Petitioners Brief — Smith v. Hall

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Supreme Court of the Anited States

OCTOBER TERM, 1936.

Nos. 35 and 36.

SAMUEL B. SMITH,

Petitioner,

vs. :

A. B. HALL and L. C. HALL, d@. b. a.

HALL BROTHERS,

Respondents.

SAMUEL B. SMITH,

vs.

JAMES MANUFACTURING COMPANY and ELMIRA

HATCHERIES, INCORPORATED,

Respondents.

Petitioner,

BRIEF FOR PETITIONER.

CHARLES NEAVE,

DEAN 8. EDMONDS,

ALBERT L. ELY,

Counsel for Petitioner.

—_——————————

ACKERMAN PRESS, Inc. 143 Liberty St, ‘Phones Rector 3-585¢-7

SUBJECT INDEX.

, PAGE

Tue Opinions BEeLow 1

JURISDICTION 9

STaTEMENT OF THE CaSE 2

The Prior Suits - , 2

The Smith Invention 7

Brief History of Hastings. 7

Te Errors AssigNep anp To Be Arauep 11

Summary oF ARGUMENT 1]

ARGUMENT 15

Point I.—The Smith invention consists of a

plurality of elements, all of which must be

present .

Point II.—In none of his efforts did Hastings com-

bine the essential elements of the Smith in-

vention

The Hastings Defense in General

‘‘The Dollar Hen”’ ‘

The Davis (Brooklyn) Incubator

Principles of the Smith Invention Not

Embodied in It i

The Davis Incubator Was Not a Public

Use, Nor a Reduction to Practice;

It Was an Abandoned Experiment —

The Davis Incubator Was Not Suc-

cessful

The Muskogee Incubator

The Muskogee Incitbator Was Not a Du-

plication of the Brooklyn Incubator

—Nor Did It Embody the Smith.

Process

The Muskogee Incubator Was a Failure —

Wexcuses Offered for the Musko gee

Failure

Hastings’ Port O’Connor Hatchery —-~-

Hastings’ Subsequent History

Point III.—Neither in the Hastings abandoned

application as filed, nor in the subsequent

amendments thereto did Hastings disclose the

Smith invention

The Hastings Application Can Be Used Only

to Corroborate Other Testimony of the

Prior Uses

Point IV.—Under established principles of patent

law the Hastings defense must be rejected —

Success Is Not Anticipated by Failure

Prior Invention and Prior Uses Must Be

Established by Evidence Which Leaves

No Reasonable Doubt of Their Existence

and Efficacy

Point V.—The respondents have used the Smith

invention and infringed upon the patent

iil

PAGE

Hall Brothers ae 7 73

James Manufacturing Co. | 76

The 18 Day Defense | 82

Point VI—The Smith patent is not invalid be- \

cause of insufficiency of disclosure.m_____ 86

CoNCLUSION 89

_iv

CASES CITED.

‘PAGES

Barbed Wire: Patent Case, 143 U. S. 275, 284 14, 17, 30, 72

Boyd v. Cherry, 50 Fed. 279, 283 29

Buckeye Incubator Co., et al., v. Cooley (D. N. J., un-

reported, see anoendix, p. i), affirmed 17 F. (24)

453-455 (C. C. A. 3) 4, 6, 13, 23, 38, 45, 52, 91

Buckeye Incubator-Co., et al., v. Hillpot (D. C. N. J.),

22 F. (2d) 855 4

Buckeye Incubator Co., et al.,.v. Stone (D. Oregon,

| Maguire, Special Master, unreported, see appen-

dix, p. ix) 5, 38, 45, 91

Buckeye Incubator Co., et al., v. Wolf, 291 Fed. 253-

258 (N. D. Ohio, W. D.), affirmed 296 Fed. 680

es ati : .4, 6, 20, 25, 91

Cusian v. American Smelting, etc., Co., 11 F. (2d) 766

(C. C. A. 9) 30

Coffin v. Ogden, 18 Wall. 120, 124 14, 28, 69

Consolidated Valve Co. v. Crosby, 113 U. 8. 157-179 —. 70

Corn-Planter Patent Case, 23 Wall. 181, 210, 211 30, 62

Deering v. Winona, 155-U. S. 286-301 72

Donner v, Sheer Pharmacal ae 64 F. (2d) 217 (C.

C. A. 8) 89

Eibel Co. v. Paper Co., 261 U. S. 45-68 29, 70, 72

Electric Smelting, etc., Co. v. Pittsburgh Reduction

Co., 125 Fed. 926 (C. C. A. 2) 30

Franc-Strohmenger & Cowan v. Arthur Siegman, Inc.,

27 F. (2d) 785, 788 (C. C. A. 2) 29, 89

Gaylor v. Wilder, 10 How. 477 — | 30

His Majesty the King. etc., v. The Smith Incubator

Co. (Exchequer Court of Canada, see appendix,

p. xxv) 5, 50

PAGES -

Rowell v. Jones, 91 U.S. 171, 183 83

Smith v. Hankins (D. C. Okla., Vaught, J. ” pabenetied,

see Hall R. p. 185) 86

Smith v. Johnson (D. C. Ind., Baltzell, J.; unreported,

see Hall R. p. 176) 86

Smith v. Kribs ’. C., Mich., Tuttle, J., unreported,

see Hall R. p. 193) 86

Smith v. Le Mieux (D. C. Wis., Geiger, J., encennand, ake

see Hall KR. p. 189) 86

Smith v. Sims (D. C. Ind, Baltzell, J., unreported,

see Hall R. p. 167) 5, 86, 92

Smith v. Snow, 294 U. S. 1 2, 3, 5, 7, 11, 15, 16, 33,

43, 67, 71, 75, 80, 84, 86, 87

Smith v. Street (D. Minn.; Joyce, J., ialensaalie see

Hall R. p..172) 86

Smith v. Street (D. Minn., Molyneaux, J., ikea.

see Hall R. p. 180) , 5, 6, 86, 92

Smith & Griggs\Mfg. Co. v. Sprague, 123 U.S. 249-257 31

Standard Paint /Co. v. Bird, 175 Fed. 346, affirmed 182

Fed. 1023°(C. C. A. 2) - 89

Sun Ray Gas Corp. v. Bellows Claude Neon Co.,

49 F. (2d) 886 (C. C. A. 6) 89

Telephone Cases, 126 U. S. 544.545 —. 69

Tilghman v. Proctor, 102 U. S. 707, 710 29

U.S. Blind Stitch v. Reliable, 67 F. (2d) 327 ww... 63

Waxham v. Smith, 70 F. (2d) 457, 459 (C: C. > oe

| 294 U. = | peer 5, 7,11, 16, 71

73, oi 80, 83, 86, 87

Wickelman v. A. B. Dick Co., 88 Fed. 264, 266, 267 29

IN THE

Supreme Court of the Hnited State

OCTOBER TERM, 1936.

Samuet B. Samira,

Petitioner,

vs.

A. B. Haut and L. C. Hau, d. b. a. Hats BrorHers,

Respondents.

Samvue. B. Smits, — ;

Petitioner,

vs.

James Manuracturinc Company and Eumma

HatcHEriges, INCORPORATED,

Respondents.

Seetiaetinal

BRIEF ON BEHALF OF PETITIONER.

The Opinions Below.

The opinions of the Circuit Court of Appeals for the Sec-

ond Circuit (83 F. [2d] 217, 221), both rendered upon the

same day, held invalid U. S. Letters Patent No. 1,262,860

(claim 1 in the Hall case and claims 1, 2, 3 and 5 in the

James case), granted April 16, 1918, to Samuel B. Smith,

¥ reversing decisions of two District Courts which had held

* the patent valid and infringed — R, ha 211; James R.

II p. 1259).

Jurisdiction.

These cases are here on writs of certiorari inder the

provisions of Title 28, Section 347, of the Uniied States

Code.

, Statement of the Case.

These two cases went to the Circuit Court of Appeals

upon two different records, they were argued on the same

day, and the Court of Appeals treated the cases as though

the two records constituted a joint record applicable to both

cases. We are, therefore, presenting the cases jointly.

The Prior Suits.

The Smith patent, here in suit, was held valid and in-

fringed by this Court in two cases entitled*Smith v. Snow

and Wazham v. Smith (294 U.S. 1 and 20). The decisions

of this Court in those two cases were rendered January

7, 1935. The decisions of the Court of Appeals for the ©

Second Circuit in the instant cases were rendered more’

than.a year later, and the patent was held invalid because

of asserted prior invention, use and disclosure by a

. man named Milo Hastings. That defense was no} pre-

sented in the Snow and Wazham cases decided by this

Court (it was pleaded in the Snow case,® but no proofs

were presented). It had been unsuccessfully presented in

various prior suits.

In the Snow and Wazham cases, this Court was con-

cerned primarily with the scope of the protection secured

*Snow Record page 8.

by the Smith patent under its claim 1, which claim is in-

volved in both of the instant cases. But in determining the

scope of that claim, this Court examined and commented

upon the evolution of the modern method of and apparatus

for incubating chicken eggs as shown by the testimony and

the prior patents, and held the Smith patent to be valid

and of far-reaching scope. Thus, this Court said in the

Snow case: g

‘“‘This history of the prior art serves to emphasize

rather than to discredit the striking advance made by

Smith in effecting the combination defined in Claim 1.

More than the skill of the art was involved in combin-

ing and adjusting its elements in such fashion as to

solve the major problems of artificial incubation’’ (294

U.S. 17).

And, as presenting the revolutionary character of the Smith

invention, this Court said:

‘*The.commercial success of the new method was im-

mediate and striking. At first the inventor devoted

himself to developing his own hatchery for the use of

the new method; it was the largest in existence, with a

capacity of over 1,000,000 eggs. In 1922 he began the

manufacture and sale of the new incubator. In ten

years he, and a corporation which he had organized

for the purpose, had made sales of incubators aggregat-

. ing. about $24,000,000, having a total egg capacity of

over 188,000,000. The old type of incubator, with eggs

arranged at a single level, all in a single stage of in-

cubation, has thus become obsolete’’ (294 U. S. 7).

The. patent hgs been the subject of continuous litiga-

tion extending over the past fifteen years. It has been

reviewed by this Court, by five Courts of Appeals, by

fifteen District Courts, and by two Masters appointed by

District Courts, and a corresponding Canadian patent has

A _UC“” "=

been passed upon by a Court of Canada. In all of

these numerous cases prior to the instant ones, the patent

was held valid*, as was noted by this Court in its opinion

in the Snow case (294 U. S. 1), and in the cases at har the

patent was held valid by both District Courts.

The Hastings defense has been known since the bela’

ning of the litigation of the Smith patent.

In the first case, Buckeye, et al., v. Wolf, the history of

Hastings’ futile effort, including the complete Hastings file

wrapper and many of the Hastings publications, was re-

viewed by Judge Westenhaver in the District Court for

the Northern District of Ohio, and his conclusion was that

Hastings had not contributed anything of value to the solu-

tion of the problem of mass incubation (291 Fed. 253, 258).

.This decision of Judge Westenhaver in the Wolf case was

affirmed by the Court of Appeals for the Sixth Circuit,

without specific discussion of the a defense (296

Fed. 680).

In the next case, Buckeye, et al., v. Cooley, in the New

Jersey District Court, the Hastings defense was more

completely exploited. Hastings testified as to his prior

efforts, the Hastings abandoned application complete was

again presented, and an additional publication was offered.

The case was tried before Judge Bodine and the Hastings

defense was again rejected. The Couft’s opinion has not

appeared in printed records but it is reproduced in a sep-

arate pamphlet constituting an appendix filed with this

brief. Judge Bodine’s ruling was affirmed by the Circuit

Court of Appeals for the Third Circuit, whose opinion is.

reported in 17 F. (2d), at page 453, the discussion of the

Hastings defense being on pages 454 and 455.

*If_ respondent, Hall, refers to the Becond paragraph of the

decree in the Hillpot case (Hall R. p. 209), we direct the atten-

tlon of the Court to pages 2 and 3 of our reply brief on petition

for certiorari in the Hall case.

SEE aaa

The third suit, Buckeye, et al., v. Stone, was in the Dis-

trict Court for the State of Oregon and there again the

Hastings defense was urged. Tho case was referred to a

Master, Mr. Maguire, and he alsc rejected the Hastings de-

fense. His opinion is not reported but it is reproduced

in the appendix. There was uo review of the Master’s

report by the District Court or the Court of Appeals.*

In the following years and up to the decisions of this

Court in the Snow and Wacham cases, no one of the de-

fendants in suits based on the Smith patent saw fit to urge

the Hastings defense.

Since the decisions of this Court in the Snow and War-

ham cases putting an end to numerous other defenses

against the validity of the Smith patent, various other de-

fendants have urged the Hastings defense.

In Smith v. Street, in a District Court of Minnesota, tried

before Judge Molyneaux, Hastings testified at the trial

(Hall R. p. 54) and the records of all previous litigations

were presented, and again the Hastings defense was re-

jected (Hall R. p. 183).

In Smith v. Sims in the Indiana District Court, tried

before Judge Baltzell, the record of the present James case

was presented (Hall R. p. 54; James R. p. 1106) and again

the Smith patent was held valid and infringed (Hall R.

p. 171).

Lastly, Hastings and the Hastings publications appeared

in a suit brought in Canada to invalidate the correspond-

ing Canadian Smith patent and the Exchequer Court held

the patent valid. The Court’s opinion (1936 Ex. C. R. p.

105) deals with many issues; those portions dealing with

the Hastings defense are the only ones of importance here

and they are reproduced in the appendix.

The present Hall case was tried before Judge Hincks in

the Connecticut District Court. Hastings and two cor-

*The unreported decisions in the Cooley and Stone cases are

contained in Plaintiff's Exhibit 2 in the Hall case (Hall R. p. 43).

roborating witnesses testified at the trial and the Hastings

publications and abandoned patent application were pre-

sented. In this case the Hastings testimony dealt pri-

marily with the Davis incubator at Brooklyn. Judge Hincks

also rejected the Hastings defense, commenting on the

‘‘dearth of evidence’’.in support of the defense and the

absence of any successful achievement as a result of Hast-

ings’ effort.

The present James case was decided by Judge Knight

in the District Court for the Northern District of New York

at Buffalo. The testimony in support of the Hastings de-

fense in this case was taken by deposition and includes a

deposition of Hastings. No attempt was madé to support

the testimony of Hastings as to the Davis incubator in

Brooklyn; ‘instead, the testimony related practically en-

tirely to Hastings’ second effort at Muskogee, Oklahoma.

Here again, the Hastings defense was rejected and the

‘Smith patent sustained and held to have been infringed.

No discussion of the Hastings defense appears in the

Court’s opinion but the rejection of it is covered by the

findings of fact (James R. p. 1266).

Thus, the Court of Appeals for the Second Circuit, in sus-

taining the Hastings defense, ruled oppositely to the Court

of Appeals for the Sixth Circuit in the Wolf case and the °

Court of Appeals for the Third Circuit in the Cooley case,

and oppositely to ‘the ‘decisions of the District Courts in

the instant cases and the several other District Courts

we have noted in the foregoing. Three of the District

Court Judges who rejected the Hastings defense had had

the marked advantage of observing Has&ngs and listening

to his testimony at the trials before them in the Hall,

Cooley and Street cases. Such personal contact of Judge

Bodine with Hastings in the Cooley. case led to the follow-

ing comment (App. p. viii).

‘*Hastings’ testimony adds only this to the Hastings’

writings, that one is satisfied that his experiments were

never in any definite direction and that he never

achieved the pdint of successful operation. * * * Hast-

ings was and is boastful. Gonvincing proof of his al-

leged method and device is certainly lacking. Success

never rewarded his attempts.’’

The Smith Invention.

We do not here detail the facts in connection with the

character and accomplishment of the Smith invention. The

petitioner’s proofs on these points in the instant cases are

the same in substance as those presented to this Court in

the Snow and Wazham cases. |

The facts are set forth in the decisions of this Court in

those cases (294 U. S. 1 and 20).

Brief History of Hastings.

Details of the facts in relation to the Hastings defense

can best be presented in the course of the argument (p.

16-73, infra). We shall, here, merely outline the situation.

Hastings first appeared in 1908 as an employee of the -

Poultry Division of the Department of Agriculture. While

there he became acquainted with a certain method and

apparatus developed by one Madison Cooper for the pres-

ervation and cold storage of vegetables. The idea occurred

to him that incubation of eggs could be successfully car-

ried on by the use of the same principles which had proved

successful in cold storage: He elaborated this idea in a

book published. in 1909 entitled ‘‘The Dollar Hen’’. After

the publication of this book, he resigned from the Govern-

ment employ to put his idea into practice.

His first attempt was at Brooklyn, New York, at a poul-

try farm operated by cne Davis who furnished the neces-

sary funds. There, in the spring of 1911, Hastings built an

inenbator following Cooper’s ideas and tried-it out in the

cellar of the Davis house. This was an incubator of 6,000-

egg capacity, but in actual test it never contained more

than 2,000 eggs.

