(fol. 157] enable the air current to reach the advanced e
first: Such, of course, would be the case only if the ox
of air were to make a single circuit, and either remain
its end in contact with the cooler eggs or pass out of
incubator altogether. Neither occurs in petitioner’s mi
chine, and there is no reason to suppose that either wod
produce the desired equalization of temperature. T
specifications and claim both contemplate a continuous ¢
culation of the current of heated air through the cham
which, regardiess of its direction, would continuously o
ate, by repeated contacts with the eggs in all stages, 4
equalize the temperature throughout the chamber by c.
ing heat units from the warmer to the cooler eggs. ;

The claim conforms to the specifications in prescril
“‘restricted openings of sufficient capacity for the esc
of foul air without undue loss of moisture.’’ The amoq
of foul air allo j to escape through the outlet of restri
capacity necessafily controls the amount of air taken §
In petitioner’s commercial machines, regulated to prod
the prescribed result in air vitalization and conservation
moisture, the interchange of foul air for fresh is fre
of 1% to 3% of the air content for each complete ci ow
the chamber. This means that the air content of the ¢

ber must } the circuit many times, theoretically fr
33 to 200, re an equal volume of fresh air wou
drawn in the intake. Such continuous circu

t is evident that Claim 1 does not prescribe that the cur-
rent of air shall be pro by any particular means, ex-
capt that it shall be by means other than variation of tem-
nor does it prescribe that the means of propul-
be given any particular location, or that the cur. ;
t of air shall be guided by ‘any particular means or
BTA aunt pastionics Seroctinns The omission of these re-

ts from Claim 1 is the more pointed as the other
is of the patent speak in particular of a power-driven
fam, of the location of the fan, of curtains and a partition
obviously intended to give direction to the current of air,

of a verti directed current of air, and of air circulating
from the bottom of the chamber into the parts of it occupied
¢ the tiers of egg trays. Thus by striking and obviously
contrast with other claims, Claim i covers broadly
159] the essential elements of the Smith invention as
already described it. Symington Co. v. National
Melseble Castings Co., 250 U. 8. 383, 385; Lamson Consoli-

pied Store Service Co. v. Hillman, 123 Fed. 416, 419 (C: C.

iination of the claim, in the light both of scientific
i of the particular form in which the petitioner re-
claim to practice as described in the specifica-
Wakes it plain that the claim does not call for a par-
> Order or arrangement of the eggs in staged incuba-
| the incubator, or that the propelled current should
; am in any particular order, or that it should -be
ntrol) lor directed by any particular means, or
“eular manner other that it should be of
produce the results prescribed by the

r-

.¢claim.. If the matter were donbtful, it is plain from what
has been said that the character of the patent and its com-
mercial and practical success are such as to entitle the in-
ventor to broad claims and to a liberal constraction of those

| which he has ‘made. Moreley Machine Co..v. Lancaster,

129 U. S. 263, 273-277; Eibel Co. v. Paper Company, 261
U. 8. 45, 63; Winans v. Denmead, supra, 341. In such cir-
cumstances, ‘if the claim were fairly susceptible of two con-
structions, that should be adopted which will secure to the
patentee his actual /invention, rather than to adopt a con-
struction’ fatal to the grant, Keystone Manufacturinff Co.
v. Adams, 151 U. S. 139, 144, 145;-McClain v. Ortmayer,
on U. 8. 419, 425.

[fol. 160] 2. We find nothing in the file wrapper defense
to disturb our conclusion as to the correct: interpretation of
Claim 1. It is a familiar rule that a patentee cannot
broaden his claim by dropping from it an element which he

was compelled to add in order to secure his patent. I. T.5.

Rubber Co. v. Essex Rubber Co., 272 U. S. 429, 443; Smith
v. Magic City Club, 282 U. 8S. 784, 789, 790. But the file
wrapper lends no support for the application of this rule
to petitioner’s Claim 1.

The history of Smith’s application in the Patent Office
is a long one. Four greups of method claims were succes-
sively presented to the Patent Office and three were succes-
sively rejected. The fourth group ultimately matured into
Claims 1, 2 and 3 of the patent.. It suffices to say that
Claims 1 and 25 of the first group claimed broadly, ‘‘The
method of hatching eggs by arranging the eggs in a column
and applying heated air forced about the eggs, the heated

air being adapted to the eggs in various stages of ifiquba-
tion” and ‘‘The method of hatching eggs by arranging the
eggs in a column one above the other and forcing heated air
said column.” In due course the broad claims thus

r 109

L161)- It is an illuminating fact that the entire written
mmer filed in support of Claim 1, as it was finally pre--
feted to the Patent Office and allowed, makes no referepoe
“to an order or arrangement of the eggs, or to allifting the
. tion of the eggs. in the incubator, no referente to the

@ wperiority, over drafts caused by variations of

-
-
Si

ae

¢

11¢ >

But the function which a machine performs, here the hateh-
ing of eggs, is to be distinguished from the means by which
that performance is secured. It is true that Smith made
use of the difference in temperature of eggs in different
stages of incubation, and the flow of heat units from one to
the other, in dvhieving the desired result. He did this by
arrangement of the eggs in staged incubation and applying
to them a current of heated air under the conditions speci-
fied by Claim 1. By the use of materials in a particular
manner he secured the performance of the function by
means which had never occurred in nature, and had not
been anticipated by the, prior art; this is a patentable
method or process. Corning v. Burden, 15 How. 252, 267,
268; Risdon Iron & Locomotive Works v. Medart, supra,
77; Cochrane v. Deener, 94 U. 8. 780, 788. A method, which -
may be patented irrespective of the particular form of ‘the
mechanism which may be availed of for carrying it into op-
eration, is not to be rejected as ‘‘functional,’’ merely be-
cause the specifications show a machine capable of using it.
Expanded Metal Co. v. Bradford, 214 U. S. 366, 382-386;
[fol. 169] Cochrane v. Deener, Supra, 787, 788; ef. Holland
Furniture Co. v. Perkins Glue Co., 277 U. S. 245, 255, 256.
Petitioner’s incubator: differs only in unimportant me-
chanical details from the infringing machine in the Snow
case. In it the eggs are set in staged incpbation, at differ-
ent levels, but in nd particular order. They are subjected
to circulation of heated air, set in motion by fans, which
carries heat units from the warmer to the cooler eggs and
maintains the air throughout the chamber at substantially
uniform temperature. There is a fresh air intake behind
the fans and openings in the ceiling for:the exit of foul air.
There is no o corridor, the tiers of egg trays being

id re-circulation oi the air within the chamber. The evi-
Beegence eupports the finding of the special! master and of the |
itwo courts below that the currents of air set in motion by
ppthe fans flow continuously along defined paths.
@ The petitioner’s machine thus employs every essential of
¢ the patented method as it is defined by Claim 1. Petitioner
Pa {fol.170] does not avoid infringement of respondent’s
= method patent merely by employing it in a machine of dif.
ferent structure than respondent’s, whether more or less
® efficiently. Winans v. Denmead, 15 How. 330, 344; Sewall
- y. Jones, 91 U.S. 171, 184; Cochrane v. Deener, supra, 789;
= Carnegie Steel Co. v. Cambria Iron Co., 185 U. 8, 408, 441.
a Affirmed. |

-

a

171

a Fae

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VERTICAL CROSS SECTION OF THE
ROBBEN INCUBATOR MODEL 26-!

QUITE ©. 4. B. RAIL ET AL
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THE ROBBINS WAY TO BATCHERY PROSTTS
Insures Dea Costly Delays

Accessibility of All Parts Save Time and

Black Units of t ot per pag per is.

Red Curve Caite of heat absorbed per egg per day 4
due to the rating of wa
fromithe e

rature,.
3 z
Red represents ess ts of t generated iG.
by Bhe egg t mustibe gi off by ry
to pring down to incubating temperature, =
2 ' 2 a ”
a v e ne 5
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° y! %
- 2 os
s ps
Keo SC =
« ee Se = #: nee: e } E

6‘ 7 8 9 00 ot t2 Ts NS «Ou tale PT 8 | 2

@?r2e3%4 $4 |
3 « ——— Days of Incubation —-,

ii
As ff
GRAPH SHOWING DEVELOPMEST OF HEAT UNITS DURING INCUBATION. = .
the heat development within an in-. then end the time of hatching. ‘There has been several GE city =
the 21 days of inoubetion. The heavy explanations why the eb ly stands still dur- SFE -
wits given off per egg day. ing the 16th day. best lanation is Aa in
ealories (.252 es: one B.T.U. that first 17 days the ehick has been living at Oe
indicatea the enount of oxygen”: off of ths of the egg while on the 18th day if be- aen§
eurve shows the carbon- gins to assimilate the yo! ich Santas aheoks nt Se ay
and oarbon-dicxi de are —- causes read , t which oheoks ae sees
pe ; eek eae ‘ ' | : ;: %, “Stee pe
The. above is are the result of with “

Exner 14—Wartme ©. Kates ,
purr Court or APpzats, Norra Crkourr
April 9, 1984.

{4 No. 7154

. tH. Waxnam, Doing Business as Waxnax
Hartownnrmes, Appellant and Cross-Appeliee,

2 vB.

, igi fiures'end Tua Boones Iwousaton Comrany,
‘= | Appellees and Cross-Appellants

peal from the District Court of the United States
je Bouth: a District of California, Central Division

fe Wilbur, Sawtelle and Garrecht, Circuit Judges

f Oirwuit Judge:
= was brought by Samuel B. Sait iia is
skeye Incubator Company, a licensee, under patent
a} | No. 1,902,800, issued April 16, 1918, for an in-
ve Herbert H. Waxham for the infringement
iby the we of un tntuliatar Meron sa Webliinn
br purporting to be manufactured under and

a t No. 1,728,980, issued September 24,
bbins. The matter was:referred to a s

a

in ihe

|
oP

128

The art of hatching eggs by incubators is old. The claim
advanced is that under all the old methods a relatively
“small number of eggs could be placed in the incubator at
one time; that by the method described in the Smith patent
it is possible to increase the number of eggs in the incn-
bator at one time, almost indefinitely, incubators manv-
factured under the patent having a capacity of from 25,000
(fol. 183] to 50,000 eggs being in common use. The claims
of the invention which are involved in this action are Nos. 1
and 2, as follows:

‘*1, The method of hatching a plurality of eggs by ar-
ranging them at different levels in a closed chamber having
restricted openings of sufficient capacity for the escape of
foul air without undue loss of moisture and applying a
current of heated air, said current being created by means
other than variations of temperature and of sufficient ve-
locity to circulate, diffuse and maintain the air throughout
the chamber at substantially the same temperature, whereby
the air will be vitalized, the moisture conserved and the
units of heat will be carried from the eggs in the more
advanced stage of incubation to those in a less advanced

stage for the purpose specified.

