Respondents Brief — Smith v. Hall

a} ial

MAY 11 1956

CHARLES ELMORE CRO

CLE

IN THE

"SUPREME COURT OF THE UNITED STATES

October Term, 1935.

No. Sai 30

SAMUEL B. SMITH,

Petitioner,

v.

A. B. HALL and L. €. HALL, d. b. a.

~ HALL BROTHERS,

° Respondents.

BRIEF FOR RESPONDENTS.

/ Asrnun E. Paice,

no Frank E. Pater,

Counsel for Respondents.

Copyright 1936, Arthar E. Paige.

a a

-

INDEX.

Page

EN os ca ed kao coda eee eee ee CaN 1

IE III 5s 5 cova aces Sees es techs cone ha 2

‘‘Prior Decisions of Other Courts’’................. 3

Smith’s Claim 1...... Pree Prere Vesna aeeweakones 6

Comparison of Smith’s Claim 1 with the New Evi-

ee ee RN eer ere 6

Elements of Structure Required by Said

GE vk ae cacksusn dees tenes 6

Elements of Operation Required by Said

Pee eee eee es Pe as 7

The Claim in Suit is Invalid and Void in View of

Peery Pee ee ers eee 8

Disclosures in the United States Patent Office Records

re Application Serial No. 624,885 filed May 3,

1911, by Milo Hastings for. Hatchery for the Eggs

Of Domestic Fowl ........ccccccscnesesissensen 9

Swe Martoms COMO oa ica ks 6 ciicaa st eancus sins 13

New Evidence of Insufficiency of Disclosure in the

Gunite Fabewk 1D a cans in scence ca senncans 15

Petitioner’s Misrepresentations of Scientific Facts

Relevant to.said Claim 1 ..................... 17

3 : Comparative Inefficiency of Petitioner’s Method eer 19

ee ‘This ee ee ee ep r yr ery rrr 20

r Francis W. Orvis, Editor of Poultry Digest ......... 20

Petitioner has Certainly Known for at Least 13 years

That he was not the First Inventor of the Sub-

Seat Matior of anid Cimtem 1... 2.06. cnc wecseens 22

CASES CITED.

Page

Buckeye Incubator Co. et al. v. Cooley, (D. N. J. unre»

ported), affirmed 17 F. (2d) 463 (C. C. A, 3rd) 5, 12, 14

Buckeye Incubator Co, and Samuel B. Smith v, Wil-

liam F. Hillpot, 22 F. (24) 855; 24 F. (2d) 341,

(GC. CO. B. Br) oc. cece cece cesses cccceccecees

Buckeye Incubator Co. et al. v. Stone, unreported .... 5

Buckeye Incubator Co, v. Wolf, 291 F. 253, (D. C.

Ohio, 1923), affirmed 296 F. 860, (C, C. A. 6th). . 5, 22

Root v. Bailway Co., 105 U.S. 189 .............2.... 22

Smith v. Mary A. Griscom ..... Serer eee 22

A UE CI oc ceca aes consecedescaeds sd 22

Smith v. F. J. LeMieux, La Plant Hatcheries ....... 19

Smith v. Snow, 294 U. 8.1 ............... coees 4S, 12

Smith v. Glenn T. Sponenbergh, d. b. a. Glenn T. Spo-

nenbergh Hatcheries .................-. ey 22

— ee. sk euake ees ccs oe 3.4.5

STATUTES CITED.

R. S. §4886; Mar. 3, 1897, e. 391, §1, 29 Stat. 692 .... 8

R. S. §5403; Mar. 4, 1909, c. 321, §128, 35 Stat. 1111. 4.

Supreme Court of the United States

October Term, 1935.

No. 949.

SAMUEL B. SMITH,

Petitioner,

v.

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

HALL BROTHERS,

Respondents.

BRIEF FOR RESPONDENTS.

To the Honorable, The Chief Justice and Associate Jus-

tices of the Supreme Court of the United States:

The Parties.

Petitioner trades as The Smith Incubator Company at

3108-3136 West 121st Street, Cleveland, Ohio, where he

has a ‘‘Legal Department’’ under the supervision of his

witness Joseph I. Taggart, occupied in prosecution of

approximately four hundred separate suits involving the

- game subject matter as the suit against Hall Brothers,

_ : 2 a

and in manufacturing and distributing to 21,800 persons

(on a mailing list including all persons engaged in the

‘business of hatching chicks in the United States), a

printed periodical entitled ‘‘Smith’s Chickagrams’’, and

circulars and letters warning the addressees against the

purchase or use of any incubating apparatus other than

that offered for sale by Petitioner’s company. |

These Respondents have a farm at Wallingford, Con-

necticut, where, before this litigation, they conducted what

was said by Petitioner to be the largest chicken incubating

business in the East. These Respondents have no connec-

tion whatever, either directly or indirectly, with James

Manufacturing Company and Elmira Hatcheries, Incor-

porated, Respondents re No. 950. The Court below, as a

matter of convenience, heard arguments in both cases upon

the same day, to wit, February 14, 1936, and filed Opinions

- in both cases upon the same day, to wit, April 6, 1936.