On May 3, 1911, and while still at Brooklyn, Hastings

filed an application for patent which shows nothing more

than Cooper’s cold storage plant applied to the hatching of

eggs. The application as filed did not disclose the prin-°

ciples of the Smith invention, and, had it issued as a patent,

would not have anticipated Smith. After a prosecution

extending over a period of two years, the application was

rejected by the Patent Office and abandoned.

The Brooklyn (Davis) incubator was operated during

the months of March and April, 1911. The Court of Appeals

for the Second Circuit said that this incubator was success-

fully operated during the years 1910 and 1911. This was

an error for the testimony shows that the incubator was not

built until the spring of 1911 and was operated only during

4 short period in the hatching season of that year (James

R. p. 506; Hall R. p. 52). There is no testimony_in either

record how or to what extent the incubator was used after

Hastings departure. There is no evidence that any eggs

were set therein after April, 1911. The only testimony basis

for a finding of successful operation is the oral testimony of

Hastings (Hall R. p. 52). There is no corroboration of

his testimony by witnesses who were connected with this

enterprise. Neither Davis nor his wife testified that the

operations were successful; in fact they were in no position

to give any such testimony. Neither of them followed the

operati#ns sufficiently to permit of giving such testimony.

Mrs. Davis gave hearsay testimony that comparative tests

were made with the old style incubators (Hall R. p. 62).

But no one except Hastings testified as to results secured -

and no further evidence of the tests was produced. The

finding of the Court of Appeals that ‘‘there is uncontra-

dicted testimony that this Davis hatchery was an operative

success’’ (Hall R. p. 242) is inexplicable.

Some eggs may have been hatched, but unless the inct-

bator actually secured a percentage of hatch comparable

with or superior to the old prior art incubators it can-

not be said that the results were successful, and as to the

actual results secured there is no proof in the weord.

Furthermore, at no time during its operation was the inen-

bator loaded to more than one-third of its operative capac-

ity (Hall R. p. 55); nor was the Brooklyn incubator a

‘*Public Use’’ as the operations were carefully guarded from

the public. .

Hastings left Brooklyn in May, 1911, and in 1913 the

incubator was torn down and completely destroyed (Hall

R. p. 60).

In the fall of 19H, Hastings: appeared at Muskogee,

Oklahoma, where, with the financial backing of one Lieber,

he built another type of:incubator. The Court of Apptals

for the Second Circuit found that this Muskogee incubator

embodied the same construction as the Brooklyn incubator.

This is not true for, in the Muskogee incubator, Hastings

operated upon an entirely different principle from that em-

bodied in the Brooklyn incubator. In the spring of 1912,

Hastings started operations at Muskogee and carried them

on through that hatching season, making a number of

changes and revisions in the construction as the season pro-

gressed. In May, 1912, he fled Muskogee, leaving the in-

eubator on the hands of his supporters and no more eggs

were set therein that year. ;

In 1913, Hastings’ backers put some more money in the

enterprise and set one batch of eggs, but, when this one

batch was a failure, they abandoned the incubator and it

was never operated again (James R. p. 785). In the fall

of 1913, this incubator was destroyed and no trace of it

Temains (James R. p. 607).

The operations in Muskogee were a complete financial

and practical loss. Many customers testified to disappoint-

ing results and in some cases to complete failure te hatch

eggs. During the year 1912, some eggs may have been

batched but no records were produced to show the amounts

or percentages. Hastings and Lieber both testified that

the results were variable and it is quite apparent that,the

average was so poor that continued operation of the incnu-

bator was impractical.

The Court of Appeals for the Second Circuit found that

this Muskogee incubator ran through the hatching seasons

of 1912 and 1913. Undoubtedly it was attempted to oper-

ate it as a commercial enterprise during the hatching sea-

son of 1912, but the unsuccessful attempt to hatch one set-

ting of eggs in 1913 hardly warrants the finding made by

the conrt.

From Muskogee Hastings went to Petaluma, California,

at which poultry center he received no support, and later

he appeared at a new poultry center at Port O’Connor,

Texas, where, in the fall of 1912, he secured additional

funds and built another incubator of a still different type

and with a capacity of 150,000 eggs. This incubator was

operated for a single setting only of 720 eggs and was then

abandoned by Hastings (Jamas R. p. 573).

Hastings then sought the support of the Hall Incubator

Company, an established concern engaged in the manufac-

ture of the old still-air type incubator. After a brief so-

journ with this concern, he discontinued all further effort

until 1918 (James R. p. 575-576).

In 1918, after Smith had been commercially operating

his successful hatchery in Cleveland, Hastings visited Smith

and then went on to Tiffin, Ohio, where he built another

incubator and of that he said, ‘*I tried out a method of

hatching very much more like the Smith Buckeye devices

than I had used in the past’’ (James R. p. 577). This

Tiffin incubator was also a failure and was abandoned by

Nothing further was heard of Hastings until the litiga-

tion of the Smith patent brought him into the Courts.

During the period covered by these years, Hastings at-

tempted to publicize himself and his efforts in newspapers

and periodicals, holding himself out as the successful in-

ventor of modern mass incubation. There was a total

absence of practical achievement resulting from his efforts.

The Errors Assigned and To Be Argued.

' The errors assigned in the petition for writ of certiorari

and to be argued here are: ;

1. The Court of Appeals for the Second Circuit erred

in holding that the Hastings defense was effective to render

the Smith patent invalid as to claim 1 in both cases and

as to claims 2, 3 and 5 in the James case.

2. The Court of Appeals for the Second Circuit erred

in ordering reversal of the decrees of the District Courts.

Each of the respondents presented other defenses, pri-

marily that of non-infringement, based upon reasons which

must be rejected by this Court in conformity with the hold-

ings of this Court in the Snow and Wazham cases. Brief

discussion of those issues is included herein, but in the

main this brief is confined to the Hastings defense.

Summary of Argument.

Petitioner’s proofs in the instant cases are the same in

substance as those presented to this Court in the Snow

and Wazham cases. The very substantial revolution in

the art of incubation was traced directly to the Smith in-

vention and it was shown that the principles of that in-

vention were new in the art and have been followed by

the respondents.

The remarkable development in this art is not trace-

able to the prior efforts of Hastings; on the contrary,

when Hastings, in the fall of 1912, abandoned his third

attempt to solve the problem of mass incubation, nothing

had been accomplished and no one ever tried to duplicate

his efforts. The art persisted in the use of the old, still- .

air incubators with the eggs in a single layer in one stage

of incubation. ‘Beginning with Smith’s achievement of the

solution in the year 1915, the revolution was continuous

and overwhelming. .

. The events of the Hastings defense occurred more than

twenty years before the witnesses testified in the instant

rases. Their testimony about the construction and method

of operation of the Hastings incubators and the results

obtained in the operations is meagre and uncertain. It

includes many admissions of total lack of knowledge of

the results obtained and also many material departures

from testimony given by the same witnesses in former

litigations. No records of results obtained were produced,

and there is no contemporaneous evidence, which is at all

specific, dealing with either the constructions employed or

the methods of operation. |

Hastings was afforded every facility for making practi-

= cal use of any novel ideas he evolved on the subject of

incubation in connection with each of the three incubators

he built and operated prior to the Smith invention. There

is no suggestion of lack of funds or hampering of his efforts

by others. Yet it is a fact that each of his three incubators

was operated for a short time in one hatching season only,

use of each of them was then discontinued, and each was

then destroyed.

Thongh the construction of the three Hastings incubators

is not proven with any accuracy, it is clear that each dif-

fered markedly from its predecessors. There appears to

have been no consistency to Hastings’ efforts, but instead

a vacillation which is indicative of groping for something

satisfactory without ever reaching it.

The various publications relied upon by respondents are

statements and claims made by or for Hastings for suc-

cess which was never realized. They contain no adequate

description of the Smith invention and fail to describe with

sufficient clarity the construction of the several Hastings -

incubators or how he attempted to conduct mass incubation

in them.

Hastings filed an application for patent contemporane-

ous with his first attempt to-build a successful incubator,

but this application lacks two essentials of the Smith in-

vention—staged incubation and current movement of air

in sufficient volume. and velocity to equalize the tempera-

ture throughout the mass of eggs in staged incubation. On

the former point,-the application is wholly silent. On the

second point, the structure illustrated and described would

effectively choke any effective current movement of air

through the eggs. The application was rejected by the

Patent Office and abandoned. No claim commensurate with

Smith’s Claim 1 was ever made during the prosecution of

the application, and none could have been made for the

application afforded no basis for such a claim. ;

In amendments filed toward the close of the prosecution

of the application, reference is made to the differing thermal

characteristics of eggs in different stages of incubation, a

fact which Hastings apparently grew to appreciate from

his experiemtes while the application was pending. He

traced the difficulties which he was encountering to the

behavior of the eggs, but the disclosure of the abandoned

application and of the documents filed with it is devoid of

any adequate suggestion as to how these difficulties might

be overcome. | ae

These facts mark the whole of Hastings’ effort with the

brand of failure. As stated by the Court of Appeals for

the Third Circuit in the Cooley case (p. 455):

‘The result was negative, and, judging from what hap-

pened to the hatcheries, it was not successful.”’

—_— ee

The decisions of those Courts which disposed of the Hast-

ings defense at the threshold of this protracted litigation

are sound and follow the well-established principles laid

down by this Court in many leading cases dealing with

defenses of prior use and prior invention. Preminent

among such cases are the Barbed Wire Patent Case (143

U. 8. 275) and Coffin v. Ogden (18 Wall. 120).

* In the Barbed Wire Patent Case this Court said at page

284:

**We have now to deal with certain unpatented de-

vices, claimed to be complete anticipations of this pat-

ent, the existence and ise of which are proven only by

oral testimony. In view of the unsatisfactory char-

acter of such testimony, arising from the forgetfulness

of witnesses, their liability to mistakes, their proneness

to recollect things as the party calling them would have

them recollect them, aside from the temptation to actual

perjury, courts have not only imposed upon defendants

the burden of proving such devices, but have required

that the proof shall be clear, satisfactory and beyond

a reasonable doubt.’’

In Coffin v. Ogden, 18 Wall. 120, 124, the Court said:

ARGUMENT.

POINT L.

The Smith invention consists of a plurality of elements,

all of which must be present.

The nature of the Smith invention and the essentials

of successful mass incubation, first perfected by Smith, are

fully and accurately presented in the opinion of this Court

in the Snow case (294 U. S. 8). Those essentials are:

(1) The eggs must be set in staged incubation which is

defined as the successive setting of eggs within the cabinet

at brief intervals. In order to secure the benefits of the

invention, intelligent use must be made of staged incuba-

tion so as to secure an approximate balance between the

endothermic and exothermic eggs. A mere hit and miss

setting of eggs of varying ages will not suffice, for if only

a small percentage of the eggs is in one stage and the

great mass in another, obviously the preponderance of cold,

or hot, eggs will destroy the necessary balance which should

be maintained.

(2) The eggs in staged incubation must be set in one

room in order for the heat interchange to function, and this

room must have the ‘‘restricted openings’’ which supply

the requisite fresh air and permit escape of foul air with-

out excessive loss of moisture, which would result in drying

the eggs too rapidly.

(3) The air must be circulated about all of the eggs in

this single room with sufficient force to constitute a definite

current as distinguished from such drafts as may be gen-

erated by the differing heat conditions at different points

within the room; and

; a a me ee ee ee) a ee

(4) The current of air must move with a sufficiently

high velocity to maintain the air at the same temperature

about all of the eggs, thus breaking down any tendency

for the formation of hot or cold spots about any group

of eggs. As stated by this Court, this latter step marks

‘‘the boundaries of the claim’’. Smith mounted his fans

directly within the chamber and vigorously recirculated

substantially the same body of air over and over again

through the eggs so that the temperature of the air was

the same at all points, and all of the eggs, whether new

or old, were subjected to the same air temperature.

As shown by the records in the Snow and Wazham cases,

the Salution of this problém was the result of persistent

and untiring efforts extending over a period of over nine

years (Snow R. p. 134; Waxham R. p. 545; 561). Repeated

disappointments and failures dogged Smith’s efforts, and

it Was only in the vear 1915 that he finally combined all

the elements of Claim 1. When the combination was made,

success immediately followed.

POINT II.

In none of his efforts did Hastings combine the essential

elements of the Smith invention.

The Hastings Defense in Genera].

The Hastings defense is typical of the class of defenses

so frequently found in patent litigations where the success-

ful inventor who creates a new art and achieves a large

measure of material success, is confronted with earlier

failures in the field. The answer is usually found in com-

parative results secured. In such cases the true inventor

is immediately rewarded with striking success, and the art

adopts and uses his inveation from the day it first appears.

On the other hand, the efforts of the earlier worker lead

nowhere and nothing is heard of him until he is brought

forward in an effort to depreciate the achievement of the

true inventor. As was said by this Court in The Barbed

Wire Patent Case (p. 284), supra, ‘‘almost every important

patent, from the cotton gin of Whitney f6 the one under

consideration, has been attacked by the testimony of wit-

nesses who imagined oe og made similar discoveries long

before the patentee.’’ e Smith patent is no exgeption

to this rule. . . oe

Undoubtedly Hastings tried to solve the problem of mass

_ ineubation. As we shall show in detail in a moment, he

made three separate attempts at three different places,

but none of his efforts lasted through more than one

season. After each attempt he moved to another loca-

tion, getting new capital to finance his efforts. Each

incubator which he built differed in a wide measure from

the preceding; and each incubator was soon destroyed.

Neither Hastings, nor any one else connected with him,

made a penny from his work, each lost all he had

. put into it, and none of Hastings’ incubators was ever

duplicated or reproduced by him or his.associates or any-

one else. His last attempt was in the fall of 1912. Nothing

more was done by him until after Smith had made the in-

vention and knowledge of it reached the world. Then, in

1918, Hastings made an attempt to build a practical in-

cubator, following Smith’s teaeghings. Even this was a

failure, and Hastings passed out of the field until his efforts

were resurrected by successive defendants, none of whom

succeeded in injecting life into the defense until the Court

of Appeals for the Second Circuit, after the expiration of

the Smith patent, decided in favor of Hastings.

Considered from the standpoint of practical results at-

tained, it appears to be particularly plain that Hastings

failed to grasp the essentials of the Smith invention and

failed to bring together those essentials in any one of the

three efforts he made prior to the Smith invention. -Had

Hastings, in fact, made the invention, commercial success

would have been inevitable, just as it was with Smith.

Hastings had every opportunity for success, but he failed

completely. Hastings had no difficulty in securing financial

backing for each of his efforts, he was enabled to try out

his ideas unhampered by his associates, he spread news .

of his attempts over the pages of numerous technical and

popular publications, and he was given every encourage-

ment from those directly interested in the poultry business.

After all of this, in 1912, Hastings’ gave up the problem.

But ever after he has entied the success which came to

Smith, and it is evident that his testimony has been colored

by that feeling. As he testified in the James case (R. p.

579) he felt

**some element of resentment that he did not share in

such returns.’’

We shall now discuss the several publications and the

installations made by Hastings in his attempt to solve the

problem of mass incubation, pointing out wherein each

publication fails to disclose the Smith invention and

wherein each incubator failed to attain the goal of suc-

cessful achievement.

‘*The Dollar Hen’’.

In the year 1908 Hastings, then about 24 years of age

and an ‘‘expert’’ in the poultry division of the United

States Department of Agricuiture, encountered Madison

Cooper, a refrigerating and ventilating engineer, who had

designed a refrigerating apparatus for the preservation of

vegetables, consisting of a cold storage room with perfor-

ated diaphragms above and below and a fan outside to cause

a slow circulation of air through the room. Hastings con-

ceived that this scheme might be used for an incubator.

As he says {James R. p. 540) ‘‘I adapted that idea to in-

lh aia tats ROCIO Seep e pree NE Ee ORE il

cubation.’’ Hastings had no conception ‘that the art of

incubation, dealing with animate heat generating organ-

isms, differed in any way or presented any problem distinct

from that which confronted a cold storage engineer in the

preservation of inanimate perishables.

Conceiving that incubation presented no difficulties not

solvable by the application of refrigeration principles,

Hastings wrote ‘‘The Dollar Hen’’. This is the publica-

tion to which the Circuit Court of Appeals referred at

considerable length, quoting therefrom a selected passage

(Hall R. p. 238). Eitherjthe Court did not read the whole

of the book, or else it failed to understand the significance

of other passages. Hastings said in this publication:

“The plan of the hatchery is on that of a cold storage

plant as far as insulation and general construction

go’’ (p. 104);

and:

‘‘The means by which the air moisture is regulated

is similar to that used in up-to-date cold storage plants

where the air is made moist by sprinkling and dried

with deliquescent salts’’ (p. 105).

It all seemed very simple to Hastings.

‘“‘So simple is this that the reader will doubtless

wonder why it was not developed earlier’’ (p. 104).

Hastings testified (James R. p. 540):

‘Tt oceurred to me, while considering this method

of refrigeration, that the problems of refrigeration

and the problems of incubation were very similar, in

fact we might say identical, and I believe I so wrote

in ‘The Dollar Hen’. . I did so testify in the Cooley

case.’’

