Respondents Brief — Smith v. Hall

Supreme Court brief1937

Ask Donna

What actually matters in this document.

Text

SO TAA ae OE DE RO Se re PO Fa PoE

—_* pod oo SS ah ie

nie hve

FILE COPY -

CHARLES ELMORE CROPLEY

FILm

APR 3 1937.

gs ete RK

| In the Supreme Court of the United States

OCTOBER TERM, 1936.

No. 36.

>. -

SAMUEL B. SMITH,

Petitioner,

V8y t ~

JAMES MANUFACTURING COMPANY and

ELMIRA HATCHERIES, INC,

Responds nts,

RESPONDENTS’ BRIEF ON REARGUMENT.

H. A. TouLmin,

'H. A. Toutmin, JR.,

Counsel for Respondents.

THE GaTtss LEGAL PUBLISHING Co, CLEVELAND, OHIO

SUBJECT INDEX.

The Reasons for this Brief.......................

Point +

Point II:

‘Point III:

Point IV:

Point V:

Point VI:

Point VII:

Point VIII:

Point IX:

Point xX:

Point XI:

Petitioner's Diverse Position as to the

Scope of Its Patent...... eeyrrrr yr errs

No Court has Construed the Smith Patent

as Broadly as this Court Construed It... .

Reason Why Earlier Decisions Distin-

guished Smith Patent from Hastings: The

Earlier Decisions Limited Construction of

the Smith Patent to Details.............

Petitioner's Inconsistency of Position on

Infringement and Anticipation...._.. -

Error by Petitioner as to When Respond-

ents Started Separate Hatching..........

James.Incubator Cannot Hatch .....

Error of Petitioner as to Hastings’ Air

Speed Being Different from Smith's Air

ES tC CUE 36 seb as 4ces abba ca ma

DCaveersaserecdeoncdasbadeadeness

Construction and Operation of Hastings’

Muskogee Incubator Proven by Petition-

er’s Own Witnesses and Exhibit.........

Smith and Hastings Both Use Slides to

Control Air Volume Through the Stacks of

cc veuktees anes éee seeds aes

Stage Incubation at Muskogee Confirmed

‘by Contemporaneous Statements in the

Hastings File Wrapper.................

The Authenticity of the Hastings Blower

- Confirmed by Petitioner’s Own Witnesses

cccxgdeconsk tas eascceccahas

Authenticity of Hastings Blower..... 41

Point XII: Record Refutes Petitioner’s Reply Brief

as to Hastings’ Success and Operation.... 46

Point XIII: Reply to Petitioner’s Objection to ‘‘The

RNS os p75 05 0450505404640 4005.05 59

Point XIV: Reply to the Petitioner as to the Davis

i Ulster oekeiouaaheweuiwanes 66

Point XV: Title: Exclusive Licensee, The Buckeye

Incubator Company, a Necessary Party,

_ is Absent: Smith Has No Title to Sue in

the Exclusive Field of the Licensee-As-

signee, in which Field Respondents Oper-

PPP RPP PCT TTT CUT Cer CTT TTI Te rere 70

so pce dcuubexaeeedes 78

Alcohol v. Canfield, 11 F. (2d) 214, 216 (C. C. A. 2).... 78

Boomer v. Umted Power Press Co., 13 Blatch. 107,

8 a rote i re rer ne rr rere 76

Buckeye v. Blum, 17 F. (2d) 459 (ta hs eee 6

Buckeye v. Cooley, 17 F. (2d) 453 (C. C. A. 3)...... ,

EST Ter Pe eT eee TE re OP rr rer re rrr 3, 4, 6, 7,.8, 12

Buckeye v. Cooley (Judge Bodine) Pet.’s Ex. - rere

PEST Tere ree Trey Tere er Tee +... 11, 12, 30, 32

Buckeye v..Hulpot, 22 F. (2d) 855, 857. ............... 6, 8

Buckeye v. Hulpot, 24 F. (2d) 341 (C. ©. A.3)........

PO SPC. et ne Err Pr Perey 6, 7, 8, 9, 10

Buckeye v. Petersime, 19 F. (2d) 721 (C. C. A. 6)...... 6

Buckeye v. Wolf, 291 F. 253............00c.c0eceee 5, 6,7

Corona v. Dovan, 276 U. S. 358, 374. ................. 67

Corpus Juris, Vol. 48, Sec. 541, p. 338................ 77

TL Be I aM Ws noc cs te cceense 72, 74, 75, 76, 77

Electric Smelting & Aluminum Co. v. Carborundum, 102

F. 618 (C. C. A. 3)

Gayler v. Wilder, 10 How. 477

Goodyear v. Davis, 102 U. S. 222, 230

Gordon v. Anthony, 16 Blatch. 234, 10 Fed. Cas. 773,

No. 5605

Gould v. Rees, 15 Wall. 187, 194

Green v. Le Clair, 24 F. (2d) 74, 77-(C. C. A. 7)

Independent-v. Radio, 269 U.S. 459... 22. oe... 72, 74, 77

Kaiser v. General Phonograph Supply Co., 171 F. 432-3 76

Moore v. Marsh, 7 Wall. 515, 520... .. 2... cee eee

Patterson v. Kentucky, 97 U.S. 501

Potere v. Bates, F006 U. GB. BOB. oc oc cc cnc ccccesane 72,

Radio v. Hohenstein, 289 F. 757, 759 (C. C. A.2)......

Root v. Radway, 105 U.S. 189

Royer v. Coupe, 146 U. S. 524

Shields v. Barrow, 17 How. 130, 141-2

Siz Wheel Corp. v. Sterling, 50 F. (2d) 568 (C. C. A. 9)

Smith v. James, 83 F. (2) 217 |

Smith v. Snow, 294 U. S. 1

.2, 3, 4, 6, 12, 15, 16, 17, 19, 52, 60, 63, 73, 78

Stone Case, Pet.’s Ex. 2 .. .28, 34, 42, 78

Tyler v. Tuel, 6 Cranch 324

United States v. Loughrey, 172 U.S. 206 lear

Walker on Patents (6th Ed.) Vol. 1, Sec. 218, pp. 291-2 67

Walker on Patents (6th Ed.), Vol. 1, p. 545, Sec. 450... 78

Waterman v. MacKenzie, 138 U. S. 252, 255

Washam v. Smith, 294 U. S. 20

Westinghouse v. Boyden, 170 U. S. 537, 569

In the Supreme Court of the United States

OCTOBER TERM, 1936.

No. 36.

SAMUEL B. SMITH,

Petitioner,

vs.

JAMES MANUFACTURING COMPANY and

ELMIRA HATCHERIES, INC.

Respondents.

RESPONDENTS’ BRIEF ON REARGUMENT.

The Reasons for this Brief.

Respondents take this opportunity to correct errors

in petitioner’s reply brief and argument. We also confirm

and amplify through this additional opportunity answers

to the Court’s questions to counsel at the previous hearing.

We likewise suggest the question of title that was raised

in the Courts below. The decisions of the Court of Ap

peals in these cases are reported in 83 F. (2d) 217 and

221.

We propose to demonstrate and prove from peti-

tioner’s own witnesses and own -exhibit the nature of the

Hastings prior use, its method of operation and its con-

struction. (Vol. II, R. 766-94, Ex. B.) _We propose to show

the identity between such proof gf petitioner and the draw-

ings of respondents of the Hastings prior use so that peti-

tioner can have no complaint about the nature and quality

of the proof as to the-Hastings prior use. (Res. Exs. 22

»)

and 22a.) We take it the petitioner cannot impeach his

own witnesses and his own exhibit showimg the Hastings

prior use, which, alone, is ample to show complete antici-

pation. :

POINT I.

PETITIONER'S DIVERSE POSITION AS TO THE

SCOPE OF ITS PATENT.

Petitioner’s reply brief and argument before this

Court emphasize that he claims in effect two different pat-

ents at different times:

(1) a narrower patent than this Court construed the

Smith patent when petitioner is considering the

Hastings prior use.

(2) a broader patent than this Court construed the

Smith patent when petitioner is considering the

James infringement. é;

We emphasize the fact that on infringement petitioner

finds it necessary to go beyond even the broad construction

of the Smith patent accorded to him in the Snow case, and

to ask this Court to find that his patent covers a method of

incudation where less than all eggs of all stages are in a

cabinet and where the air does not travel in a defined cir-

euit. Indeed, in petitioner’s own brief at one place he con-

fines his patent to a single cabinet in which all eggs of all

ages must be in the cabinet and in a single compartment

at that, in his effort to avoid the Hastings prior use, {p.

15, Main Brief) while in another part of the brief the

broadest interpretation is resorted to when infringement

is to be discussed. (p. 23, Reply Brief.)

Petitioner in the trade vigorously distinguished his

patented method from separate hatching, such as prac-

ticed by the respondent. He circularized the trade with

screaming broadsides that separate hatching was markedly

different from the Smith process and condemned separate -

he Answer

to the separate

Hatcher question is ——>

All sorts of rumors have been floating around the hatchery industry concerning

our attitude toward a separate hatcher. Some have stated that we proposed bringing

on the market such a machine. We have no intention whatever of bringing a separate

hatcher on the market. We have definite reasons supported by scientific research

for taking this stand. We are thoroughly convinced that the hatcheryman is better

off from any standpoint without a separate hatcher. The majority of hatcherymen

see no sound reason for a separate hatcher. They have not asked for it, and do not

want it.

