[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.

This series has been fascinating and well written, even to someone not at all interested in sewing machines and with only a passing interest in patents. Thank you.
5.1.2009 10:29am
David Pinto (mail) (www):
I find this all very interesting. I grew up in Bridgeport, CT. Seaside Park there sits on the old Barnum estate. There are two statues we drove by every time we visited the park, one of Barnum and one of Elias Howe. Does anyone know if statues of inventors are common?
5.1.2009 10:34am
cboldt (mail):
-- Does anyone know if statues of inventors are common? --
Not as common as military warriors, but not uncommon.
5.1.2009 10:38am
Michael F. Martin (mail) (www):
Thank you so much for this work, Prof. Mossoff. This is so important to the patent reform issues being discussed. And thanks to Prof. Volokh and his conspirators for providing a forum.

One thing I believe Commissioner Mason saw in considering the issues is that the patent system needs to encourage disclosure beyond simply constructive reductions to practice (such as Hunt's). I think it's an open question on the evidence as to whether actual reductions to practice that are publicly disclosed (either with or without the protection of pending or issued patent) are necessary to the dissemination of knowledge in a given field. The patent system, as it is currently configured, assumes that the filing of specifications and drawings is sufficient to provide both knowledge and teaching to those skilled in the relevant field. Most patent lawyers will privately acknowledge that the teaching is not up to snuff.

As Mark Lemley pointed out in a recent article on trade secrets, that's not such a big deal in those fields where the patents provide the incentive to go ahead and publicly disclose the details of the invention to licensees or even the public. But where that does not happen and the specifications and drawings of a published patent are insufficient, then the patent system has not made good on its promise of enforcing a quid pro quo for patenting -- i.e., of knowledge for the public in exchange for limited exclusive rights.
5.1.2009 12:12pm
Professor Mossoff:
I am loving this series. I practice criminal law and have no real interest in patent law, but this has been fascinating. Now some of the explanations of patent law that my patent lawyer friends have given me actually make some sense. Thank you for taking the time to explain this in such a well-written manner.
5.1.2009 12:20pm
Adam Mossoff (mail):
Hi Mr. Martin,

Your interpretation of the interference action between Hunt and Howe is interesting and I think you're right about some of the difficulties with full disclosure of an invention, but here it doesn't exactly explain what Commissioner Mason was actually saying in his decision.

As a general matter, Hunt's invention was not a constructive reduction to practice. A "reduction to practice" in patent law means the creation of an actual working model or other type of real-world functioning example (what patent lawyers call "embodiments" of the invention). The term "constructive" in the law means that something is not real, but judges will treat it as such for legal purposes. Thus, in patent law, a "constructive reduction to practice" is a blueprint or a valid written description in a patent application. These are accepted as replacements for reductions to practice because they serve the same function as an actual reduction to practice: they prove the invention works and has utility, they prove the inventor actually has the idea, and, even more important, they teach others who are skilled in the particular technological field how to make the invention (so that when the patent term expires, the knowledge really does fall into the public domain).

Thus, what Hunt did was produce an actual reduction to practice, i.e., he made an actual working model, or, at least, he remade his model in 1853. Howe also made a working model of his invention, because, under the 1836 Patent Act, inventors had to submit a working model of their invention when they submitted their patent applications to the Patent Office. So, in the antebellum era, there was always an actual reduction to practice of the invention.

So, Commissioner Mason's decision was not based on the competing reductions to practice or the quality of the lockstitch information disclosed by Hunt or Howe. Rather, Commissioner Mason was holding Hunt accountable to having waited too long to bring his patent application, and this was a common legal defense at the time--and remains so this day. The defense of laches is used throughout different legal doctrines, including property, contracts, torts, etc. In the patent law context, it is used to prevent people from trying to "cash in" on other inventors' successes, especially when evidence of prior inventive activity is extremely stale or there is a serious concern about the truthfulness of the ersatz earlier inventor now stepping forward after someone else has become successful or famous. So,

Commissioner Mason was simply protecting Howe's preexisting and legitimate property claim -- what lawyers at the time called a "perfected legal title" -- against someone whose newly discovered invention reflected exactly what Marcellus says in the opening of Hamlet: "Something is rotten in the state of Denmark."
5.1.2009 1:45pm
Michael F. Martin (mail) (www):
Whether Hunt's was a reduction to practice at all (either constructive or actual), I'll leave it to you to say. I don't think it matters to the point I was trying to make, which I think you got -- namely, that as a PTO Commissioner, he showed some concern with the question of whether the public actually got the benefit of Hunt's work. That much seems unquestionable from your description of the events.