‘*2. The method of hatching a plurality of eggs by ar-
ranging them at different levels in a closed chamber having
restricted openings of sufficient capacity for the escape, of
foul air without undue loss of moisture and applying a
power driven current of heated air in an adjacent chamber
through openings into the egg chamber, said current being.
of sufficient velocity to circulate, diffuse and maintain the
air throughout the egg chamber at substantially the same
temperature, be the air will be vitalized, the moist-
ure conserved and the units of heat will be carried from
the eggs in the more advanced stage of incubation to those .

in a leas advanced stage for the purpose specified.”
(fol. 164) In the inoubation of eggs they begin to give off

AP ch: aA alas ohh, v4 eee
> DRT a ot Cy ae Se Se ae

=

» in the incubator so that a dtediion te oer ans 3
‘tat is,
of

tproduced by the heated air arising from the egg seing
Minced by the colder air enclosed in the inet,
‘Gy wp convection. The Smith method of incubation instead
@ talying upon the gentle currents of air thus produced con-
emplates a large volume of air in ar .nclosed chamber
pt at a uniform tem
lated by .means

¥
‘

egg also
the average
the incubator.

F. On

A. 6), 19

) 7s Ica Incubator Co. v. Hillpot, 22 F. (2d)

~, :
ins ea aloe 2 |
; 3 :

5

27
Miller Hatch-

a.
41 F. (2d) 619.

=.

’ > ‘ : 7 the twenty-first day is not essential to the Smith process,
for it is quite practicable to remove the eggs from a Smith
+ incubator and transfer them to a separate hatching cham-
©. .ber. The manufacturer of the Robbins Incubator adver-
2=. fises that separate hatchers, such as used by defendants,
ty te used with Smith and Buckeye Incubators, both of
* Which are made under the patent. (See page 14, Robbins
1983 catalogue, photostat attached marked Ex. 15.) How- ~

bbins (who is conducting the defense of this case)
‘tlaims that the #23 Incubators involved in the Waxham
ease, as well as the incubators used by the defendants here,
ate manofactured under Reissue patent No. 18,984 of Oc-
Er febet 31, 1933 (page 2 of defendants’ brief). In this pat-
= aut, copy of which is attached hereto, marked Ex: 16, the
7. natching’’ compartment, at-the left, is separated-from the
/= Smeubating’’ compartment at the right by 2 solid parti-
Men. It is uvident that either expedient is the full equiva-
aeat of the other and may be used interchangeably.
= i901. 197] The Buckeye Incubator Company, licensee of
‘| aeeith, in order to cater to some requests for separate

. Cares
ce >
"

we th tno eggs from the 19th to the 2let days are therein,

Elikve teed the affidavit of John J. Mullein, an employee

138 2

to avoid the Smith patent, but the Smith process is retained
in all incubators used with the hatchers. Competent hatch-
erymen throughout the country continue to use Smith,
, Buckeye and other machines which do not have the sepe.
rate hatcher, and their results are equal to, if not better
than, the results secured by the users of separate hatchers.
There is no recognized distinction between the terms
‘*hatching’’ and ‘‘incubation’’ as used by those skilled in
this art at the date of the Smith patent, nor is there any
distinction today, either in common usage or in scientific
treaties on the subject. The Smith patent‘is stated to be ;
for an ‘‘Incubator’’. The Supreme Court used the term
interchangeably in the decisions rendered January 7, 1935. :
On page 1 of Exhibit 2 that Court said:

“‘the Smith patent. ° ° ° for am improved apparatus :
and method for the coubation of eggs.”’ &

[fol. 198] and below:

‘‘Only so much of the patent as related to a method for
incubation is now involved.’’

and then:

‘*The period: for hatching eggs of the domestic hen is
twenty-one days.’’

Beginning at the bottom of page 3 of Exhibit 2 that
Court defined claim 1, in suit here, in the following lan- =
guage:

‘*It will be observed that the claim, standing by iteelf, _
asserts the essential elements of the method of incubation
to be: (a) the

OSE AEA Ao

mnits of heat carried from the eggs in the more ad-
i stage to those in the less advanced.’’

hs operations carried on by the defendants in the 26-1
bators respond to every element of the claim, and the
199) Supreme Court’s definition of the scope of the

e Master in the Waxham case, whose opinion was af-
i by the District Court, the Circuit Court of Appeals
the Ninth Circuit, and the Supreme Court said:

> find infringement it is only necessary to find that
is in more than one. stage of iboabefion, arranged at
» than one level in a closed chamber with

boning: are subjected to the air currents previously dis-
sed and defined.’’

@eeopy of this opinion is attached marked Exhibit 17.
4 Ri is not true, as stated by Maullein (p. 43 Fontana Rec-
Syeda te required that eggs in all stages
subation be in the incubator, for, up to the date of the
‘filed by the defendants, no Courts have definitely
seed upon this question. Contrary to Mr. Mullein, how-
, the Master stated, as quoted above, that is was only
essary to find eggs ‘‘in more than one stage of incuba-

b”? to find infringement.

McCormick seemed to be under the impression
P hechune the eggs were taken out of the incubator on
p 18th step d and cooled before being placed in the hatcher,
was some difference over the operation of the No.
bator. If so, Judge McCormick was in error, for
operation of the No. 23 Incubator, the eggs, at the
ay, are taken out of the turning racks and retrayed
ide of the incubator in the cooler environment of the
, 200) hatchery room, retrayed and replaced in the in-
compartment at the left. The eggs were, there-
sab; sted to the same cooling action at the same time
sir development in the No. 23 incubator, as in defend.

aes

Mis y exposure to the air with consequent sities

ora short period does not affect the chick with-
ive: or beneficially. The mother hen leaves
at intervals, and the eggs cool while she

140

is off the nest, but no harm is done or benefit gained

There has been no delay in prosecuting the Robbing ju.
cubator by plaintiff since the trial of that case before the
Master in the Southern District of California in March,
1930, shortly after the Robbins Incubator came upon. the
market. On the other hand, Robbins, who conducted that
case, has exerted every effort to delay and postpone’ the
final iis

Joseph I. Taggart.

Sworn to and subscribed before me this 20th day of
February, 1935. (Signed) Walter C. Kelsey, No-
tary Public. Com’n Expires Mar. 15, 1937. (Seal.)

| Exhibit 14
NRW KRNGLAND POULTRYMAN January 15, 1938 Jeneary 14, 198%

See. WAS ews
ephorms. it
by aes trae “

a. &
ow Hampss

Di , (BW) by the
uno States. with
calendar year

ii BRED FROM WELL BREEDE i - ‘i ai Wa eS

of car 52 weebiy hatches desing 1934, chowing 0 com- +95
average of the reapective hatchee of 1932 and !933

;
ae:

ti

several circumstances,
are :

|

thx sort of chicks, and this aort only.
on @ New England farm, by birds

y “The geoperatice work which the New England Agricultura) Experiment
74 hare done in uniform testing and eradication of Pullorem In no
> “ether part of the country could we find se many officialls-Pullorum-Free fhoc bx. ALI o. EBPPE Mn?
Ae, vaeet important of ali, the {ect that hers in New Engiand snd the D ROCK: = ap tne

| esthenct, peattry mes have fewed wm: tinet it ie the Cmeliry che mb hn C . a onde

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e206) Exuzarr 17—Warame C. Rauawy

In Equity. No. Qo

ve, B. Surrn and Tas Buoxsrg Iwousaror Company,
Plaintiffs, -
ie

= mt H. Waxyam, Doing Business as Waxuam Haton-
xnres, Defendant

Rarorr or Spzcian Masrsn

p the Honorable Judges of the United States District .
“Qourt for the Southern District of California; Central
Division :
» undersigned, David B. Head, appointed Special Mas-
fn the above entitled cause, pursuant to an order.of this
a) to take and hear evidence, to make conclusions as to
} in issue, and recommend the judgment tobe en-

a herewith submits his report:
» Action is in equity for infringement of Letters Pat-

No. 1,262,200, issued to the plaintiff, Samuel B. Smith,
ipril 16,.1918, for an incubator. The Buckeye Incu-

Ҥ | bator Company has been joined as a party plain-

by reason of a license under the. p

end nt is Herbert .Waxham. J.

148

were made by the filing of briefs, and the matter was taken
under submission. During the taking of testimony an in-
spection was made of an installation of the plaintiff’s in-
cubators at Van Nuys and Roscoe, California, and of a
Robbins incubator near Gardena, Califoxpia.

The plaintiffs have specified infringement of Claims 1
and 2 of the patent. The defendant has asserted the in-
validity of oe patent but relies mainly upon the defense of
non-infringement, particularly urging a narrow construc-
tion of the claims in suit. These claims are directed to a
process or method of artificially hatching eggs.

The Smith Patent No. 1,262,860 was issued with specif-
cations and claims for both a structure and a method. It
[fol. 208] is impossible arbitrarily to divorce and abstractly
to consider a method or process apart from the structures
used to carry it out. The structure of the patent in suit
will first be considered, although the claims in issue are
directed solely to the process.