And at page 541:

‘‘The statement of my opinion, as expressed in ‘The

Dollar Hen’, was that the adaptation of the forced

draft fan system of equalizing tempercture, used by

Cooper in cold storage, would apply to incubation. I

was under the impression that the application cf the

device and method to incubation constituted an in-

vention.’’

The publication fails to give any adequate description

either of the incubator structure or of a method of opera-

tion. It was written by Hastings before he made an at-

tempt to carry out the process. Judge Westenhaver cor-

rectly appraised this publication when he said in the Wolf

ease (291 F. 253-257):

‘‘The earliest article in the ‘Dollar Hen’ may be

disregarded, as Hastings there merely describes a

process for maintaining temperature in cold storage

and suggests how it may be applied in a hatchery. It

does not purport to describe an apparatus or ever to

have been put to any use.’’

That Judge Westenhaver was correct is admitted by

Hastings (James R. p. 540).

The reasons why the vague ideas expressed in ‘‘The

Dollar Hen’’ do not anticipate the Smith invention are

apparent. They ¢onstituted nothing more than the use of

principles of cold storage in incubation. Hastings did

not appreciate or understand the value of setting the

eggs in staged incubation. and he gave no definite in-

structions as to the manner in which they should be

set. The ordered and intelligent utilization of the endo-

thermic and exothermic properties of a large mass. of

eggs, set with some regard for their progression in in-

cubation, was-wholly a closed book to Hastings. Nor did

Hastings conceive of the Smith method of conserving mois-

ture by the restricte. outlets; on the contrary, he pro-

posed to adopt the systems used by cold-storage opera- |

= —_—s = - _—- — Sa —

tors. Nor did Hastings understand the necessity for a cir-

culation of air any more vigorous than might be required

in Cooper’s cold storage plant, a fact which is made clear

when we consider the patent application which he filed

during the period when he was attempting to make use of

the conception. If a perforated partition such as that

used by Cooper (James R. p. 554), or its equivalent, a

fabric, is placed between the fan and the egg chamber,

the force of the circulation will be retarded to such an

extent as to destroy current movement of the air (infra, p

25, 26). Lawry, another alleged prior user who appeared

in earlier cases, also attempted to adapt Cooper’s cold

storage system to mass incubation (Waxham R. p. 457)

and failed, as is shown by the discussion of the Lawry

prior use by the Circuit Court of Appeals for the Ninth

Circuit in the Waxham case at 70 F. (2d) 457, 459. As the

Court said:

‘«‘Lawry did provide for a large chamber of heated

air in which the eggs were placed. He did provide

small vents above and below this chamber through

which the air entered and escaped from the incubating

chamber. The air in the Lawry process was given some

momentum by an electric fan, but the effect of this

“momentum was almost entirely dissipated by the fact

that the current of air was forced through a large

number of small openings and escaped through similar

openings to return through narrow passages to the fan

to be again circulated through the incubation chamber.

The obvious purpose of. Lawry in this method of in-

cubation was to supply fresh air without agitating the

contents of the incubating chamber any more than was

necessary to supply the fresh air. Apparently there

was no effort to remove the heat from the incubating

eggs by a current of high velocity. The plan was a

failure and was abandoned and need not be further

considered. We conclude that the Smith patent is

valid.’’ |

Ten years later, after the Smith invention and after

Hastings’ experiences at Tiffin, Ohio, Hastings character-

ized this ‘‘Dollar Hen’’ publication as ‘‘an impractical

poultry book’’ (James R. p. 578-579).

’ The Davis (Brooklyn) Incubator.

Principles oF THE SMITH INVENTION

Nor Emsoprep Iw It.

Still believing that mass incubation was-a very simple

transposition of the cold storage system to the art of in-

cubation, Hastings resigned from the Department of Agri-

culture in 1910 and sought an opportunity to apply this

refrigeration idea to incubation. He set forth from the

shorés of theory on the troubled waters of practice armed

with all of the self-assurance of a young ‘‘government ex-

pert’. He first disclosed his ideas to Francis Orvis, the

editor of ‘‘The Poultry Digest’’, who was not called as a

witness by the defense in either case, and whose absence

was not explained (Hall R. p. 54). Orvis introduced him

to Davis, a printer engaged in operating a large linotype

establishment in New York City, who also ran, as a side

line, a poultry farm on the outskirts of Brooklyn, N. Y.,

in connection with which he operated a rqad-house selling

chicken dinners. Davis was busy day and night operating

his printing establishment and gave little attention to his

poultry farm (Hall R. p. 59-60). The farm was run by a

man named Miller, and a helper (Hall R. p, 62; James R.

p.*505), to whom Hastings disclosed the operation of the

incubator (James R. p. 546). Neither Miller nor the helper

was called as a witness by respondents, nor was their ab-

sence accounted for. The present Mrs. Davis was then a

—— —————

bookkeeper for Davis and went oyt to the poultry farm

only occasionally (Hall R. p. 63).

Davis gave Hastings a salary and turned him loose in

the Brooklyn hatchery to make what he could of his ideas

in comparison with some old Cyphers incubators which he

had at the place. Hastings built an incubator and tried

it out in the spring of 1911. The patent application is

the only contemporaneous record which shows the con-

struction of the incubator. There are no records produced

of the results of any experiments and no records of any

hatch or of the number of eggs put into the incubator

and the number of chicks produced. There is only the

testimony of Hastings as to whether there were any

successful hatches and as to what was the method of oper-

ation of the incubator.

Just before Hastings testified in the Cooley case, he

made some drawings purporting to show the Davis hatch-

ery. As Judge Bodine said (Appendix, p. vii):

‘*The drawings made on the eve of the present suit

are, at best, Hastings’ recollection of what he now

fancies he did. in.1911. It seems impossible that the

methods disclosed in his drawings should not bear a

resemblance to Smith’s successful incubator rather than

his failures.’’

in the James case, new drawings of the Davis incubator

were made on the eve of the testimony in that case, and

these drawings show differences in the fan arrangement

from the Cooked sdarynes and a closer approach to the

Smith principle ( p. 542-543).

The application for patent, prepared by Hastings (Hall

R. p. 57) and executed April 20, 1911, contemporaneously

with the operations at Brooklyn, contains a drawing of the

ineubator and some indication of what were Hastings’

ideas at that time on the subject of inenbator operation.

. The application is at pages 727 to 764 of the James Record,

and the drawing appears on page 764. It is reproduced

below.

ee eheannitst

This drawing made by Hastings and incorporated by him

in his patent application was made at about the time when

he completed the Davis or Brooklyn incubator. Therefore

it seems only reasonable to assume that it represents what

Hastings then had in mind as the best embodiment of his

ideas about incubator construction and the construction he

employed in building the Davis incubator. But the con-

struction illustrated by it is very different from that shown

by the Cooley and James drawings made by Hastings from

memory more than twenty years later.

In view of the fact that Hastings’ conception was the

mere transposition of Cooper’s cold storage process to in-

cubation, it is not surprising to find that his application

shows an incubator which is a replica of the Madison

Cooper cold storage plant as described by Hastings (James

R. p. 540). The room A is enclosed top and bottom by the

partitions E shown in dotted lines and the fan is outside

of the room. The partitions are described as ‘‘fabrics or

perforated partitions’’ simulating the perforated partitions

used in the Cooper cold storage plant. Hastings in his

ae iieaniniatdin

actual construction used the fabric; he never used the per-.

forated partitions (James R._p. 554).

The fabric panels would chetk the flow of air from the

fan, and no appreciable current of air could find its way

through them. The result would be that the air within the

chamber would be practically still air, decidedly different

from the vigerous current movement which is one of the

main essentials of the Smith invention. As Hastings said:

‘‘Those fabric panels had the effect of checking the

air flow and served no useful purpose. They were

deleterious to incubation only to the extent of checking

the amount of air’flow; making the fan less efficient’’

(James R. p. 551).

and

‘‘The presence of the fabric panels would affect quite

materially the flow of air’’ (James R. p. 552).

Hastings had in mind a still-air environment for the

eggs, following the teachings of the old prior art incubators.

He said (James R. p. 551): .

‘‘The expediency, in my mind, of the idea of using

fabrics was a combination of the idea of diffused air,

which was made a great point of in the Cyphers ma-

chines of that day, plus the idea of the distribution

of the air — throughout the area of the egg

chamber.’’ .

Judge Westenhaver appreciated the effect of these fabric

panels when he said in the Wolf case, 291 Fed., at page 258:

‘*The specification and drawings disclose an appara-

tus which,.in the light of our present knowledge on the

' _ subject, is known to be impracticable and inoperative.

As described, it merely drives heated air down one side

of an egg chamber, and permits it to filter through

fabric or perforated partitions into the egg chamber,

and escape, if it can, on the other side. No provision

is made for re™oving foul air, or supplying fresh air,

or conserving . i0isture.\ No well-defined channels for

the circulation of the air gre proviged.”’

Judge Hincks, in the Hall case, also sensed their big-

nificance when he said (Hay p. 219):

‘“*And if Has*mgs, as the drawing of his abandoned

patent application discloses, had his fan outside a

fabric enclosure of the egg chamber, perhaps the only

mechanical circulation of air was around the outSide

of the fabric enclosure; inside the fabric it well may

be that the only circulation of air was the product of ‘

convection as in the old-style incubators, so that the

incubation was proceeding under the old process rather

than the new.’’

It must, therefore, be concluded that this Brooklyn

hatchery lacked the forced current &rculation of air through ~

a jarge mass of eggs with sufficiént velocity to maintain

and equalize the temperature #iroughont.

There is also doubt aa Hastings had the other es-

sentials of the Smith pr at the Brooklyn plant. There

is no evidence of any Value indicating that he set eggs in

staged incubation or that he had any appreciation of the

value of that step.

“On this'question of whether staged incubation was em-

ployed in the Davis incubator, there are contradictory ©

statements by Hastings himself. When he testified in the

Hall cage in the spring of 1935, Hastings was very posi-

tive that he set the eggs in staged incubation (R. p. 52,

53), stating that he set the eggs.on the average of twice

a week. However, when he testified in the James case two

years before, he said (p. 548):

**I do not remember the details of the time we set

these eggs, because it was of no importance to the

principle of incubation but merely a matter of con-

venience in handling the and taking off chicks.

I have no memory today, afler some twenty-two years,

on which to base a positive staTement as to the exact

time of setting these eggs.’’

The testimony of Davis and his wife that the eggs were

set in staged incubation must be rejected for the reasons

given by the District Court (Hall R. p. 217):

‘*Davis and his wife, to be sure, testified that Hast-

ings practiced staged incubation, but Davis had a busy

linotype establishment running in New York day and

night; his wife was his bookkeeper. The record does

not show that either of then actually saw the eggs

set in staged incubation. Their betief in the presence

of staged incubation obviously is attributable to the

fact that they received bills for frequent shipments of

setting eggs. They now say they supposed these eggs

were set in the Hastings incubator twice a week, as

received. But so far as their actual knowledge is con-

‘cerned, it well may have been that the eggs received

for setting were distributed between the Hastings in-

cubator and the several Cyphers incubators, in use

near by, wholly without staged incubation. Thus, on

analysis, the practice of staged incubation in connec-

tion with this alleged prior use rests upon the verbal

testimony of Hastings alone.’’

When one refers to the only contemporaneous documen-

tary evidence, the patent application, no corroboration of

this testimony is found. The patent application, filed

while the operations were being conducted, is wholly silent

as to this essential feature. Somewhat later, reference

was made to the. differing thermal characteristics of the

eggs during the process of incubation, but as Judge Hincks

said (Hall R. p. 217):

of an egg chamber, and permits it to filter through

fabric or perforated partitions into the egg chamber,

and escape, if it can, on the other side. No provision

is made for removing foul air, or supplying fresh air,

Or conserving moisture. No well-defined channels for

the circulation of the air are provided.’’

Judge Hincks, in the Hall case, also sensed their sig-

nificance when he said (Hall R. p. 219):

‘‘And if Hastings, as the drawing of his abandoned

patent application discloses, had his fan outside a

fabric enclosure of the egg chamber, perhaps the only

mechanical circulation of air was around the outside

of the fabric enclosure; inside the fabric it well may

be that the only circulation of air was the product of

convection as in the old-style incubators, so that the

incubation was proceeding under the old process rather

than the new.”’

It must, therefore, be concluded that this Brooklyn

hatchery lacked the forced current circulation of air through

a large mass of eggs with sufficient velocity to maintain

and equalize the temperature throughout.

There is also doubt whether Hastings had the other es-

sentials of the Smith process at the Brooklyn plant. There

is no evidence of any value indicating that he set eggs in

staged incubation or that he had any ———— of the

value of that step.

On this question of whether | incubation was em-

ployed in the Davis incubator, there are contradictory

statements by Hastings himself. When he testified‘in the

Hall case in the spring of 1935, Hastings was. very posi-

tive that he set the eggs in staged incubation (R. p. 52,

53), stating that he set-the eggs on the average of twice ;

a week. However, when he testified in the James case two

years before, he said (p. 548):

" — —

a ee = -= oo —_— - .

‘‘T do not remember the details of the time we set

these eggs, because it was of no importance to the

principle of incubation. but merely a matter of con-

venience in handling the eggs and taking off chicks.

I have no memory today, after some twenty-two years,

on which to base a positive statement as to the exact

time of setting these eggs.”’

The testimony of Davis and his wife that the eggs were

set in staged incubation must be rejected for the reasons

given by the District Court (Hall R. p. 217):

‘‘Davis and his wife, to be sure, testified that Hast-

ings practiced staged incubation, but Davis had a busy

linotype establishment running in New York day and

night; his wife was his bookkeeper. The record does |

not show that either of them actually saw the eggs

set in staged incubation. Their belief in the presence

of staged incubation obviously is attributable to the

fact that they received bills for frequent shipments of

‘setting eggs. They now say they supposed these eggs

were set in the Hastings incubator twice a- week, as

received. But so far as their actual knowledge is con-

cerned, it well may have been that the eggs received

for setting were distributed between the Hastings in-

cubator and the several Cyphers incubators, in use

near by, wholly without staged incubation. Thus, on

analysis, the practice of staged incubation in connec-

tion with this alleged prior use rests upon the verbal

testimony of Hastings alone.’’

When one refers to the only contemporaneous documen-

tary evidence, the patent application, no eorroboration of

this testimony is found. The patent application, filed

while the operations were being conducted, is wholly silent

as to this essential feature. Somewhat later, reference

was made to the differing thermal characteristics of the

eggs during the process of incubation, but as Judge Hincks

said (Hall R. p. 217):

‘‘That Hastings in 1912 knew of staged incubation

is slight evidence, if any, that he practiced it in 1911.’’

The Court of Appeals stated in ‘its opinion that Hastings

used staged incubation in the Brooklyn hatchery. To sup-

port this finding the Court said-that ‘‘Davis and his wife

both testified that eggs were put in the chambers as they

came in, once or twice a week’’ (Hall R. p. 239). Neither

witness claimed to have been there when the eggs were

set; obviously, their statements are expressions of infer-

ences which they thought might properly be drawn from

their recollection that eggs were shipped in at short inter-

vals. That is the conclusion reached by Judge Hincks as is

shown by his comment quoted on the preceding page wherein

he said that Davis and his wife testifying twenty-odd years

after the events, ‘‘supposed’’ that the eggs which were

shipped to their Brooklyn house at intervals were put in

the Hastings ipcubator at similar intervals.

In further support of that assertion, the Court of Ap-

peals made reference to ‘‘The Dollar Hen’’, published in

1909, as showing what Hastings did in the Davis incubator

in 1911, the suggestion being that because in discussing his

imaginary incubator Hastings hinted at staged incubation

as a possibility, he must have used it in the Davis incuba-

tor. The Court of Appeals must have forgotten tempo-

rarily the admonition of this Court that ‘‘the law requires

not conjecture, but certainty’’ (Coffin v. Ogden, p. 124,

supra).

Again, the Court quoted a newspaper article published

‘by Hastings in 1912 in which it is stated that the ‘‘eggs

at all stages can be placed in the same trays’’, and that he

‘‘hatched several thousand eggs under such conditions in his

‘Brooklyn (Davis) plant last year’’. But this is not staged

incubation. The scattering of new eggs through a tray con-

taining old eggs with no definite realization of the value

of staged incubation and without any attempt to balance

a —

endothermic and exothermic eggs, is not sufficient. It seems

quite evident that at that time Hastings had no conception

of the importance of staged incubation.

Furthermore, the Court appears to have overlooked en-

tirely the next sentence in that article where Hastings said:

‘‘This point, while upsetting a tradition, is of no

practical significance because eggs of different ages

should be kept apart as a matter of general convent

ence’’ (James R. p. 1116). .

Hastings’ failure to recognize the importance of staged

incubation appears again in his testimony in the James

case where he said ‘‘it was of no importance to the prin-

ciple of incubation’? (James R. p. 548).