1. Our Research Department says “NO”

When the separate hatcher was first announced, and desiring to maintain our place of leadership

irvall phases of hatchery practice, we immediately proceeded to investigate its merits and the attitude

of hatcherymen toward it. We tried out various types of hatchers. We built in our own plant, the

best separate hatchers ever made. We tested them thoroughly. We studied them from the stand-

point of quality of chicks produced—percentage of hatch—from the standpoint of production costs

and from every standpoint of hatchery operation. In every case we found every type of separate

hatcher a hindrance of a help. Our Research Department today is unalterably opposed to

@ separate hatcher y type so far conceived by man.

2. Our Field Men say “NO”

In order to make a double check on the separate hatcher question we sent our-field men to

call on users of separate hatchers and others in the hatchery field. We found an overwhelming senti-

ment against the separate hatcher.. It adds to the cost of producing chicks end lays greater financial!

burden on the hatcheryman who is already heavily laden with iterns of expense. We have yet to find

a single hatcheryman who can demonstrate that chicks produced in « separate hatcher are any

better than, if as good as, those produced in a Smith machine.

3. Our Sales Department says “NO”

The Smith Incubator Company has consistently introduced improvements in both mechanical

equipment and methods of operation. Each change, however, has been made after most careful

scientific testing and nothing has been offered the industry until it has stood most rigorous trials.

Our Sales Department is not in favor of bringing something on the market sirmply to have another

item to sell. Our equipment must be of benefit to the purchaser for we realize, that unless « pur-

chaser makes money with the equipment, the sale will prove to be a boormerang in the long run

For that reason, our Sales Department has said that they do not want to offer a separate hatcher.

They do not believe it has any place in the economical production of baby chicks.

BRT a Se —

The Separate Hate

in the Hatc

Our tests have conclusive

adds to the labor cost becau

handled more frequently. Sepac.

exposing the chicks to damaging

We have not found any separe

quality of chick produced---nor

cent of hatch.

We believe a Smith mach

can be produced with any other

it at a lower cost per chick.

r eee a

hery industry concerning

that we proposed bringing

ever of bringing a separate

rted by scientific research

the hatcheryman is better

majority of hatcherymen

ot asked for it, and donot

says “NO” *

tain our place of leadership

We ol ou om plat. th The Separate Hatcher Has No Place

standpoint of production costs

found every type of separate

ay ocala opps in the Hatchery Industry

Our tests — conclusively shown that a separate hatcher

ee ee ee adds to the labor cost because the chicks and eggs must be

ean een aed handled more frequently. Separate hatchers add to the chances for

in a seperate hatcher are any

exposing the chicks to damaging temperature and humidity changes.

We have not found any separate hatcher which will add to the

MNO" quality of chick produced---nor will it produce any greater per

cent of hatch.

pvernents in both mechanical

conde paver Amandhpwrwrn We believe a Smith machine produces a better chick than

we realize that uel Po | can be produced with any other type of equipment, and produces

t to offer a separate hatcher. it at a lower cost per chick.

gbeby chicks.

hatching roundly as something different and completely

apart from his patent. (Pet. Exs. 16 and 38, Broadside Ad-

vertising.) In one of these circulars he said to the pub-

lie: |

‘*We have no intention whatever of bringing a sepa-

rate hatcher on.the market.’’

By contrast in this Court petitioner claims that sepa-

rate hatching is fully within the purview of his patent and

is just a mino?t variation of his main idea.

POINT, IL

NO COURT HAS CONSTRUED THE SMITH PATENT AS

BROADLY AS THIS COURT CONSTRUED IT.

At the hearing one of the Justices of this Court asked

a queation, which, we believe, was to this general effect:

In what suit was the Smith patent first interpreted

as broadly as it was interpreted by this Court?

Counsel for petitiener who closed petitioner's case re-

plied that in the Third Circuit the patent was construed as

broadly as it was.by this Court in the Snow and Warham

cases. This is not correct; the correct answer is: ‘‘No

court ever construed this patent as broadly as this Court.’’

Let us look at the record on this point.°

In the Cooley case invention was attributed to Smith

for directing the air through a central corridor between

partitions to the floor, where it mushroomed and spread

beneath the tiers of eggs, ascended through the egg trays

and escaped through definitely arranged air outlets.

The Court said in distinguishing Smith from Hastings:

‘‘Hastings and Smith, the patentee, no doubt saw

the same incubating problems, but Smith pursued a

_ © We should add that petitioner in an effort to prove in-

fringement asks this Court to still further expand the Smith

patent.

solution directly opposite that of Hastings. He, too,

set eggs in trays arranged in tiers and enclosed them

in a chamber and he also provided artificially heated

air by a motor driven fan positioned at the top of the

chamber, but he established an air current and regu-

lated its direction by arranging the tiers of trays in

two columns parallel with and separated from each

other so as to form between them a central corridor

and placed partitions ar curtains from the top to a

short distance from the bottom of the tiers ang di-

rected the air current downwardly not through the

eggs but through the corridor where it mushroomed

on the floor, spread beneath the tiers, ascendeW

through the egg trays and escaped through definitely

arranged air outlets. By so controlling the current of

heated air Smith claims, and we think correctly, that

he is enabled to attain uniformity of temperature in

its movement, first, through the old heat radiating |

eggs, and next; as it ascends, to the newer heat absorb-

ing eggs, tt being necessary that the temperature of

the former should be maintained at a point not higher

than 105° and that of the latter at a point not below

170°.’ (Buckeye v. Cooley, 17 F. (2d) 453, 455, C. C..

A. 3.)

This limitation of the patent to partitions to direct

the current was rejected by this Court when it said:

‘‘But neither the arrangement nor the means of

guiding the current of air are requisite to the appli-

cation of the principle which Smith discovered and

claimed.’’ (Smith v. Snow, 294 U. S. 1, 11; p. 8, Opin-

ion in Petitioner’s Ex. 2:)_ |

‘“‘The specifications and claim both contemplate a

continuous circulation of the current of heated air

through the chamber, which, regardless of its direc-

tion, would continuously operate, by repeated contacts

with the eggs in all stages, to equalize the temperature

throughout the chamber by carrying heat units from

the warmer to the cooler eggs.’’ (Smith v. Snow, pp.

8, 9, Opinion in Petitioner’s Ex. 2, 294 U.S. 12.)

This proves that the broader interpretation was by

this Court, contrary to petitioner’s answer to the Court.:

In Buckeye v. Wolf, 291 F. 253, decided by. Judge

Westenhaver, no oral testimony was produced as to the

Hastings prior uses. (p. 257.) In speaking of the Hastings

description in ‘‘Poultry Culture’’ not having the feature

of Smith te which Judge Westenhaver limited Smith, he

said: -

‘‘Something is said about driving the air from top

to bottom by a centrifugal fan, but the postition and

location of the fan with respect to the eggs and the

direction of the drafts are not defined, much less is

any provision disclosed for driving the air currents in

a defined channel or for removing the foul air and

supplying fresh air.’’ (p. 258.)

As to the Hastings application, Judge Westenhaver

said:

‘*No well-defined channels for the circulation of the

air are provided.’’ (p. 259.)

In describing Smith’s method, Judge Westenhaver

said :

‘“‘The principle of operation and the hatching

method for which this apparatus is designed consist in

forcing mechanically a draft of heated air downwardly

through the central corridor, where it passes below the

bottom of the partition or -curtains and ascends

through the column of egg trays to the exit at the top

of the respective egg chambers ° ° °. A specified num-

ber of the trays of eggs is placed in the stationary egg

racks at the top of the egg chambers, and after a pre-

determined time are removed.and placed in the tilting

egg rack * * *. The trays are again, after a predeter-

mined time, transferred to the next lower tier, and the

operation thus repeated until the eggs have reached

the bottom of the tilting rack and are then ready to

hatch. They are then transferred to. the stationary

hatching trays at the bottom of the incubator. It is

solution directly opposite that of Hastings. He, too,

set eggs in trays arranged in twis and enclosed them

in a chamber and he also provided artificially heated

air by a motor driven fan positioned at the top of the

chamber, but e established an air current and regu-

lated its direction by arranging the tiers of trays in

two columns ge and separated from each

other so as to form between them a central corridor

and placed partitions or curtains from the top to a

short distance from the bottom of the tiers and di-

rected the air current downwardly not through the

eggs but through the corridor where it mushroomed

on the floor, spread beneath the tiers, ascended

through the egg trays and escaped through definitely

arranged air outlets. By so controlling the current of

heated air Smith claims, and we think correctly, that

he is enabled to attain uniformity of temperature in —

its movement, first, through the old heat radiating

eggs, and next, as it ascends, to the newer heat absorh-

ing eggs, it being necessary that the temperature of

the former should be maintained at a point not higher

than 105° and that of the latter at a point not below

100°.”’ (Buckeye v. Cooley, 17 F. (2d) 453, 455, C. C.

A. 3.) ;

This limitation of the patent to partitions to direct

the current was rejected by this Court when it said:

‘*But neither thé arrangement nor the means of

guiding the current of air are requisite to the appli-

cation of the principle which Smith discovered and

claimed.’’ (Smith v. Snow, 294 U. S. 1, 11; p. 8, Opin-

ion in Petitioner’s Ex. 2.)