The Art that is dealt with is that of artificially incubating
and hatching the eggs of chickens and other fowls. Arrti-
ficial incubation and hatching are very old and represent
man’s endeavor to imitate and even imiprove upon the bio-
logical function of the hen in the later stages of reproduc-
ing her kind. Chicken eggs ordinarily require twenty-one
days for the process of incubation and hatching. The eggs
should be kept at a temperature of not less than 100° and
not more than 105° Fahrenheit. In the early stages of in-

cubation the embryo ing the white of the egg as
food. The chemical ious involved require oxygen and
result in the off of carbon diexide. As the use of

oxygen increases heat produced by the reaction also
increases. Piaintiffs’ Exhibit 4 slows that there is a grad-
increase until the eighteenth day. Around the eigh-
to consume the yolk of the
increase in the chemical
by a corresponding in-
It is to be noted that during

ba}

- (1) To provide means to raise the temperature of eggs
_ in the earlier stages of incubation, and to provide méansfor - -
reducing the temperature of eggs in the later stages of incu-
bation, to the end that the eggs are kept at a temperature of
not less than 100° or over 105°.

(2) To provide means for supplying oxygen to the eggs
and for removing carbon dioxide from the air about them.

(3) To provide means for turning the eggs during the
first eighteen days of incubation.

(4) To provide means for preventing too rapid evapora-
tion of the moisture content of the egg, so that the embryo
will not dry out too rapidly.

Without considering the prior patents in evidence and
looking to the common usages of the art prior to the dis-
closure of the patent in suit (testimony of Taggart) it ap-
pears that artificial incubation was an old art. The prob-
lems heretofore outlined had been solved by providing
closed chambers with means for artificial heating, wherein
the eggs could be placed all on the same level and kept at a
uniform temperature until hatched. Means were provided
for turning the eggs. Due to the difficulties of temperature
control that would have been encountered with larger quan-
tities, not over five hundred eggs were placed in each en-
[fol. 210} closure or cabinet. The air surrounding the eggs
was kept as still as possible, giving consideration to ventila-
tion to remove air fouled with carbon dioxide and admit
air carrying oxygep. The incubators of this period worked
satisfactorily. However, it was apparent that economies
would result from incubators in large units, wherein a large
number of eggs could be hatched, with not a great deal
‘More care and expense than in the smaller unit. As will ap-
pear in the consideration of the patented prior art, the idea
of staged incubation was not new but its practical applica-
| ion had not been accomplished. Staged incubation may
be defined as a process of incubation wherein eggs of dif-
| fervent stages of incubation are placed in thé same inelosure>_
“ghd as eggs in the later stages are hatched, new eggs are
_/ get in, and this sequence is continued progressively and

:

eee a

Cb, it RWB y Raincier Oey 475.0%

‘.
x
.
;

ine ecting his endeavors to the perfection of staged incu.
shor patentee, one o: plain herein, developed
id disclosed the structure and method of the patent.

150

-

- ‘Referring to the patent, the structure there disclosed is
in the form of a large chamber in which eggs are arranged
in series or tiers of trays. A central compartment or cor-
- ridor, 5, extends longitadinally through the chamber with
a door at one end. On both sides of the corridor are the

compartments 7 and 8. In these compartments are placed -

a large number of trays in which the eggs to be hatched are
placed. Means are provided for tilting some of the
trays from ane side to’ the other. The compartments
divided from the corridor by curtains, 3 and 4, which extent
{fol. 211] almost to the floor. Electric fans, 18, are provided.
to fprcee air downward to the floor of the corridor, 5, where
it ‘‘mushrooms’’ and passes upward in the compartments,
7 and 8, through or around the trays to the space; 21, from
which space it is again drawn into the fans and started on
another cycle. Restricted openings, 28, permit a small
amount of air to escape during cirtulation, which is re-
placed by air drawn in through openings over the fans. The
timited interchange of air between the interior and exterior
of the incubator together with the means provided for in-
troducing moisture into the incubator serves to retain
within the enclosure the greater percentage of the moisture
givén off by the eggs. This re the eggs from drying
out too rapidly.

In operation trays.of eggs are placed first in the upper
stationary racks. As incubation progresses they are moved
to lower tiltable racks and progressively downward until

ooo on 2

© definite cycles, leaving the fans with a

-t

'
ae

tof incubation. The pi 23, are heated
' ‘water, and they heat air as it passes

> turning to the fan. Moisture jets, 26, spray water into ~
- the ci air to maintain the proper degree of bu-
midity within the chamber. Both heat and moistare- sre
capable of T caiaation: x F |
This atructure has been placed on the market by both the
patentee and the ot¥er plaintiff and has gone into wide-
spread use. Plaintiff's Exhibit 15 shows tho total gross

& business to have been in exéess of: $19,000,000.00.
The plaintiffs et Gat a a
from the patént except that all racks other than
hatching racks are tiltable, that the curtains do
below the bottoms of the lowest tilting racks, and
fans are used instead of two. One of these machines was in
evidence, plaintiffs’ exhibit 14. It has a capacity of 52,000
= eggs. The master observed certain experiments with Ahis
‘ machine and aleo with machines of the same type at the
= Hewitt Hatchery in Van Nuys. These experiments were
= concerned with the measurement of the direction and -ve-
= locity of the air currents while the fans were in operation.
- Generally these experiments confirmed the

Plaintiff’s Exhibit 5. Oe ee eas eee

ahit
EL

é speed of
= linear feet per minele nd paasing rough Ce og Som
partments at from 120 to, 40 feet per minute.
> [fol. 213] have a total capacity of 6,000 feet per minute. The
= of circulating the air in definite currents is to ob-
™® tain a uniform temperature throughont the
te As pointed out before, ee Rtn lh
: Of incubation must be furnished heat and those in the

152

same colamn-of air and kept in planes inclined to the hori-
zontal and there placed at such a point in the column
of air that the forved draft of air acts to hold the eggs at
a uniform temperature and to prevent them from becoming
overheated and thereafter placing the eggs into final posi-
_ fér the hatching operation.’’

” Claims 1, % and S.are directed tothe method described,
while Cldims 4 and’5 are directed to the structure.
Claims 1 and 2 are in issue and read as follows:

[fol. 214] ‘1. The method of hatching a plur&jity of eggs
by arranging them at differént levels in a closed chamber
having restricted openings of sufficient capacity for the
escape of foul sir without undue joss of moisture and apply-
ing a current of heated air, said current being created by
means other than tions of temperature and of sufficient
velocity to circulate, diffuse, and maintain the air through-
out the chamber at substantially the same temperature, -
whereby the air will be vitalized, the moisture conserved.
and the units of heat will be carried from the eggs in the -
more advanced stage of incubation to those in a less ad-

vanced stage for the purpose specified. —

**2. The method of hatching a plurality of eggs by ar-
ranging them at different levels in a closed chamber having
restricted openings of sufficient capacity for the escape of
foul air without undue loss of moisture and applying a
power driven current of heated air in an adjacent cham-
ber ed ase into the egg aa atte said es

moisture conserved and the units of heat will be carried
from the in the more advanced stage of incubation to

those in a: advanced stage for the purpose specified.’’
| ‘te rior Artin ovidenss consis of «larg. numbs

Fi art. The principal reference in this group is Prostor, U.
» §. Patent No. 553,723, defendant’s Exhibit A-15. This pat-
4 | ent, which calls for the forced cireulation of air in a closed
*thamber for the ordering\of tobacco, appeared in. 1896,
fe woe wall the dioclooure of tha'patent i oul Zhe proctios
of the incubator art was to keep the air as stilPas possible

itself, negatives any theory of anology between the arts. In
». ordering tobacco, the tobacco is placed in a chamber and
air is circulated to bring the tobacco to a proper moisture
- content. In the Smith iscubator eggs in various stages of
incubation, having different heat and moisture require-
-ments, must be kept at the proper temperature, in the
proper air, with a certain moisture content. There is no
analogy.

Among the patents for incubators, the Germen patent to
Stulik (1904) defendant’s Exhibit A-36, is the most perti-
“nent. This patent ‘discloses. an incubatér with a chamber
in which eggs are placed in different stagin of incubation.
- Air is drawn in from the bottom’and passes by convection
} from new eggs to old eggs and thence out through open-
“ings in the top. Here is found staged incubation but with.
gp Hol. 216) out a forced circulation of air, or the recircula-
Hon of air. The patent claims include only one element
“found in Stulik, i. e., the arrangement of eggs in different
z E stages of incubation in a closed chamber. . Stulik is not an
“Anticipation and this reference only goes to show that it
ze lid not occur to this worker in the art to apply a forced
¢ circulation of air to eggs in different stages of incubation.
s-. The same may be said of Zimmer, defendant’s Exhibit
7 -29 and of the ingenious machine of Winkler, Exhibit A-6.
- Alth pree® all of these patents are old they do.not appear to
2 been adopted by the art.

@ consideration of the patent and the prior art

eee
ee
yA

-

‘ . z erg Beant ny tee ay ty Kates eA rae o
eae ore , rt pee iat aietety bee

ek hk

ileal

¥: ze Kee * ie

P

reached by the circulating air. This must be upon a theory
that the transference of heat from old to new eggs must be
accomplished in one cycle. This limitation is not expressed
in either of the claims, in that the claims go no further than

In exathininig the file wrapper it is found that the Smith
-pplication passed through the usual interchange of ideas
and comments between the examiner and solicitor. Claims

By the paper ‘‘E,’’ the claims .

wed without comment from the

1 arguments were offered prior to that..
which pointed out the specific arrangement of old and
Smith this point was beforé

= . 156

he nothing in the‘ price uxt to Hsnls the Cetenitnah oe:
r nt of eggs progressively as to age from bottom to
The prior art

EAs to the file wrapper, the case of Fullerton Walnut
Growers’ Assn. vs. Barngrover Manufacturing Co. (9th,
. C. A.) 166 Fed. 433, clearly states the rale,

‘In the light of these authorities, it is clear that the
Discos of tha patent, unambiguaite bi Gar Gok pis 10 ta
‘interpreted according to the meaning of their oWn terms,
-and are not to be controlled or limited by any argument
or representation made in the patent office by the appli-
nt’s attorney as to the scope of the invention or the fea-
tures wherein it differs from the prior art.’’