Even had Hastings set some eggs at intervals less than

the full period of incubation, the result would be no differ-

ent. Accidental use of one step of the process without

appreciating its benefits or advantages cannot invalidate

a patent granted to one who first recognized the value of

that step and was led thereby to employ it in a new and

successful process (Tilghman v. Proctor, 102 U. S. 707, 710;

Eibel Co. v. Paper Co., 261 U. S. 45; Boyd v. Cherry, 50

Fed. 279, 283; Wickelman v. A. B. Dick Co., 88 Fed. 264, 266,

267 ; Franc-Strohmenger & Cowan v. Arthur Stegman, Inc.,

27 F. [2d] 785, 788).

Tue Davis (Brooxtyx) Ixcusaton Was Nor 4 PusBLio

Use, Nor a Repvotion To Practice; Ir Was an Apan-

DONED EXPERIMENT.

The Court of Appeals did not state whether it regarded

the operation of the Davis incubator as a public use or

merely as evidence of prior invention by Hastings. It-was

merely an experiment made by Hastings, and the record

clearly shows that it was abandoned ; the construction was

not duplicated in any of Hastings’ later work. An aban-

doned experiment is never regarded as an anticipation of

a later issued successful patent.*

That the Davis hatchery was not a public use is clearly

established. In writing for the-‘Boston Sunday Globe”’ in

November, 1912, Hastings said (Hall R. p. 63):

‘“‘Finally in the winter 1910-1911, a small plant

was constructed on the Davis Poultry Farm in

Brooklyn, New York, and the idea fully demonstrated.

This plant was not open to the public as its workman-

ship was crude and the applications to the Patent Of-

fice not completed.’’

In testifying in the James case Hastings said (p. 534):

‘“‘T know and would remember all of those who saw

the Davis machine, as there were only a few in. num-

ber and were personal friends of Mr. Davis and my-

self.’’

And again at page 553 of the James record:

‘*He was hatching for himself alone, or I was hatch-

ing for him, his employee, and it was not public in the

sense that we had public customers nor any bid made

to the outside public to come and visit the hatchery,

but Mr. Davis’s friends and mine were shown the

hatchery.

Q. And you kept it secret because of the fact that

you hadn’t filed a patent application at that time,

isn’t that correct? A.I think that was my impression

at that time, of not wanting the general public in,

% yes.”’

*Gaylor v. Wilder, 10 How. 477; The Corn-Planter Patent, 23

Wall. 181; The Barbed Wire Patent, 143 U.S. 275; Electric Smelt-

ing, etc., Co. v. Pittsburgh. Reduction Co., 125 Fed. 926 (C. C. A. 2);

Carson v. American Smelting, etc., Co., 11 F. (2d) 766 (C. C. A. 9).

ona aw me eee em sere ——

‘In the Hall case, Hastings said (p. 56):

‘*My incubator was built in the same cellar of the

same house where Mr. Davis had his other incubators.

I think that it is correct that I testified in the Simms

and James cases that I did not operate th’ ‘thing as

a public use but kept it secret because my application

for patent had not yet been filed.’’

The Davis incubator was located in the cellar of the

road house and was carefully guarded from the public

gaze so that-no knowledge of its existence or mode of op-

eration reached any further than the small group com-

posed of Hastings, Davis and their immediate friends and

workmen about the place. An attempt was made in the

Hall case to establish that many people must have seen

the Davis incubator because mahy hundreds of people vis-—

ited the road house for dinners (Hall R. p. 60). Mr. Davis

did not testify that the guests for his Sunday dinners were

taken into the cellar of the house and shown the incubator.

He carefully avoided such statement, nor would his testi-

mony have been credible had he so stated for it would have

been directly contradictory to the quoted statements made

by Hastings.

It is well settled that a concealed experimental installa-

tion, such as the Davis incubator, is not a ‘‘public use’’

in the sense of the patent law (Smith & Griggs Mfg. Co. v.

Sprague, 123 U. S. 249-257).

The Court of Appeals stated in its opinion in the Hall

case that the Davis incubator ‘‘was in use during the

hatching seasons of 1910 and 1911’’ (Hall R. p. 242). The

Court was in error in this holding. Hastings testified that

the incubator was not completed until ‘‘February or early

March, 1911’’ (James R. p. 545) and he left the Davis’ plant

‘“the last of April or the first of May’’ (James R. p. 546),

while the hatching season was still on. There is no testimony

in the record that the incubator was operated after Hast-

ings left, except to finish up the operations which had been

started. The only man who could have testified on this

point was the manager, Miller, who was not called.

Nor was the Davis incubator a reduction to practice.

It was built for 6,000 eggs. There are no records of how

many hatches were conducted or the number of eggs set

or the results secured. Hastings ‘stated that at no pe-

riod of its operation did it contain more than 2,000 eggs

(James R. p. 547; Hall R. p. 55). In other words,

the Davis incubator was never more than one-third filled.

Such an operation would not afford an adequate test of

the Davis incubator. With a few eggs in trays in a room

adapted to hold three times as many, some eggs might

successfully hatch even though the air was not perceptibly

in motion. No one can predict what would have happened

if the incubator had been filled to or approaching capacity.

Under the conditions under which Hastings operated, the

incubator was, in effect, nothing more than a still-air in-

cubator of the old type and operating under the principles

of the prior art. As the District Court said (Hall R. p.

219): -

‘*For all I know, 2,000 eggs set in a chamber three

times too large for them and supplied with some heat

and some natural ventilation, even without a fan, might

have produced as good a hatch as Hastings got.’’

Tae Davis Incusator Was Nor Successrun.

Hastings in his most extravagant statements did not

claim that he had made an improvement in percentage of

hatch over the old ‘‘Cyphers”’ incubators (Hall R: p. 52-53).

In rating the percentage of hatch at 59% Hastings was

admittedly. guessing, and it is not anlikely that he exagge-

rated the results secured, but as his results were never

better than the ‘‘Cyphers’’ (Hall R. p. 53) and as Davis

oe ¢ - —

said he ‘‘had not had very good luck with the Cyphers”’

(Hall R. p. 58) it is evident that Hastings effected no ith-

provement in the number of chicks produced from a given

number of eggs incubated.

One of the main advantages of the Smith invention is

the increased percentage of hatch. As this Court said in .

the Snow case (p. 7):

‘*By use of the new method it is possible to operate

, successfully an incubator containing as many as 52,000

eggs, and the percentage of eggs successfully hatched

by artificial incubation has been materially raised.’’

Thus it is apparent that the Davis incubator never dem-

onstrated that it was capable of producing the results of

the Smith invention.

The record also contains a very striking admission of

failure of the Brooklyn hatchery in the words of Hastings

spoken shortly after the event. In an amendment to his

abandoned application dated May 24, 1912, Hastings re-

ferred to ‘‘a painstaking and very costly series of experi-

‘ments’’ (James R. p. 744) which he had performed. Prior

to that date the only experiments which he had performed

were at Brooklyn, N. Y., and Muskogee. No one who had

successfully operated the Brooklyn incubator would so

write to the Patent Office. Had the Davis incubator been

successful, Hastings would have proclaimed the fact to

the Patent Office and to everyone else.

For most of the facts about the Hastings incubators at

the Davis farm in Brooklyn and at Muskogee, one is forced

to rely on the testimony of Hastings himself, but there is

much reason for questioning how reliable a witness he is.

For instance, immediately following the brief experiment

with the Davis incubator, Hastings published a prospectus

for the purpose of getting funds to build another incubator.

In this prospectus he said:

——

‘In the season of 1910-11 I built and operated a 15,000.

egg single compartment hatchery on the poultry farm

of W. B. Davis in a suburb of Brooklyn’’ (James R.

p. 554 and Hall R. p. 55).

This was admitted by Hastings to be an ‘‘exaggeration’’

and not true (Hall R. p. 56). Also Hastings said:

‘*T exaggerated the capacity: more than two and a half

times for the purpose of getting people to put money

in jt. As-a matter of fact I hadn’t run my incubator

with more than 2,000 eggs in it at the time I made this

statement”’ (James R. p. 555).

This admission of exaggeration in presenting certain of

the facts about his incubator suggests that the same will-

ingness to exaggerate may have entered various others

of his statements and that therefore hesitation and careful

scrutiny are necessary before accepting his uncorroborated

statements.

The final chapter of the Meter of the Hastings incuv-

bator at the Davis farm stamps that effort quite definitely

as an unsuccessful and abandoned experiment. Use of the

imeubator extended over March and April of 1911 (James

R. p. 506). Hastings departed about the first of May, 1911,

never to return (James R. p..546). The incubator re-

mained in the cellar of the Davis house, unused.and aban-

doned for aught the record shows. In 1913 Davis sold

the farm, and, at his direction, the incubator was ‘‘knocked

to pieces and put out in the back yard and burned up along

with a bunch of other trash’’ (Hall R. p. 61).

Thus ‘he incubator was deserted by both Hastings and

Davis, Mastings who had -put his efforts into it, and Davis

his money. Had it been successful, Hastings would have

continued to operate it and to exploit it; but even if he

had deserted it and it was a successful operative device,

doubtless Davis would have continued with the use of the

incubator and probably with its exploitation.

——

The Court of Appeals seemed to find excuse for this out-

come of Hastings’ effort at the Davis farm in the fact

that Davis suffered financial reverses and that the incubator

could not be removed except by dismantling it. This dis-

regards the probabilfty that if the incubator had been

successful, Davis would not have suffered financial reverses.

He would have had immediately at hand a source of wealth

far richer than his printing establishment or his chicken

farm, and even if the incubator had to be moved ta a dif-

ferent location and could be moved only by dismantling it,

it could have been reconstructed or duplicated in a new loca-

tion instead of burning it ‘‘along with a bunch of other

trash’’.

The foregoing facts are to be considered in contrast with

the statement by the Court of Appeals that there is ‘‘un-

contradicted testimony’’ that the Hastings incubator at

the Davis farm ‘‘was an operative success’’. The testi-

mony about its operation is that of ‘Hastings, Davis and

Davis’ wife. Neither Davis nor his wife gave any testi-

mony as to whether or not the incubator was ‘‘an operative

success’. They could not because they did not know what

degree of success or non-success was attained (Hall RB. p.

59-60, 62). Thus, the specified ‘‘uncontradicted testimony”’

is that of Hastings alone. We have shown that Hastings

admitted exaggeration of the facts about the incubator,

that he was biased by envy of Smith’s success and that he

claimed no advantage for his incubator from the standpoint

- of percentage of hatch. Also, analysis of the asserted

operative success reduces it to nothing more than the

fact that the Hastings incubator at the Davis farm

produced chicks from eggs. Whether or not it produced

them cheaper or better or in a way that was an improve-

ment in any other respect is not proven, and the fact that

it was capable of producing chicks from eggs is quite un-

important because there were plenty of available incuba-

tors at the time which would do that.

The conclusion of the District Court in the Hall case

on, the matter under discussion is much more sound. Judge ~

Hintks’ summary of the condition presented by the testi-

mony under review is (Hall R. p. 220):

‘*T am thus left in doubt as to whether Hastings on the

Davis farm in the spring of 1911 did what it is said he

did; if so, whether he used the method of claim 1 of the

patent in suit; and if so, whether his usé thereof was

a successful use within the rule of Corona Cord Twe

Co. v. Dovan, 276 U. 8. 358.”’

Hastings’ testimony, the only testimony on this Davis in-

cubator which can be included within the Court of Appeals’

reference to uncontradicted testimony, presented noth-

‘ing calling for contradiction because it asserted no improve-

ment in the Davis incubator over other incubators such

as those in use on the Davis farm, and as to the incubator

being ‘‘an operative success’’, its history contradicts that

overwhelmingly. The use of this Davis incubator was dis-

continued. The incubator was abandoned by its designer

and by its financial sponsor at a time when both were

greatly in need of a source of revenue and, when something

had to be done with it, it was destroyed and later was

referred to by the appropriate designation of ‘‘trash’’.

ka The Muskogee Incubator.

By resort \to the false statements above referred to

about the operations at Brooklyn, Hastings, in 1911, se-

cured the necessary financial support for the building of

his second incubator (James R. p. 555; Hall R. p. 56).

Concerning this incubator nothing appears in the Hall rec-

ord; the testimony and exhibits are all found in the James

record.

Leaving Brooklyn in May, 1911, Hastings journeyed to

Kansas where he sought out Rees V. Hicks, the editor of

‘the poultry magazine ‘‘Poultry Culture’? (James RB. p.

511), who was not called as a witness nor his absence

excused. Through Hicks, Hastings met John Lieber ‘‘a

prosperous and leading spirit’’ of the repidly growing town

of Muskogee, Okla., then on a great boom (James R. p.

512). Lieber advanced the money and gave Hastings a

building in which to construct his incubator and left him

to his own devices.

Tre Musxocee Incusator Was Nor a DupticaTion oF

THe Brooktyn Ixcusator—Nor Dip It Emsopy THs

SmitH Process.

The Second Cireuit held that this Muskogee incubator

‘was similar to the one built for Davis in Brooklyn’’. This

is far from accurate. |

The incubator Hastings built at Muskogee differed ma-

_terially, both in construction and method of operation, from

the Davis incubator. Instead of a single chamber to re-

ceive the eggs, this incubator had a long row of seven

chambers, each intended to receive about 5,000 eggs. Each

chamber was substantially closed and distinct from every

other chamber and had small openings at top and bottom,

the opening at the top being controlled by a sliding damper

by which the amount of heat admitted to each chamber

could be regulated (James R. p. 603). Across the top of

the row of chambers there were one or more flues (the num-

ber not fixed in the record) leading from a single fan of the

common type. The fan was supplied by Lieber from a

moving picture theatre which he owned and operated

(James R. p. 604).

In a contemporaneous article published in ‘‘ Poultry Cul-

ture’? of February, 1912, and stated by Hastings to be a

correct description of the incubator (James R. p. 520), it

appears that there were two flues or ducts extending from

the fan to the several chambers. One of these flues con-

taine@ a heater, the other did not, it being Hastings’ pur-

pose to maintain different temperatures in the chambers in

accordance with the progression of incubation. As the

article says (James R. p. 1115-16):

‘‘varying degrees of air temperature will be required

in heating (or cooling) eggs in varying quantities and

different stages of incubation. To accommodate this

need, the inventor has ingeniously arranged that the

air be divided, after it leaves the fan, into two flumes.

One of these passes the heater and the other does, not.

Into the ceiling of each compartment slide dampers

open from either flume, so that by opening the two in

proper relative proportions any temperature desired

may be attained in any compartment.’’

There are no contemporaneous drawings or photographs

of the Muskogee incubator showing its interior construc-

tion. Just as in the case of the Davis incubator, Hastings

made a drawing of the Muskogee incubator for use in the

Cooley case just before the trial; and in the James case the

attorneys for the defendants had another drawing made

’ (James R. p. 541). The Cooley and James drawings differ

in important details of fan arrangement (James R. p. 542-

- §43; 560) but neither of them shows the two ‘‘flumes’’ de-

scribed in the only contemporaneous description of the

Muskogee incubator.

As to the method of operation which Hastings practiced

at Muskogee, we have the evidence of defendants’ witness

Lieber, the only witness other than Hastings who knew

how the incubator operated. Lieber testified in September,

1925, in the Stone case:

‘‘This incubator had six separate compartments,

-each holding 5,000 eggs. He had valves or cut-offs con-

neeted with each of these sections, or compartments,

by which he could regulate the heat of the air in each

\ :

a a a om \ 7 —

section or compartment. He could have one tempera-

ture in one compartment and a different temperature

in another. He explained to me at the time-that this

was necessary because when eggs were first placed in

an incubator they required the maximum amount of

heat whereas a‘few days before they hatched the

chicks in the eggs furnished considerable heat, and.

therefore it was not necessary to supply as much arti-

ficial heat just before the chicks hatched. He gave

this as his reason for having to have the device so that

it would have one temperature in one compartment and

a different temperature in another compartment’’

(James R. p. 776-7).

In the James case he reaffirmed this statement of opera-

tion at page 626 saying:

‘‘} remember it was a 30,000 egg incubator, six (6)

compartments at five thousand (5,000) each, and one

(1) compartment that he used to take the chioks off

in, because he had to have different temperatures: in

each de(com) partment.’’

And at page 627:

‘*His idea was, according to my recollection, that he

would have a continuous hatching all the time. That

is, he could start eggs in one compartment, carry on

for a few days, and then move them to another com-

partment and leave for a few days. And then move on

for another period until they finally got down to the

end. Yes, that is, if he was crowded for space, as new -

eggs came in he would put the eggs in the first one,

and keep on moving them, and he would be putting

eggs in the first compartment and taking chicks out

of the last one at the same time. And in the interme

diate compartments would be eggs further advanced

in the incubation. And he adjusted those slides so

more or less hot air would go into each compartment,

to control the temperature. The temperature of the

different compartments was different. My recollection

is that the temperature varied about ten degrees from

the starting to the end.’’

By 1933 it had become apparent to siehnnabanives of

respondents that the method of operation which Lieber

said was employed was not the Smith method at all. The

result is just what one would have expected, namely, vig-

orous protestation by Hastings in the James case that the

process. described by Lieber is not the one which was em-

ployed. Hastings said he set eggs of different ages of in-

cubation in each compartment and hatched the chickens at

the bottom of each compartment (James R. p. 535). There

is absolutely no record evidence to support this testimony

of Hastings, and it is contradicted by the only other witness

who knew how the incubator operated, namely, Lieber, who

said that the eggs were all hatched in one compartment

(James R. p. 603).

