Smith v. Hall Same v. James Mfg Co 8212 1937

• Decision Date: 26 April 1937
• Docket Number: 36,Nos. 35,s. 35
• Citation: 57 S.Ct. 711,81 L.Ed. 1049,301 U.S. 216
• Parties: SMITH v. HALL et al. SAME v. JAMES MFG. CO. et al. Reargued April 5—6, 1937
• Court: U.S. Supreme Court

301 U.S. 216

57 S.Ct. 711

81 L.Ed. 1049

SMITH

v HALL et al.

SAME

v. JAMES MFG. CO. et al.

Nos. 35, 36.

Reargued April 5—6, 1937.

Decided April 26, 1937.

Messrs. Dean S. Edmonds, of New York City, and Albert L. Ely, of Akron, Ohio, for petitioner.

Mr. Thos. G. Haight, of Jersey City, N.J., for respondents Hall.

Mr. H. A. Toulmin, Jr., and H. A. Toulmin, Sr., both of Dayton, Ohio, for respondent James Mfg. Co. and another.

Mr. Justice STONE delivered the opinion of the Court.

These cases involve the validity of the Smith patent No. 1,262,860, of April 16, 1918, and more particularly the question whether Smith was anticipated by the prior use of the patented invention by Hastings.

In Smith v. Snow (1935) 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721, we held the patent valid and infringed. But in that case the Hastings prior use was not presented or considered. At that time the present infringement suits brought by petitioner against respondents Hall and James were pending in the District Courts for Connecticut and for Western New York, respectively. In view of the definition given to the patent by our decision, the Hastings defense assumed an importance in these suits apparently not attributed to it in earlier litigation, and it has been developed in the records now before us more fully than in any earlier case.¹

The decrees of the District Courts rejecting the defense were reversed by the Court of Appeals for the Second Circuit, Smith v. Hall, 83 F.(2d) 217, Smith v. James Mfg. Co., 83 F.(2d) 221, which found prior use by Hastings. We brought the cases here on certiorari, 298 U.S. 652, 56 S.Ct. 947, 80 L.Ed. 1380, to resolve the conflict in the result of the decisions below with that of our decision in Smith v. Snow, supra. The two suits came to the court below, as they do here, upon different records. The court treated the cases as though the two records constituted a joint record applicable to both cases, and petitioner presents the cases here jointly. See Butler v. Eaton, 141 U.S. 240, 243, 244, 11 S.Ct. 985, 35 L.Ed. 713; Dimmick v. Tompkins, 194 U.S. 540, 548, 24 S.Ct. 780, 48 L.Ed. 1110; Washington & Idaho R. Co. v. Coeur D'Alene Ry. & Navigation Co., 160 U.S. 101, 103, 16 S.Ct. 239, 40 L.Ed. 355; De Galard de Brassac de Bearn v. Safe Deposit & Trust Co., 233 U.S. 24, 32, 34 S.Ct. 584, 58 L.Ed. 833; West Ohio Gas Co. v. Public Utilities Commission of Ohio (No. 1), 294 U.S. 63, 70, 71, 55 S.Ct. 316, 320, 79 L.Ed. 761; cf. Reed v. Allen, 286 U.S. 191, 198, 199, 52 S.Ct. 532, 533, 76 L.Ed. 1054, 81 A.L.R. 703.

The Hall suit is for an infringement of claim 1 of the patent, and the James suit for infringement of claims 1, 2, 3, and 5. Claims 1, 2, and 3 are claims for a method of incubation of a plurality of eggs. Claim 5 is a claim for an apparatus adapted to the use of the method and is of significance in the present litigation only if a method claims is sustained. Claim 1 may be taken as typical of the other method claims. In Smith v. Snow, supra, its essential elements were stated to be (294 U.S. 1, at page 8, 55 S.Ct. 279, 282, 79 L.Ed. 721):

'(a) The arrangement of the eggs at different levels in staged incubation in a closed chamber, having restricted openings of sufficient capacity for the escape of foul air without undue loss of moisture; (b) the application to the eggs of heated air in a current created by means other than variation of temperature; and (c) as marking the boundaries of the claim, the current of air is to be of sufficient velocity to circulate, diffuse, and maintain the air throughout the chamber at substantially the same temperature whereby the air will be vitalized, moisture conserved, and the units of heat carried from the eggs in the more advanced stage to those in the less advanced.'

Staged incubation is the successive setting of eggs in the same incubator at brief intervals. At different stages in the course of the three-week period of incubation the eggs have different temperatures, those in the earlier having lower temperatures than those in the later stages. When subjected to a temperature approximating that of body heat, the eggs of the earlier stages absorb heat and those of the later stages give off heat. It was pointed out in the opinion in the Snow Case that a demonstrated advantage of the Smith method over that of the earlier type of incubator, in which there was no propelled current of air, is that it facilitates the continuous operation of the incubator through staged incubation, and makes it possible in the process of incubation to increase the number of eggs in a single incubator from a few hundred to many thousands.