A method or process claim cannot be limited to thé use
» of a specific structure to carry it out. Carnegie Steel Co.
9s. Cambria Iron Cv., 185 U. 8. 493. It is particularly to
* be noted that the claims in suit are method or progess claims,
“and that the novelty reste in the application by a forced
of a current of air to eggs in various stages of incn-
Bation arranged at different levels in closed chambers.
rag is proper to consider here the actual physical phenom.
as shown in the Smith incubator in practice. The veloc-
319] ity of the air as impelled by the fans is ‘found to
y auite rapid It is so rapid that a particle of air in a
fie “cycle is not apt to come in contact with but a small

wy ak 60 RAS ree PE Pe rn A
_ *%

one particle of air should come successively in con-
with eggs in each stage of incubation. From the very
of the process this is impossible in the Smith ma-

156

the chamber. During the process heat is transferred by ~
the medium of the air from the older hot eggs to the newer
cold eggs. If we.disregard the small amount of air that
is constantly changing through the restricted openings, the
air is circulated in closed cycles, and the order in which the
eggs are arranged does not-seem to affect the process, so
long as the eggs ure arranged at different levels so that the
circulating air may reach all of them.

By including in Claim 2 reference to the application of
air from one chamber to another, in contrast with the omis-

sion of such a reference in Claim 1, shows upon the face -

[fol. 220] of the patent an intention to limit Claim 2 to a
process carried out in 4 machine with a separate chamber
or corridor in which the air currents are generated, and it

nouncing a limitation, The cases of The Buekeye Incubator

Company vs. Wolfe (D. C.- 291 Fed. 253, affirmed (6th

.C. A) Fed. 680; The Buckeye Incubator Co .
Cooley. (D.
(2nd) 258

st

cisions, unreported (6th C. C. A.) 19 Fed. (2nd) 7a;

187

0 Is the patent limited to a particular character of air
mpovement—i. e., circulation in definite channels as dis-
== tinguished from ‘agitation. or churning?

. 7 Must the circulating air be first propelled over the
egg otic rt. plat ciara i
advanced stages?

¥. Son the first proposition the decisions in the Blum,
»Petersime, and Hillpot cases are substantially ‘in agree-
-ment. In the Blum case the District Court found that the
air was agitated by paddle-wheels which gave the air no
: particular direction but had a churning and stirring effect.
‘No fan-impelled currents were involved. Upon this finding
}a conclusion of non-infringement was reached, which was
‘affirmed in the Circuit Court of Appeals for the 1 Cir-
-euit. In the Petersime case the District Court f that a
ol around the egg trays stirred but did not drive the air.
«There was no fan in the machine. This decision discussed
2 all of the claims together, referring to the patent as a com-
o dix tion patent, and decides that the defendants did not
nfringe on one or the other of two grounds, one of which
apparently was based upon a conclusion that all of the ele-

nts of the patented combination were not used by the de-
fendant. Claims 1 and 2 were in issue, and it follows that
s court was passing upon these claims. The decision was
: irmed by the Circuit Court of Appeals for the Sixth Cir-

Circuit Court of Appeals found that although the air
ft. the fans in a definite current, the current did not per-
pt. but instead broke up and the air where it
Upon this finding the judgment »f the District

yay

© 2s’

ae i a

it

160

Fresh eggs are placed in trays and put in the racks of the
tilting section on the right. No particular order is’ fol-
lowed, except that the user is advised not to place trays of
eggs in the same stage of incubation close together. The
trays once placed are not moved until the eighteenth day.
At that time the eggs are placed in deeper trays and moved
to the stationary or so-called hatching racks on the left.
Here they are left until the chicks are hatched. As the old.
est eggs are moved out of the tilting racks, fresh eggs are
put in their places so that eggs, in various stages of incuba-
tion are always in the racks at different levels. The two fans
at the rear are operated at a speed of around 220 revolutions
[fol. 226] per minute. Being of large size they practically
cover the wall of the chamber, and due to their close proxi-
mity to the wall act to drive the air centrifugally toward
the sides, top, and bottom of the chamber and to draw the
air inward at their center.

Due to the interpretation that Claims-1 and 2 of the pat-
ent have received, definite findings upon the exact nature of
the movement of air within the chamber are necessary to
determine if there is identity or equivalency between the
method of Robbins and the method of Smith. The evidence
on this point has been greatly clarified by the substantiai
agreement of the experts for both parties (Taggart and
Daugherty). The plaintiff’s proof is in agreement with
representations made by Robbins in the case of ata
vs. Robbins, in the District of Colorado (Plaintiffs’ Ex
hibit 17). The master observed experiments on the Rob-
bins machine in evidence and upon a similar machine in
actual use at the Goddard Hatchery near Gardena. The
air in the Robbins machine is driven outwardly from the
sides of the fans and forwardly, along the walls of the
chamber at a speed of around 900 feet per ininute. The air
strikes the front wall of the chamber and turns inwardly

at about 250 feet per minute. i yeseen Ghteagh- end eee :

161
y tlires inches across. This epace ia ewes enbieenaad ak

2 whole. The testimony of Taggart, based upon-observa-
et on made in an empty machine, and illustrated by Exhibits —
: 4 0 11, and 12, is subject to the correction of Daugherty’s
hibits D and BE, which illustrate his measurement in a
© machine filled with eggs. The currents,"as demonstrated
© in a machine at Goddard’s Hatchery, move in the mabner
| © finstrated by Taggart, except that there is a very definite ..
| & increase of velocity and volume of air passing through the
~ pace between the hatching trays and tilting irays (line
; &-Y in Exhibits D and E). This current is suqh that little
~ of the air driven forward at the left wall of the machine
-. passes over the tilting trays on its return to the fan. The
> ait upon returning to the fans is again thrown out so that
'4n the continuing cycles at the velocity: maintained all of ©

© the air within the chamber is thoroughly circulated and

Me getosed, oo that a part of the alr passing along tae loft wall

© on one cycle will be thrown out in some other direction and
* im another current on the next cycle. Practically all of
y the air-in machine is moving in definite. measurable cur-
; -tents at all times. The capacity of the fans is approxi-
7 mately 12,000 cubic feet per minute. The temperature of

$° the eggs is maintained within the limite necessary to suc-

$. vessful incubation. It follows that this is done by trans-

© terring héat units from the older eggs to the newer eggs

p through the medium of the circulating air.

fol 228] Infringement—The defendant’s contentions
4 3 ipon the issue of infringement are several. It seems un-.
“Recessary to consider differences in structure unless those
diffe: 3 are such as to result in a difference in the process
The) “carry out Upon the péint raised as to the lack of
|Partitions in the Robbins machine, to direct the air cur-
ative, manner of the curtains 3 and 4 in the Smith
thachir a question as to whether or not the lack of
@ vecting manne cases the machine to anton other

a” * apply a current of air, said current being cre-
re sdee 44. dsoudcae, Midhans tad mohadelactpn aie

oe ag eames borane ages eae

mt the chamber at substantially the sam) tempera-

wh the air will be vitalized, thé moisture con-

a the units of heat will be carried from the eggs’

162
in the more advanced stage of incubation to those in a less
advanced stage.’’

The question is answered by the findings made as to the
currents in the Robbins incubator as compared with the
currents in the Smith machine. It was found that there
was no substantial difference in the velocity of the cur-
rents and that in both machines there were definite currents
passing through and around eggs, with the effect of keep-
ing them at a uniform temperature. Over the eggs in the
tilting trays the lowest velocities were in the neighborhood
of 40 feet per minute. The absence of curtains or parti-
tions in the Robbins machine is compensated by increased
fan capacity. The two fans of Robbins hava a capacity of
‘approximately 12,000 cubic feet compared with a capacity
{fol. 229] of the four in Smith of 6,000 cubic feet per min-
ute. It is evidnt that by omitting positive directing means
such as partitions Robbins has impaired the efficiency of his
machine in using greater fan capacity to obtain the game
velocities. That a process or structure is less efficiently
applied than a patent specified is no defense to a charge
of infringement,—King Ax Co. vs. Hubbard, 97 Fed. 720;
Elyria Iron & Steel Co. vs. Mohegan Tube Co., 17 Fed.
(2nd) 827; Standard Brands vs. Federal Yeast Corpn., 38
Fed. (2nd) 329—or that the process is carried out by an
apparatus or mode differing from that specified in the pat-
ent—T vs. Proctor, 103 U. S. 707.
T yppears to be no difference in the method of apply-
ing currents in the Robbins machine and that specified in
the patent. The same object is in view and the results are
the same, i. e., the eggs are held at a uniform temperature.
The practical result of permitting incubators to be built in
units of large egg capacity is attained by Smith with a
52,000 egg capacity and Robbins with a 23,000 egg capacity.
The contention that infringement is avoided because the
air currents in the Robbins machine, upon leaving the fans,
do not first pass over the oldest eggs is determined by the
previous consideration given the subject under the discus-
sion of the scope.of the patent. To find infringement it is
only necessary to find that eggs in more than one stage of
ieeineie eneans at ete than one love inn seek a

ffol. 230) eggs (eggs after the eighteenth day) are 4
ix separate trays not in the same tiers with other eggs, ¢
not affect the oe ee ns a
@ are placed at different levels in the chamber. This is done
*@ in the tilting racks.

e: The openings at the top and back of the Robbins machine
'@ are of such a capacity and are so used that they provide—

: S “for the escape of foul air without undue loss of moisture.’’

There has been no contention raised to the contrary.
& From the above it is concluded that the defendant in the
* muse of the Robbins incubaton has infringed Claim 1 of the
> patent in suit.
; As previously pointed ont, the inclusion in Claim 2 of
> the language, ‘‘a power driven current of heated air in an
“= adjacent chamber,’’ and the failure to include such lan-
-® guage in Claim 1, shows a clear intention to limit the claim
-= to a process carried out in a machine with at least two
distinct chambers. The Robbins machine has but a single
x chamber and it would be illogical to recognize a theoretical
epeusion of that chamber in view of the langnage of the
claim. Because the Robbins machine does not drive the
> air from a separate chamber to the egg compartment, Claim

: i is not infringed.