‘‘The specifications and claim both contemplate a

continuous circulation of the current of heated air

through the chamber, which, regardless of its direc-

tion, would continuously operate, by repeated contacts

with the eggs in all stages, to equalize the temperature

throughout the chamber by carrying heat units from

the warmer to the cooler eggs.’’ (Smith v. Snow, pp.

8, 9, Opinion in Petitioner’s Ex. 2, 294 U. S. 12.)

This proves that the broader interpretation was by

this Court, contrary to petitioner’s answer to the Court.

In Buckeye v. Wolf, 291 F. 253, decided by Judge

Westenhaver, no oral testimeny was produced as to the

Hastings prior uses. (p. 257.) In speaking of the Hastings

description in ‘‘ Poultry Culture’’ not having the feature

of Smith to which Judge Westenhaver limited Smith, he

said :

‘*‘Something is said about driving the air from top

to bottem by a centrifugal fan, but the position and

location of the fan with respect to the eggs and the

direction of the drafts are not defined, much less is

any provision disclosed for driving the air currents in

a defirted channel or for removing the foul air and

supplying fresh air.’’ (p. 258.)

As to the Hastings application, Judge Westenhaver

said: *

‘*No well-defined channels for the circulation of the

air are provided.’’ (p. 259.)

In describing Smith’s method, Judge Wieder

said:

‘‘The principle of operation and the hatching

method for which this apparatus is designed consist in

forcing mechanically a draft of heated air downwardly

through the central corridor, where it passes below the

bottom of the partition or curtains and ascends

through the column of egg trays to the exit at the top

of the respective egg chambers * * *. A specified num-

ber of the trays of eggs is placed in the stationary egg

racks at the top of the egg chambers, and after a pre-

determined time are removed and placed i in the tilting

egg rack * * *. The trays are again, after a predeter-

mined time, transferred to the next lower tier, and the

operation thus repeated until the eggs have reached

the bottom of the tilting rack and are then ready. to

hatch. They are then transferred to the stationary

hatching trays at the bottom of the incubator. It is

also claimed that the forced draft circulation of air

carries off the heat and foul air from the eggs in the

advanced stage of incubation at the bottom of the egg

rack, reducing their temperature and delivering the

heat to the eggs in the less advanced stages, thereby

aiding the incubating process and obtaining a uniform

temperature in the egg chamber.’’ (pp. 255-6.)

Later Judge Westenhaver in the Blum case found, as

did Judge Hickenlooper in the Petersime case, that am-open

box without partitions did not infringe. Both were affirmed

by the 6th C. ©. A: This shows that Judge Westenhaver

in rejecting Hastings did so because he did not show the

specific details of the Smith patent to which Judge Westen-

haver confined Smith, contra to the holding of this Court

in the Snow case.

In Buckeye - Hillpot, 22 F. (2d) 855, 857, Judge

Bodine limited the patent to passing air through the older

eggs first. He said:

‘*The Cireuit Court of Appeals, in 17 F. (2d) 453,

held that the patent disclosed air currents passing first

through the eggs in advanced stages of incubation to

those in less advanced stages ba incubation. This.

Hillpot does not do.’’

Judge Bodine held there was no infringement for this

reason and was affirmed by the 3rd C. C. A. On appeal

in the Hulpot case, 24 F. (2d) 341, the Third Circuit Court

of Appeals limited the Smith invention to one in which

there is:

‘‘a ‘corridor’ between tray tiers, and a corridor of a

kind defined by its purpose.’’ (p. 344.)

‘‘With such an arrangement the air, confined in

a corridor partitioned from the tray tiers by curtains,

will move in a current or column to the point of outlet

which usually is at the bottom of the corridor, when,

after mushrooming, it will pass below the tiers and

ascend through the egg trays in a current or column

because it is confined there by the same curtains that

first prevented its escape from the corridor. The es-

sence of the invention therefore is forced circulation

of heated air in predetermined direction, or stated dif-

ferently, forced circulation of columns of heated air

through columns of eggs.’’ (p. 344.)

The Courts which thus construed Hastings (Wolf, -

Cooley and Hulpot cases) had no need to give Smith a

broad interpretation to make out infringement because

they found that the proof of Hastings was not sufficient to

meet the details of the Smith patent: when there was a de-

parture from the Smith construction by omitting particu-

lars, as in the Hulpot case, the Court of Appeals for the

Third Circuit found no infringement.

In the Wolf case the infringement was literal; there

was no necessity to give a broad interpretation to the pat-

ent.

Judge Westenhaver said:

‘*No question of invention or infringement turns on

a close construction of all or any of the claims.’’ (p.

256.)

‘‘In the matter of infringement, no difficulty is pre-

sented. Infringement is not only plainly shown, ‘but ~

the defendant’s conduct, it seems to me, is and has

been inexcusable.’’ (p. 264.) .

‘‘His [defendant Wolf}..usual method of operation

is that of the patent, although he asserts that he has

experimentally hatched eggs by shifting the trays

about indiscriminately instead of successively . from

upper to lower levels.’’ (pp. 264-5.)

Cooley Case.

In the Cooley case, Judge Bodine said there was no

question of infringement or patent interpretation:

‘‘The defendant, Cooley, knew about the litigation

in Ohio. He procured, after that suit, a Buckeye in-

cubator (no. 7), called in local carpenters and me-

chanics and built similar units. These units were all

operated during the seasons of 1923 to 1925 inclusive.

Infringement seems clear.’’ (Petitioner’s Ex. 2, Buck-

eye v. Cooley, p. 4, Opinion.) [Note Buckeye has: the

exclusive right to make, use and sell Smith incubators

up to.16,500 egg capacity—Petitioner’s Exhibits 33, 34,

Vol. II, Ree. 716-23. }

The Third Circuit Court of Appeals said in affirming

Judge Bodine:

‘‘It will avail nothing to repeat the testimony on the

issue of infringement. , It will be enough to say that on

that issue we find against the defendant.’’ Buckeye v.

Cooley, 17 F. (2d) 453, 455, p. 4, Opiniori in Petitioner's

Ex. 2.

Hillpot Case.

By contrast, when Judge Bodine had occasion to con-

strue the scope of the Smith patent to see if it went beyond

‘the mere details of its drawings, he found non-infringe-

ment because of the absence of partitions in the Hillpot

machine. It was then that he said:

‘‘Rolla Lawry probably completely anticipated

Smith, but his anticipation need not now be considered.

In the last analysis, Smith describes his method of

hatching to be by maintaining a temperature through-

out of 106° and 105° F. No successful operation is

possible at such temperatures. His catalogues and the

evidence show that the temperature must never exceed

99° F. So the patent does not disclose a successful

method of operation.’’ (p. 3, Opinion in Petitioner’s

Ex. 2, 22 F. (2d) 855, 857.)

Petitioner in his main brief says the Lawry and Hast-

ings prior uses are in the same class. (pp. 20-21.)

In the same case of Buckeye v. Hulpot the Third Cir-

cuit Court of Appeals approved Judge Bodine finding non-

infringement, saying:

~*~

‘In the Cooley case infringement was so plam there

was no occasion to construe the claims. In the present

case, however, the alleged infringements are of a

character that call for their construction. Hence the

scope of the claims and how they read, as construed, on

the practices of the respondent are the only issues with

which we have to deal under the Smith patent.’’ (p. 2,

Opinion in Petitioner’s Ex. 2, 24 F. (2d) 341, 342.)

‘*But the issue of infringement in this case does not

turn in law on such an interpretation of the claims

alone, or in fact on what, as thus far stated, seems a

mere reversal of the steps of the patented methods.

It turns on another fact, until now purposely omitted,

and on its consequent air movement. Looking for the

invention by reading the claims in the light of the

specification and the file wrapper history of the patent

prosecution, one fixed and definite thing is disclosed,

first with reference to its presence in the apparatus

and next with reference to its use in the methods. That

is a ‘corridor’ between tray tiers, and a corridor of a

kind defined by its purpose.’’ (pp. 4-5, Opinion in Peti-

tioner’s Ex. 2, 24 F. (2d) 341, 344.)

‘‘The essence of the invention therefore is forced .

circulation of heated air in predetermined direction,

or, stated differently, forced circulation of ‘columns of

heated air through columns of eggs. * ° *’’ (p. 5, Opin-

ion in Petitioner’s Ex. 2, 24 F. (2d) 341, 344.)

‘‘Turning to the specifications for light upon the

claims, we find nothing there suggested in respect to

air movement except by currents in predetermined di-

rections. With all thes before him what did Hillpot

do? He simply omitted curtains. He thus transformed

the corridor of Smith into the passageway of the old

art. Will this passageway without curtains sustain

and direct the air current as it comes from the fan?

Hillpot says it will not, and, what is important, Smith

does not say it wil. With the Smith central idea of

means and function for maintaining and directing an

air current out of the Hillpot structures, Smith main-

tains that the true meaning of the ‘current of heated

air’ as employed in the patent claims is merely a cur-

rent ‘created ° * *° with sufficient velocfty to circulate,

diffuse and maintain the air throughout the chamber’

and urges that with the curtains off, the air in Hillpot

is so diffused, generally and laterally, that it strikes

each of the eggs again and again, and, in doing so, it

picks up some of the heat units from the warm eggs

and carries them to the cool eggs, thereby effecting

the desired uniformity of temperature. (It may be ob-

served that it also carries them to other warm eggs.)