Whereupon, your Petitioner, Samuel B. Smith, mixed the

subject matter of the two separate suits in the Court

below in a single Petition for writ of certiorari.

Questions Involved.

The issues raised in the Court below were limited, at

the trial, to the questions of. validity and infringement

of the claim 1 of Letters Patent of the United States

No. 1,262,860 granted April 16, 1918, to the Petitioner,

as assignor to The Buckeye Incubator Company, a cor-

poration of Ohio, for Incubator, and alleged to have been

re-assigned to the Petitioner subject to a license to, and

an agreement “with, the original patentee corporation.

That claim is not for the incubator structure disclosed in

said patent, for which other claims were granted, but is

for a ‘‘method of hatching’’, and the charge of infringe-

ment of that claim is based upon the use by Respondents

of various different incubator structures manufactured

under Letters Patent of the United States Reissue No.

ane a I

18,984 dated October 31, 1933, granted to John Li Robbins, |

of Edgewater, Colorado, for Incubator, (upon surrender >

of original Letters Patent No. 1,728,980 dated September

24, 1929), and purchased by Respondents from the manv-

facturer, The Robbins Incubator Company, of which the

patentee Robbins is the president and proprietors Said

manufacturer has not appeared in Lees litigation.

_ “Prior Decisions of Other Courts.”

’ The statement on page 3 of the Petition under that

heading ‘‘These decisions in the Second Circuit are~the -

first in which the Smith patent has been held invalid”’’, is

untrue:

The statement in line 10 et seq. on page 7, of said Pe-

tition, ‘‘In all suits excepting only the present ones, the

validity of the patent has been sustained.”, is untrue. .

This Court was -deceived by similar statements on

behalf of Smith in the Snow and Wazxham suits, cited on

p. 3 of the present Byftion Several other Courts have

been similarly: deceived.

Respondents’ Exhibit H, reproduced on printed page

_355 of the Transcript of Record in the Hall case; is a

- certified copy of the decree of Judge J. L. Bodine, of the

District Court for the District of New Jersey, in Buck-

eye Incubator Co. and Samuel B. Smith v. William F.

Hillpot, 22 F. (2d) 855, from which Petitioner appealed

‘to the United States Circuit Court of Appeals for the

Third Circuit, which decree was affirmed, as reported in

24 F. (2d) 341. That decree specifically states ‘‘Second,

that said patent does not disclose a successful method of

operation and, consequently, method claims 1 and 2 thereof

are muyalid and void.’’ That fact is certainly within the

knowledge of all of Counsel for Petitioner who endorsed

and verified the present Petition. Moreover, Charles

Neave, who endorsed said Petition as leading counsel, was

a — ieiilinaa

the leading counsel for Petitioner in prosecuting the

appeal from that decision of Judge Bodine.

Nore: It is significant that since that decree was

affirmed by the United States Circuit Court of Appeals

for the Third Circuit, as reported in 24 FP. (2d) 341, the ©

records of both that decree and the opinion upon which it

was predicated, theretofore included in the archives of

said District Court at Trenton, New Jersey, have been

changed, by mutilation and partial obliteration, to elim-

inate the ‘‘Second’’ item of said decree, exemplified by

said Defendants’ Exhibit H; such change being in viola-

tion of R. S. Sec. 5403, Act of March 4, 1909.

’ Certainly, that violation was not of advantage to any

one but Petitioner, as against the general pubiic.

It is untrue, as stated in line 17 et seq. on page 3

of said Petition, that ‘‘The decisions against validity

were based entirely upon alleged prior invention and

prior use by one Milo Hastings.’’

The decisions in the Court below were based upon .

new evidence showing not only prior invention and prior

use but also prior sale of the subject matter of Petitioner’s

claim 1, by Milo M. Hastings to Respondents’ witness

Walter B. Davis.

It is true, as stated in lines 3 to 7 inclusive on page 4 of

the Petition, that ‘‘The Hastings prior use and publications

purporting to describe it and a prior abandoned applica-

tion for patent filed by Hastings were not in the records

in the Snow and Wachdm suits, but they have been known

in the litigation on the Smith patent from its inception.”

° It_is untrue, as stated in lines 4 to 6. inclusive on

ee Re me nen ee

—————————

5

page 6 of the Petition, that ‘‘The evidence in support of

this Hastings defense was substantially the same in all —

of these cases in which that defense was urged.’’

Neither \Rlo M. Hastings, nor any cther of Respond-

ents’ witnesses, testified in the cases against Wolf (cited

on Petition p. 4) or Stone (cited on Petition p. 5).

It is true, as stated in line 26 ef seq. on page 10 of

Petitioner’s Brief, that ‘‘The records in the Snow and

Waxham suits did not include any of the Hastings pub-

lications or testimony about: what was done by Hastings,

so this Court did not pass on the specific matters of de-

fense which were upheld by the Court of Appeals of the

Second Circuit.”

It is untrue, as stated j in line 9 et seq. on page 12 of

Petitioner’s Brief that “The evidence dealifig with the

Hastings defense was in substance the same in these Wolf

and Cooley cases as in the suits at bar against Hall and

James.”’ .