Wherefore, the master finds:

1. That this is an action in equity arising under the pat-
nt laws of the United States and falling within the juris-
& diction of this court;

fol. 231] 2. That title to Letters Patent No. 1,262,860 is
prested i in the plaintiff, Samuel B. Smith, and that the plain-
Poa Buckeye Incubator Company, holds an exclusive

» to manufacture, within certain limits, under the said
ts Patent;

© 3. That the said Letters Patent and, particularly, Claims
}and 2 thereof, are good and valid in law;

owe
d by the defendant.

}. That Claim 2 of said Letters Patent has not been in-
d by the defendant.

1135

a |

164

It is recommended that a decree be entered in conformity
with this report, that an accounting of profits and damages
be had, that an injunction issue against the defendant en-
joining those. acts herein found to infringe the arnt in

suit.
This report. was prepared in a drafted form and sub-

mitted’ to counsel to permit the filing of exception and sug-
gestions for correction. Both parties offered certain sug-
gestions, which, in the main, have been adopted. The plain-
tiffs excepted to the ruling on Claim 2. This exception is
denied.

Returned herewith is the file in the case together with
the transcript of testimony, exhibits, and other papers re-
lating to the proceedings on reference.

Respectfully submitted, (Signed) David B. Head,
Special Master.

{fol. 232] Puamrirr’s Exurrr No. 21

Ls tHe Unrrep States Disraicr Court ror THE District or
Con NRCTICUT

In Equity. No. 2369

Samug. B. Surra, Plaintiff,
bss

5 ee ee ee ee

SrirvLation

It is hereby stipulated and agreed by and between Coun-
sel for the parties hereto, that certified popies of testimony
previously taken in other cases upon the Smith patent,
to-wit :

Buckeye Incubator Co., et al. v. Cooley, D. C., N. J.;
Buckeye Incubator Co., et al. v. Archie B. Stone,

of Oregon ;
Snuth v. James Manufacturing Co., D. C., N, 5.
Smith v. Street, D. C., Minnesota ;

rélating to the so-called ‘‘Hastings’ | prior use’’, ‘
offered by either party and received in evidence.in th

tax case with the same force and effect an though it had
me been taken herein.

2@ » It is further stipulated and agreed by and between Coun-
& sel for the parties hereto, that the title to the patent in suit
> -is as alleged in the Bill of Complaint, and that the plaintiff
= [fols. 233-254] is entitled to recover for all infringements
* of the patent in suit.

A. C. Ely, Attorney for Plaintiff.
- Cleveland, Ohio, May 31, 1935.

Arthur E. Paige, Attorney for Defendants.
Philadelphia, Pa., June 3, 1935.

PLamtivr’s Exursrr No. 22

: Opinion of Supreme Court of the United States, No. 102,
- October Term, 1934, omitted. Printed side page 145, ante.

a Hole 255-257] Opinion of Supreme Court of the United
peng Pl No. 208, October Term, 1934, omitted. Printed side

3 [fol. 258] In toe Unrrep Grates Dusrasor Count ¥ FOR THR
a Disraict or CoxNRorTicUT

ol In Equity. No. 2369
= Samvunt B. Surrz, Plaintiff,
3 - Vs.
A. B. Hawt and L. C. Hats, d. b. a. ‘Hats, Baoruzns, Defend-

tthe | > cause is now before the Court

1. The validity of claim 1 of the Smith patent in suit No.
1,262,860 was sustained by a decision of the Supreme Court
of the United States dated on or about the 7th day of Jan-
uary, 1935, and the defendants for the purposes of this
case did not contest the validity of this claim. ,

- 2. The title to the patent in suit is in the plaintiff, Samuel
B. Smith, a resident of Cleveland, Ohio, and the said plain-
[fol. 259] tiff is the sole party in interest and entitled to all
' recoveries so far as the Robbins incubators Nos. 17, 23 and
26 I, used by the defendants, are concerned.

3. The defendants, A. B. Hall and L. C. Hall, are doing
business at Wallingford, Connecticut, in the hatching of
eggs under the name and title Hall Brothers.

4. The defendants have used and are using in their busi-

ness in the incubation of eggs incubators known as Robbins
Nos. 17, 23 and 26 I, or similar incubators.

5. These incubators involve the principles of incubation
set forth in claim 1 of the patent in suit.

6. The practice of removing the eggs from the incubators
on or about the 18th day and placing them in a separate
compartment for the balance of the full twenty-one days of
the hatching period does not constitute a departure from
the principles of the Smith invention as covered in claim 1
of the patent in suit.

(Sgd.) Carroll C. Hincks, United States District
Judge.

February 27, 19365.

ol. 260) Lx roe Diwsraicr Court or THE wrrep Starnes yor
THe Sovurnzesy Dimrsgicr or 4 oA

(New Albany Division—Transferred to Indianapolis)
In Equity. No. 89
Samus. B. Sarru, Plaintiff,
vs.

. Crarexce A. Spws and Ciarngence A. Sues db. 9. THonn-
= woop Povuurry Yarps and THorwwoop Harcuurms, De-
fendants

- Pursuant to Equity Rule 70% the Court now states its

. special Findings of Fact and Conclusions of Law as fol-
. lows:

: e ‘. Findings of Fact

© The Court now states the facts in the above-entitled cause

= to be as follows, to-wit: :

= (1) This is a patent suit in which the Plaintiff Samuel B.
| Smith, a citizen of the United States and resident of Cleve-

§ Hatcheries, infringed claim 1 of Plaintiff’s patent No.

# 1,262,860 issued to Plaintiff April 16th, 1918.

{fol.261] (2) That Plaintiff is, and has been since April
~ 29th, 1927, the owner of the aforesaid patent. No. 1,262,860
and of all rights thereunder.

168

(4). The essence of the Smith invention is the concurrent
incubation of eggs in various stages of endothermic and
exothermic condition in an atmosphere of heated air in
movement exceeding that due solely to temperature varia-
tions in such manner as to facilitate transfer of heat from

exothermic eggs to endothermic eggs.

(5) For the purpose of disclosing a manner of practicing
the method defined by the claim in suit, Plaintiff’s patent
illustrates and describes an incubator structure comprising
a chamber of room size divided by two suspendgd curtains,
the lower ends of which are spaced above the floor, into a
medial corridor and two flanking incubating compartments.
In each incubating compartment are several verti@@l racks
for the reception of interchangeable egg trays and the in-
termediate portion of each of these racks is so formed that
[fol. 262] the egg trays therein may be tilted about hori-
zontal axes in order that the eggs in those trays may be
properly tilted, or ‘‘turned”’.dyring a desired stage of in-
cubation. Within the chamber in the upper regions of the
medial corridor are several electric fans capable of pro-
ducing downwardly impelled air currents the air for which .
is derived from air in the upper region of the corridor, .
some of that air being fresh air drawn into the chamber by
said fans. The air currénts produced by the fans pass be-
neath the curtains, thence upwardly around the eggs and
back to the fans, a small portion of the air passing out of
the chamber through restricted openings leading from the

. 10. |

(6) Defendant has engaged in the ineubation of eggs
E (including hen’e eggs) and has utilized therein anincubator -
(fol. 263] structure comprising a chamber of room size hav-
) ing two longitudinal series of vertical racks for the recep-
; i” to of interchangeable egg trays, one series along each
Ie cite of the chamber and spaced. navt- dois factax mitial
» corridor. Spaced along the corridor are several vertically-
age arranged open-ended drums or cylinders within each of
which is a heating coil. Above each heating coil and within
* a : fhe upper end of the cylinder is an electric fan capable of
— P rodteins downwardly-impelled air currents which emerge
~ from the lower ends of said cylinders and are deflected
% laterally to the lower regions of the egg-tray racks. Be-
[i= tween each pair of the above-mentioned cylinders, near the
‘lower ends, is an electric fan each having a horizontal axis.
These fans are alternately set in opposite directions,
© 80 as to horizontally impel air currents toward an egg-tra
=. region. There are two other horizontal-axis electric fans
one at each end of the chamber beyond the end vertical
% cylindors and facing toward an egg-tray region and facing
ee “bg diréction opposite to the next adjacent horizontal axis
‘=~ There are also several vertical-axis downwardly-directed
we electric fans in the upper part of the chamber in the vertical
p-sones of the egg-tray racks, some along one side of the
= chamber and others along the other side.
i Moisture-containing troughs are arranged lengthwise of
: aad chamber in the upper part of the corridor zone and be-
th each series of tray racks.
sota, and still so does and defendant Street, doing business

3 as Street’s Hatchery & Poultry Farm, was at the coim-

mencement of this action and still is located at Osseo, Hen-

-. nepin County, Minnesota, where defendants are engaged in

- and doing business in the commercial hatching of eggs.

3. That this suit arises under the patent laws of the

United States and this Court has jurisdiction thereof.

4. On October 26, 1916, the plaintiff, Samuel B. Smith,

| & fled in the United States Patent Office-an application for
* letters patent of the United States for said improvement. ©

5. That prior to April 16, 1918, Samuel B. Smith as-

-. signed the right, title and interest in and to said invention

and in and to any United 8 tent to issue thereon to

- he Buckeye Incubator Company, a corporation of Ohio,

~ SS
&
a
‘

and that after due pr ings/ upon said application for
patent there was issued to Phe Buckeye Incubator Com-
pany, aforesaid, United States Letters Patent No. 1,262,860

on April 16, 1918, whereby the exclusive right of making,

using and selling the said invention and improvements
throughout the United States for the term of said patent
{fol. 270] was granted to The Buckeye Incubator Company,

_= aforesaid, its successors or assigns.

6. That under date of April 29, 1927, The Buckeye In-

* cubator Company, aforesaid, being then the owner of the
title in and to the aforesaid Letters Patent, did sell, as-
sign, and tiansfer to the plaintiff, Samuel B. Smith, his
a poe and secigns, the Sap Rees aecdieaasicus teria

i Letters Patent.

2 ™ That the plaintiff and his predecessor in title; The

skeye Incubator Company, have been at
Ip and exclusive owners of said patent.

all

@. That incubetors mancfactured and sold by

have been marked ‘‘Patented,”’ with the date
ee f the patent aforesaid, as required by the Statutes
ee ee ek ks ee ‘the def

174

herein were, before the commencement of this suit, duly

notified in writing of the patent aforesaid and of their

infringement thereof.