On the other hand, there is contemporaneous record

evidence that Hastings was in fact practising the process

described by Lieber.

We have already referred to that portion of the ‘‘Poul-

try Culture’’ article describing the two ‘‘flumes’’ leading

from the fan, one leading past a heater, and to the fact

that by regulation of the dampers ‘‘any temperature de-

sired may be attained in any compartment’’ (James R. p.

1116, top of first column). In the same article at the top

of column 2, page 1115, it is said:

‘“During hatching, trays with higher sides are placed

on alternating tray slides, thus requiring two compart-

ments for hatching the twenty trays incubated in one.’’

Here is a definite statement that the full complement of

the hatching capacity of the incubator was incubated in

one compartment, which, necessarily forecloses any possi*

bility that eggs of different ages were located in the differ-

ent compartments. This quotation establishes a condition

sesaehinektimeneiehaamianie —

wholly incompatible with Hastings’ testimony in the James

case. This same method of operation is described in De-

fendants’ Exhibit 26 A (James R. p. 1121) prepared by

Hickox and stated by Hastings to be ‘‘a very excellent

and accurate description of that incabator’’ (James R. p.

522).

Also, in the ‘‘Poultry Culture’’ article, Hastings said

‘‘eggs of different ages should be kept apart’’ (James R.

p. 1116), which is consistent with Lieber’s testimony but

inconsistent with that of Hastings on this subject of the

method of operation of the Muskogee incubator.

At the date of the ‘‘ Poultry Culture’’ article (Feb., 1912)

Hastings had hatched only a single setting of eggs in one

compartment, and the photographs show only this one

‘setting of 250 eggs, all of which were set at one time

and not in staged incubation (James R. p 556). The

photograph in the upper left hand corner shows the hatch

partially completed with some of the eggs hatched and

others about to hatch.

That Hastings actually practiced the process of moving

the eggs. progressively front compartment to compartment

as incubation progressed, and transferring each set of

eggs finally into the end compartments for the hatching,

is shown by an examination of a later photograph taken

‘‘in the midst of the hatching season of 1912’’ (James R.

p. 526). We refer to the photograph Exhibit 26-D im--

perfectly reproduced on page 1127 of the record. This

photograph shows the seven chambers of the Muskogee —

incubator with 8 considerable number of trays drawn for-

ward. No hatching is being done in the chambers in the

_ foreground. But in the background it will be noted that

the trays have the high sides characteristic of trays for

hatching (James R. p. 527). Therefore, it seems clear that

the structure illustrated is one in which incubating was

practiced as Lieber described, namely, by moving the eggs

along the series of chambers progressively until they reach

the chambers at the end of the row where the hatching

occurs.

The Muskogee incubator required the operator to adjust

the several inlets to the compartments to maintain the

different temperatures in each compartment dictated by

the stage of advancement of the eggs therein. This was

a problem accentuated by the heat characteristics of the

endothermic. and exothermic eggs and complicated by

- multiplication as the number of eggs in each compartment

increased. The circulation of air through each compart-

ment of the Muskogee incubator was scarcely perceptible

and in reality a still-air condition. This was no advance-

ment over prior art incubators which involved still air

conditions and the same problem of careful adjustment of

temperatures as incubation advanced.

That Hastings utilized only an ineffective current of

air and required a careful adjustment of the several cham-

bers to conform to the stage of egg advancement in each

compartment, is established by the evidence and corrobo-

rated by the statements quoted from Hastings in that por-

tion of the brief before the Patent Office in which he was

referring to his Muskogee operations (James R. p. 756):

‘‘a current of air is blown past each and every

egg at the rate of thirty feet per minute * * °. This

method of heating keeps the temperature of the eggs

in the advanced state of incubation down within a few

degrees of that of the air, the exact difference being

regulated at will by adjusting the speed of the fan.

When properly adjusted the same blast of air used

to heat fresh eggs does equally well for eggs in the

advanced stages. ° * °’’ 7

And on page 755 in the body of the attorney’s brief:

‘*it becomes a comparatively simple matter to regu-

late both the temperature, the humidity or the gaseous

1That this is an ineffective speed is shown at pages 59 and 60,

ati cial rey aia em ——

a —

composition of the air, inasmuch as all of the air is

drawn positively through a circulatory system and may

be modified at any point during tts circulation’’.

Each compartment of the Muskogee incubator was in

effect a still-air incubator of the prior art with the diffi-

culties of operation greatly increased by the ambitious

capacities. In the words of this Court in referring to

other prior art incubators, the Muskogee incubator in-

volved the same ‘‘necessity.of varying by nice adjust-

ments the temperature of the applied air, so as to conform

to the varying temperatures of the eggs as they passed

through successive stages df incubation’’ (Snow case, p. 7).

Thus, Hastings’ operation at Muskogee was radically dif-

ferent from the Smith method. This being true, it is imma-

terial whether the Muskogee use was an operative success,

for tt was not the Smith invention. The process which

Hastings used at Muskogee was, in fact, the identical

process which had been known in the prior art for years.

In the year 1887, British patent No. 10,288 issued to one

Gardner (James R. p. 1003), described in detail this same

procedure which Hastings used at Muskogee. That pro-

cedur® is distinct from that of the Smith invention as was

stated by defendants’ expert in the James case (p. 427):

‘‘Q. And as I understand the Smith patent—and

disagree with me or not, as’ you like—is this correct;

I will put it this way; is this a correct statement of

the Smith patent, that you maintain a temperature sub-

etantially uniform throughout the chamber? A. That

is the wording of it, yes, sir. .

Q. And then your temperature of the air around the

cold eggs is substantially the same as the temperature

of the air around the hot eggs? A. That is what the

wording means.

Q. And you have in the Gardner patent, however, the

temperature of the air different on each of the differ-

‘ent sets of eggs? A. That is correct.’’

Tae Musxooze Incusatorn Was a Fartune.

Persuasive evidence of the truth of the above statement

is that Hastings ‘‘never built another incubator exactly

. like the Muskogee incubator’’ (James R. p. 571). Nor has

any practical hatcheryman since that date duplicated the

Muskogee incubator or attempted to operate upon the prin-

ciple employed by Hastings. In addition, there is positive -

proof of its failure.

When Hastings left Muskogee in May, 1912, the hatch-

ing season waa still on, but no eggs were set in the incn-

bator in 1972 after his departure (James R. p. 537). In

1913, Liebeg_arid one Hastain. tried to operate the incnv-

bator, thé latter putting an additional $500 in the enter-

prise (James R. p. 774). But this effort was a failure.

It failed though Hastain was said to know more about the

operation of the incubator than any one other than Hast-

ings (James R. p. 785). Testifying in the Stone case in

1925, Lieber said (James R. p. 776):

**Q. After Milo Hastings left, did you or Ed Has-

tain undertake to operate the Hatchery? A. Mr. Has-

tain and a brother-in-law of his, named Dierfield, op-

erated the hatchery during a part of 1913. But neither

of them knew anything about the eal of the

hatchery and they had no success.’’

And on page 785:

‘*Q. How long did Hastain continue to operate in

the Spring of 19131 A. My recollection is that they

only put in one batch of eggs and closed down the

hatchery when the hatch was unsatisfactory.

Q. Why did he not try the second hatch? A. We

could not figure out its failure to hatch in 1913, except

fon the theory that Milo Hastings, the inventor, was

the only man who knew how to operate it.’’

wre ——~ - —

Realizing the damaging effect of the testimony of Lieber,

the defendants in the James case induced Lieber to testify

differently in 1934. At page 607 of the James record, Lie-

ber testified :

‘‘Mr. Dierfield put some money in the business the next

spring, and he’’ (Hastain) ‘‘and Mr. Dierfield operated

it during the season of 1913. I say they operated it.

I mean by that, they hatched eggs in it.’’

On cross examination, Lieber made his statements more

emphatic, saying on page 622 that it was ‘‘absolutely not’’

a failure in 1913 and that ‘‘hundreds of chickens were

taken out to Mr. Hastain’s farm in 1913 from that hatch-

ery.’’. When confronted with his testimony in the Stone

case, Lieber took the absurd position that he had not

changed his testimony. It ia quite significant that neither

Hastain nor Dierfield was called to testify fer the defend-

ants, nor was their absencé excused. .

_ Lieber’s unreliability is aptly illustrated by this con-

tradictory testimony. This fact was apparent in the Stone

case where it appeared that he had insisted upon reim-

bursement for all of his losses as the price for testifying

in the Cooley case. The master commented upon this in

the Stone case, saying ( Appendix, p. xvi):

*‘John G. Lieber, who was financially interested in

the Hastings hatchery, testifies that hatches of about

fifty per cent. were obtained. It is apparent, how-

ever, that Lieber was interested and more or less hos-

tile with the hope that at some stage of the litigation

of Smith’s patent and the infringement suit brought

by the Buckeye Incubator Company against Cooley, he

might receive a return of the money he lost in the Hast-

ings venture.’’

With these facts we have stated in mind, it is surprising

to note that the Court of Appeals found that the Muskogee

hatchery ‘‘ran through the hatching seasons of 1912 and

1913’’ and that counsel persist in their claim that the Mus-

kogee incubator operated more than one hatching season.

In 1913 the Muskogee incubator was entirely dismantled

(James R. p. 624) so that not a trace of tt ts in existence

today. Respondents maintain that a certain blower fan

shown in Exhibits 22 B to 22 F is a relic of the Muskogee

incubator, but, as we point out below (tnfra, p. 51-52), it

is impossible, in view of the testimony, to connect this fan

with the Muskogee incubator.

The destruction of the incubator and the complete finan-

cial and operative loss which it brought to all who were

connected with it stamps it with the ineradicable brand of

failure and abandoned experiment. As Hastings said:

‘*No one made any mioney out of it’’ (James R. p. 571).

Lieber said (p. 607): ‘‘The venture was not a financial

success. In other words, I did not make money out of

my investment in that incubator. No, I lost it all.’’ How

different the story would have been had Hastings conceived

the Smith invention! There would then have been no ex-

cuses and no attempts to disguise the palpable failure of

the enterprise and no need for either. Hastings and his

friends and associates in Muskogee would have reaped the

‘rich reward of success instead of the ashes of failure. ‘As

Lieber said (James R. p. 622):

‘‘But he’’ (Hastings) ‘‘got disgusted and left and left

the thing on your hands? A. Yes, sir, that is right.’’

Hastings said (James R. p. 536) that he was ‘‘discouraged

with my work’’.

Testifying in 1925, Lieber said (James R. p.-775) :

‘*Milo Hastings was an eccentric sort of a fellow and

became disgusted with the mess in which he had got-

ten the business of the hatchery in. He finally left,

turned it over to me, and told me to do the best I could

with it.’’

Smenanepeey ome ent RS eee pene wee - een

Lieber was so disgusted and discouraged with the whole

incubator business as a result of this experience that he

never used or operated another one. As he said (James

R. p. 631):

**Q. You used an incubator? A. No, sir, just bought

chicks; never used an incubator; one was enough, for

- me. ae |

Q. Your experience with the Hastings Incubator was

enough for you? A. Yes, sir, one was enough for me.”’

——

Hastings had every opportunity tp succeed. Lieber was

a wealthy man at that time and Hastings was given entire

charge of the building and operation of the incubator.

Muskogee was the center of a large poultry industry (James

R. p. 652), and Hastings was enthusiastically received by

the poultry men of the vicinity. He had the endorsement

of the influential ‘‘Poultry Culture’’ and the support of

the Poultry Department of the Kansas Agricultural Col-

lege. He associated wifh him an energetic publicity ex-.

- pert nanied Hickox, who spread the news of the Hastings

incubator in the scientific journals, periodicals and news-

papers of the country. Here then was the golden oppor-

tunity for Hastings if the construction and method of op-

- eration of his incubator were those which were productive

of successful commercial operation.

Hastings and those who supported and patronized his

hatchery were doomed to a great disappointment (James

R. p. 649). Shortly after Hastings started. operations,

Shanafelt, a successful and outstanding poultry. man, took

200 eggs to the Hastings hatchery. They were a choice

breed, and! eggs from the same flock had hatched under

hens, but hie received not more than seven chicks in return |

(James R® p. 648). Cory, also an experienced breeder, took

down three lots of 100 eggs each and received no chickens

at all (James R. p. 645). Cory testified (p. 646):

**T never got any results at all from the eggs which I

took to Mr. Hastings, not ‘a chicken.’’

Results from the same flock, hatched under other condi-

tions, averaged about 50%, and he had no complete fail-

ure except from the eggs he took to Hastings (James R.

p. 645). Ward, who was intimately associated with Hast-

ings and with whom Hastings discussed the failure of his

incubator (James R. p. 657), testified (R. p. 657):

‘*The reports I got concerning the Hastings’ hatches

were that the first hatches he got, he did not get over

from 5 to 20 per cent. of the fertile egg hatches. In

those days we counted fertile eggs to get a percentage,

which were candled afterwards. At first he got from

5 to 20 per cent. He remodeled the incubator. After

he remodeled it, he got better hatches, but at no time

did he ever get over a 50 per cent. hatch.’’

Ward also testified that poultrymen arcund Muskogee re-

fused to continue to patronize the Ha&tings hatchery be-

cause of the poor results secured (James R. p. 658).

Hastings pretended that he never knew Ward (James R.

p. 534).

In 1925, 8. J. Anderson, an experienced poultryman, tes-

tified that he took 150 to 200 eggs to Hastings’ incubator

in March, 1912, and received back five chicks. They were

fertile eggs and were hatching under hens (James R. p.

768).

Respondents placed L. W. Pitts on the stand who testi-

fied on direct examination that he did not remember the

percentage of ‘hatch but that he saw the incubator in oper-

ation. On cross examination it was brought out that in

testifying in 1925, this same witness had said that Hast-

. ings ‘‘didn’t have a very good hatch, and the chickens that

were hatched were rather weak’’, and that ‘‘the percen-

tage of chicks to the eggs was very low’’ (James R. p.

637), and on page 638 he reaffirmed this as his present

recollection.

— _

~ —

—

C. T. Brewer testified that he took eggs to the hatchery

and received some chicks but whether these chicks were

produced from the eggs which he took in, he had no means

of knowing. As Brewer testified ‘‘so far as my knowledge

is concerned, the chickens we got from Mr. Hastings might

have come front some eggs other than ours’’ (James R.

p. 641). It is admitted that Hastings was in the habit of

supplying customers with chicks hatched from. eggs re-

ceived from other sources. As Lieber said (James BR. p.

630): ‘‘People got back a lot of chicks from eggs they

never sent.’’ It is highly probable that whatever chicks

were received by Brewer weré hatched from eggs supplied

by some one else. Therefore, the number of chicks which

Brewer received means aes as to the _———- of

hatch.

Van D. Campbell, who was ele twenty yearmold at the

time, testified that his parents sent some eggs to Hastings’

hatchery but he had no knowledge of how many chicks

they received (James R. p. 642). His parents who were

living in Muskogee where the depositions were taken were

not called to the stand (James R. p. 644).

No records were produced to show the results of the Mus-

kogee operations though records and books were kept

(James R. p. 569).

Hastings admitted repeatedly that the results secured

were very disappointing. He said at page 575 of the James

record, ‘‘We had many disappointing hatches’’, and in

writing to the Patent Office on May 24, 1912, just after

the Muskogee experience, Hastings said, as noted above, —

that he had conducted ‘‘a painstaking and very costly series

of experiments’’. In the article appearing in the ‘‘ Boston

Sunday Globe’’ of November 10, 1912, Hastings said, refer-

‘ ring to his Muskogee and Brooklyn incubators, that he was

‘*finding out other ways to better the hatching results of

the cruder machines’’ (James R. p. 575).

In the Canadian suit Hastings testified:

‘‘The hatching records as a whole for that plant were

not high and there were many individual cases of very

poor results. I should judge that the hatching record

of the whole would run around 40 per cent.’’ (Appen-

dix, p. xxxv). |

_ Finally, we have the admissions of Hastings and Lieber

that the results secured were very erratic. Hastings said

(James R. p. 519) that the results were ‘‘highly variable’’,

and Lieber testified (James R. p. 607) ‘‘it ran from nothing

in some cases to as high as 75 and 80% in other. cases’’. This

unreliability in operation is ample indication that there

_was something radically wrong. No machine with the vari-

ation of results testified to by Lieber and Hastings can be

said to be an operative success or even to have emerged

from the stage of experimentation.

Excuses Orrerep ror THE Muskooee FaILure.

Many excuses are offered for Hastings, but if the incu-

bator had been an operative success no excuses would have

been necessary.

One exeuse is that the eggs brought into Hastings’ plant

were of poor quality and that is the reason they did not

‘hatch. On the contrary, however, each of his dissatisfied

customers was an experiénced poultryman and had normal

success with the same eggs in the old fashioned way. An-

other excuse for the failure of ‘the Hastings incubator is

that it was a financial failure due to the fact that Hastings

charged only one cent for hatching an egg and that price _

-was too low, but Hastings testified that he purchased for

their own production thousands of eggs of good hatching

quality from other sources throughout the season (James

R. p. 519), and Lieber testified that Hastings was hatching

his own eggs at the same time that he was doing hatching

for others (‘‘custom hatching’’) (James R. p. 623). There-

fore, the one-cent rate does not excuse very much in any

a — ed TOPE OR ee

event and no reason has been advanced as to why that rate

could not have been raised.