It is untrue, as stated in line 21 et seq. on page 15 of

_ Petitioner’s Brief, that ‘‘In summary, the records in these

several suits relating to the Hastings defense were the

same m substance as those before the Court of Appeals

for the Second Circuit in the suits at bar;’’. (Italics ours.)

Such reiterated assertions on behalf of -Petitioner, to

the effect that the evidence in the instant Hall case as to

the activities of Milo M. Hastings and his dealings with

Walter B. Davis, at 23rd Street and Kings Highway,

Brooklyn, New York, in 1910 and 1911, was substantially

the same as in prior litigation, are untrue. Although the

fact of Hastings’ activifies there was recognized in prior

litigation, the legal aspect of said activities andthe evi-

dence of his contract with Davis concerning the same, as

presented in the Hall case, are new and essentially differ-

ent from what was presented in any prior litigation.

No such evidence was ever presented to any Court

prior to the trial of the instant Hall case.

6

Smith's Claim 1.

‘J. The method of hatching a plurality of eggs

by arranging them at different levels in a closed

chamber having restricted openings of sufficient capac-

ity for the escape of foul air without undue loss of

moisture and applying a current of heated air, said

current being created by means other than variations.

of temperature and of sufficient velocity to circulate,

diffuse and maintain the air throughout the chamber at

substantially the same temperature, whereby the air

will be vitalized, the moisture conserved and the units

of heat will be carried from the eggs in the more ad-

vanced stage of incubation'to those in a less advanced

stage for the purpose specified.’’

COMPARISON OF SMITH’S CLAIM 1 WITH THE NEW |

_.. ‘BVIDENCE OF RESPONDENTS.

Elements of Structure Required by Said Claim.

(a) means for supporting eggs ‘‘at different levels’’ in

(b) ‘‘a closed chamber having’’

(c) “restricted openings”’ )

(d) ‘‘means other than variations of temperature’’

for ‘‘applying a current of heated air’ throughout the

chamber

(e) means for maintaining the air ‘‘at substantially

the same temperature’’. :

Each of said elements of structure required by the

claim in suit was present in the incubator which Milo M.

Hastings built, and operated for Walter B. Davis at least

as early as the Spring of the year 1911. The testimony

adduced by Respondents with reference to said respective

elements of structure is a8 follows: \

-

hassle ideas i ey eee RE OS a sae erin ee eny ae

7

(a) Testimony of Hastings (Trans. p. 78, f. 934) ; ot

Mr. Davis (Trans. p. 88, f. 264); of _? Davis (Trans.

p. 93, f. 277).

(b) Testimony of Hastings (Trans. p. 78, f. 234); of

Mr. Davis (Trans. p. 87,-f. 261); of Mrs. Davis (Trans.

p. 93, f. 277).

| (c) Testimony of Hastings (Trans. p. 80, ft. 238); of

Mr. Davis (Trans. p. 87, f. 261); of Mrs. Davis (Trans.

p. 93, f. 277).

‘(q) Testimony of Hastings (Trans. p. 78, f. 234, 237);

of Mr. Davis (Trans. p. 87, f. 260). -

(e) Testimony of Hastings (Trans. p. 79, f. aid of

Mr. Davis (Trans. p. 37, f. 260-262).

“Elements of Operation Required by Said Claim.

(f) ‘‘hatching a plurality of eggs’’

(g) ‘Cescape of foul air’’

(h) ‘‘applying a current of heated air”’

(i) ‘‘maintain the air throughout the chamber at sub-

stantially the same temperature”’

(j) maintaining in the same chamber durmg the

hatching, eggs of ‘‘more advanced stagé of incubation”’

with others ‘‘in a less advanced stage’’. ’

(k) carrying ‘‘units of heat’’ ‘‘from the eggs in the

more advanced stage of incubation to those in a less ad-

vanced stage’’, during the hatching.

Each of said elements of operation required by the

claim in suit was included in the method of hatching in

which the Hastings incubator aforesaid was used in the

Spring of 1911. The testimony adduced by Respondents

—_ oe sie

with reference to said respective elements of operation is

as follows:

_(f) Testimony of Hastings (Trans. p. 78, f. 232-235) ;

~/

of Mr. Davis (Trans. p. 88, f. 264); of Mrs. Davis (Trans.

p. 92, f. 276-277).

(g) Testimony of Hastings (Trans. p. 80, f. 238);

of Mr. Davis (Trans. p. 87, f. 261); of Mrs. Davis (Trans.

p 93, ae

(hy Testimony of Hastings (Trans. p. 78, f. 234, 237);

of Mr. Davis (Trans. p. 87, f. 260). ”

(i) Testimony of Hastings (Trans. p. 79, f. 237); of

Mr. Davis (Trans. p. 87, f. 260-262).

(j) Testimony of Hastings (Trans. p. 78, f. 234, p. 80,

f. 239); of Mr. Davis (Trans. p. 88, f. 264); of Mrs. Davis

(Trans. p. 93, f. 277).