9. That defendant, prior to and not more than six years
before the filing of the bill of complaint herein, have used

in the hatching of eggs at their place of. business at Osseo,

Minnesota, Lower Incubators made by Lower Incubator
Company of White Pigeon, Michigan, and operated them
in accordance with the invention of Smith patent in suit
No. 1,262,860 and are threatening to cqntinue the use of
such incubators, thereby infringing the rights of the plain-
tiff as secured by said patent, all without license or con-
went of plaintiff.

{fol. 271] 10. That by reason of the infringement com-
plained of herein, plaintiff has suffered and is suffering loss
and damage and defendants have realized prefits and gains
which of right belong to plaintiff.

11. The Smith patent No. 1,262,860 as to claims 1 thereof
was adjudged valid and infringed by decree of this Court
of February 7, 1933, in Smith v. Snow, Equity No. 2119
and following ‘writ of certiorari issued by the Supreme
Court of the United States to the Circuit Court of Appeals
for the Eighth Circuit the Supreme Court by its decision
of January 7, 1935 (Smith v. Snow, Docket No. 102, October
Term, 1934) ‘reversed the Appellate Court and held Claim

1 of said patent valid and infringed and following receipt
of mandate to this Court by the Supreme Court, perma-

nent injunction was again awarded and issued March 4,

1935.

12. The Smith patent No. 1,262,860 is not anticipated by .

| ang 9 Se Sernane 208 wee, particularly as to Claim
1 thereof.
13. Defendants in the use of the Lower incubators shown

in Fiahasiit y Debits 5. § ond 7 oat cays in variond tages

aw

on wr. hep aAerity Sae

ae aN lB a ae la

we SMO Hare oO TOPE She ei Det or eens
i Sf gees ‘idee Tae eae

patented process less efficiently. Waxham y. Smith,
oe 88) Docket No. 208, October ‘Term, 1934, U. 8, Su-
preme Court, opinion delivered January 7, 1935.

_ 14. Defendant L. W. Street by his affidavit dated Feb-
-ruary 20, 1935, and filed in this cause on February 21, 1936,
+ changes defendant Street’s prior affidavit to represent that
he did use the infringing staged incubation during the 1934
hatching season but during the 1935 liatching season asserts
‘his intent to use only ‘‘single stage incubation.’’

15. Defendant Street by his affidavit dated March 5, 1935,
and filed in this cause, avers that defendants herein have
not on such date any eggs set in staged incubation in their
omg and poultry farm at Osseo, Minnesota, or else-

a

5:
S
&
5

e

H
i

» 16. This Court, having found that the patent-in-suit is
EF yalid and Claim 1 is infringed by this defendant, concludes
eat preliminary injunction should be awarded to enjoin
* and restrain defendants (until further order of this Court
© but in no event longer than April 16, 1935, which is the date
‘of expiration of the patent-in-suit) from directly or indi-
“rectly infringing Claim 1 of the Smith patent-in-suit, and .
particularly from using in the incubation of eggs within the
; United States any machine of the structure exemplified in
Plaintiff’s Exhibits 5, 6 and 7 attached to the affidavit of
oseph I. Taggart filed herein and referred to in the motion
xe pers as Lower incubator No. 10, or similar incubators,
im such manner as to infringe Claim 1 of said Smith Pat-
‘a jn-suit, save and except as to any incubator purchased
Hol. 273] by defendants or any of them from The Buckeye
ged Co. made and sold under any license or authority
n the plaintiff herein.
(Sgd.) Matthew _ M. Joyce, United States District

| 4 Judge.
St. Paul, Minnesota, March 8, 1935.

me RIESE an Ml a Aecge ae oP
. , ‘ ee: : . ik

176

Ix tae Diwratcr Court or tHe Untrep Sraras, Souruean
: Dusratcr or Inpiuwa, Tarre Haute Division

In Equity. No. 149

Samvuz. B. Saurru, Plaintiff,
vB.

Cuaries W. Jonnson, d. b. a. Jonnson Hartongry, Defend.
ant

Findings of Fact

This cause having come on for trial, and having been
heard in open Court upon testimony and-upon arguments
of counsel, the Court states the facts therein to be as fol-
lows, to-wit ;

1. This is a patent suit in which the plaintiff Samuel B.
Smith, a citizen of the United States and a resident of
[fol. 274] Cleveland, Ohio, charges that defendant Charles
W. Johnson, of Linton, Indiana, personally, and doing busi-
ness as Johnson Hatchery, has infringed ¢laim 1 of patent
No. 1,262,860, issued April 16, 1918. .

2. The plaintiff is and has been since April 29, 1927, the
owner of the aforesaid patent No. 1,262,860, and of all rights
thereunder, including the right to sue and all recoveries,

3. The puted of incubation of hens eggs is twenty-one
(21) days, during the first ten or eleven days of which
period heat must be applied to the eggs; during the re-
pag tered og hay hod. gh. teed bm aerate ging
must be removed’ in order to carry on successful incuba-
tion. By the eighteenth day the growth of the embyro has
reached such an extent that the eggs may be safely trans-
ferred to a separate chamber where the chicks emerge from
——aa pre Seneerstaty ont ey ©

F seotion, propelled by fans, or the like, so that the move-
2 “ment of the air is in excess of such movement as arises
4 ‘solely from temperature variations.. The air equalikes the
>. temperature of all the eggs, and conducts heat units from
~ [fol. 275] eggs in a more advanced state of incubation to
~ those in a less advanced state of incubation. ;

_ ° §..The patent in suit shows a particular form. of appa-
s ratus for carrying on the process of clair 1, and.a par-

“. ticular procedure, but the process set forth in claim 1 may
> be carried on by setting eggs in various stages of incubation
* in a substantially closed chamber, having restricted open-
=~ ings to permit limited amounts of fresh air to enter and
** foul-air to leave the chamber, without undue loss of moist-
~ ure; and propelling a current of air over said eggs; the

|= detaila of the apparatus and the particular procedure set
-. forth in the specification of the patent not being essential
~ to the successful aa ci of the process of claim 1 of
~ the patent.

~ . 6. During the six years preceding the fling - The Robbins No. 28 incubator comprises a single cabinet
“— provided oa its rear wall with two large fans which circn-

= ate air through the cabinet in current form, the air moving |
{fol. 276) conta Aghia cadhen pasting cade song and
the central portion of the cabinet. Small

Sete eae Phe
AD FRESE ay Sa aes
4 yng +,

178

tilting drum. At the eighteenth day the eggs, which have
been in the tilting drum drum for that period, are removed to

the

The Robbins No. 28-H incubator is substantially the
same as the No. 28, with the following exceptions: The in-
terior of the cabinet is divided by a vertical partition into

Robbins No. 23 incubators ; in the smaller compartment are
arranged the stationary hatching racks similar to those
in the No. 23 incubator. “A single, large fan is located at -
the center of the rear wall in the larger compartment, and
two small fans are located on the rear wall in the smaller
compartment. The fan in the large compartment circulates
the air in current form through the compartment, as de-
scribed in the No. 23 incubator. The eggs are set in the

large tilting drum of the same design as the No. 23 or No.
23-H, in which eggs are set at the same intervals. The fan
arrangement and circulation of air in the No. 26-I is the

same as in the Robbins No. 23. At the eighteenth day the
eggs, which have reached that stage of incubation, are re-
moved to a separate hatching cabinet which has a capacity -
of one-third of a No. 26-I incubator. '

8. In all of the Robbins Incubator models specified above,

fi {fol. 278} Conclusions of Law

' Upon the foregoing Findings of Fact the Court new
tates its conclusions of law:
(I)

& The Smith patent No. 1,262,860, as to élaim’ 1 thereof,
jis good and valid in law, and Defendant has infringed the
y geod :

: (i) ema
; “ewrseor is entitled to an accounting from Defendant of
fendant’s gains, advantages and profits resulting from
» infringement of the patent, and this

o Albert W Ward as Special Master in Chancery,
Teport such accounting.

i
+

(iit)

t,he patent in out expired April 16,1985, no injune- |
o shall issue.

; (IV)
| The plaintif is entitled to hin eta herein to be taxed.

(Sgd.) Robert C. Baltzell, U. 8. D. J.
Indianapolis, Ind, April 26, 1935.

¢

180

(fol. 279] Uxrrap Sraras Disratct Court, Disraict or Mix-
wresota, Fourts Division

Equity. No. 2723

Samug. B. Surru, Plaintiff,
vs.

L. W. Srauer and L. W. Srezet, Doing Business as Staeet’s
Hatonery & Pouirry Farm, Defendants

Findings of Fact and Conclusions of Law

This cause came. duly on for hearing before the under-
signed, one of the judges of said court, and was tried to
the court on the 18th and 19th days of April, 1935, at the
Federal Building, in the city of aeneapens, state of Min-
nesota.

Appearances :

Ely and Barrow of Cleveland, Ohio, and Paul, Paul &
Moore appeared for the plaintiff; Chappell & Earl and
Williamson and Williamson appeared for the defendants.

After considering all of the files and records herein, the
evidence adduced at the trial and the arguments of counsel,
the court concludes and finds as follows:

Findings of Fact

1. Plaintiff is : citisen of the United States and a resi-
dent of Cleveland, Ohio, and so was at the commencement
of this.action.