To avoid infringement, it was insisted in the Snow Case that the claim was restricted, by the specifications and drawings of the patent, to use of the method in an apparatus by which the propelled current of heated air was first brought in contact with the more advanced eggs. In rejecting that contention, the opinion pointed out hat neither the claim itself, construed in he light of the specifications, nor the successful operation of the method, required the arrangement of the eggs in any particuar order; that the continuous circulation of air of appropriate temperature in a closed chamber, called for by the claim, served to equalize the temperature at the desired degree by carrying heat units from the more advanced eggs of high temperature to the less advanced eggs of lower temperature, regardless of the particular order in which it passed the eggs of different stages. We said (294 U.S. 1, at page 14, 55 S.Ct. 279, 284, 79 L.Ed. 721): 'the claim does not call for a particular order or arrangement of the eggs in staged incubation in the incubator, or that the propelled current should reach them in any particular order, or that it should be guided, controlled, or directed by any particular means, or in any particular manner other than that it should be of sufficient velocity to produce the results prescribed by the claim.'

Thus construed, infringement of the patented method could not be avoided nor anticipation of it denied by showing that the challenged use was with different arrangements of the eggs or with a different structure, for guiding or controlling the propelled current of air within the closed chamber, from any exhibited in the specifications and drawings of the patent.

To establish the Hastings prior use respondents rely on the proof of his construction of an incubator in Brooklyn, N.Y., early in 1911, and its use in the hatching season in the early months of that year and of 1912, and on proof of his construction of another in Muskogee, Okl., in 1911, and its use in 1912 and 1913. They offer documentary corroboration in more or less contemporary articles in published journals and in a patent application with its supporting documents, filed in the patent office in 1911.

Without stopping to state the evidence in detail, it is established by the testimony of Hastings, abundantly corroborated, and not seriously denied, that, apart from the setting of eggs in staged incubation, which will be presently discussed, these incubators employed all the elements of the Smith method, and that their operation was successful in the sense that they were each used for hatching eggs for two successive seasons and that the percentage of the hatches was comparable to that of the smaller still air incubators then in use. Hastings' incubators were closed chambers, with restricted openings. A current of heated air was propelled by a motor driven fan in such manner as to come in contact with the eggs placed within the chamber in stacks of trays, and to return to the fan by means of which it was continuously recirculated. See Smith v. Snow, supra, 294 U.S. 1, 19, 20, 55, S.Ct. 279, 286, 287, 79 L.Ed. 721; Waxham v. Smith, 294 U.S. 20, 22, 55 S.Ct. 277, 278, 79 L.Ed. 733. Both incubators were of large capacity. That in Brooklyn was built for 6,000 eggs, although it does not appear that it ever contained more than 2,000 eggs at any one time, and that in Muskogee was for 30,000 eggs. It is plain that Hastings built and operated incubators suitable for the use of the Smith method, but petitioner sharply challenges the contention that he did use that method in either of them. It is said that there is no convincing proof that eggs were ever placed in the Brooklyn incubator in staged incuba- tion, and that the structure of the other and the manner of its use were such as to show that the Smith method as we have described it was the employed. These are the crucial issues.

Hastings built and operated the Brooklyn incubator for Davis, who conducted a poultry farm as the means of supplying chickens for a restaurant which he also operated. After Hastings left Davis' employ in May, 1911, the latter operated the incubator during the season of 1912. Subsequently he went out of the poultry business and dismantled the incubator. Hastings testified, specifically and in detail, that the eggs were placed in the Brooklyn incubator in staged incubation. Davis, corroborated to some extent by his wife, testified that the eggs were placed in the incubator at twice a week intervals, when they were delivered, at the rate of one or two crates a week, by the poultryman from whom they were purchased. The eggs were placed in trays in the incubator chamber where they were exposed to a current of heated air under thermostatic control. The air, maintained at a practically uniform temperature, was continuously circulated throughout the chamber by means of an electric fan. This oral testimony, if taken at its face value, would show that the Smith method was used in the Brooklyn incubator with eggs in staged incubation. But without corroboration, it is insufficient to establish prior use. The Barbed Wire Patent, 143 U.S. 275, 284, 12 S.Ct. 443, 450, 36 L.Ed. 154; Deering v. Winona Harvester Works, 155 U.S. 286, 300, 15 S.Ct. 118, 39 L.Ed. 153; Eibel Process Co. v. Minnesota & Ontario...