In writing in the ‘‘Boston Sunday Globe’’ in November,.

1912, Hastings ascribed. his failure to the weather (James

R. p. 575).

Respondents have also.urged that the fan installed in the

Hastings hatchery was insufficient in volume. When Hast-

ings. built the incubator he installed a fan which he secured

from a moving picture theatre which Lieber owned.. -This

fan was admitted to have been a failure (James-R. p. 516;

561) and the disastrous hatches were attributed to it. The

claim is made that when it developed that the first fan was ~

a failure, Lieber purchased a new blower type fan from the

American Blower Company of Detroit, Michigan, and this

fan was substituted-for the inadequate ventilation fan. The

record lacks any documentary proof of the purchase or

delivery of this fan, nor is any excuse offered for the failure

- to substantiate this testimony. None of Hastings’ customers

ever saw the blower fan. The fan which is shown in the

photograph Exhibit 26 C (James R. p. 1126) and which

is reproduced in the ‘‘Electrical World’’ of July 6, 1912

(James R. p. 1120), referred to by the Court of Appeals, is

the open bladed ventilation fan which Hastings claimed

he used ‘‘before the main hatching work of the season

was under way’’ (James R. p. 517). However, this .pho-

tograph was taken at the same time as the photograph

Exhibit 26 D (Hickox, Jamés R. p. 597) and Hastings said

the latter was taken in the height of the hatching

season (James R. p. 526). Lieber, testifying for the

respondents, said that the new fan was purchased and

installed in January, 1912, ‘‘within three days after

he first started the incubator with eggs in it’’, and

before Hastings had completed any hatches in’ the

‘Machine (James R. p. 615). This contrariety of tes-

timony not only nullifies this excuse for the failure of

the hatches, but places Lieber and Hastings in direct con- .

tradiction. An electrician, Peabody, was called to testify

as to the installation of the blower fan, but he testified \

to an entirely different state of facts when he said (James

RB. p. 601) that the second fan was one which ‘‘we had fur-

nished to Judge Lieber some time previous’’, thus destroy-

ing the testimony of Lieber and Hastings that a new

blower fan was purchased from the American Blower Com-

pany and installed in the hatchery.

At the time of taking Lieber’s deposition, a blower fan

illustrated in the photographs (Exs. 22 B-F; James R. p.

1113-14) was exhibited at Hastain’s farm and was offered

in evidence @mthe blower fan concerning which Lieber and

Hastings testified. Thts ts not the fan. It is a spurious sub-

stitute. At three places in the James record and in testify-

_ ing in the Cooley case (p. 516, 537, 567, 663), Hastings

said the blower fan had an 8-inch outlet. Respondents at-

tempted to introduce these photographs without producing

the fan, and Lieber testified that he ‘‘thought it was an

8-inch fan’’ (James R. p. 614). It was only upon the in-

sistence of petitioner that the parties were conducted to the

fan itself (James R. p. 662). When measured, the fan had

@ 12-inch outlet and not an 8-inch outlet as repeatedly stated

by Hastings. In other words, the spurious fan produced by

Lieber was over twice as large as the fan which Hastings

testified was installed (James R. p. 663, 664). Respondents

have sought to belittle this serious discrepancy, but it is

plain from the record that the fan now offered is not a true ©

relic of the Muskogee incubator.

Finally, respondents. have sought to excuse the testi-

mony of the customers who had such discouraging results

from Hastings’ Hatchery by claiming that Hastings stole

their chickens (James R. p. 647).

Hastings’ Port O’Connor Hatchery.

In May, 1912, Hastings was in a ‘‘mess’’ (James R. p.

775). The dream of success and fortune to be made from

™~ —

— — . . i A iE snr ee

his ideas collapsed and he surveyed the ruin all around

him. He borrowed $100 from Lieber, and shook the dust

of Muskogee from his feet, wholly disgusted and defeated,

and never returned. Some eggs were still in the machine

but he left without caring to find out what happened to

them (James R. p. 570). He told Lieber to do the he

could and fled (James R. p. 775). When he started 2

the early part of the year, he had planned to double the

capacity at Muskogee; and the Kansas Agriculture College

had agreed to build an incubator there if the Muskogee

experiment proved to be a success (James R. p. 567). But

opportunities like these which had seemed to present such

glowing prospects earlier in the year had all been lost in the

failure of the Muskogee incubator and Hastings went to

Petaluma, California, looking for a job (James R. p. 581).

Receiving no encouragement at that poultry center, he

‘next appeared at Port O’Connor, Texas, whence emanated

the statement in the ‘‘Boston Sunday Globe’’ of November

10, 1912;

‘*At Port O’Connor with more experience and more

funds at his command, Mr. Hastings has far excelled his

previous efforts and has here completed and begun op-

erating what is unquestionably the greatest hatchery

ever built’’ (James R. p. 574).

- At Port O’Connor, Hastings built a new incubator with -

150,000. egg capacity and differing in construction from

both the Muskogee and Brooklyn plants, but this incubator

was never operated beyond placing one batch of 720 eggs

in it (James R. p. 573). That was all that was ever done

at Port O’Connor. After this one hatch, Hastings fled

again, and, except for the brief sojourn with the Hall Incu-

bator Co., this marked the end of his experimental work

until long after Smith perfected his process, received his

patent and was operating a highly profitable incubator en-

terprise at Cleveland, Ohio.

a — = s

However, and illustrating the unreliability of the Hast-

ings publicity, his admitted failure did not prevent him

from spreading false statements and claims.of remark-

able success. An article entitled ‘‘Hatching Chickens by

Wholesale’’ appeared in the ‘‘Technical World’’ of April,

1913, in whick the Port O’Connor plant is represented as

& going concern with 150,000 egg capacity, with compart-

ments holding 10,000 eggs, and capable of ‘‘turning out a

chicken every twelve seconds’’ (James R. p. 573).

Hastings’ Subsequent History.

Hastings next connected himself with the established

Hall Incubator Company, for which he designed a still dif-

ferent incubator. This, too, was a failure (James R. p.

575, 576) and he left that company.

In 1917 or 1918, he was called to Tiffin, Ohio, at the

instance of a poultryman named Hoppel, but on his way

stopped off in Cleveland to see Dr. Smith whe was then

in full operation in his own plant and had started the

‘Buckeye Company in the manufacture of the successful

Buckeye Incubator using the Smith principles. His object

was to secure employment from the successful inventor

but he failed (James R. p. 576).

He then went on to Tiffin and after having learned how

the Smith incubator operatetl from his employer, he there

built a hatchery in which he ‘‘tried out a method of hatch-

' ing very much more like the Smith Buckeye devices than I

had used in the past’’ (James R. p. 577). Again, at the

Hoppel plant, Hastings spread himself in print, writing the

' article entitled ‘‘Hastings’ Mechanical Draft Chick Hatch-

ery”’ which appeared in the ‘‘ Reliable Poultry Journal’’ of

‘April, 1918 (Deft.’s Ex. 20, James R. p’ 1106-1109). In

this article Hastings lauds himeelf as the inventor of the

successful incubator. ‘

Even with the benefit of the knowledge he had acquired

from Smith, Hastings could not make g successful incu-

EERE — — —

bator, and after another. season ‘at it, he left and never

again engaged in the incubator business. From incubators

he turned to the literature of tabloid periodicals. Since

‘the complete failure of his series of experiments at the

several places named, his sole function in the incubator

field has been that.of.an itinerant witness, ready and will- °

ing at all times to testify at the behest of infringers of

the Smith patent. His career in this field is set forth at

page 54 of the Hall record and he said it had proven to be

a much more: profitabie one.

POINT II.

gy in the Hastings abandoned application as filed,

the subsequent amendments thereto - meted

: died the Smith invention. |

Hastings filed his application for patent in May, 1911,

after the partially filled Davis incubator had been given

a brief trial. The application (James R. p. 731) contains a

full disclosure of Hastings’ idea that ‘‘the problems of re-

frigeration and the problems of incubation were very sim-

ilar, in fact we might say identical’’ (Hastings, James R.

p. 540). Hastings admitted (James R. p. 541) that his

‘‘invention’’ did not go beyond the adaptation of the cold

storage process to incubation and that he finally abandoned

the application when the Patent Office held that such a con-

ception was not patentable. Hastings did not understand

heat development in a large mass of eggs, nor the impor-

tance of balancing endothermic and exothermic eggs, since

otherwise he would have mentioned them in the application.

Nor did he realize the necessity for vigorous current move-

ment of air through the eggs, since otherwise he would not

have shown fabric partitions above and below the egg cham-

ber through which the air had to filter to and from the

chamber and which were effective obstructions to air

movement.

‘56

The application was promptly rejected. On June 19,

1911, Haatings presented an argument for allowance based

solely on the substitution of a fan-impelled circulation of

air rather than natural draft (James R. p. 736). He was

again and finally rejected August 14, 1911. He then ap-

pointed the firm of Chureh & Church as his attorneys

. (James R. p. 740-741). On May 24, 1912, these attorneys

filed a new claim (James R. p. 743). With this claim was

presented an argument in which appears the first reference

to the varying temperatures of eggs during the process of

hatching.

This communication to the Patent Office followed Hast-

ings’ disastrous experiences at Muskogee. It is probable

from this sequence of events that it was through his expe-

riences at Muskogee that Hastings learned that heat gen-

. erated within eggs makes mass incubation a vastly differ-

ent problem from the preservation of inanimate foodstuffs

in cold storage. aia

Hastings’ attorneys wrote that he believed the heat char-

acteristics of the eggs ‘‘to be one of the principal reasons

why, up to the present time’’ (May 24, 1912) ‘‘hatcheries

of large capacity have proven to. be practical failures’’

(James R. p. 744). This appears to be a reference to

Hastings’ own abortive efforts, particularly as in the fol-

lowing sentence he said he had ‘‘by a painstaking and very

costly seties of experiments’’ discovered the reason for this

failure. But he had no other remedy to offer than me-

chanically forced circulation of air. There is no sugges-

tion in this entire argument that setting in staged incuba-

tion was a necessary or desirable step toward the solution

of the problem and the rate of air movement indicated is

far below that which experience has shown is essential to

successful operation.

The application was appealed to the Board of Appeals

of the Patent Office, and on December 20, 1912, after the

abortive attempt at Port O’Connor, Texas, a brief was

filed. In this brief Hastings’ attorneys commented at

a Se ee a A et ery : "s we wa’

greater length on the difficulties arising from the heat de-

velopment in the eggs. But this discussion must be viewed

in the light of what Hastings had done, because an aban-

doned application can be used only to ‘‘clarify the character

of a claimed prior use’’, a principle which the Court of

Appeals stated (Hall R. p. 242) but failed to apply.

A serious error of the Court of Appeals was in viewing

this file wrapper argument in the light of what Smith did,

and, knowing what Smith did, reading his process into the

argument.

It will be recalled that at Muskogee Hastings built a

seven-compartment incubator with the eggs in a different

stage of advancement in each compartment, each setting

being moved to a new compartment every third day. A

single fan propelled air to all the compartments but each

compartment had its individual damper which could be

positioned to regulate the freedom of entrance of air into

the compartment and thereby maintain the different tem-

peratures in the several compartments at the points desired.

This is not staged incubation, and it is not the invention of

the Smith patent. It is a procedure which has never been

used successfully by any one so far as the record shows.

This Muskogee procedure is what is referred to in the

brief in the file wrapper of the Hastings application.

Neither the specification of the Hastings application, nor

the drawing of that application, nor the brief referred to

by the Court of Appeals, nor any other document connected

with the application contains that essential of the Smith in-

vention commonly referred to as ‘‘staged incubation’’. The

distinctive requisite of staged incubation as practiced by

Smith is that eggs in various stages of incubation are sub-

jected to the same body of air, moving in repeated cycles

over all the eggs and thus maintained at the same tempera-

ture throughout the entire process. In accordance with

the unsuccessful Muskogee operation, however, there were

eggs in seven different stages of incubation, in seven differ-

| ent chambers or compartments, and receiving seven differ-

ent currents of air which maintained seven different tem-

peratures in the seven compartments.

The opinion of the Court of Appeals contains nothing

indicating that the Court understeed what was the actual

method oi operation of the Muskogve incubator as de-

veloped in the testimony of Lieber and shown by the

contemporaneous Hastings’ publications, to which we have

referred. Instead, the brief filed in com: ection with the

Hastings application appears-to have been read by the

Court with the Smith invention in mind, whereas it should.

have been read with the Muskogee operation in mind, for |

it was written in Hastings’ behalf shortly after the con-

- elusion of the Muskogee effort. When the brief is read

as it should be, keeping in mind the’ knowledge available

at the date when it was written and without aid from

the subsequent invention of Smith and the successful utili-

zation of that invention, it becomes apparent that the brief

does not refer to what has since become known as ‘‘staged ~

incubation.’’ Instead, the reference throughout-is to such

a procedure as that practiced by Hastings at Muskogee

involving the use of several compartments, each containing

eggs in some one stage of incubation, and separately reg-

ulable dampers for each compartment whereby its temper- _

ature may be adjusted independently of all of the others

to maintain therein a temperature different from those

.in the others. That is not the staged incubation of the

Smith patent. It is for that reason that the Hastings

application, with or without the brief filed in connection

with it, contains no disclosure of this essenflal of the

- Smith invention. 4

Nor does the application, with or without the brief or

any other paper filed in connection with it, disclose another

of the essentials of the Smith invention referred to in

claim 1 as maintaining in the egg compartment of the

incubator a movement of air

eal aaa oe cL le een eam een ore ITSM Te —

‘fof sufficient velocity to circulate, diffuse and main-

tain the air throughout the chamber at substantially -

the same temperature, whereby the air will be vital-

ized, 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.’’

The Hastings application is entirely indefinite as to the

volume and velocity of the air movement within the incu-

bator. It illustrates and describes an incubating chamber

having a fabric covering at its top and bottom through

which the air impelled by the fan is said to flow. Any

such fabric covering would so impede the air flow as

greatly to restrict its rate of movement (supra, p. 25, 26

and. James R. p. 551, 552).. No data was supplied by

Hastings or any other witness as to the rate of air

movement in either the Davis incubator at Brooklyn or

the incubator installed at Muskogee. It may well be

that one of the elements contributing to the failure of

the Davis incubator was the suppression of the air move-

ment by. these fabric coverings. At Muskogee there were

wooden partitions where these fabric coverings were in

the Davis incubator and these wooden partitions had

openings in them with dampers to regulate their size.

So far as the record evidence goes, these dampers may

have been so’regulated as to make the rate of air move-

ment substantially the same as that which occurred in the

- Davis incubator, and therefore one-pf the elements which

contributed to the failure of the Muskogee incubator may

have been this same lack of sufficient air flow.

The brief filed in connection with the Hastings applica-

tion, referred to and quoted from in the Court of Appeals’

opinion, supplies one item of more definite information on

this particular point than is to be found elsewhere in the

record. In this brief it is stated that the rate of flow

of air through the egg chamber is 30 feet a minute (James

R. p. 756). This speed of 30 feet a minute or 1,800 feet

an hour, or one-third of a mile per hour, is an exceedingly

low speed. It is about one tenth of the speed at which

a man normally walks. A movement of air at that rate

would hardly be perceptible, would not overcome con-

vection currents, and could not persist in current form

through the eggs. That air movement is of such an

entirely different order from the speeds which have been

employed in the incubators which have attained commer-

cial success as to justify the view that, with such a low

speed of air flow, successful operation Would be precluded

no matter what was the construction of the incubator and

no matter what was the method of operation in other re-

spects. The records of these cases show that successful

commercial mass incubation cannot be practiced with a

speed of air movement of the general order of 30 feet

per minute.

The record evidence on this matter of speed of air

movement is that in the Smith and James incubators the

average speed of movement of the air through the egg

chambers is 135 feet to 142 feet per minute (James R. p.

474-5). In the Snow and Robbins (Waxham) incubators

where no guiding means are provided for the air currents,

the speed of movement of the air is approximately four

times greater than in the Smith incubator (Snow RB. :p.

110; Waxham R. p. 303). .

Thus, the summary of all this is that all that was done

by Hastings as evidenced by his Brooklyn incubator, his

Muskogee incubator and his application for patent with

all the documents relating to it, was characterized by

staged incubation, and a sufficient velocity of the air cir-

culating through the egg chamber to accomplish the pur-

poses and funetions essential tajsuccessful mass incubation

as specified in claim 1 of the Smith patent.

a pane —

—

In the Davis installation there was no staged incubation,

and the fabric coverings of the top and bottom walls of

the egg chamber precluded air movement with sufficient

velocity. In the Muskogee incubator there was likewise

no staged incubation and no proof suggesting that the

rate of air movement was at all greater than that em-

ployed at Brooklyn.. In the patent application as filed

there is no disclosure of staged incubation, and the illus- .

tration includes just such fabric coverings as were em-

ployed at Brooklyn.