[fol. 280} 2. Defendant Street individually at the com-
mencement of this action resided at Osseo, Hennepin
, Minnesota, and still so does and defendant Street,
g business as Street’s Hatchery & Poultry Farm and
et’s Hatchery & Poultry Farm, was at the commence-

his action and still is, located at Osseo, Hennepin — an

where defendants are neuen hee

.4, That the defense of this cause was initially.o

. by C. M. Lower Incubator Company of White Pigeon,
, © Michigan gan, and is now conducted by Lower Incubetor Cor

> 6. On October 26, 1916, plaintiff, Samuel B. Smith, filed
® in the United States Patent Office, an application for Let-
+ _ters-Patent of the United States for Improvements in In-
z f cubators.
~ 6. That prior to April 16, 1918, Samnel B: Smith as-
~ signed the right, title and interest in and to said invention
» and in and to any United States Patent to issne thereon to
* The Buckeye Incubator Company, a corporation of Ohio,
* and that, after due proceedings upon said application for
=. patent, there was issued to The Packers Incubator Com-
>. pany aforesaid, United States Letters-Patent No. ;
= [fol. 281] on April 16, 1918, whereby the exclusive right of
= making, using and selling said invention and improvements
+ throughout the United States for the term of said patent
= were granted to The Buckeye Incubator Company, afore-
ae said, its successors or assigns.

> 7. That on April 29, 1927, The Buckeye Incubator Com- -
% pany reassigned said patent to plaintiff, Samuel B. Smith,

“together with all claims and demands in law or equity for
past infringement and the right to sue and recover therefor.

7 8, On April 29, 1927, contemporaneously with the reas-
= signment of said patent and said invention to eet,
@ Samuel B, Smith, The Buckeye Incubator Company, afore-
« said, and said Samuel B. Smith entered into two contracts;
Fone granting a license to The Buckeye Incubator Company
ire mnwatentare and sale of ieemsesare sane Sen PS

$e At f exelusive in The Buckeye Incubator Company ‘for in-

a cof theve diner, pad ie ene Seen romeo
a ih the | terms of bi aad he the aig uits f

: ro of the infringing Inonbatoes nd, pu The Buck-

Incut nt Cuenneony se Nek Ki eneemneny CRED Oe

9. That plaintiff and his predecessor in title, The Buckeye
Incabator , have been at all times the sole and ex-
clusive owners of ‘patent. |

) see ph pombe xe
bill of complaint herein,

-{1) Buckeye Incubator Co. v.
= Ohio W. D.), affirmed, 296 Fed.
=. eye Incubator Co., et al. v.
- affirmed 17 Fed. poh od stk
> bator Co., et al. v. Stone (D.
» ter, ‘umreported), (4) pee eee Sime oto (6
Balteell, unreported),

© and that said evidence as to said

to establish an anticipation of Ciaim 1 of the } i
tnd shows that the prior atampta of Basing t ae te
* problem of mass incubation did not i

of the Smith invention and were

by and those associated

» {fol. 284) called Hastings use not anticipate the in-
os ogame ec seen

the ence of Smith +. Snow, et
2 , and also in the case of W
TS L. ed. 298, and that in the 7
decisic af the Bamcene Cont tat he en
“€ tith patent as follows:
»*“*fa) the arrangement of the
staged incubation in a closed

PPE
| Hay

184

‘‘it is plain from what has been said that the character of

the patent and its commercial! and practical success are such

[fol. 285} as to entitle the inventor to broad claims and to a
* liberal construction of those which he has made.’’

that the practice ‘of incubation in Lower No. 10 incubator
used by these defendants comes within the scope of Claim
_ 1 as defined by the Supreme Court.

16. That defendants do not avoid infringement of Claim
1 of the Smith patent because the egg-development has been
by the use of two characteristic principles of the Smith in-
vention, viz., ‘staged incubation’’ and ‘‘forced draft,’’ and
infringement is not avoided by using the patented process
less efficiently. Waxham v. Smith, 55 8. Ot. 277 ; 79 L. ed.
293.

17. That the Smith patent-in-suit sili expired April
16, 1935, permanent injunction is not awarded.

18. That the preliminary injunction heretofore awarded
plaintiff in this cause and which expired April 16, 1935, was
not improvidently granted and therefore the bond or under-
taking heretofore: filed herein by plaintiff may be released.

Conclusions of Law

1. That plaintiff i is entitled to recover from the defendant’
the profits, gains and advantages which said defendants
have received, or which may have accrued to them by reason
of their infringement of Claim 1 of said Smith patent-in-

suit No. 1,262,860, of April 16, 1918.

‘2. That plaintiff is entitled to have this cause “referred
to a Master for an accounting and it is hereby referred to

Howard 8. Abbott, as | Master of this Court, Room
‘[fol. 286] 314 -Federal , Minneapolis, Minnesote,

as Urlneaty Megnkabid te eetictaia, atado and revert %
the court a true and correct account of the extent of the

Sel een of Cnt 1 fod patent and

i inlets Oe
es,

ors

“ts :
egg hee he 3 Aaild yh he 34

Peek Ripe 3
Fe aa

ee ee eT
PAE, es Sa
ESR OHS

” eae ee

LY,

. by en & LF
—_ cx sak alee Soh i st ‘ .
RaeONY wera ty
et Raye Rene a ee
ee ee "

1B5.

# tiff, on said accounting, shall have the right to cause ex-
amination of the officers, servarits, agents and employes of

said defendants, ore tenus, or otherwise, and also to ex- °
amine other witnesses and to cause production and exami-

nation of the books, vouchers and documents of said de-

fendants and to have all necessary process of the court to
compel such attendance and production before said Spe-
cial Master, at such times and places as he shall, from time

_to time, direct.

3. That plaintiff is entitled to recover from said defend-
ants the taxable costs of the plaintiff in this Court and that
plaintiff is entitled to have judgment and execution against
said defendants for said costs.

4. That an interlocutory. decree be submitted in accord-
ance with these Findings of Fact and Conclusions of Law,

Dated at Minneapolis, Minnesota, this Ist day of May,
1935.
Joseph W. Molyneanx, United States District Judge.

- [fol. 287] The defendants’ requests for Findings of Fact

and Conclusions of Law are hereby. denied and defendants
are given an exception to the ruling of the court. —
. Joseph W. Molyneaux, United States District Judge.

—_—_-

‘In toe Unrrep Srares District Court ror THE WesTerx

District or OKLAHOMA

No. 1628 E

t / Samug. Sarru, Plaintiff,

V8.

a RB. W. Hays, d. b. a.. Hankins’ Hatcrsry & Datry,

Defendant
Findings of Fact and Conclusions of Law

»2his cause having come on for trial, and having been
arc d in open court, and the Court being fully advised in
)-premises, the Court states the following Findings -of
t and Conclusions of Law:

Findings of Fact

J

. This is a patent suit in which the plaintiff, Samuel B.
Smith, a citizen of the. United States and a resident of
{fol. 288] Cleveland, Ohio, charges that defendant, R. W.
Hankins of Alva, Oklahoma, personally, and doing business
as Hankins Hatchery & Dairy, has infringed claim 1 of pat-
ent No. 1,262,860, issued April 16, 1918.

It
The plaintiff is, and has been since April 29, 1927, the
owner of the entire right, title and interest in the said pat-

ent together with‘the right to sue to recover all recoveries
for infringement of the said patent.

Ii

The patent in suit is valid, particularly as to claim 1

thereof.
IV

During the period of six years prior to the filing of the
Bill of Complaint herein and until the issuance of the re-
straining order in this,case on April 4, 1935, the defendant
has operated, in the commercial hatching of eggs, at his
place of business at Alva, Oklahoma, incubators known as
Robbins No. 23 and Robbins No. 23-H.

V

Defendant has also sold and/or leased four other incu- : |
bators, known as the Robbins No. 23, during the period of
six years prior to the filing of the Bill of Complaint herein. .

VI

The Robbins No. 23 Incubator referred to in peregrs Z
IV and V hereof, is identical with the incubator bold to be. os

17
E three days, and stationary hatching nal to which the eggs
‘are transferred on the eighteenth day for. the hatching of
> the chicks. The No. 23-H incubator is substantially the
‘same as the No. 23 incubator except that the stationary
: Desains racks are separated from the tilting drum by a
- vertical partition. The eggs in the tilting drum are set at
the same intervals.. In each of said incubators No. 23 and
23-H the air is propelled in current form through the tilting
egg drum by a large fan, or fans, and the chambers are pro-
= vided with small openings for the intake of fresh air and
= exhaust of foul air. :

Vil

> Claim 1 of the patent in suit has been infringed by the
*. operations of the Robbins No. 23 Incubator by the defend-
= ant in the manner described in paragraph 6 hereof; the
} defendant has not avoided claim 1 by transferring the eggs
“@ on the 18th day of the hatching period to a separate hatch-
=~ ing chamber, but has also infringed upon the said claim in
® the operation of the Robbins No. 23-H in the manner de-
* scribed in the said paragraph.

vill

=. The defendant has also infringed upon the patent in suit,
= either directly or contributorily, by the sale and/or leas-
= [fol. 290) ing of Robbins No. 23 rs as set forth in
. % paragraph V hereof.

sa

b- 2
. Fe
:

Ix

E 4 \erhe Incubators manufactured and sold by the plaintiff .
2 and its licensee, The Buckeye Incubator Company, have
@ at all times been marked ‘‘Patented’’ with the date and
= number of the patent in suit; and in addition the defendant
Poses duly notified in writing of the patent and his in-
tr gement thereof.
= x |
7 a manufacturer of the Robbins Incubators referred to
ae Robbins Incubator Company, engaged counsel
ee defendant, prepared the answer filed herein and
@ directed and gontrolled the defense of this suit

188

preparatory to the final hearing, but did not appear or
defend the action at the hearing.

XI

By reason of the infringements sciciebibinaih of and speci-
fied in paragraphs VII and VIII hereof, the plaintiff has
suffered loss and damage and the defendant has realized
profits and gains which of right belong to the plaintiff.

Upon the foregoing Findings of Fact, the Court now

- states the following:

‘Conclusions of Law

I

The Smith patent 1,262,860 as to claim 1 thereof is good
and valid in law.

[fol. 291] I
The defendant has infringed upon the same.
m

Plaintiff is entitled to an accounting from the defendant
of defendant’s gains, profits and advantages, and to the
damages suffered by the plaintiff by reason of the infringe-
ment of the said patent.

IV .

That this cause be referred to the Hon. James B. Culli-
son, as Special Master in Chancery, to take and report
such accounting with his recommendations therein, subject
to review by this Court, and the plaintiff shall be entitled
to adequate processes of this Court to recover such amount ~
as shall be awarded herein.