(k) Testimony of Hastings (Trans. p. 79, f. 237-239) ;

of Mr. Davis (Trans. p. 87, f. 261, 264); of Mrs. Davis

(Trans. p. 93, f. 277).

Therefore, regardless of the status of Hastings’ ap-

plication for Letters Patent, his reduction to practice of

his invention disclosed in the Official record relating to

that application, which reduction was effected prior to the

filing of that application as proven by the testimony of

Hastings and Mr. and Mrs. Davis, was a clear anticipation

ef the alleged invention of the Petitioner Smith defined

‘n claim 1 of the patent in suit as interpreted by this °

Court.

The Claim in Suit is Invalid and Void

| In View of R. 8. 4886. |

The testimony »f Hastings and Mr. and Mrs. Davis

-is clearly to the affect that the invention of the claim in

suit was not only known ‘to others in this country long

Ate le cael SENET ET RP a Be EP ee RT ee ‘hg

a y ss

9

before the Petitioner Smith’s alleged ‘conception thereof,

in the ‘‘Spring of 1914’? but was in long continued public |

and successful commercial use, in this country, more than

two years prior to Petitioner’s- application for the patent

in suit, which was not filed until October 26, 1916.

DISCLOSURES IN THE UNITED STATES PATENT

OFFICE RECORDS RE APPLICATION SERIAL NO.

624,885 FILED MAY 3, 1911, BY MILO HASTINGS

FOR HATCHERY FOR THE EGGS OF DOMESTIC

FOWL.

Defendants’ Exhibit F (Trans. pp. 317-354) is a

photographic reproduction of said records. Said applica-

tion was filed by Milo M. Hastings during the time he

was employed by Walter B. Davis in building and oper-

ating said/ineubator at Davis’ poultry farm in Brooklyn,

New York, beginning in December, 1910, and continuing in

1911. (See Trans. p. 78, f. 232-236, and p. 82, f..245).

Consequently,*that Patent Office record, Defendants’

Exhibit F, is documentary evidence contemporaneous with

the events alleged in the testimony of Respondents’ three

witnesses, Messrs. Hastmgs and Davis and Mrs. Davis.

- It discloses every feature. of said Smith claim 1, as. fol-

lows: |

(Trans. p. 321) ‘‘My invention is that of a hatch-

ery in which I secure better ventilation and a more

uniform temperature throughout the hatching chamber

by substituting a forced draft for gravity drafts.’’

(Trans. p. 322) ‘‘Ventilation I secure through

cracks around the door of the hatching chamber or

other small openings in any part of the air circuit.

The air being constantly in motion, requires less reju-

venation than dead air.’’ .

‘

~~

10

(Trans. p. 342) ‘‘The problem has been to en-:

able the incubating operations to be carried on con-

tinuously, if so desired, with eggs at all stages of de-

velopment, and with all of a vast number of eggs sub-

jected to the same temperature and atmospheric con-

ditions best adapted for the development of the em-

bryo.’’ | |

(Trans. p. 343) ‘‘In practice it is found that

with vast numbers of eggs assembled in a single com-

partment and with eggs at all stages of incubation but

very little extraneous heat need be supplied, because

the eggs in the later stages of development supply the

necessary heat for the eggs in the earlier stages of

development. In practice. however, .a souree of heat

is always maintained in ‘order to permit of proper

reguiation.”’

(Trans. p. 344) ‘‘The simple way in which appli-

cant overcame the difficulty ‘was through the provision

of a mechanically operated air forcing means which

would force a rapid circulation of air through the

- whole collection of eggs in the chamber and past the

heater. The mechanical air forcing means is an es-

sential factor, if heat is to be conserved and the con-

ditions maintained uniform; for a circulation, which

is due to differences-in temperature in different por-

tions of the circulatory system, as, for example, where

the air is circulated by the effect of the heater in

causing the heated air to rise and pags into or through

the incubating chamber, will not anawer for large col-

lections of eggs.”’ r

(Trans. p. 346) ‘‘In the Hastings hatchery, 8

current of air is blown past each and every egg at

the rate of thirty feet per minute and this rapidly

moving air quickly bringing the temperature of the

egg to approximately that of the air. This method

™~ EP AEN SO PIR I OO Ta op EP ENTE OE IF

we

- 2

of heating keeps the temperature of/the eggs in the

advanced state of incubation downy within a few de-

grees 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 ad-

vanced stages just as the same temperature of. the

body of the hen incubates the eggs at all stages of

development, without recourse on the hen’s part to

the ‘hatching fever’, erroneously supposed to explain

the higher temperature of eggs at a more advanced

tage of development. Owing to this fact eggs at all

ges may be handled simultaneously with uniformly

od results.”’ ;

‘‘The operator of a Mechanical Draft plant may

switch as mueh ‘fresh’ or outdoor air into this inner

circulation as he is willing to heat. The inventor’s

practice is to use but a small portion of outdoor air

except in‘cases of excessive humidity, when'a large

exchange of air is utilized as a simplest means of in-

creasing evaporation.’”’ |

(Trans. p. 347) .‘‘The introduction of moisture

from the mist spray nozzles in the fan boxes to in-

crease humidity, or running in outside air to decrease

it as indicated by egg weights or air cell shrinkage is —

sufficient for ordinary hatching practice.”’