Considering the brief filed by Hastings’ attorneys as

supplementing the disclosure of his application, the dis-

closure thus supplemented remains unchanged except that,

as noted above, there is more specific statement that the

rate of air circulation is definitely low, altogether too low

to effect the desired purpose, and far lower than has ever

‘been found effective in practice.

The drawing of the application shows but one egg com-

partment whereas reference is made in this brief to several

egg compartments. This reference to several egg com-

partments must, therefore, have been reference to several

egg compartments employed as Hastings employed them

in the Muskogee installation where the arrangement of

the eggs was not that appropriate for.staged incubation,

and all of the statements in the brief are consistent with

that assumption. oe

_ Giving to the statements in the brief about the arrange-

ment of the eggs in the several chambers any other inter-

pretation involves applying to them the later acquired

knowledge contributed to the art of incubation by Smith,

and that is precisely what should not be done. Those

statements should be read in the light of the knowledge

then existing, that knowledge which left the art of mass

incubation with an unsolved problem which workers in the

art strove for years to solve before the real solution wae

ultimately attained by Smith.

Tae Hastinos ApPucation Can Be Usep On ty To

Cornroporats OrHEer TESTIMONY OF THE Prior Uszs.

After the filing of the brief, the Hastings application

was rejected by the Board of Examiners in Chief, and

the application was then abandoned.

It is well settled that an abandoned application for pat-

ent cannot be used to anticipate a later issued patent.

This principle of patent law was stated by this Court in

the Corn-Planter Patent, 23 Wall. 181, where it was said

(p. 210-211);

‘*Were it not for the application for a patent it

would justly be regarded as an.abandoned experiment,

incapable of being set up against any, other claim.

Can the fact that such an application was made and

afterwards voluntarily withdrawn, and never renewed,

maké’ any difference? We think not. Had a patent

been actually zranted to Remy & Kelly, it would have

been different. The case would then have come di-

rectly within the seventh section of the act of 1836,

which makes a ‘patent’ or a ‘description in a printed

publication’ of the invention claimed, a bar to a fur-

ther patent therefor. But a mere application for a

patent is not mentioned as such a bar. It can only

have a bearing on the question of prior invention or .

discovery. If upon the whole of the evidence tt ap-.

pears that the alleged prior invention or discovery

was only an experiment and was never perfected or

brought into actual use, but was abandoned and never

revived by the alleged inventor, the mere fact of hav-

ing unsuccessfully applied for a patent therefor, can-

not take the case out of the category of unsuccessful

experiments.”

The only bearing which this application can have upon

the Hastings alleged prior use or prior invention is in sub-

stantiating (if it does) the testimony of witnesses as to |

operations of the Hastings installations carried on contem-

/oraneously with the several communications to the Patent

Office (see U. 8S. Blind Stitch v. Reliable, 67 F. [2d] 327).

The abandonéd application cannot be used to create a -

doubt as to the process which Hastings actually used,

and then, having created this doubt, to resolve the doubt

by concluding that the process used was something dif-

ferent from that referred to in the testimeny. When,

as in the instant case, the corfstruction of the incuba-

tor and the process employed have been established

by the testimony of witnesses and the contemporaneous

publications, the abandoned application cannot be used

to establish a different thing. Thus we find in the brief

filed in the application that at certain points the evi-

dence given by Lieber is confirmed, and at other points

the disclosure is vague but not contradictory of Lieber’s |

testimony. In such circumstances, the only permissible

use of the application or documents filed in connection with

it is in confirmation of the evidence, not in contradiction

of it.

Instead of corroborating the statements of witnesses for

respondents that Hastings practiced staged incubation at

Brooklyn, or realized its value and importance, the appli-

cation as filed contemporaneonsly with his Brooklyn ex-

periments contains no disclosure of staged incubation.

Instead of showing that Hastings then had a conception

of current movement of air with sufficient velocity to ac-

eomplish the purpases of the Smith invention, the fabric

partitions illustrated and described in the application as

_ located at the top and bottom of the egg chamber would

admittedly choke off any current of air.

“The amendment of May 24, 1912, does not corroborate

the use of staged incubation at Muskoyee, for there is

no disclosure of that step. This amendment naullifies the

claim to successful use at Muskogee (or Brooklyn) for it

| speaks of ‘‘a painstaking and very costly series of experi-

- 64

ments’’ and says that ‘‘up to the present time, hatcheries

of large capacity have preven to be practical failures.’’

The brief of December 20, 1912, gives no adequate de-

scription of setting eggs in staged incubation; it discloses

inadequate forced draft; and for the reasons stated, it does

not disclose the maintenance of constant air temperature

for all ages of eggs. ,

The reference in the brief (James R. p. 752) to ‘‘a vast

number of eggs subjected to the same temperature arti

atmospheric conditions best adapted for the developrfent

of the embryo’’, which the Court of Appeals quoted (Hall

R. p. ), applies to the Hastings’ method for Hastings

proposed t@ maintain ea uniform temperature in each com-

partment containing 5,000 4ggs; although the temperature

of the several compartments was progressively increased.

On the next page, the brief writer referred to ‘‘eggs

assembled in a single compartment and with eggs at all

stages of incubation’’. This statement, also, is consis-

.tent with an operation in which the eggs in any one com-

partment are all of one age, and refers to progression of

incubation in the several compartments. The statement

immediately following that ‘‘the eggs in the later stages

of development supply the necessary heat for the eggs in

the earlier stages of development’’, applies equally well to

the process which Hastings actually employed at Musko-

gee, for in that process the excess heat in one compart-

ment in which the eggs are in a later stage of development

is supplied to another or other compartments in which the

eggs are in an earlier stage of incubation. It will be noted |

that this passage does not state or even suggest that the

temperatures within the several compartments are the same.

On the contrary, it is consistent with the method of opera-

segregating the eggs in individual compartments according

to their ages and carefully regulating the air inlets to the

— ree: a oe

several compartments to produce progressively increasing

temperatures therein in aecordance with the progressive

stages of incubation in the compartments.

’ Thus these detached portions of the brief which have ‘eis

thought to indicate the Smith process by some.who have

acquired knowledge of the Smith invention rather recently,

do in fact relate to and describe the wholly differen® process

which the evidence shows Hastings actually employed.

Positive support for this statement appears at other

points in the brief. At the bottom of page 754 it is said:

‘‘Furthermore in the incubating process during the

final stages of the development the external heat sup

plied must be greatly reduced.’’

This is true of the procedure employed by Hastings at

Muskogee, but it is entirely foreign to the Smith process

wherein there is no change in the amount sof ‘‘exttrnal

heat’’ applied; the same temperature being maintained

continuously and applied at all times to eggs.in ali stages

of incubation.

Again, on page 759, it is stated that

‘air is drawn positively through a circulatory sys-

tem and may be modified at any point during ‘its

circulation.’’

This is fairly definite reference to the dampers at the top

of the several chambers of the Muskogee incubator, whose

function was to regulate the amount of air admitted to

each chamber in order to maintain progressively increas-

ing temperatures in the several chambers. In the Smith

procedure there is no modification of the current at any

point in its circulation.

It is impossible to reconcile these passages with en idea

that Hastings then had any conception of the Smith pro-

cedure or that he disclosed in his application for patext

a method or apparatus for incubating in accordance with

the Smith invention. On the other hand, all the state-

ments in the brief, like those in the contemporaneous docu-

ments, are consistent and have a definite meaning when

applied to the procedure eraployed by Hastings at Mus-

kogee as described by Lieber.

Furthermore, the proof of the matter is found in the fail-

ure of Hastings to achieve the commercial and practical suc-

cess for which he was striving. If the statements in the brief

were really descriptive of the Smith process, and if Hast-

ings had in truth employed that process at Muskogee or

anywhere else, he would have solved the problem of mass

incubation. But, then, the disastrous termination of the

Muskogee venture and the failure and abandonment of all

Hastings’ efforts, would be inexplicable. Nor would it be

possible to reconcile Hastings’ statement that six years

later at Tiffin, Ohio, he ‘‘tried out a method of hatching

very much more like the Smith-Buckeye device than I have

used in the past’’ (James. R. p. 577), with the view that he

had used the Smith process at Muskogee and had disclosed

it to others in December, 1912.

If Hastings had discovered in 1912 the principles of

the Smith invention and the vital properties of staged

incubation, he must have realized also the inadequacies of

his pending application as a basis for a patent upon this

process. Had all of the features of successful mass incu-

bation been developed by Hastings at Muskogee, it is

most probable that he would have filed a new application

for patent thereon containing claims covering the inven-

tion. But he made no such application and presented no

claim to what is now said to have been originated and

practiced by him.

The claim which was presented to the Patent Office and

rejected by the Board of Examiners in Chief, appears on

a =

page 759 of the James Record.* It sets forth the Hast-

ings proposal gs he then conceived it. « When analyzed, it

is nothing more than the use of a power driven fan within

an incubator. It contains no reference to staged incuba-.

tion or to the utilization of the endothermic and exothermic

' properties of the eggs in the various stages of advance-

ment in incubation.

Hastings had made no further progress than Smith had

made in 1913 and 1914 before he conceived the idea of set-

ting the eggs in ‘‘staged incubation’’ in a single chamber,

subjecting them to the same body of air at the same. tam-

perature and increasing the current flow of air to accom-

plish the purposes set forth in Claim 1 of the patent. In

rejecting the defense of prior use by Smith, this Court

said:

**At the time indicated he’’ (Smith) ‘‘used commer-

cially an incubator arranged in three completély sep-

arated compartments in each of which was circalation

of air by a fan. But there was no staged incubation

in any single compartment’’ (Snow Case, p. 16).

So here, the gist of Hastings’ application, embodied in

the claim, does not anticipate the Smith patent for the

same reason that Smith did not invalidate his own patent

by the mere use of a fan in an incubator.

*“A hatchery for eggs embodying an incubating chamber adapted

for the reception of superposed trays for eggs to be incubated,

whereby said eggs will be arranged in layers one above the other, -

means for effecting a distribution of air uniformly to the eggs in

the chamber, means for heating the air, and mechanically operated

means for forcing a unifotm circulation of air through all parts

of the chamber and past the heater, whereby convexion currents

will be eliminated, temperature and gaseous stratification of the air

in the chamber overcome, and the eggs subjected to the influence of

air of the same temperature and composition.”

Finally as to the brief filed with the Hastings application

for patent, the statement by the Circuit Court of Appeals

that ‘‘the attorney’s brief does not represent a new idea

but a clarification of an old one,’’ is founded upon a wholly

erroneous conception of what the ‘‘old’’ idea was. The

true purport of the brief is to confirm the established fact

that the ‘‘old’’ idea of Hastings comprehends no part of

the novel idea of mass incubation contributed to the art

by Smith.

POINT IV.

_ Under established principles of patent law the Hastings a

defense must be rejected. |

Success Is Not Anticipated by Failure.

The annals of the patent law are crowded with examples

of alleged prior uses and prior inventions which have been

presented in their most attractive form as complete antici-

pations of successful patented inventions. Courts have

. repeatedly rejected and commented on such abortive efforts

put forward with unsound claims to some real achievement

and prolific excuses for the failure to achieve more, all.in

the effort to destroy valuable patent rights built on persis-

tence, skill and inventive genius. Success made Smith a

shining mark for the disgruntled and unsuccessful, who,

having failed to achieve success, became obsessed’ with a

desire to destroy that which they could not create.

A most striking resemblance to the situation here is

found in the telephone cases. In those cases Bell was

beset by the claims of many that they and not Bell had

invented the telephone. Bell was forced to litigate his pat-

ent against plausible claims of prior inventorship and prior

uses which bore much greater resemblance to his successful

work than is found between Hastings and Smith. The ex-

periences of the ‘‘prior inventors’’ and ‘‘prior users’’ who

were set up against Bell were colored with more evidences

of success and the devices they made bore closer superfi-

cial resemblance to those of Bell than is true of Hastings in

his relation to Smith. The closest approach to Bell was

Reis who almost made the revolutionary invention of trans-

mitting speech. In the words of this Court (126 U. S.

544-545) :

‘*It was left for Bell to discover that the failure was

due not to workmanship but to the principle which was

adopted as the basis of what had to be done. * * °

Reis never thought of it, and he failed to transmit

speech telegraphically. Bell did, and he succeeded.

Under such circumstances it is impossible to hold that

what Reis did was an anticipation of the discovery

of Bell. To follow Reis is to fail, but to follow Bell

is to succeed. The difference between the two is just

the difference between failure and success. If Reis

had kept on he might have found out the way to suc-

ceed, but he stopped and failed. Bell took up his work

and carried it on to a successful result.’’

So, here, Hastings was striving for success in the same

field as Smith. Perhaps he almost succeeded. Im fact he

did not. His failure was due to his inability to grasp all

of the essentials of mass incubation, or his failure to put

all of them together appropriately to form an operative

whole. In his vacillations from scheme to scheme, he

never arrived at the answer to the problem. His defeat

and consequent abandonment of his incubator have no

other explanation than a } lack of ane of the in-

vention.

Earlier in this brief we have referred to Coffin v. Ogden

(18 Wall. 120). This is the leading case upon near antici-

pations and the pithy summary contained at page 124 can-

not be improved upon:

‘If the thing were embryotic or inchoate; if it rested

in speculation or experiment; if the process pursued

for its development had failed to reach the point of

consummation, it cannot avail to defeat a patent

founded upon a discovery or invention which was com.

pleted, while in the other case there was only pro;sress,

however near that progress may have approximated to

the end in view.’’

In Consolidated Valve Co. v. Crosby, 113 U. 8. 157-179,

this Court used language which is particularly apt:

**Richardson’s invention brought to success what

prior inventors had essayed and partly accomplished.

He used some things which had been used before, but

he added just that which was necessary to make the

whole a practically valuable and economical apparatus.

The fact that the known valves were not used, and the

speedy and extensive adoption of Richardson’s valve,

are facts in harmony with the evidence that his valve

contains just what the prior valves lack, and go to

support the conclusion at which we have arrived on

the question of novelty.’’

No doubt the art, represented by Hastings, Lawry and

the numerous patentees cited by respondents, was groping

for the solution to the problem of mass incubation because

ample reward for the solution was an obvious certainty,

but it remained for Snitith to achieve it. In the words of

Etbel Co. v. Paper Co. (261 U. S. 45-68) :

“The fact that in a decade of an eager quest for

higher speeds this important chain of circumstances

had escaped observation, the fact that no one had ap-

plied a remedy for the consequent trouble until Eibel,

and the final fact that when he made known ‘sis dis-

- eovery, all adopted his remedy, leave no doubt in our

minds that what he saw and did was not obvious and

did involve discovery and invention.’’

Finally, we quote a recent publication ‘‘Invention and

the Law’’, not merely because it was written by opposing

couns¢! but because it states the rule concisely and clearly,

and applies with peculiar force to the situation here. It

was shown in the Snow and Wazham cases that Smith suc-

ceeded only after efforts extending over nine years, marked

by successive financial failures followed by ultimate suc-

cess. Hastings quit in his efforts after two years. Says

this author, citing a host of authorities (p. 158):

‘The award for invention goes to the persistent and

the successful. Those who almost accomplish an in-

vention, but abandon it before final completion, are not

inventors. Their labors cannot be used to show lack

of inventidn on the part of another person who takes

the same idea where the former inventor left off and

ie persistent enough finally to complete it and make

it a success. It is the final inventive step that wins.

‘*The extent of the inventor’s efforts to accomplish

his inventive act, the amount of money he spends in

experiments, and the failures he encounters which he

finally conquers, are all factors taken into considera-

tion in determining whether the final inventive step

that he takes, however small, is a step that constitutes

invention because it brings fina) success.’’

Prior Invention and Prior Uses Must Be

Established by Evidence Which Leaves No Rea-

sonable Doubt of Their Existence and Efficacy.

Consider this well settled rule in connection with the out-

standing features of the evidence submitted in support of

the Hastings defense, including, among others, (1) the ab-

sence of contemporaneous record of eggs incubated and

chicks produced in any operation of any Hastings incuba-

tor, (2) the absence of contemporaneous description in any

satisfactory detail of either the construction or the method

of operation of any Hastings incubator unless one assumes

en,

that the abandoned patent application describes the Brook-

lyn (Davis) incubator, (3) the admission of exaggeration

in the articles in the publications in evidence, (4) the dis-

crepancies between the testimony of .Hastings and other

witnesses, particularly Lieber, (5) the discrepancies be-

tween the testimony of witnesses in these cases and the

same witnesses in prior suits, (6) the discrepancies between

the testimony of witnesses and the publications, (7) Hast-

ings’ admitted jealousy and resentment of Smith’s success,

(8) the great number of years which elapsed between the

recollection testimony of the witnesses and the events about

which they testified, and (9) the conclusions expressed by

those judges who had the advantage of seeing and hearing

Hastings and other witnesses for respondents when they

testified.

This being the character of the defense proofs, the case

presented is peculiarly one for application of the prin-

ciples announced and applied by this Court in the Barbed

Wire Case cited and quoted from above (asfe, p. 14).