In a word, he says that air ‘agitation’ is the essence

of his invention, yet nowhere in the file wrapper,

specification-or claims of the patent do we find any

reference to air agitation. This silence, we surmise, is

due to the fact that air agitation in the sense of in-

definite circulation, diffusion, or churning was prior

art. On circulation by defined currents alone Smith

was awarded the patent. We cannot find circulation

of that kind in any of the Hillpot structures. With

curtains Off, the tiers of trays present comb fronts to

the passageway. When the warm air leaves the fan .

there is for a moment and for a short distance a cur-

rent, but as the force weakens the current fades, and

the body of heated air does not go to the opposite wall

and mushroom but wanders in between each of the

scores of trays and goes where it pleases. Instead of

one strong current moving in one direction in trunk

farm, Hillpot has a trunk current only on leaving the

fan; then it divides into a multitude of branches which

follow no defined courses but only courses made by the

least resistance. We are constrained to find that Hill-

pot did not infringe the claims of the Smith patent in

suit.’’ (pp. 5-6, Opinion in Petitioner’s Ex. 2, 24 F.

(2d) 341, 344-5.)

POINT III.

REASON WHY EARLIER DECISIONS DISTINGUISHED

PATENT FROM HASTINGS: THE EARLIER DE-

CISIONS LIMITED CONSTRUCTION OF THE SMITH

PATENT TO DETAILS.

The answer to this proposition is‘as follows:

(a) Because the patent was construed narrowly by

previous Courts due to the fact that‘infringement in ear)

case was literal and there was no need to do otherwise.

Therefore, the Courts found that the incomplete proof of

Hastings was insufficient to prove anticipation of the de-

tails of the Smith patent when it was so limited to those

details ; for instance the Courts in these earlier cases found

that Smith was limited to arranging the eggs in a column

an nradatorminad ardor unth the eves vrawine hotter

Since this Brief was printed we have been advised of

the decision of the Supreme Court in Canada in the case

of His Majesty the King, on the information of the Attor-

ney General of Canada v. The Smith Incubator Company

and The Buckeye Incubator Company, dealing with the

validity of the Smith Canadian patent, which is a sub-

stantial duplicate of the Smith American patent now at

bar here. We are submitting with this Brief a ‘certified

copy of that opinion as the five Justices of that Court

concurred in holding the Smith patent invalid in view of

the Hastings prior use. The Canadian Supreme. Court

adopted the interpretation of the Smith patent which this

Court has given to it. It has concurred with the opinion

of the Court of Appeals for the Second Circuit as to the

Hastings prior use anticipating the Smith patent.

Bodine and the Third Circuit Court of Appeals in the

Cooley case. This Court found that Smith could set his

eggs of different ages in any way in any order. It found

that the direction of the defined current or the location of

the fan for driving this defined current was immaterial and

‘ that the Smith patent covered either the air going up or

down or horizontally so long as there was a defined cur-

‘rent, contrary to the Courts of Appeals of the Sixth and

Eighth Circuits and the Third Circuit in the Cooley case.

This Court found that partitions or curtains were unneces-

sary and that a corridor between the tray stacks was not

an essential element, contra to the foregoing Circuits. In

short, this Court found that the Smith patent covered

broadly a box without partitions in which eggs of all stages

of incubation were treated with a defined air current pass-

ing over the hot eggs and thence to the cool eggs in a cir-

cuit over and over again so as to transmit the heat of the

hot eggs to the cool eggs no matter how the eggs were ar-

ranged and irrespective of the direction of the current.

This Court said:

*“The drawings and specifications show the eggs ar-

ranged in tiers on either side of the chamber, with an

open space or corridor between, at the top of which a

revolving fan forces the air downward in the open

space of the corridor. ® * * The specifications and

claim both contemplate a continuous circulation of the

current of heated air through the chamber, which, re-

gardless of its direction, would continuously operate,

by repeated contacts with the eggs in all stages, to

equalize the temperature throughout the chamber by

carrying heat units from the warmer to the cooler

eggs.’’ (pp. 6-8, Smith v. Snow, Opinion in Petition-

er’s Ex. 2, 294 U. S. 10-12.)

When Smith is thus construed; as by this Court, the

Hastings prior use as now proved is completely anticipa-

tory. We believe it anticipatory even of the details. which

were not fully proved in the Hastings use in previous cases,

but that is a moot question now because this patent has

been construed by this Court. The only theoretical dif-

ference that Smith in his reply brief now advances to dis-

tinguish Hastings from Smith is this immaterial claim:

that Hastings sometimes set his eggs in several columns

of different ages and that as the eggs grew older and hot-

ter, he moved them from one column to the next column

sidewise instead of vertically, as in Smith, and that the

temperature in the horizontal columns was different. Un-

der the interpretation of this patent by this Court, even if

this were true, which we deny, it would make no difference.

The common fan in the Hastings machine blew the air

downwardly through each column and thence out of the

bottom of each column where the independent streams

were reconsolidated and mixed again in the fan for re-.

delivery so that the heat of the hotter eggs would be con-

veyed back to the cooler eggs.

As this Court has said, it makes no difference in what

order the eggs are placed or in what arrangement or posi-

tion, so long as the eggs of all stages of incubation and

heat are subjected to the forced draft that is continuously

passed over them in a defined course. Smith’s patent

teaches a variation in temperature of five degrees. In

practice he has a greater variation. Smith claims that

Hastings had a variation in temperature between the col-

umns of eggs as high as ten degrees. As the Smith patent

is not limited in its claims to any particular degree in tem-

perature, we would say this quibbling over the Hastings

temperature is immaterial. In Smith’s application as

originally filed he called for a variation of eight degrees,

namely, from 98° to 106°. (Vol. II, Rec. 799.)

Smith’s claim that Hastings is not an anticipation is

refuted by Smith’s position as to the James infringement.

If this Court will merely reverse the situation and assume

that Hastings was an infringer and James the anticipation,

~ it will see exactly what we mean. Smith says Hastings is

not an anticipation because, while eggs of all stages are in

the same compartment and are in the path of the same air

stream in a single box with that same air stream passing

over all eggs repeatedly yet James is an infringer because

eggs which are not in all stages are in a box in which the

-air cannot reach the hottest eggs in the latter stages that

are in a separate hatcher. ;

We fail to see how James can be an infringer when

less than all stages of eggs are in the cabinet if it is so

material on anticipation that eggs of al] stages in the same

cabinet are arranged in columns according to age, even

though the eggs are engaged by the same air stream to

convey the heat from the hottest eggs to the coldest.

Smith’s position is fatally inconsistent. Either Hastings

is anticipation or James does not infringe, if Smith’s

theory of his patent is consistent. We direct your atten-

tion to page 15 of Smith’s main brief where he disclaims

in effect the James infringement by saying that Smith only

covers the stages of all eggs in a single box; as James does

not have the eggs of the last three days this definition

would exclude the James machine from infringement.

| POINT IV.

PETITIONER'S INCONSISTENCY OF POSITION ON

INFRINGEMENT AND ANTICIPATION.

Petitioner’s reply brief emphasizes the inconsistency

which exists between the claim of infringement by a sepa-

rate hatching machine in which all eggs are not located in

a single cabinet and the claim of no anticipation by a ma-

chine where eggs of all stages are in the same cabinet. This

Court need go no further on infringement than to go back

to page 15 of petitioner’s main brief and observe the new

interpretation of the Smith patent, put upon it by peti-

tioner in an effort to avoid the Hastings prior use which

clearly eliminates infringement by the separate hatcher

- machine.

Let us first compare these statements as to the nature

of the Smith invention with the position of the petitioner

before this Court in the Snow case, as found by this Court

in its opinion. Petitioner says now in its main brief:

“The eggs must be set in staged ineubation * which

is defined as a successive setting of eggs within the

cabinet at brief intervals.’’ (p. 15.)

This Court has found this to be old. Smith v, Snow,

294 U..S.°16, 17.

Again petitioner says:

‘“‘The eggs in staged incubation must be set tm one

room ® in order for the heat interchange to function,’’

ete. (p. 15.)

But in separate hatching the eggs are not all set in one

room, but in two rooms, so that the heat interchange of the

hotter eggs during the last three days, during which they

supply 180 per cent of the total heat supplied by the eggs

prior to the last three days, cannot function to warm the

cooler eggs in the incubator.

Again petitioner says:

‘‘The air must be circulated about all of the eggs *

in this single room,”’ ete. (p. 15.)

Note the emphasis ‘‘about all of the eggs’’ in the

single room. In the separate hatcher only a part of the

eggs is in the incubator and the eggs are not all in the sin-

gle room but in two separate rooms.

‘Again petitioner’s brief says:

‘‘The current of air must move with a sufficiently

high velocity to maintain the air at the same tempera-

* Emphasis is that of petitioner. |

ture about all of the eggs, thus breaking down any

tendency for the formation of hot or cold spots about

any group of eggs, * * *° Smith mounted his fans di-

rectly 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 tempera-

ture.’” (p. 16.)

In the separate hatcher the eggs in the hatcher are of

a different temperature from those in the incubator by as

much as 34% degrees. (Vol. I, R. 255.)