It appears from the first two paragraphs above quoted

from that Patent Office record, which were in the original

application as filed by Hastings, that he considered the

most essential feature of his invention to be the circula-

tion in an incubator chamber of a current of heated air by

means other-than variations in temperature. His attor- |

neys Church & Church evidently agreed with him, for they

made no effort to claim for him that feature ‘in associa-

t

a spaces see fe

12

tion with eggs in staged incubation although not only that

combination but its various advantages were clearly dis-

closed to them, as appears from the other quotations from

that record, supra.

Nevertheless, the Official record relating to said ap-

plication is unquestionable evidence that the invention

described in claim 1 here in suit was not only clearly

disclosed thereiti but ‘‘known to others’’ than Smith long

before the latter’s alleged date of conception thereof in

the Spring of 1914; those others including Milo M. Hast-

ings, the five witnesses to his application, to wit, Edgar

Chambless and Jeannette Cohen (Trans. p. 322), J. P.

Gannon (Trans. p. 323), Walter B. Davis, and Isabel E.

Carkhuff (Trans. p. 354) ; his attorneys, Church & Church,

‘and their employes who typed and compared the brief of

Church & Chuéch presented to the Board of Examiners-in-

Chief; and the Primary Examiner, G. R. Ide, and his

assistants who prepared ard filed the ‘‘Examiner’s State-

ment’’ (Trans. pp. 338-339), and the three Examiners-in-

Chief. © ; ;

In accordance with the reasoning of this Court im the

Snow case (No. 102, October Term, 1934, Plaintiff’s Ex-

hibit 2, Trans. p. 145) Mr. Hastings’ application should

havé been allowed and Letters Patent granted to him

instead of to the Petitioner who adopted Hastings’ inven-

tion after it was in public commercial use and articles

concerning it widely published (Trans. p. 94, f. 280-282):

in periodicals of the poultry industry of which there are

numerous examples (pp. 296-300, 302-303) ‘in the Tran-

script of Record of the Cooley case, of which Defendants’

Exhibit F is a part. Of course, Hastings forfeited his

right to obtain Letters Patent for the invention in ques-

tion by abandoning his application, but, he abandoned it

to the public generally and not to the Petitioner Samuel

B. Smith exclusively.

Hastings was but twenty-seven years old and pre-

,

enamened tian ener —_—

pared said application himself, without any previous ex-

perience in such matters. Consequently, the application

papers which were filed in the Patent Office on April 25,

1911, were objected to as informal, and his application

was not accepted for filing until he had corrected those

informalities on May 3, 1911. It may be observed that

the Official letters to Hastings during the prosecution of

said application were addressed to him at the address of

the Davis Poultry Farm where he was operating the incu-

bator in accordance with the new evidence aforesaid.

In view of the argument in the paragraph beginning

with line 10 on page 25 of Petitioner’s Brief, to the effect

that the disclosures in said application above quoted did

not relate to the single closed chamber type of incubator

Hastings had built for Davis, but related to the different

type of incubator which Hastings later built at Muskogee

which ‘‘was operated upon the principle of filling each of

several chambers with eggs,of the same stage of advance-

ment in incubation, shifting the eggs to other chambers

and increasing the temperature of the chambers as the

eggs advanced in maturity.’’; attention is called to the

fact that on April 25, 1911, Hastings’ Petition, part of

said application, was filed in the Patent Office (Trans.

p. 318) with a drawing which is reproduced on Trans.

p. 354, showing a single closed egg hatching chamber A

with restricted openings for ingress and egress of air; an

electric fan B for forcibly circulating air in said chamber,

and means for heating the air in said chamber including

the flue C and the gas.burner D, which is an incubstor

of the type Respondents’ three witnesses Hastings, Davis,

and Mrs. Davis testified was built. at the Davis Farm.»

Therefore, Petitioner’s argument aforesaid is absurd.

- JUDGE MANTON’S COMMENT.

On page 405, line 28 et seq. of the Transcript of Rec-

ord in the Hall case, Circuit Judge Manton states ‘‘An

14

article in Poultry Culture, describing the later operations

of Hastings at Muskogee, satd:‘® * ° the moving air adds

to or removes heat from the eggs with great rapidity.

Because of this fact, eggs at all stages can be placed in

the same trays of the Hasting Hatchery with little or no

injury. Mr. Hastings hatched several thousand eggs —

‘ander such conditions in his Brooklyn (Davis) plant last

vear.’ This was published before any motive for so de-

claring could be possible.’’ (Italics ours.)