Other pertinent comment of this Court is found in the ~

Eibel case, 261 U. S., where this Court said (p. 60):

‘“‘The temptation to remember in such cases and -

the ease with which honest witnesses can convince

themselves after many years of having had a con-

ception at the basis of a valuable patent, are well

known in this branch of law, and have properly led

to a rule that evidence to prove prior discovery must

be clear and satisfactory.’’

And in Deering v. Winona (155 U. S. 286-301) where this

Court said:

‘‘Granting the witnesses to be of the highest char-

acter, and never so conscientious in their desire to

tell only the truth, the possibility of their being mis-

taken as to the exact device used, which, though bear-

ing a general resemblance to the one patented, may

differ from it in the very particular which makes it

patentable, are such as to render oral testimony pe-

’ culiarly untrustworthy; particularly so if the testi-

mony be taken after the lapse of years from the time

the alleged anticipating device was used. If there be

added to this a personal bias, or an incentive to color

the testimony if the interest of the party calling the

witness, to say nothigg of down-right perjury, its value

is, of course, still more seriously impaired. This case

is an apt illustration of the wisdom of the rule reqauir-

ing such anticipations to be proven by evidence so

cogent as to léave no reasonable doubt in the mind of

the court, that the transaction occurred substantially

as stated.’’ ‘

POINT V.

The respondents have used the Smith invention and ‘in-

fringed upon the patent.

Hall Brothers.

In the ease of Hall Brothers (No. 38) there can be no

question that infringement is present. These respondents

are large and wealthy hatcherymen located at Wallingford,

Connecticut, where they have for a number of years oper-

ated incubators identical in construction and mode of opera-

tion with the Robbins incubatar involved in the Waxham |

case. This incubator consists of a closed cabinet contain- "

ing many thousands of eggs set at semj-weekly intervals in

staged incubation. The incubator has large fans on the rear

wall of the cabinet, and restricted inlet and outlet openings

for the interchange of limited amounts of fresh and foul

air, all exactly as in the Warham case, and the current

movement of the air through the cabinet is identical with

that employed in the Wazham incubators. This is testi- ~

— — = —

fied to by petitioner’s expert, Mr. Taggart, at page 44 of

the Hall record, and is not disputed. .

At the beginning of the infringement, Hall Brothers used

the same #23 Robbins incubators of 23,000-egg capacities

which were used by Wacham, together with some smaller

#17’s of 17,000-egg capacity, which, except for reduction

_in size, were the same as the #23’s (Hall R. p. 39).

About 1931, following adverse decisions in the Wazrham

suit, of which respondents were promptly notified (Hall R.

p. 42), they modified their practice by removing the eggs

from the main chamber on the 18th day, and placing them in

a separate chamber. By this change of procedure, the eggs

which had reached substantial maturity were removed for

the actual hatching of chicks.

The incubators which were used for the 18-day opera-

tions were known as the Robbins #26°. They are shown

in the manufacturer’s advertisement (Pltf.’s Ex. 7, Hall R.

p. 120), and the interior construction is shown in Exhibits

4, 5 and 6 (Hall R. p. 117-119). In this incubator, the same

tilting egg drum is used in which the eggs are placed at

semi-weekly intervals so that there are in the racks a plu-

rality of settings, ranging from fresh eggs to eggs which

have progressed through eighteen days or 18/21sts of the

entire incubating period. As the respondent Hall said with

respect to this ogeration (R. p. 40):

‘*Instead of hatching the eggs in the racks to the

left’’ (as in the old 23’s) ‘‘we simply put them in our

new #10 hatchers.’’

It will be recalled that an egg passes from the endo-

thermie to the exothermic phase on or about the 10th

day (294 U. S. 4).

*A Robbins #62 unit comprises two #26 incubators of 26,000

¢gg capacity and a hatching unit of 10,000 egg capacity to serve the

two incubating units. (See Hall R. p. 120.) | |

75 .

Infringement is not avoided by the expedient of remov-

ing the eggs on the 18th day of incubation, for with this

setting practice the eggs in the incubator are about equally

divided between endothermic and exothermic eggs.

As stated by the respondent Hall (R. p. 77):

‘“*XQ68. That is to say, if you set all your eggs at

one time in the 26 incubators, you would have them all

reaching the heat generating stage at the same time,

would you not? A. Yes.

XQ69. And you would have them when yon first

started in all in the heat absorbing stage at the same

time? A. Yes.

XQ70. You have by your principle of operation of

‘the 26, you have a balance or an attempt to balance

those two properties of the eggs, you have some eggs

that are absorbing and some that are heat generating

in operating your 26? A. I believe so.’’

As the respondents in both cases (Hall and James) rely

upon this eighteen-day defense, we will discuss it more

fully at pages 82 to 86, infra. For the present, it suffices

to say that, in the operation of the +26 Robbins incubators,

Hall has used the process set out in Claim 1 of the

patent in suit, and particularly as defined by this Court

in the Snow case. Judge Hincks 30 held, saying (Hall R.

p. 221): -

‘*The method used by the defendants in the use of

all of the Robbins machines above specified involved

the arrangement of the eggs at different levels in

staged incubation in a closed chamber, having restricted

openings of sufficient capacity for the escape of foul

air without undue loss of moisture; the application to

the eggs of heated air in a current created by means

other than variation of temperature; the current of

air being of sufficient velocity to circulate, diffuse and

a aa

maintain the air throughout the chamber at substan-

tially the same temperature, whereby the air is vital-

ized, moieture conserved, and the units of heating car-

ried from the eggs in the more ) eeveneen stage to those

in the less advanced.’’

James Manufacturing Co.

In the James case, the principal respondent, James Man-

ufacturing Company, is a manufacturing corporation hav-

ing a plant and place of business at Elmira, New York,

and has for many years been engaged in the manufacture

‘and sale of incubators.

For many years prior to the infringement, this com-

pany was engaged in the manufacture and sale of the old,

single layer, single setting, still-air incubators. It was a

violent opponent of the Smith type of incubators, strenu-

ously advocating ‘‘Nature’s Way’’ as superior to forced

draft incubation. The James Company would have none

of the ‘‘staged incubation’’ and ‘‘forced draft’’ process,

and fought the adoption of this system by advertisement

and propaganda (James R. p. 58-60). In 1929, however it

was compelled to abandon its former stand and come out

with forced-draft-staged-incubation. The old style incubator

was. relegated to the background and used only during the

last three days of the hatching period, whereas through-

out the eighteen-day formative period of the embryo, the

Smith invention was employed.

In the charge over to the Smith method, the James

Company copied the Smith process more slavishly than

either Robbins or Snow, for it used not only the prin-

ciples broadly stated in Claim 1, but also the more spe-

cific steps of process Claims 2 and 3 and even the detailed

structure of Claim 5 of the patent.

The illustration on page 78, which is a sencoduction of

Exhibit 14 (James R. ». 684) shows the ‘‘Jamesway’’

inenbator.

ERR gE) ESR ey mR ee

Tras a ilies i

The incubator is a large cabinet with a deor, shown on

the left. Within the incubator are the superposed egg

trays, in which the eggs are set at intervals of 3144 days

(James R. p. 85-86) so that, when in operation, the incuba-

toy contains eggs in ‘‘staged incubation.’’ At the top of the

cabinet are. large central openings through which the air

is drawn from below by the rapidly rotating fan.* This

fan is of the blower or impeller type and is encased be-—

tween the upper and lower surfaces of the fan housing.

It draws the air by suction from the cabinet and throws

it out centrifugally over the heaters through the horizon-

tal passages. On the back of the door and on the rear

wall are located two vertical partitions forming corridors

which receive the current of air delivered by the fan and

guide it to the bottom of the chamber. The fan is run

at high speed (550 to 860 R.P.M.), and the current of air

moves downward through the corridors at approximately

700 feet per minute (James R. p. 90). The air then turns up-

wardly and moves through the trays and around the eggs

in staged incubation at speeds averaging 135 feet per min-

ute (James R. p. 475) and is again drawn into the fan and

recirculated. }

Near the top of the cabinet and at the level of the fan,

are located four small holes, controlled by s!ides, through

which a portion of the air is discharged. One of these

holes appears at the upper left hand corner of the draw-

ing. On the bottom of the incubator are openings through

which limited amounts of fresh air enter the cabinet. Over

these openings are located four revolving arms which run

at relatively low speed (210-220 R.P.M.) and the purpose

*Although respondents’ expert was careful (except in three in-

stances, James R. p. 206-207) not to call this instrument a “fan,”

it was repeatedly called a “fan” in respondents’ instruction books

and catalogues. (See James R. p. 94-95.)

— midhiihieaiend ons ie

JAMESWAY INCUBATOR

eons Pane Pan

eed acaTe MOUS 84

AES " ~~ eLoetat

o——, 4

i ~

} a |

rae

;

of which is to mix the fresh, cold gir into the stream at

it enters the egg chamber and before it reaches thé eggs.

Respondents have sought to concentrate attention upon

this last named instrumentality and to minimize the upper

fan. It was thoroughly demonstrated that the upper fan is

the dominant atr moving instrumentality, and that the effect

of the ‘‘mixer’’ on the current movement of the air is neg-

ligible and localized to its immediate vicinity. This is ap-

parent from the fact that the lower device rotates at a much

reduced speed and the blades are slender sticks running in

the open, while the upper fan runs at high speed, has eight

broad blades, and is encased at the sides so that the air is

forcibly drawn from the cabinet and thrown out centrifug-

ally at high speed over the heaters and down through the

corridors and into the cabinet. This fact is shown by the

comparatiye charts, Exhibits 24, 25 and 26. Exhibit 24

(James R."p. 686-695) shows the current movement in the

normal operation; Exhibit 25 (James R. p. 696-705) shows

the movement with the upper fan only running, and Ex- —

hibit 26 (James R. p. 706-710) with the mixer only running.

In this-latter exhibit, the ‘‘air mixer’’ is shown to have

no effect whatever in the top six trays (James R. p. 706).

When the normal operation was conducted, the effect of

the ‘‘air mixer’’ was overshadowed by the powerful cur-

rent generated by the upper fan.

Taggart said (James R. p. 117):

‘‘Now, taking the movement of air through the ma-

chine, as a mass, the fan at the top of the machine is

decidedly a dominating influence and the air mixer has

very little effect upon the volume of air that is moving.

It simply levels out the speed of the current through the

bottom trays, and it also mixes, with that downward

movement, the fresh air that is taken in at the bettom

before it has aun opportunity to contact any of the egg

trays.’’

The District Court Judge observed the operation of the

incubators and his conclusion was:

**Defendant’s device is so constructed that the air

is drawn upward through the tiers of egg trays to the

‘top of the cabinet where it is thrown from the tips

of the impeller blades toward the front and back of

the compartment and carried downward through chan-

nels to the base of the compartment. At this point

defendant has provided its device with a turbulator

r agitator, a flat bladed rotating air mixer which re-

volves at a slower rate of speed than the impeller. The

purposes are to mix the fresh air which comes in at

the base of the machine into the flow of air within the

machine so as to secure an even temperature through- ™

out thé compartment, and to break up the current,of

air so that as it rises through the tiers of egg trays it.

will have no defined path. In plaintiff’s device the -~

fresh air is mixed into the air flow of the machine by

the propeller. This is impracticable in defendant’s

machine, because the impeller is at the top while the

fresh air inlets are at the base of the machine. Ex-

periments at the trial showed that the turbulator af-

fected air currents in only a few of the lowest trays

of eggs and that from that point upward the air flow

sae to travel in definite paths’’ (James R. p. 1263).

In the Cuniie below, respondents argued that as the air

moves at different speeds through the several trays, there

cannot be a continuous current of air. This argument

overlooks the fact that (except in a few isolated spots at

the bottom of the cabinet) the air is all moving in the

same direction. It also erroneously implies that in a cur-

refit of air, the air must move at the same speed at all

points. None of these variations in speed indicate that

current movement of the air is not present.

This. Court disposed: of similar arguments of non-in-

fringement in the Snow and Wazham cases, saying, in

the Snow case (p. 19-20):

‘*Fhat there is a mixture obsthe air and some con-

fusion of its movement in the corridor, and that at -

> oe —

different levels within the space occupied by the tiers

of trays the movement is not in the same direction,

is immaterial. It is eno that there is a movement

of air in current. form following substantially defined

paths through the tiers of egg trays, sufficient to effect

the desired transfer of heat units. Claim 1 does not es

prescribe that a current of air is to be maintained

throughout the chamber. It calls for the application

to the eggs of a current of air ‘of sufficient velocity

to circulate, diffuse and maintain the air throughout

the chamber at. substantially the same temperature.’

This respondents accomplish by the currents of air

set in motion either directly or indirectly by the move-

ment of the blades of the propellers. The method is

that of Smith.’’

Finally, respondent James, in its catalogues, admitted

that the air moves in a steady flow, in repeated cycles

through the egg chamber, with ‘‘sufficient velocity to cir-

culate, diffuse and maintain the air throughout the chamber

at substantially the same temperature’’, saying (James

R. p. 97):

‘“‘The air rises uniformly between all the eggs in

the entire incubation compartment, without the effect

of a direct blast, but with a gentle upward movement.

The rising air is drawn through two openings on

either side, at the top, and again mixed in the im-

peller compartment and starts another complete cir-

cuit of thecabinet. The rate of air flow is rapid enough

to prevent differences in temperature at different

points.’’

In the James incubator, the.current movement of air is

created by the suction effect of the upper fan, white in Smith

the current is created by the pressure of the fans, as shown

by the candle tests illustrated by the photographs (James

R. p. 1182-1187). Ht is wholly immaterial to the question

of infringement whether the current of air is drawn or

pushed because the claims do not make this distinction. The

actual difference in pressures within the egg chambers in

the Smith and Jamesw y Sn is two-thousandths

(.002) of an inch in barometric\pressure (James R. p. 377),

a difference in pressure such ais found‘in the atmosphere

at levels two feet apart. ;

Claim 2 differs from Clai in that the air currents are

specified to be ‘‘power driven’’ and that the currents of

air enter the egg chanjber ‘‘through openings’’. It is plain

that the Jamesway incubator has ‘‘ power driven’’ currents

of air which enter the egg chamber through the openings

at the outlets from the corridors. Claim 3 calls for a ‘‘ver-

tically directed’’ current of air, which is found in the James-

way incubator. With respect to Claim 5, the spaced parti-

tions on the door and on the back wall provide the corridors

for conducting the stream of air from the. fan to the egg

chamber, and in all other ‘respects the vemeuway incubator

responds to the terms of this claim.

The 18 Day Defense.

Respondents in both cases have claimed that they did

not infringe because they practiced the Smith invention for

eighteen days only. They did not deny that they utilized |

the Smith process for eighteen days, but claimed that, as

they did not use it for the remaining three days, they did

not infringe.

If this contention were carried to its logical conclusion,

the patent could be avoided just as well by removing the

eggs at the twentieth day or even an hour before actual

hatching begins.

Respofidents claim that by removing the eggs to an-

other compartment they reduce the spread.of B. W. D.

(bacillary white diarrhea) among the hatching chicks.

There is nothing to this claim, for the embryos within the

a ad

shells are shielded by the shells in a Smith or any other

incubator and therefore cannot contract or communicate

disease (James R. :p. 338, 488). Thus, no benefit is secured

by segregating hatched chicks and umhatched eggs.

All that respondents have done by removing the eggs

at the eighteenth day is to utilize the Smith process to less

than its fullest extent and to deprive themselves of the

full realization of its benefits by sacrificing the heat gen-

erated by the eggs in the last days of incubation. But, as is

shown by the heat ‘charts (Hall Ex. 13, p. 126; James Ex.

3, p. 676), there is more heat generated by the eggs from

the 11th to the 18th days than is necessary to supply all

of the heat required for the eggs up to the eleventh day

(James R. p. 47). :

It is well settled that one does not avoid infringement

merely by using the patented invention to less than the

full advantage. As stated by this Court in the Wazham

case (p. 23):

‘*Petitioner does not avoid infringament of respond-

ent’s method patent merely by employing it in a ma-

chine of different structure than respondent’s, whether

more or less efficiently.’’ (Citi

In Sewall v. Jones (91 U. 8. 171, 183),

**Tt is not necessary that the defendant should employ

the plaintiff’s invention to as good advantage as he

employed it, or that the result should be the same in

degree ; but it must be the same in kind.”’

That the eighteen-day operation does not destroy the es-

sentials of the Smith invention is shown by the following

very pertinent quotation from the James instruction book

(James RB. p, 96):

“Do not leave the cabinet full of eggs of the same -

age, as, after the tenth or twelfth day, enough animal

heat will be created so that you cannot keep this cabinet

down to temperature.’’

based upon the presence of the word ‘‘hatching’’. The

word ‘‘hatching’’ in common parlance, has been used to

designate the entire period of twenty-one days and is there-

fore synonymous with ‘‘incubating’’ (James R. p. 491-493;

328-9; 446-7). Scientifically, the word ‘‘hatching’’ may. be

- used to indicate the actual emergence of the chick from the

shell, but this is not the way the word is used generally or

the way in which it is used in the

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