Let us turn to this Court’s interpretation of the Smith

patent in the Snow case. This Court said:

‘*It was. possible to carry on the process of incu- -

bation continuously by placing fresh eggs in the incu-

bator at intervals, as those of the most advanced stage

hatched and the new-born chicks were removed. It

was possible to apply heated air to the eggs at a con-

stant temperature, thus avoiding the necessity of vary-

ing by nice adjustments the temperature of the ap-

plied-air, so as to conform to the varying temperatures

of the eggs as they passed through successive stages

of incubation.’’ (p. 4, Opinion in Petitioner’s Ex. 2, 294

U. S. 6, 7.)

This Court referred to the most advanced eggs as

those during the last three days, in the same sense that the

patent claims refer to the eggs as the more advanced. It -

‘‘They [drawings and specifications] indicate also

that as the eggs most advanced are hatched, they are

to be replaced by moving downward the trays con-

taining the several successive settings of eggs which

are in earlier stages of incubation. * * * So much of

the air as was introduced through the intake would

thus reach the more advanced eggs first. ° * °

‘*Here the specifications showed an arrangement of

the eggs and a means of guiding the current of air so

that it would reach the most advanced eggs first. But

neither the’ arrangement nor the means of guiding the

current of air are requisite to the application of the

principle which Smith discovered and claimed. * * °

The specifications and claim both contemplate a con-

tinous circulation of the current of heated air through

the chamber, which, regardless of its direction, would

continuously operate, by repeated contacts with the

eggs in all stages, to equalize the temperature through-

out the chamber by carrying heat units from the

warmer to the cooler eggs.’’ (pp. 7-9, Opinion in Peti-

tioner’s Ex. 2, 294 U. S. 10-12.)

As pointed out by this Court in its reference to the

hotter eggs, these eggs are the ones most advanced in incu-

bation, namely, the eggs during the last three days, which

are the hatching eggs in the lower stationary frays of the

Smith patent. The principle thus found sy this Court in

the Smith invention was the combination of the eggs of all

stages with a stream of air being continuously moved over

all of the eggs in a single room.

The Court said in Smith v. Snow, supra:

‘*It is enough 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.’’ (p. 14, Opinion, Peti-

tioner’s Ex. 2, 294 U. S. 20.)

Heretofore, in this Court and below, the petitioner has

said eggs can be placed of any age anywhere in any order.

The Court so found.

But now petitioner says:

‘‘In order to secure the benefits of the invention,

intelligent use must be made of staged incubation so

as to secure an approximate balance between the en-

dothermic and exothermic eggs.’’ (p. 15, Main Brief.)

This new limitation was an effort to avoid the Hast-

ings prior use. Before discussing this, let us again point

out that the James machine does not have all the eggs in

the same cabinet. The eggs in the more advanced stage, or

; this Court said, in the most advanced stage, that is the

last three days, are’in a separate hatcher where there is

no churning of the air and no air movement created arti-

ficially. There fs no chance for the heat of those last three

’ days-reaching the earlier eggs. The incubator and hatcher

are entirely separate machines, having separate charac-

teristics, with different temperatures and different mois-

ture conditions. The air is not circulated about all of the

eggs at all stages of incubation. The temperature of the

different groups of eggs in James, that is those that are ~

incubating and those that are hatching, is different. In the

incubator the temperature is 100% degrees; in the hatcher

ite is 102 to 104 degrees. Humidity, which is a factor of

the temperature, is also different, being 82-85 degrees in

the incubator and unlimited moisture in the hatcher.

Now why did Smith virtually disclaim infringement

- by James in this Court on page 15 of his main brief? It

was because of his effort to avoid the Hastings prior use

by trying to claim that the Hastings prior use consisted

of a number of separate compartments in each of which

the eggs were of different ages and different temperatures.

By attempting to limit the Smith patent to a single com-

partment with uniform temperature, Smith hoped to avoid

anticipation by Hastings on the theory that Hastings had

multiple compartments. Unfortunately for Smith this was

not the whole story as to Hastings. The separate compart-

ments of Hastings, even if the eggs were so heated, were

all in air communication with a common air stream being

supplied to all compartments and returned from all com-

partments with a common fan, so that the heat of all eggs

in a single cabinet was conveyed to the cooler eggs in the

same cabinet as these independent compartments were

housed in a single cabinet or box. This Court said that it

makes no difference as to the order of the eggs as long as

the heated air is recirculated among the eggs. scant v.

Snow, 294 U. S. 12.)

Thus the fallacy of these attempted baitations of the

Smith patent to avoid the Hastings prior use is apparent.

Of course, in urging these limitations that certainly exist

in this Smith patent, there can be no infringement by the

James incubator and separate hatcher. It was not until

this case came back to this Court, based upon the Court

of Appeals of the Second Circuit sustaining the Hastings

prior use, that Smith has taken the position in this case

that his patént is so limited. Heretofore in this case his

position has always been that his patent was broadly for

mechanically stirring air over eggs of different ages, that

is, if an egg were cold on the ninth day and there was an-

other egg that was warm because it was ten days old, and

you stirred the air over those two eggs, you would have

the Smith invention. It was only on that theory that in-

fringement by James could be made out.

POINT V.

ERROR BY PETITIONER AS TO WHEN RESPONDENTS

STARTED SEPARATE HATCHING.

In the opening argument for petitioner a very grave

misstatement was made by counsel to the effect, as we re-

call the statement, that respondent started separate hatch-

ing but recently and only for the purpose of giving a color-

ful argument to non-infringement, after this Court had

sustained the Smith patent for the purpose of trying to

avoid this Court’s decision. The record refutes this state-

ment.* Here are the facts, which are especially important

* When we so replied at the argument and called this Court’s

attention to this error there was no denial that this was a misstate-

ment.

as. showing the fundamental reason why Respendent’s

method is basically different from that of the Smith patent:

In: 1921 Respondent started its poultry division by

securing the services of Professor Dann of Cornell Univer-

sity to investigate incubators. Simultaneously their re-

search engineer, Mr.-Shodron, was assigned to the engi-

neering design. Irn 1923 a sectional machine was put on

the market. The growth of bacillary white diarrhea from

1923 to 1925 resulted in recommendation by the American

Veterinary Medical Association and the Kansas City State

Agricultural College in 1926, that foreed draft cabinet ma-

chines in which eggs of all ages were incubated and hatched

resulted in an increased spread of the disease to other

ehicks in the same machine. (Vol. I, R. 295, Res. Ex. 66,

Vol. IT, Ree. 1222-25.)

The American Veterinary Medical Association re-

ported:

‘*A large number of inquiries concerning incuba-

tors, as a possible means of disseminating bacillary

white diarrhea infection pf chicks, led us to study this

eee .

problem.

‘‘The continual circulation of chick-down in the

foreed-air-draught type of, machine, at the time of

hatching, suggested a possible means of dissemination.

‘*We made a qualitative study of the bacferiology

of three forced-air-draught type incubators and one

sectional type. We then made quantitative studies,

and the resuits of these studies will be published in an-

other paper. We found that after each hatch there

was a direct relationship between the time of incuba-

tion and the number of organisms (in a machine of the

forced-air-draught type). After thoroughly cleaning

and disinfecting the incubator, we obtained very few

_organisms. However, as soon as the chicks began to

hatch, the number of organisms greatly increased un-

til thé chicks were removed. This was not true of the

sectional type of machine, where the number remained

approximately the same throughout the period of in-

cubation, although at the time of hatching the flora

changed to the same as that observed in the forced-

air-draught type of machines. * * °

‘*1, That bacillary white diarrhea was disseminated

by artificially infected chick-down, placed in a forced-

air-draught type incubator.’’ (Vol. II, R. 1222, 1223,

1225.) |

In Respondents’ Exhibit 67 On Spread of B. W. D.

Infection, the bulletin of the Agricultural Experiment Sta-

tion, Kansas State Agricultural College, Manhattan,

Kansas, said:

‘*Bacillary White Diarrhea

‘‘in Fowl

‘*Summary

‘*The Incubator as a Source of Infection

‘*A large number of inquiries concerning incubators

as a possible means of spreading bacillary white diar-

rhea, led the writers to study this problem. The com-

plete report of the experiments on such dissemination

has been published (Hinshaw, Upp, and Moore, 1926.)

‘‘In a study of the bacteriology of. various-types of

incubators, it was found that the bacterial content of

the air in the forced-air-draft type of incubator in-

creased very markedly at hatching time.’’ (Vol. II,

Rec. 1227.) ;

There is no doubt but that fecal organisms spread

throughout the incubators of the forced-air-draft type;

and since it has been proved that the infected drop-

pings are one of the chief sources of infection, tt ts

logical to assume that S. pullorum can be transmitted

throughout the machine by the atr current. This may

also be true with other types of machines.’’ (Voi.

II, Ree. 1229.)

22 .

And again in Respondents’ Exhibit 66, the (February,

1926) Journal of the American Veterinary Medical As-

* sociation said:

’ “The continual circulation of chick-down in the

forced-air-draught type of machine, at the time of

hatching, suggested 4 possible means of dissemina-

tion.’

‘*Bacteriology of Incubators

‘*We made a qualitative study of the bacteriology

of three forced-air-draught type incubators and one

sectional type.’’ (Vol. II, R. 1222.

: ‘*Conclusion

‘*In conclusion we wish to state:

‘*1. That bacillary white diarrhea was disseminated

by artificially infected chick-down, placed in a forced-

air-draught type incubator.

‘*2. That chicks hatching in the compartment op-

posite to the one in which infected down was spread

did not suffer as high a per cent mortality as chicks

hatching in the infected compartment.

