[Adam Mossoff, guest-blogging, May 1, 2009 at 9:46am] Trackbacks
The Sewing Machine War -- Howe v. Singer (Part 2 of 2):

Singer's newspaper advertisements were carefully worded to avoid claiming that he was not infringing Howe's patent, because there was no question that the Singer Sewing Machine, invented in 1850, infringed Howe's 1846 patent. Singer's newspaper advertisements thus reveal that he undertook the same arduous and expensive task that many defendants in patent infringement lawsuits attempt today: He sought to invalidate Howe's patent by uncovering "prior art" that would undermine Howe's claim to originality in his invention. The previous inventions and uses of the eye-pointed needle by European inventors were of no use to Singer, because Howe claimed as his invention the novel and useful combination of the eye-pointed needle and a shuttle in creating a lockstitch. Singer thus began looking for someone who had invented this unique combination of elements in the sewing machine.

Singer first attempted to uncover prior art in the patent offices in England, France, and, of course, the United States, and he even went so far as to argue that sewing machine had been invented in China long ago, but this was all to no avail. Singer's efforts proved fruitless until he discovered Walter Hunt, a prolific American antebellum inventor. Hunt claimed to have invented a sewing machine that used an eye-pointed needle in combination with a shuttle carrying a second thread that produced a lockstitch, and that he had done this in 1834 — approximately ten years before Howe invented his own sewing machine! The problem was that Hunt had never commercialized his invention, nor had he applied for a patent for his discovery.

In 1853, Singer bankrolled Hunt in his efforts to rediscover his once-forgotten invention, and Hunt seemed to have hit pay dirt when he found some "rusty and broken pieces of metal" in an attic of the workshop at which Hunt worked in 1834. In 1853, Hunt had difficulty in recreating a working sewing machine from these nineteen-year-old remnants, but Singer provided Hunt with some legal and technical advisors, including William Whiting. As a lawyer recalled the scene years later in another patent suit, Whiting "was brought to bear upon the parts of the old carcass," and, "after the lapse of many days, informed Mr. Hunt what he might have done, and Mr. Hunt ... agreed, and subsequently insisted, that that was just what he did do." With Hunt's rebuilt sewing machine as evidence corroborating his act of invention in 1834, Singer seemingly had within his grasp the prior art necessary to invalidate Howe's 1846 patent.

In the fall of 1853, Hunt applied for a patent on his sewing machine invention, claiming an invention date of 1834. His patent application was not received well at the Scientific American, which leapt to Howe's defense against what it saw as a pretender to the sewing machine throne. The magazine opened its October 1, 1853 article on the subject with this telling remark: "There never was a useful invention of any importance brought before the public to which there was not more than one who laid claim to be the inventor." The magazine then republished Hunt's lengthy advertisement in the New York Tribune from September 19, 1853, which declared, in part:

TO THE PUBLIC — I perceive that Elias Howe, Jr., is advertising himself as patentee of the Original Sewing Machine .... These statements I contradict ... Howe was not the original and first inventor of the machine on which he obtained his patent. He did not invent the need with the eye near the point. He was not the original inventor of the combination of the eye-pointed need and the shuttle, making the interlocked stitch with two threads, now in common use. .... I have taken measures ... to enforce my rights by applying for a patent for my original invention. ...

The Scientific American denounced Hunt's belated patent application in no uncertain terms, saying that it was "opposed to such rusty claims," and that "it has rather an ugly appearance to set up ten years' prior claims to the lock stitch and eye-pointed needle." It called for a quick legal resolution of this controversy "in order that the ear of the public may not be used as a kettle drum on which to beat the loudest tones for personal purposes."

What followed was an extensive trial at the Patent Office to determine who had the legitimate claim to the patent on the lockstitch (this proceeding is called an "interference" in patent law terminology). The interference proceeding was reported to have involved "hundreds of pages of sworn testimony" proffered on behalf of Hunt's claims to being the original inventor of the lockstitch produced from a combination of an eye-pointed needle and shuttle. At the end of this lengthy and complex trial, Patent Commissioner Charles Mason ruled on May 24, 1854 that Howe was entitled to his patent.