V ie
As the patent in suit expired April 16, 1985, no eae: -
VI

The plaintiff ie entitle to his cout in this cane here

uneoneal ee
x. _,. Bdgar 8. Vaught, U. 8, District Jud
City, Oklahoma, ss 2, 1985. if

124
we

ae

, aie
4 e tol 292] Usrren Stares Disrmsor Count, Hasrsax Dwrmot
i or Wiscomsrs

In Equity. Civil Docket 4387
Samus. B. Surrz, Plaintiff,
° vs. , °
F. J. Lz Mrevx, La Piawr Hatonzame, Defendants _
-: Findings of Fact and Conclusions of Law
- This canse having come on for trial and having been

-4 . heard in open Court upon the pleadings, testimony of wit-
“= nesses, and arguments of counsel, and the Court being fully

-%. advised in the premises, and upon consideration thereof,
" states as follows:

Findings of Fact

1. That the parties are residents and citinens: respectively
s alleged in the Bill of Complaint.

= ee That Patent No. 1,262,860 was issued ‘on 16, 1918,
® to The Buckeye Incubator Company, a corporation of Ohio, —
= ‘and was assigned to the plaintiff on April 29, 1927, together
Se
. 3 or.

e 3. That infringement of claim 1 of the above patent is
= alleged, and that the said claim is valid, and that Samuel B.
© ffol. 293] Smith was the first, sole, true, and original inven-
E. © tor of the improved method of hatching eggs described in
ya, 60id patent and set forth particularly in claim 1 thereof.

Po nants tng ed ri
9 the filing of the Bill of Complaint and since that time,

Groen Bay, West Bend, Clintonvile, Sawyer, Gillet, and
Tee est Bend, Clintonville, Sawyer, Gillett, and .

Waterto n, Wisconsin, certain certain incubators known and de-
: ana a8. follows:

eMo.19
m No, 8 both with and withot separate hatahing :

bbi ea 26-1

—¥

190

and have operated such incubators by setting the eggs

therein in staged incubation, i. e., setting fractional parts
of the incubator at intervals of from three to four days.

5. That the incubators enumerated in paragraph 4 hereof
are the same or substantially the same in construction and
mode of operation as the Robbins incubators No. 23 which
" were involved in the case of Waxham vs. Smith, reported
in 55 Sup. Ct. Rep. 277.

6. That the defendants have not avoided infringement
upon the process described in the Smith patent and set
forth in claim 1 thereof by separating the hatching com-
partment from the incubating compartment or by placing
a partition therebetween, in the Robbins No. 23 incubators,
nor by removing the eggs from the Robbins No, 26-I in-
[fol. 294] cubators on the 18th day of the incubating period
and placing them in a separate cabinet or chamber for the
balance of the hatching period.

7. That the Smith patent in suit covering the process of
hatching or incubating eggs by placing them in staged in-

cubation in a cabinet or room provided with restricted —

openings for the interchange of limited amounts of foul

and fresh air, and having fans or the like to produce suf-~

ficient . movement of the air to maintain the tem-
perature of the incubator substantially uniform throngh-
out, is enti a liberal interpretation, and is of sufficient

scope to cover all of defendants’ operations of said Rob-

bins incubators.

8. That the patent in suit is not invalid either for incor-

rectly os incompletely disclosing the principles of the in-
vention.

9, Thet the defendants have infringed claim 1 of the

palans fa, ait See Sip seperation of the incubators Hated 19 1 3

paragraphs 4 and 6,
/W. "That the detente herein has been conducted by th

-

",

+18, That the preliminary injunction bereteters-evahMlll
fol. 295] plaintiff in this cause, and which expired April
@ 26, 1935, was not improvidently granted. — |
4 Conclusions of Law
@~ 1. That claim 1 of patent No. LARA fo walla
» been infringed by the defendants.

: | 2 That plaintiff is entitled to recover the gains, profits, .
@ and advantages which defendants have received and the
Pose which plaintiffs have suffered.

__ 3. Plaintiff is entitled to recover. the taxable cost to be

f agdinel the aatendants ste ohare Sets: ome
hia cgiinst the dsteatente thendies:

wn That the bond filed herein by the plaintiff be released.

| Tat an interioentory deen be anbmited in soora
s herewith.

F. A. Geiger, United States District alge. |
F: Milwaukee, Wisconsin, May 14, 1935.

—t

s fol, 296) In tHe Unrrep States Distraict Court, Waersnx
—e - Drretcr or Mimssovei, Waermans Drvision

In Equity. No. 2682
. Samvuzz B. Saurrs, Plaintiff,
vs.
ep Bozum,d. b. a. Ganpen Crry Hatongry, Defendant
Findings of Fact and Conclusions of Law

Eis cause having come on for tral and hav been
i in open court and the Court being fully in
b Prins, the Court eaten th following Finding of

%

oo ee

P .

192
_ Fred Boehm, is a resident of Garden City, Cass County,

Missouri, where he operates and has operated during the
period of six years prior to the filing of the Bill of Com-
plaint, a commercial hatchery: under the name of Garden
City Hatchery.

[fol. 297] ee

- The patent in suit is valid, particularly as to claim 1.
thereof. )
Ut

- During the period of-six years prior to the filing of the
Bill of Complaint herein the defendant has operated one
or more incubators known as Robbins #23 incubators.

IV . )
The defendant has infringed upon claim 1 of the patent
in suit by the operation of the Robbins #23 incubators.
¥

iy reason of the iittieenea complained of and stated
in paragraphs III and IV, the defendant has realised Profits
which of right belong to the plaintiff. :

Conclusions -of Law
I

The patent in out and clam 1 ie valid and detendant ba e
infringed the’ same: pa Ns

Plaintiff is entitled’ to an sila ins the defendant .
of defendant’s profits realised by the defendant in infringe- :
ee ee 2

[fol 298) . That an interlocutory decree be submitted in accordance
_ herewith.
, _ Merrill E. Otis, United States District Judge.
e [fol. 299] Ix raz Unrrep Srares Disraior Covet, Easterns
BS * Dureicr or Mronican, Nostoern Drvision
sé ae
a In Equity. No. 555
: Samunt. B. Sarru, Plaintiff,
a v.
3 Kars and Herszet L. Kars, d. b. a. PP). NOR,
= Defendants
Final Decree

"(Filed May 29, 1935)

This cause having come on for hearing and having been
‘yeard in open court, the Court being advised as to the
premises, it is hereby Ordered, Adjudged and Decreed :

1. That the patent in suit, No. 1,262,860, dated April 16,
8, is valid, particularly as to Claim 1 thereof.

2. aa the defendants have infringed Claim 1 of said
tent by the’ use during the period of six years prior to the

z of the bill of complaint of incubators known as Rob-
s No. 26-I incubators.

3.10 8. The parties having reached a settlement no
pounting will be ordered herein.

3 fae 1 party shall pay its own costs.
, (Signed) Arthur C. Tuttle, U. 8. District Judge.
ity » Michigan, May 29, 1935.

wed as.to form: A. L. Ely, Counsel for Plaintiff.
’ ‘Sardine, Counsel for Defendants.

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PLAINTIFF'S EXHIBIT No. 25

! j ,
% : ipment

Robbin:
has run 75% to 85% of eggs set, and operated

ms

Se SNR ae Pre

by only four men.”

Br RE EE Sats

«

“Our 400,000 egg capacity

4

at capacity

~q?

inti
Hialeah

aay HUG

5 4
Baa
4 4 s “4

N .
t. e[fol. 314] ence to Samuel B. Smith or the writer at the of-

_ flee of The Smith Incubator Company, 3108 West 12 1st
> Btreet, Cleveland, Ohio.
Very truly yours, George C. MeCemaneiay, Attor-
ney for Samuel B. Smith.

gem-ecc.
| eerie °
eee wonees ated.)

208
[fol. 315] Priarstivr’s Exuterr No. 31

| April 11, 1934.
Hal! Bros., Wallingford, Conn.
GunTLEMEn :

On August 10, 1932, we notified you that the use of Rob-
bins Incubators "had been held to infringe the Smith Pat-
ent No. 1,262,860 by the District Court in the Southern Dis-
trict of California in the case pending against Herbert H.
Waxham, a Robbins. user. You -are now advised that the
Circuit Court of Appeals of the Ninth Circuit has on Mon-
day, April 9, 1934, affirmed the decision of the Master and
the District Court in the case.

We are advised that you are and have been for some time
using one or more Robbins Incubators. Use of these incu-
bators constitute an infringemient of the Smith Patent, and
you are hereby notified to discontinue at once and to ac-
count for damages to 8. B. Smith, the owner of the patent.

Unless prompt action is taken by you and a satisfactory
settlement made, suit-will be brought against you for the
infringement of the patent and application made for in-
janction preventing your further use of the Robbins Incu-
bators.

- Very truly yours, George C. McConnanghey, ‘Attor-
ney for Samuel B. Smith.

Registered Letter.
(Return receipt attached.) ‘

(Here follows 1 photo, side folio: 316)

No. 82

i
:
hg
a
=
a
=
5
oe

» ga Ee
aT Sap el Fe yaa tee .

e
iy
ve

{fole. 317-354) Defendant’s Exhibit “‘F’’ omitted
eating co & cppeere ot cite Sn: eae

In Equity. No. 2026
Buoxers Iscusaton Company and Sauce. B. Surre

vs.
"a Wu.us F. Huror

; Final Decree

t

{ (Filed September 3, 1927)

This cause came on to be further heard-at the April Term
~ of this Court, upon the pleadings and proofs, and was
argued by counsel for the respective parties, and there-

‘ upon, upon consideration thereof, it was
é Adjudged and Decreed, First, that defendant
has not igftinged plaintiff Smith’s Patent No. 1,262,860.
-*: Second, fhat said patent does not disclose a successful
method tion and, consequently, method claims 1
o. and 2 are invalid and void. Third, that the bill of

>. be dismissed. Fourth, that plaintiffs have not

[Text truncated at 120,000 characters. The full text is on the page linked above.]

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386010_0178%3A1. Public record. Not legal advice.