‘3. That similar results were obtained by infecting

the down of hatching chicks and’ exposing healthy

chicks to the down which might be carried from the in-

fected chicks to the non-infected.’’ (Vol. II, R. 1225.)

The foregoing establishes (a) the communication of.

the disease B. W. D. im forced draft incubators, such ‘as

Smith’s; (b) establishes, by improved practice the hatcher

should be a separate apparatus, separately used, from the

incubator, where the infection or communication of such

disease is to be avoided; and (c) that, therefore, a separate

hatcher, such as involved in this suit, is of prime impor-

tance and economic value. The cabinet machine referred —

to was of the Smith type. This led to Respondent develop-

ing the idea of a separate hatcher machine. In the spring

of 1926, Respondent built its first experimental separate

incubator, using its sectional machine as the separate

hatcher, which it still uses. Experimental work continued

. 23

until 1930 when the first commercial] machine was mar-

keted. Thirty-five thousand dollars ($35,000) was spent

upon this experimental work. The executive of Repondent

in charge of this work said:

‘‘To my personal knowledge our company has never,

at any time, had a Smith incubator in our shop or in

our development department. To my knowledge our

men in the engineering or development or shop use

have not operated the Smith incubator during the peri-

od of our experimental work. So far as my knowledge

is concerned, the Smith machine has had no connection

with the development of our machine.

‘‘We were the pioneers in the incubating business

in providing a machine for incubation and another ma-

chine for hatching, such as I have described. In addi-

tion to what I have said, this disease question was

mainly the principal motive in having these two sepa-

rate machines. At the same time, we wanted to pro-

duce a quality chick.’’ (Vol. I, Ree. 298.)

Again he said:

‘We still use the hatcher on our sectional machine

as an incubator hatcher. In the-development of the in-

cubator hatcher, our developing department had in

min« the desirability of using the sections of the so-

called sectional machines as the hatching section for

the incubator hatcher and those sections are still used

in that manner.”’ (Vol. I, R. 299. ) .

This suit was started July 11, 1930. As Respondent’s

apparatus was completely developed and: put on the market

some years before 1930, and many years before this Court’s

decision, the statement of counsel for Petitioner that sepa-

rate hatching was a recent excuse has no foundation in

fact. | 4

James incubator cannot hatch.

.The Smith claims 1, 2 and 3 are devoted to a method of

hatching. Smith is claiming that James’ incubator is the

only infringing machine and disclaims the James separate

And again in Respondents’ Exhibit 66, the (February,

1926) Journal of the American Veterinary Medical As-

sociation said:

‘‘The continual circulation of chick-down in the

forced-air-draught type of machine, at the time of

hatching, emgueeiee a possible means of dissemina-

tion.’

‘* Bacteriology of Incubators

‘*We made a qualitative study of the bacteridlogy

of three forced-air-draught type incubators and one

sectional type.”’ (Vol. II, R. 1222.

‘*Conclusion

‘*In conclusion we wish to state:

‘*1. That bacillary white diarrhea was disseminated

by artificially infected chick-down, placed in a forced.

air-draught type incubator.

‘*2. That chicks hatching in the compartment op-

posite to the one in which infected down was spread

did not suffer as high a per cent mortality as chicks

hatching i in the infected compartment.

«3 That similar results were obtained by infecting

the down of hatching chicks and exposing healthy

chicks to the down which might be carried from the in-

fected chicks to the non-infected.’’ (Vol. II, R. 1225.)

The foregoing establishes (a) the communication of

the disease B. W. D. in forced draft wmcubators, such as

Smith’s; (b) establishes by improved practice the hatcher

should be a separate apparatus, separately used, from the

incubator, where the infection or communication of such

disease is to be avoided; and (c) that, therefore, a separate

hatcher, such as involved in this suit, is of prime impar-

tance and economic value. The cabinet machine referred

to was of the Smith type. This led to Respondent develop-

ing the idea of a separate hatcher machine. In the spring

of 1926, Respondent built its first -experimental separate

incubator, using its sectional machine as the separate

hatcher, which it still uses. Experimental work continued

until 1930 when the first commercial machine was mar-

keted. Thirty-five thousand dollars ($35,000) was spent

upon this experimental work. The executive of Repondent

in charge of this work said:

‘*To my personal knowledge our company has never,

at any time, had a Smith incubator in our shop or in

our development department. To my knowledge our

men in the engineering or development or, shop use

have not operated the Smith incubator during the peri-

od of our experimental work. So far as my knowledge

is concerned, the Smith machine has had no connection

with the development of our machine. —

‘‘We were the pioneers in the incubating business

in providing a machine for incubation and another ma-

chine for hatching, such as I have described. In addi-

tion to what I have said, this disease question was

mainly the principal motive in having these two sepa-

rate machines. At the same time, we wanted to pro-

duce a quality chick.’’ (Vol. I, Rec. 298.)

Again he said:

‘We still use the hatcher on our sectional machine

as an incubator hatcher. In the development of the in-

cubator hatcher, our developing department had in

mind the desirability of using the sections of the so-

called sectional machines as the hatching section for

the incubator hatcher and those sections are still used

in that manner.”’ (Vol. I, R. 299.)

This suit was started July 11, 1930. As Respondent’s

apparatus was completely developed and put on the market

some years before 1930, and many years before this Court’s

decision, the statement of counsel for Petitioner that sepa-

rate hatching was a recent excuse has no foundation in

fact.

James incubator cannot hatch.

The Smith claims 1, 2 and 3 are devoted to a method of

hatching. Smith is claiming that James’ incubator is the

only infringing machine and disclaims the James separate

hatcher as being within the purview of this litigation.

Therefore it is pertinent to inquire whether the result

specified by the Smith claims of the Smith patent can be

produced by the James incubator. The answer is ‘‘No.’’ -

The incubator does not hatch. The temperature and mois-

ture conditions are not suitable. If you tried to hatch in

the James incubator there would not be space enough be-

tween the trays for the chicks; and even if there were space

enough, the chicks would fall out of the trays into the

rapidly revolving stirrers on the bottom of the incubator

where they would be killed. The machine is not adapted

for hatching and Smith does not claim that it has ever been

so used. A machine or a method or both, which do not pro-

duce the same result are not infringements.

Goodyear v. Davis, 102 U. S. 222, 230;

Gould v. Rees, 15 Wall. 187, 194;

Royer v. Coupe, 146 U. S. 524, 530, 531;

Westinghouse v. Boyden, 170 U. S. 537, 569.

POINT VI.

ERROR OF PETITIONER AS TO HASTINGS’ AIR SPEED

BEING DIFFERENT FROM SMITH'S AIR SPEED. °

Petitioner’s counsel in argument said that Hastings

air speed was too slow to be of any moment because it was

only thirty feet a minute. He stated that this was so slow

that you could hardly walk that slowly.

What Hastings testified to was that the air was

changed in his incubator completely every thirty seconds.

‘‘In the practical plant the entire volume of air passes

through the fan every thirty seconds.’’ (Vol. IH, R, 756.) His

later statement as to the thirty feet per minute is evidently

in error, as he was referring to the thirty second change of

all of the air. But even if it was thirty feet per minute, as

there is no denial that thousands of chicks were success-

fully hatched by Hastings, it does not seem to be material

the F eee

CORNELL BULLETIN SHOWS CRITICAL PERIOD

Wuy Somes Ects Do Nor Harcu 9

It has been observed that during incubation embryus are injured more

requently in certain periods of development than in others. Many

being naturally weak, die at these particular periods, which

called critical periods.

least two critical periods in the life of the chick embryo.

invariably on the fourth and nineteenth days of incubation.

TNX

; } crete Periods

”"

—

_ es

> ad

°o

| F

rl ocr

Days of Incubation

Ficuss 3. DISTRIBUTION OF EMBRYONIC MORTALITY IN ARTIFICIAL

Furthermore, the embryonic mortality is found to be much greater at

the second critical period than at the first. Under ordinary conditions

of artificial incubation, an average of about 3 embryos per 100 die at the

first critical period, about 15 at the second, and about 7 during the rest

of the incubation period (figure 3). Under exceptional conditions, the

ON A:M:B 4:46:00) 'ASHOWING 40 . ALB 34:

MINUTE IN THE SMITH MACHINE.

SMITH INCUBATOR

S Sections) view across machine through fan.

Peehens anes eeaeek Shoetnian.0t she emeetne. Air whieh passes (roe corriéer under lower

. Bumbers eS eee a a = eurrems as — 2 thy os. A Ray gh Be;

by enencaster (Biren) a @ trays a very small

seaaenes 20 ions tae teage were tehen cite wer sent of air vhlen Me cos ghd

enenpesters in tne trays ; pevaten oF St gees up the air eclums betveen

the trays.

Tee long arroes seeeping across sides of

teelve trays show currents between tray eolumse.

Fens were rotating 1600 te 1680 &. ?. &.

. a ie eb CC Ral gi wet OEE hip ety Cove 1 Re en ee eee one

because the Smith claims are not limited to any particular

speed per minute nor does the specification state the limita-

tions of air speed in the Smith machine. So long as the air

travels fast enough to maintain a substantially even tem-

perature, that is sufficient. That, Hastings had, as shown

by the results that he got.