There are a few questions I have about your answer though. Did Hunt actually have an actual working model in 1834 when he claimed to invent? I don't think there was a working model requirement under the Act of 1793. And if he didn't submit the working model until 1853, there's still the question of what evidence he had before that. (Maybe only a constructive reduction to practice.)

Also, the rule against "abandonment, suppression, or concealment" is part of the priority rules under 102(g) still today, of course, wholly aside form the equitable doctrine of laches, which has taken a different path in its evolution, at least more recently.

What I'm wondering is whether, in fact, Commissioner Mason's ruling is the origin of the rule under 102(g). The first-to-invent rule in effect prior to that dates back to the first interference decided by Jefferson, Know, and Randolph. That rule showed a concern with priority that ran beyond simple perfection of legal title. (Randolph's suggestion that the first to file for a patent at the state level was rejected.)
5.1.2009 2:01pm
cboldt (mail):
-- Commissioner Mason was simply protecting Howe's preexisting and legitimate property claim --
Just to add another element to the analysis (and I'm not sure this was the state of patent statutes at the time), it is the FIRST inventor who is entitled to a patent.
Interference practice is a subset of the means for rendering an invalidity ruling, and it is under an interference proceeding that the "interfering" (putatively previous) inventor's abandonment of invention removes his power to invalidate the patent grant.
(Today), The finding in court [contrasted with a finding in the USPTO under interference], that the patentee was not the first inventor in the US (period), is sufficient to render a patent invalid.
5.1.2009 2:06pm
DCovin (mail):
I'm also finding this series completely fascinating. Having already painstakingly worked through how the bobbin and lockstitch function in modern sewing machines didn't stop your recounting from reminding me of how fun it was to finally grasp that. :)

I keep feeling like you're doing something disingenuous in the "patent troll" discussion, though. I think that in common usage the term "patent troll" is intended to capture a notion of bad faith. Pointing out that one can be a non-practicing entity without having bad faith doesn't prove that patentholders with bad faith don't exist; it merely proves that the well-defined technical term "NPE" does not give one an easy-to-follow rule for mechanically determining which patentholders are acting in bad faith.

It seems to me that as you tell the story, Howe did many identifiable things which showed good faith: he personally created an invention which significantly advanced the field (it sounds from your telling as if the way in which it primarily advanced the field was in renewing others' belief that a true solution was possible, thus encouraging them to work on one; but arguably that alone was an advance-- and the elements of his invention *were* a part of every truly successful solution); and he entered into a business arrangement to produce and sell his invention.

I think that when I see the term "patent troll" bandied about, it usually seems to be used to imply that the person in question has not made any actual contribution to the field, nor has ever intended or had the means to do so-- usually, that the patents at issue constitute an accident or effective fraud (resulting from vague claims which ultimately turn out to have a value and use never forseen by the patentholder; or from some other means of gaming the system). Or sometimes, that the patents at issue are legitimate and represent a genuine contribution to the field but have been transferred from the original inventor to someone else, who only holds them for their litigation value. It seems to me that you're outlining a third case: a patentholder who advanced the field but not far enough to create a whole, marketable device.

I think it would be useful to be able to distinguish between 1) patentholders who are "just gaming the system," who contributed nothing of value; vs 2) patentholders whose only contribution was money (buying a patent from the original inventor); vs 3) patentholders whose real contribution was not enough to be marketable by itself. It seems to me you're saying Howe was #3. I think there's an argument to be made that #2 constitutes a legitimate contribution to society under our economic system, though it's common to condemn it as shady. But I'm not sure the existence of either 2 or 3 tells us anything (positive or negative) about whether people in category #1 exist.
5.1.2009 5:40pm

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