Smith v. Hall
301 U.S. 216 (1937)

Annotate this Case

U.S. Supreme Court

Smith v. Hall, 301 U.S. 216 (1937)

Smith v. Hall

No. 35

Argued October 20, 21, 1936

Reargued April 5, 6, 1937

Decided April 26, 1937*

301 U.S. 216

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE SECOND CIRCUIT

Syllabus

1. Two suits in which different defendants, charged as infringers, set up the same ground of invalidity against a patent, and which were tried by the court below on a joint record, may be presented to this Court jointly. P. 301 U. S. 218.

2. Patent No. 1,262,860, for a method of hatching eggs, held invalid because of anticipation. Cf. Smith v. Snow,294 U. S. 1; Waxham v. Smith,294 U. S. 20. P. 301 U. S. 219.

3. Oral evidence held insufficient, in itself, to establish prior use of a patented method, but corroborated sufficiently by documentary evidence. P. 301 U. S. 222.

4. Anticipation of a patented method is shown by knowledge of the method, and its use with operative success, although without full and precise knowledge of the scientific principles involved, as outlined in the patent. P. 301 U. S. 226.

5. While, in attacking a patent, a Patent Office file on an abandoned application may not be relied on as a prior publication, it may be competent and cogent evidence of the nature and date of an earlier invention reduced to practice. P. 301 U. S. 227.

6. The Smith patent was sustained in the Snow and Waxham cases, supra, only by establishing that neither the arrangement of the eggs nor the particular order in which the propelled air current should reach the eggs, nor the manner in which it was guided or controlled, is part of the patent claimed. P. 301 U. S. 231.

7. A patentee who has sought and obtained a broad construction of his claim cannot narrow it so as to avoid anticipation by showing that the claimed method was used in a particular form of structure not claimed. P. 301 U. S. 232.

8. In determining anticipation of a patented method, it is immaterial that the structure employed in the earlier use was neither the best possible nor as skilfully designed or used as that later employed by the patentee. P. 301 U. S. 232.

Page 301 U. S. 217

9. Commercial success is not a necessary element of a prior use anticipating and invalidating a patent. P. 301 U. S. 233.

83 F.2d 217, 221, affirmed.

Certiorari, 298 U.S. 652, to review two decrees of the court below holding a patent invalid upon the ground of anticipation, and thereupon reversing decisions of two district courts which had held the patent valid and infringed. No. 35 was brought by Smith in Connecticut for alleged infringement of Claim 1 against defendants operating a large commercial hatchery in that State. No. 36 was a like suit by him in New York against a corporation engaged in the business of manufacturing and selling incubators and a commercial hatcheries company which it controlled.

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.

Page 301 U. S. 218

In Smith v. Snow,294 U. S. 1, 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.*

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 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, 141 U. S. 243-244; Dimmick v. Tompkins,194 U. S. 540, 194 U. S. 548; Washington & Idaho R. Co. v. Coeur D'Alene Ry. & Navigation Co.,160 U. S. 101, 160 U. S. 103; De 233 U. S. S. 219

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