Furthermore, in the Smith machine the speed is as low

as 40 feet per minute, (Pet. Exs. 11, lla) and in the James

machine, claimed to be an infringement, the speed of air

where the eggs are located, in many places, as shown by

petitioner’s test in Exhibit 24, rangés from 0 to 30 feet

per minute. If thirty feet per minute air speed is a ground

for lack of anticipation by Hastings, then the presence of

thirty feet per minute in the James machine is a ground

for non-infringement. The only limitation this Court put -

upon Smith’s air speed was that it should be in a defined

circuit and should be forced draft as distinguished from

natural draft by hot lamps and the like.

Best of all, let us look at petitioner’s own exhibit lla,

based upon petitioner’s own ez parte tests of its own

machine. Its own’ air speeds are as low as forty feet

& minute. We find the physical embodiment of the Smith

incubator, offered by petitioner, tested by petitioner and

_ proved by petitioner, as having speeds practically the same.

as that of the Hastings machine.

POINT VII.

SEPARATE HATCHING PUBLICLY DISCLAIMED BY SMITH.

The highest chick mortality occurs about the 17th to

18th day. This is the reason for adjusting the conditions

of temperature and moisture exactly during this period

with great care, which can only be done by moving the eggs

from the incubator to a separate hatcher. This high mor-

tality period is shown in the circular of the petitioner re-

produced herewith. (Vol. II, R. 1138,-Res. Ex. 38.) In

this exhibit Smith says:

‘‘This 1s particularly tmportant on the 18th and

19th days of incubation when the greatest death loss in

the shell occurs. At this critical period, the eggs are

two to three degrees warmer than the incubator tem-

perature and naturally are cooled by the air which

moves around them. They are so sensitive to tempera-

ture changes that air’ gaps or holes in the egg forma-

tion in the trays have a definite bearing on the hatch-

ability of otherwise good eggs. Doesn’t this careful,

scientific research prove to you that any method of

hatching which involves the moving or disturbance of

eggs during the critical period means a decrease in

hatching percentages? We think you will agree that

it does.*’ (Vol. II, R. 1135.)

Smith has publicly disclaimed in the trade and to the.

public separate hatching from coming within his invention.

His publications to the trade and recommendations to

hatcherymen are directly contrary to his position in this

case that separate hatching comes within his patent. In

Ex. 38, Smith’s broadside circular, he says:

‘‘Smith hatches best. Because eggs are never dts-

turbed during critical period. 18th day to pipptng

time. Another scientific reason why Smith research

-has continually advised against separate hatchers and

all other methods where retraying on the 18th day is

necessary.’’ (Vol. II, Rec. 1135.)

In explaining why separate hatching does not come

within his method, Smith says in this same circular:

‘On the eighteenth day of incubation, important

changes are taking place in- the development of the

chick. Up to this time it has lived.on the albumen or

white of the egg, but now begins to assimilate the

yolk. We all know how a change of feed affects chicks

when thgy are in the brooder and can understand how

a similar change would affect the chick while it is still |

in the shell. The heat curve in Figure 4 illustrates ;

how this new food retards the heat development. Fig-

ure 3 shows’that under normal incubation 60 per cent 4

Because E

During Critical Period — .

Another Scientific Reason Why Smith Re

Has Continually Advised Against Ser

Hatchers and all other methods where re

on the 18th day is necessary

for granted. A conclusion is never accepted hurried-

Smith Hatches Best

eggs are two to three degrees wa

You cannot dodge facts. You cannot rely on

SMITH GIANT

65,000 Egg Capacity

The Smith Incubator—from the smallest to largest—represents

equipment which a hatcheryman may have installed by factory

experts to place him tn a position whereby he may lake full advantage

of the suggestions and service of the Smith Organization. However,

the discoveries made by the Smith Research Department are offered

freely to the whole hatchery industry. As time goes on, competition

will lay its heavy hand on the inefficient hatcheryman. He must get

up-to-date as to methods and equipment or pass out of the picture.

. We offer our services to all who are progressive. anxious to learn and

get ahead.

theory:

safely. These emphatic statements should be of

more than passing interest to hatcherymen who

are all- without a single exception—in the very

midst of changing conditions which have no

parallel in the entire history of the industry.

The facts about better hatching—-even if they

do uproot old ideas—are given to the industry by

Smith Research only after the most careful and

painstaking scientific study. .Vothing ts ever laken

Doesn't Your Better Business

the Advantages of a Smith Incubator ai

the Smith Org a

Constantly Helping ‘You With Your Pro

Advisability of

You cannot follow unproven methods _ ly.

That is why we maintain our Research Depart-

ment and study hatchery problems year after year.

On warm days, you enjoy a breeze so long as

that breeze is not too strong or téo cool.

In the Smith, the eggs are comfortable—the

temperature and the air movements are designed

to keep them comfortable.

This is particularly important on the 18th and

19th days of incubation when the greatest death

loss in the shell occurs. At this critical period, the

Having

bator temperature and naturall

air which moves around them.

to temperature changes that

the egg formation in the tra

bearing on the hatchability of ¢

Doesn't this careful, scienti

you that any method of hatch

the moving ‘or disturbance a

crilical period means a de

percentages? We think you wi

Judgment. iS

emperature and the air movements are designed Doesn't this canehal. eend

to keep them comfortable. you that any method of . dct

This is particularly important on the 18th and the moving or disturbanet ¢

19th days of incubation when the greatest death critical period means @

The facts about better hatching—even if they

do uproot old ideas—are giverr to the industry by

Smith Research only after the most careful and

yainstaking scientific study. Nothing ts ever taken loss in the shell occurs. At this critical period, the rce ? We think you wil

g ' | pe pe

Doesn't Your Better Business Judgment S$

the Advantages of a Smith Incubator a

Advisability of Having. the Smith Organi

Constantly Helping You With Your Prob

This Letter Tells

The Smith Incubator—from the. smallest to largest—represents

equipment which a hatcheryman may have installed by factory

experts to place him ina posilion whereby he may take full advantage

of -the suggestions and service of the Smith Organization. However,

the discoveries made by the Smith Research Department are offered

freely to the whole hatchery industry. As time goes on, competition

will lay its heavy hand on the inefficient hatcheryman. He must get

up-to-date as to methods and equipment or pass out of the picture.

We offer our services to all who are progressive. anxious to learm and

get ahead. |

Today the uppermost thought in the

hatcheryman is to lessen labor and

hatch. Every iota of information leadi

more quality chicks at no increase im

attention of men and women everywhere

There is a Smith Model

to Suit Every Need

Buying an incubator involves the careful consideration of hous-

Let Smith Protect You on

Possible Price Increases

There is a powerful lever lifting com-

modity prices today. The rise is being

felt in every branch of industry, and

incubators are no exception to the rule.

quirements, and stand ready and willing

to protect you on possible price increases

if you get in touch with us at once.

. 4

We will help you save money as well

The price trend is upward.

as make money.

However, we have anticipated our re-

Liberal Terms

Lack of considerable ready cash need not stand between you and a

new Smith Incubator. You may buy on the basis of extremely liberal

terms if you so desire. The first payment is small, and you are allowed

three years to pay the balance. In addition we will make a wortb

while trade-in allowance for your old equipment. Smith leaves no stone

unturned to enable a hatcheryman to enjoy the benefits and advan-

tages of Smith Incubators. We will go a long way to put you out in

front in this profitable business.

ing, cost of operation and the company behind the machine

you buy. The Smith takes less floor space per egg capacity

. than any other machine on the market. Operation of Smith

Machines has brought many expressions of enthusiastic praise

dué to its low cost of current consumption and labor required

Smith Pays the Freight

and Installs ||

' Smith Service, too, has been highly endorsed because of its

quick response to ary and all demands. Smith pays the freight,

and all installations are made by factory-experts without charge.

No other incubator manufacturer does this.

Pere isn't a single, solitary reason why you shouldn't have

a S@ith. There is a capacity to suit every requirement:

Smith Junior .-. . 30,000 Eggs

Smith Intermediate . 39,000 Eggs

-Smith Old Reliable 52,000 Eggs

Smith Giant 65,000 Eggs

SMITH

This announcement, therefore, com

time. It not only serves to impress th

stant and careful research that is bein

by The Smith Incubator Company, bu

this company does not hesitate to

practices when such a course will open

for the hatcheryman who uses Smith

Every hatcheryman who operates

Jails to enthusiastically endorse Smi

that a Smith Incubator is only a

more profit for the man or woman

hatching chicks. This chick business i

of problems— subject to constant

No one realizes these facts more k

cubator Company, and this realizatic

to the whole hatching industry when <

says: “‘Hands Off on the Eighteenth D

INCUBATOR COMPA

CLEVELAND “OHIO

sas...

Because Eggs are NEVER Distur

| Scientific Reason Why Smith Research

ontinually Advised Against Separate

rs and all other methods where retraying

acts. You cannot rely on

follow unproven methods

statements should be of

erest to hatcherymen who

gle exception—in the very

onditions which have no

\istory of the industry.

‘ter hatching—even if they

ihe given to the industry by

ter the most careful. and

-Gidy. Nothing is ever laken

for granted. A conclusion is never accepted hurried-

ly. That is why we maintain our Research Depart-

ment and study hatchery problems year after year.

On warm days, you enjoy a breeze so long as

that breeze is not too strong or too cool.

In the Smith, the eggs are comfortable—the

temperature and the air movements are designed

to keep them comfortable.