That reference was to the issue of the publication

‘Poultry Culture”’ dated ‘‘February, 1912’’, identified as

Vol. XV, No. 5, and the quoted text appears in the second

paragraph, of the reproduction of said publication, on

page 298 of the Transcript of Record in the Coolcy case,

which Record contains ‘Respondents’ ‘‘ Defendants’. Ex-

hibit F.’” , |

That comment by Judge Manton ‘is equally applicable

to the statements appearing in. the record of Hastings’

application hereinbefore quoted, for they were all re-

corded in the Patent Office before the end: of the year

1912, whereas, Petitioner Smith does not claim to have

even conceived the invention of the patent in suit until

the ‘‘Spring of 1914’’ and did not in fact file his applica-

tion for that patent until October 26, 1916.

.

- It is submitted that the unanimous decision of the

three Judges of the Second Circuit which Petitioner seeks

to have reviewed and set aside, was fully justified by such

new evidence, and that because it was predicated upon

evidence never before considered by any Court, there is no

real conflict between that decision and the prior decisions

cited in said Petition and Brief.

GAT PO me ee” A ER Tae meen ae TRE RNC te eth me

Sse on

15

| WEW EVIDENCE OF INSUFFICIENCY OF DISCLOS-

URE IN THE SMITH PATENT 1,262,860.

Said patent does not include sufficient information

to enable anyone to effeet the ‘‘method of hatching’’ con-

templated in claim 1, without experimentation to determine

to what degree the air circulated in the incubator must

be heated to effect such hatching. The Petitioner Smith

himself was uncertain as to that, for, on page 2, line 8;

page 2, line 21; and page 5, line 9 of his original specifica-

tion as filed October 26, 1916, (a copy of which is included

between pages 421 to 465 inclusive, in the Cooley Tran-

script of Record containing the present Defendants’ Ex-

hibit F), Smith stated the maximum temperature permis-

sible with his method of hatching to be 106° F.; but, by

the amendment which is Paper No. 3 filed March 6, 1917,

nearly five months after his application was filed, Smith

changed that limit to 105°. F. Both were wrong. The

highest. temperature permissible is 99° F.

In his original specification, Smith claimed that his

invention provided ‘‘means to heat-the eggs untformly’’.

See particularly original claim 11. Smith added to that,

by amendment filed. March 6, 1917, the statement which

appears in line 48 et seq. on page 1 of the patent in suit

“Tt is manifest that the temperature will remain practi-

eally the same throughout the column of eggs’’. Nestther

statement is true. Both are contradicted by Petitioner’ 8

witness Taggart (Trans.. p. 69, f. 207-209) with reference

to Plaintiff’s Exhibit 13 (Trans. p. 180).

In Paper No. 4 which is dated March 24, 1917, the

Offtial Exa®miner objected ‘‘The temperature of the air is

not the same throughout the column, since the tempera-

ture is raised by the lower trays of eggs and diminished |

by the upper, so that the temperature is higher part way

up the tier at either the top or the bottom.’’ However,

Smith failed to correct either of his erroneous statements

above quoted. ©

16

The only information, in said patent in suit, as to

the temperature of the air to be maintained during the

method of hatching of Petitioner’s claim 1, is in the state-

ment in line 40 et seq. on ‘page 1 of said patent, as fol-

lows:

“The temperature of circulating air should be such as

will prevent the eggs in the early stage of incubation

from falling below 100°.”’ i

That statement is also untrue for, as admitted by Pe-

titioner’s witness Taggart (Trans. p. 79, f. 210-211), the

air must be at a temperature of af least 10014° F., per-

haps 100%4° F., to prevent the eggs in the early stage of

incubation from falling below 100° F., and, as admitted

by Taggart (Trans. p. 72, f. 214), ‘‘if you subjected eggs

to such a temperature of-air that they do not fall below

100° F. in the early stage or first ten days, it would be

fatal to practically all of the eggs. That was my discov-

ery. In the Waxham case I testified that ‘Even with the

proper humidity, 99-1/4° is too hot for a Smith incuba-

tor’.’”’ (Italics ours.) | :

Therefore, it is unquestionable, in view of the testi-

mony of the Petitioner’s oWn witness Taggart, that the

suecess or failure of the method of hatching, subject mat-

ter of claim 1 in suit, is dependent upon precise determina-

tion and maintenance of the critical correct temperature

of the air less than 9944° F. in the closed chamber where

incubation is being effected, but the patent in suit not only

fails to afford that information, but clearly and specifically

directs the performance of that method under different

conditions at a higher t&mperature which’ said. witness

Taggart admits would be ‘‘fatal to practically all of the

eggs’’. The reasonable inference is that the Petitioner

Smith himself did not know, even as late as the issuance

of his patent on April 16, 1918, that an air temperature of

.

- — ee Oe pee Pee - —

17

99° F. must be matutained in the ‘‘closed chamber’’ to

effect the method of hatching of claim 1 in suit.

That reasonable inference is made a certainty by the

testimony of Petitioner’s witness Taggart (Trans. p. 72,

f. 216) that it was not until the year 192. that he, Taggart,

by a series of experiments and tests, determined and dis- —

closed to Smith incubator users that the teaching of the

patent in suit was erroneous, and that the maximum tem-

perature of the air which it was safe to use in the method

of hatching of claim 1 in suit was but 99° F. As he tes-

tified (Trans. p. 72, f. 214) ‘‘Even with the proper hu-

midity, 9914° is too hot.”’ |

It appears from the foregoing comparison of the dis-

closures of the patent in suit with the scientific facts to

which Petitioner’s witness Taggart testified, that Smith

not only failed to disclose the correct use of the incubator

structures disclosed in his patent, but gave clear and spe-

cific instructions for use thereof which are not only mis-

leading but fatally defective.