Interestingly, Mason acknowledged that Hunt had invented the elements of the sewing machine that later constituted Howe's patented invention, but he concluded that Hunt committed laches ("sleeping on his rights") in waiting eighteen years after his date of invention before filing his patent application. In patent law terminology, Commission Mason found that Hunt had "abandoned" his invention after 1834, and thus lost his right to receive a patent. Hunt's abandonment was particularly salient given that another inventor, Howe, had brought the same invention public by patenting it in the interim.

In his decision, Commissioner Mason wrote: "When the first inventor allows his discovery to slumber for eighteen years, with no probability of its ever being brought into useful activity, and when it is only resurrected to supplant and strangle an invention which has been given to the public, and which has been made practically useful, all reasonable presumption should be in favor of the inventor who has been the means of conferring the real benefit upon the world."

Hunt then appealed Mason's decision to the Circuit Court of the District of Columbia, asserting a whole slew of legal issues, including even that Mason lacked statutory authority to decide an interference action on the basis of abandonment. In an extensive opinion analyzing all points of Hunt's arguments, Circuit Judge Morsell soundly affirmed Commissioner Mason's decision.

Hunt was technically correct that the patent statutes in force at that time did not specifically authorize Commissioner Mason to decide an interference action on grounds of abandonment. Judge Morsell's opinion, however, followed long-established judicial practice in the antebellum era in construing the patent statutes broadly in favor of the property rights secured to patentees. For further discussion of how patents were broadly secured as property rights in the antebellum era, see my 2007 article, Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent "Privilege" in Historical Context.

Hunt's loss in the interference action had an immediate impact in Howe's ongoing legal contest with Singer. Howe quickly filed lawsuits in Boston against firms selling Singer Sewing Machines, and, as before, he sought preliminary injunctions. In his decision on Howe's request for a preliminary injunction, Judge Sprague acknowledged the "earnestness and zeal with which the contestation has been carried on" in this case and in the many other legal actions. Following a lengthy review of the arguments against Howe, Judge Sprague ultimately concluded: "There is no evidence in this case, that leaves a shadow of doubt, that, for all the benefit conferred upon the public by the introduction of a sewing machine, the public are indebted to Mr. Howe."

The defendants in the Boston litigation again argued that Hunt had anticipated Howe's invention, despite Hunt's earlier defeat in the interference action before Commissioner Mason. After carefully analyzing the evidence of the reconstruction of Hunt's invention in 1853, Judge Sprague coolly remarked that "[p]rophecy after the event is easy prophecy." Judge Sprague thus ruled Howe's patent valid and infringed, and he issued a preliminary injunction. The Boston firms settled with Howe, who then promptly filed lawsuits directly against Singer in federal courts in New Jersey and New York, requesting injunctions.

At this point, the historical record is a bit muddled as to what happened next. One historian claims that I.M. Singer & Co. was ordered to pay Howe $15,000 in damages, but there is no extant court decision confirming this report and it is likely incorrect. In the nineteenth century, equity courts issued injunctions and law courts ruled on damages, and thus Howe would not have received a damages award in his petition before a court of equity for an injunction. (The separate equity and law courts in the federal judiciary were merged into a single court system with the enactment of the Federal Rules of Civil Procedure in 1938.)

Other historians have written that I.M. Singer & Co. settled with Howe on July 1, 1854, agreeing to pay Howe $15,000 to settle their dispute. This is probably what in fact happened. In addition to the $15,000 settlement, Singer further agreed to pay Howe a $25 royalty, consistent with Howe's other license agreements, for each Singer Sewing Machine produced thereafter.

The end of the long-running legal dispute between Singer and Howe in 1854 did not mark the end of the Sewing Machine War. To the contrary, it lead to an explosion in patent litigation among all the sewing machine patent-owners. Thus, what followed was the descent of the Sewing Machine War into a full-scale patent thicket. I will discuss this part of the story in my next blog posting.