This is particularly important on the 18th and

19th days of incubation when the greatest death

loss in the Shell occurs. At this critical period, the

on the 18th day is necessary

eggs are two to three degrees warmer than the incu-

bator temperature and naturally are cooled by the

air which moves around them. They are so sensitive

to temperature changes that air gaps or holes in «

the egg formation in the trays have a definite

Bearing on the hatchability of otherwise good eggs.

Doesn't this careful, scientific research prove to

you thal any method of hatching which involves

the moving or disturbance of eggs during the

critical period means a decrease in hatching

percentages? We think you will agree that it does.

- Your Better Business Judgment Suggest

vantages of a Smith Incubator and the

bility of Having the Smith Organization

a a

) ‘

riod . . 18th Day to Pipping Time

SMITH OLD RELIABLE

52,000 Egg Capacity

We have stated repeatedly—and say so again—that we do not

consider a Smith Incubator merely as so much wood, metal and

wiring. We look at it rather as a modern, scientific. achievement for

the production of the greatest number of saleable chicks at the lowest

cost. Such an achievement could not possibly be represented in terms

of materials. It must-——and is—represented by the findings we have

made—the facts we have discovered—which are gladly and freely

passed along for the betterment of the hatchery industry.

ment, properly speaking, and vests in the assignee a

title in so much of the patent itself, with a right to sue

infringers;:in the second case, jointly with the as-

signor; inthe first and third cases, in the name of the

assignee alone. * ® °.’’ (p. 259.)

The rights of an absent person, such as The Buckeye

Incubator Company, cannot be disposed of without it being

present. In Shields v. Barvow, 17 How. 130, this Court

said: | :

‘It remains true, notwithstanding the act of Con-

gress and the 47th rule, that a circuit court can make

no decree affecting the rights of an absent person, and

ean make no decree between the parties before it,

which so far involves or depends upon the rights of an

absent person that complete and final justice cannot be

done between the parties to the suit without affecting

those rights.’’ (pp. 141-142.)

Mr. Chief Justice Taft said, in Independent v. Radio,

269 U. S. 459: -

‘‘Indeed both the owner and the exclusive licensee

are generally necessary parties in the action in

-equity.’’ (p. 466.)

Respondent reties upon the doctrine established by

this Court in Crown v. Nye, 261 U. S. 24, where there was

a separation between a right to sue and the legal title. This

Court held that both interests must be joined in a common

suit. If this were. not the rule, we would have endless

abuses from speculative lawsuits authorizing rights to sue

apart from the ownership of patents, which implies inter-

ests to be protected legitimately by the patent.

The evil of permitting a separa#eon of legal title and

the right to sue is amply demonstrated in this case. Smith

has been conducting a ‘‘¢dampaign’’ of litigation.* Of

* Since the court sustained the patent, some 358 additional

cases have been brought by him. (Official Gazette.)

course, the vast majority of defendants were using the

/smaller incubators. Smith was not being injured competi-

tively, but his profit was in litigation. His contract pro-

vided for no share of this return to be turned over to Buck-~

eye. As Mr. Chief Justice Taft said in the above case:

‘These cases do npt present the same facts as the

one before us; but they indicate clearly what view the

courts deciding them would have taken of an effort

like that im the case at bar to divide up the monopoly

of patext property so that the patentee retains the

right to ‘make, use and vend, but gives to many differ-

ent individuats the right to sue certain named infring-

ers, respectively, and that with the sole motive of

harassing them such as is avowed in the recitals of

the instrument before us, If held legal, it would give

the patentee an opportunity without expense to him-

self to stir up litigation by third persons that is cer-

tainly contrary to the purpose and spirit of the statu-

tory provisions for the assigning of patents.

‘*Nor do we think that the principle of Patterson v.

Kentucky, 97 U.S. 501, or ike instance of a patent for

an improvement on a machine, patent for which is held

by another, involves anything inconsistent with our

conciusion that the right to exclude others conferred

in a patent ean only be conferred upon one who has

the common law right to use, make and vend.”’ (pp.

38-39, Crown v. Nye, 261.U. S. 24.) .

The Court then concludes:

‘If the owner of the patent when the infringements

took place has assigned his patent to one, and his claims

for damages for infringement to another, then the lat-

fer can not sue at law at all but must compel his as-

signor of the claims to sue for him. In equity both

such assignor and the assignee who is the real party in

interest must join as plaintiffs.’’ (p. 44.)

Recently, this Court, in Peters v. Bates et al., 295 U. S.

392, affirmed this view that you could not maintain a suit

on & patent based upon a contractual right to recover profits

> 76

and damages where the plaintiff did not own that portion

of the patent invaded. Ih this case, the Court held_that a

sale by a patentee of all his interest in a pending suit. to

enjoin infringement and for an accounting, but passing no

right in, the patent, gives the purchaser no right to an in-

junction, and hence, no right to intervene, saying :—

‘‘Harriet E. Cole, the purchasér at the receiver’s

sale, has asked leave to intervene in this Court, byt

as she has not acquired through her purchase the.title

to, or an interest in, the patést; she is not entitled

to seek an injunction to restrain a oe age Crown

Die d Tool Co. v. Nye Tool Works, 261 U.S. 24, 38, 39;

Boomer v. United Power Press Co., 13 Blatch. 107, 112,

113; Kaiser v. General Phonograph Supply Co., 171

Fed. 432, 433. The right to such an injunction under-

lies the equitable jurisdiction here invoked. Root v.

Railway Co., 105 U. S. 189. The motion for leave to

intervene is denied.

‘*By order of the state court, the receiver, as such,

succeeded to the patent right and to the cause of action

here involved. But the receiver, while retaining the

patent, has disposed, with the approval of ‘the state

court, of his entire interest in the present suit against

respondent. As the petitioner in these circumstances

is not in a position to maintain this suit, the Court is

of the opinion fhat the writ of certiorari should be

Dismissed.’’ (p. 394.)

This Court in Crown v. Nye, supra, cited with approval

Mr. Justice Blatchford’s opinion in a case involving similar

facts.avhen he was sitting on Circuit in the case of Gordon

v. Anthony, 16 Blatch. 234, 10 Fed. Cas. 773, No. 5605, where

he said: :

‘**A claim to recover profits or damages for past

infringement cannot be severed from the title by as-

signment or grant, so as to give a right of action for

such claim, in disregard of the statute. The profits or

damages for infringement cannot be sued for except on

the basis of title as patentee, or as such assignee or

grantee, to the whole or a part of the patent, and not

on the basis’ merely of-the assignment of a right to a

claim for profits and damages, severed from such title.’’

(Crown v. Nye, 261 U.S. 24, 42.)

“In Radio v. Hohenstein, 289 F. 757, 759, (C. C. A. 2),

the Court said:

; *

‘“Thene can be no assignment by the owner of a pat-

ent of the remedy to which the patent entitled him,

unless he also assigns the patent itself, out of which

the remedy grows.’’ (page 759.)

In Moore v. Marsh, 7 Wall. 515, 520, this court said;

‘se * * but where the assignment is of an undivided

part of the patent, the action should be brought for

every infringement committed subsequent to the as- .

signment, in the joint names of the patentee and as--

signee, as representing the entire interest.’’ (Page

220.) | , . -

Tyler, et al. v. Tuel, 6 Cranch 324; Moore v. Marsh, 7

Wall. 515, 520; Gayler v. Wilder, 16 How. 477; United

States v. Loughrey, 172 U. S. 206; Independent Wireless

Telégraph Company v. Radio Corporation, 269 U. S. 459;

Six Wheel Corporation v. Sterling, 50 F, (2d) 568 (C. C. A.

9); Radio v. Hohenstein, 289 F. 757 (C. C. A. 2); Green v.

Le Clair, 24 F. (2d) 74, 77 (C. C. A. 7); 48 Corpus Juris,

Sec. 541, page 338.

The case in the Seventh Circuit of Green v. Le Clair,

supra, involved facts that are closely parallel te the present

facts. The court followed this Court in Crown v. Nye,

supra.

In this case, Smith does not own the undivided part

of this patent which corresponds to the right of reeovery

for the invasion here, if any, which is in connection with

0,000-egg incubators, as the Buckeye Incubator Company

had the exclusive rights up to 16,500 egg capacities.

While this question can be raised at any time, it was

raised in the Distret Court and in the Court of Appeals

for the py Sony in this case. Alcohol v. Canfield, 11

F. (2d) 214, HGUC. G. A. 2d); Walker on Patents, Vol. 1,

page 545, Sec. 450, 6th Fd. ,

We, therefore, say that Smith has no place in this

Court as the sole party plaintiff. Indeed, we do not think

that Smith has any right here at all.

POINT XVI.

CONCLUSION.

Petitioner is asking here a broader construction of

his patent than was accorded to him by this Court. in the

Snow case. This is necessary to petitioner to make out

even a prima facie case of infringement. In contrast with

this position, petitioner is asking for a much narrower con-

struction of his patent when the Hastings prior use is being

considered in order to try to avoid that prior use by limit-

ing the Smith patent.

Respondents are content with this Court’s interpreta-

tion of the patent in the Snow and Warham cases. With

such an’ interpretation and using petitioner's own wit-

nesses and Exhibit B introduced by petitioner from the

Stone case as to the Hastings prior use, anticipation of the

Smith patent is clearly demonstrated. We say this because —

petitioner can certainly have no complaint about the ac-

curacy of his own witnesses and his own exhibit drawing.

Respectfully submitted,

H. A. Tovucmin,

H. A. Tov.tmin, Jr,

Counsel for Respondents.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.