Consequently, Petitioner’s method claim 1 is invalid

and void because his disclosures in the patent in suit as to

the operation of the only incubator therein shown are not

only insufficient to effect the method of hatching contem-

plated in said claim, but would: prevent any hatching of

eggs treated in the manner prescribed in the patent in

suit. .

PETITIONER'S MISREPRESENTATIONS OF SCIEN-

TIFIC FACTS RELEVANT TO SAID CLAIM 1.

Petitioner’s Exhibit 13 (Trans. p. 180) is a ‘‘Graph

Showing Development of Heat Units in Incubation’’, made

by his expert witness Joseph I. Taggart, whose initials .

appear adjoining the date ‘‘12/22/28’’ thereon. It pre-

sents a fraction of truth, so as to be grossly misleading to

the numerous Courts to which it has been presented since

that date, with glib statements that the ‘‘heat units”’

ee a

18

referred to in said ‘‘Graph’’ are calories, of which ‘‘(.252

calories equal one B.T.U.)’’. See the first paragraph at

the bottem of said ‘‘Graph’’.

The blue area on said ‘‘Graph’’ purports to represent

the heat required, during the first ten days of incubation, ©

to raise eggs to, and keep them at, the ‘‘incubating tem-

perature’’ referred to in the legends thereon, which tem-

perature is represented by: the single horizontal line ex-

tending at the top of the blue area and bottom of the red

area. The red area represents the ‘‘excess heat’’ given

off by such eggs during the last eleven days of incubation.

The red area is more than three times greater than

the blue, misrepresenting that the eggs generate more

than three times as mucls heat as they absorb during the

twenty-one days of incubation. e

Under cross-examination Taggart admitted (Trans.

p. 69, f. 207; p. 70, f. 208) that said ‘‘incubating tempera-

ture’’ must be neither more nor. less than ninety-nine

degrees Fahrenheit. That the rise in temperature from

the tenth to the etghteenth day is but one degree Fahren-

heit' and that the highest temperature of the eggs is not

attained until the twenty-first day.

Consequently, the vertical distance of 1.6 inches from

the bottom of the ‘‘Red curve’’ to where the ‘‘Black

Curve’’ crosses the vertical ‘‘18’’ day line on said ‘‘Graph”’

represents but one degree F., and the bottom line of said

‘“‘Graph’’ represents an imitial egg temperature of

98.75° F.!

On the contrary, it is a matter of common knowledge

that whether the eggs are gathered from a barn floor,

freight station platform, or cald storage refrigerator;

their intial temperature is rire than 50° F. lower than

98.75° F.

Therefore, to present the whole truth the blue area

of said ‘‘Graph’’ should be extended, vertically down-

ward, more than eighty inches (50 times 1.6 inches) below

19

the bottom line of said ‘‘Graph’’, to indicate the actual

initial temperature of the eggs submitted to incubation.

When that is done the truth appears that the quantity

of heat generated by the eggs and fully manifested by the

red area of said ‘‘Graph”’ is but a minute and negligible

fraction of the whole quantity of heat required to hatch

- eggs by the method of said claim 1, and the Petitioner’s

propaganda to the contrary urged for the past’ 19 years,

first, upon the Commissionerzof Patents, to obtain said

Letters Patent, and, later, upon prospective customers,

and, finally, upon numerous Courts, including this Court.

was and is false and fraudulent.

COMPARATIVE INEFFICIENCY OF PETITIONER'S

METHOD.

In view of Petitioner’s propaganda presented of ree-

ord in this Hall case to the effect that the method of

hatching of claim I in suit is highly efficient; attention is

called to the fact that in the trial of Samuel B. Smith v.

F. J. LeMieux, La Plant Hatcheries, at Milwaukee, Wis-

consin, on May 9, 1935, witnesses subpoened by Peti-

tioner disclosed that use of said ‘‘method of hatching’*

duritig the hatching season of the year 1935, resulted in

hatching not more than 35% of all of the eggs set. That

testimony related to the use of said method in Robbins

incubators of a form of which Petitioner complains in this

case, but, it is a matter of common knowledge to those

in the poultry industry that the same percentage of hatch-

ing resulted from the practice of Petitioner’s method of

hatching in incubators manufactured and sold by or for

him marked with the number and date of the patent in

"suit.

In contrast: It should be noted that since the Fall of

the year 1930 the only method of hatching used by Re-

spondents was effected in a hatching chamber containing

only eggs which have reached the eighteenth day of their

20

incubation. (Trans. p. 63, f. 189), which hatching chamber

is separate and apart from any chamber containing eggs

‘in any earlier stage of incubation. (Trans. p. 95, ff. 284-

285). The evidence (Trans. p. 96, f. 286) that the use of

that separate hatching method by Respondents hag en-

abled them to hatch between 85% and 90% of the eggs

’ set. was undisputed.

THIS COURT DECEIVED.

In view of the use of that separate hat®hing method

not only by these Respondents but by many other defend-

ants named in suits by your Petitioner: this Court was

deceived. to the erroneous belief, (set forth in Trans. p.

148, f. 444): ‘‘tha eggs passed into the more advanced

stages of incubation, reaching their highest temperature

about the seventeenth day’’ (italics ours). That state-—

ment is contradicted by the admissions of Petitioner’s wit-

ness Taggart (Trans. p. 70, f. 208) in his testimony ré

Plaintiff’s Exhibit 13 (Trans. p. 180), and clearly and

specifically to the effect that even at the end of the

etghteenth day the eggs have only reached a temperature

of 100° F., whereas, the highest temperature, of 105° F.,

is not reached until the twenty-first day, as shown by said

Exhibit 13.

FRANCIS W. ORVIS, EDITOR OF POULTRY DIGEST.

In line 1 et seq. on page 29 of the Brief for Petitioner

it is stated:

‘‘Tmportant practical witnesses who must have been

informed on the subject and who were available, such

as Orvis, the editor of a poultry magazine to whom

Hastings is alleged to have disclosed his invention,

Miller, the manager of the Davis farm, and others,

were not called nor was their absence accounted for.”’

21°

Therefore, we note that we informed the Court below that

we made a difigent search for both Orvis and Miller with

the result that we were credibly informed that botli were

dead.

- It was not until Petitioner’s Counsel Albert L. Ely,

Edmond M. Bartholow, and: Geo. C. McConnaughey filed

their Brief on appeal in the United States Cimuit Court

of Appeals for the Second Circuit that they disclosed in

line 3 et seq. on page 16 thereof ‘‘As a matter of fact

Orvis is alive today and lives in Hackensack, -N. J.’’

Why did not Petitioner’s Counsel call Orvis as a wit-

ness to contradict the testimony of Respondents’ three

witnesses Milo M. Hastings,“ Walter B. Davis, and Mrs.

Davis? The answer is that if called Orvis would have

corroborated the testimony of said witnesses, as is clearly

indicated by the letter of ‘‘Francis W. Orvis, Editor,

Poultry Digest’’ dated May 20, 1911, repyoducedén page

254 of the~ Cooley record including your Respondents’

Exhibit F, wherein Orvis described the incubator which he:

had inspected at the farm of Walter B. Davis, thus:

‘‘A small room was so arranged that with the |

various devices of Mr. Hastings’, heat, moisture and

ventilation were under perfect contro! and the. eggs

and chicks were as easily accessible as in the opening

of a bureau drawer. The little fellows were coming

out and new eggs added daily, making a continuons

hatching proposition under absolute control of -the

operator.

‘“‘The percentage of eggs hatched the day. the

writer visited the plant was somewhat better than

obtained from the same grade of eggs hatched in ordi-

nary incubators running at the same time and under

the same conditions.,’’

What Orvis thus described was certainly ‘‘staged in-

cubation’’,

—e

22

PETITIONER HAS CERTAINLY EKENOWN FOR AT

LEAST 13 YEARS THAT HE WAS NOT THE

FIRST INVENTOR OF THE SUBJECT MATTER

OF SAID CLAIM 1. .

Counsel for.Petitioner stated to Judge Hincks at the

trial of the Hall ease, that the Petitioner-“had made an

investigation and ascertained the facts concerning the

building and operation of an incubator for Walter B.

Davis by Milo M. Hastings in the years 1910 &nd 1911;

when that matter was first. mentioned in defense ef a

charge of infringement by Petitioner. Indeed any state-

ment that Petitioner had not made such investigation

would have been incredible. Consequently, Petitioner

must have known, at least as early as the trial of Buckeye

Incubator Co. v. Wolf, 291 F. 253, (D. C. Ohio, 1923),

that he was not -the first inventor of the subject matter -

of claim 1 of the Smith patent 1,262,860. Nevertheless,

Petitioner has continued to use said Letters Patent as an

instrument of intimidation and oppression of the public,

in disregard of relevant laws, rules, and the decisions of

this Court. For example, in the U. S. District Court for .

the District of New Jersey, on May 4, 1935, Petitioner

filed three Bills in Equity, respectively No. 5113 against

Ernest Grove, No. 5114 against Mary A. Griscom, and No.

5118 against Glenn T. Sponenbergh, d. b. a. Glenn T.

Sponenbergh Hatcheries, charging infringement of and

asking for injunctions under said Smith patent 1,262,860: °

which had expired on April 16, 1935, and in disregard of

the fact that such procedure had been condemned in the

decision of this Court in Root v. Radway Co., 105 U. S.

189. .

In the light of even the few facts of record, briefly

reviewed supra, our imagination is not elastic enough to

attribute to Petitioner Smith, the ‘‘clean hands’’ said to

eeu eee

23

be necessary for any Petitioner seeking the favor of any

Court in Equity.

Respectfully submitted,

Frank E. Pato.