Читать книгу The Inventive Life of Charles Hill Morgan: The Power of Improvement In Industry, Education and Civic Life - Allison Chisolm - Страница 25

It didn’t take long for others to see an opportunity for their own profits by making machines similar to Rice’s. This group included William Goodale (also a Clinton resident, but no relation to E.W. Goodale), whose July 1859 patent prompted Rice to sue for infringement.

Together, Morgan, Priest and Whitney hired New York City attorney Edward S. Renwick later that year to represent their interests, investigating the William Goodale patent and applying for a reissued patent, which the Patent Office approved in March 1860 to reflect the new assignees, but continued to refer to it in patent papers as the “Rice patent.”

As the reissued patent noted, Rice had invented “a certain new and useful Machine ... whereby paper bags of a novel and superior form are made cheaper and more expeditiously than by other methods hitherto in use.”

Morgan kept the sheriffs of Middlesex and Worcester counties busy delivering his own notices of infringement. He found a good template to follow—among his papers was an April 1859 notice of infringement sent out by sewing machine inventor Elias Howe, Jr. of nearby Spencer, who had spent eight years fighting for his patent rights against copycat sewing machine manufacturers, including Isaac Singer, finally winning in 1854, but continuing to pursue infringers in succeeding years. Despite Howe’s victory, however, it was Singer’s name that became synonymous with sewing machines.

Morgan’s reissued patent prompted a flurry of letters. In February, May and again in June 1860, Morgan and his partners sent out letters of protest (hand delivered by local law officers) to parties in Massachusetts and Pennsylvania, including his former employer, E.W. Goodale, to whom he wrote on June 25:

We believe that you are infringing our Patent granted to Benjamin F. Rice April 28th 1857 and reissued March 6th 1860 for an improvement in machines for making paper bags, which has been assigned to us, as may be seen by the records of the United States Patent Office, and that you are well informed of our patent rights, and know that the invention has been developed at great expense, notwithstanding which you continue to manufacture and use, or use, paper bag machines in known and avowed violation of our rights; and that you have combined with others to infringe and resist our just rights. We therefore request you to cease infringing our said patent and to settle for past infringement; and we give you notice that we shall insist on and enforce all our just rights against you and all others combining with you by such legal proceedings, as your conduct may render necessary, and we be advised are proper in the premises.

Respectfully, Leonard Whitney Jr., Thurston Priest, Chas. H. Morgan

The letter was personally delivered to E.W. Goodale by the local sheriff on June 28, 1860.

There were patent infringers in Philadelphia as well. As early as 1859, Morgan had noted from a newspaper (and glued the cutting into his black-covered notebook) a listing of a “Paper Bag and Envelopes” patent reissued to J.A. Smith of Clinton (not the J.C. Smith who hired Morgan in 1855) and S.E. Pettee of Foxborough, Massachusetts, as assignees for the North American Paper Bag and Envelope Manufacturing Company in Philadelphia. The newspaper included the specific claims of their patent, and a technical description of their device.

“We wish it understood, however,” the notice continued, “that we distinctly disclaim the use of a series of molds in a machine for making paper boxes, such a series having been used in the paper box machine of R.L. Hawes, patented Jan. 16, 1855. Nor do we claim molds placed at the extremities of the arms of a wheel, and used in the manufacture of paper boxes, such an arrangement having been employed in the box machine of Louis Koch, patented March 13, 1855.” While Worcester envelope inventor Russell L. Hawes was cited, no reference was made to Benjamin Rice’s patent.

Simon E. Pettee may have resided in Foxborough at the time of the patent reissue, but he subsequently moved to Philadelphia, where he was listed simply as “inventor” in the 1861 city directory. Morgan and his partners started to build a case against Pettee. On January 27, 1860, Morgan wrote to the Commissioner of Patents in Washington D.C. for a copy of Pettee’s 1858 patent specifications and drawings, but must not have included enough money to cover the copies, as on May 3, Benjamin Rice also wrote, enclosing another $3.75 with his request. Rice also requested a copy of his deposition in his case against William Goodale, which established his priority of invention.

Pettee also received his own infringement letter from Morgan, Priest and Whitney, identical to the others, but this time, hand delivered by William H. Miller, deputy U.S. Marshal for the Eastern District of Pennsylvania, on Saturday, February 25, 1860. Miller also delivered a letter that day to John H. Lewars, listed as an agent for the Philadelphia & Germantown Railroad in the city directory, but as Morgan later learned, also president of a company that profited from paper bag machines designed and supplied by Francis Wolle and his Union Patent Paper Bag Machine Company.

While defending the existing patent (in those hours when he wasn’t working for Bigelow Carpet), Morgan continued to work on an improved bag-making machine which incorporated a “circular knife” or rotary cutter. By the fall of 1859, he had completed his first plan to his satisfaction, having described it in detail in September to both his employer, carpet king Erastus Bigelow, the Clinton Wire Cloth Company’s agent, Charles Waters, and then to his brother Henry in October.

On January 21, 1860, Morgan filed a caveat with the U.S. Patent Office, “setting forth the design and purpose of his said invention and its distinguishing characteristics, and praying protection of his right till he should mature his invention.” He built the first machine in August 1860, and filed his patent in May 1861.

In the meantime, Horatio G. Armstrong, a stationer in Philadelphia, had been working on a similar device. Morgan learned of his progress and fired off his standard infringement letter on May 28, 1860. Armstrong went ahead and filed a patent for his paper bag machine on August 22, 1860. No one notified Morgan at the time, as they should have, given the caveat already on file. This oversight was later described in a legal proceeding:

Morgan was by law entitled to notice thereof, and to be heard on the question of priority of right and invention, of the improvement thus claimed by him and by said Armstrong, but through negligence of office accident and mistake, no notice of said Armstrong’s application was ever given to said Morgan.

The Patent Office awarded Armstrong his patent on October 2, 1860. When Morgan completed his patent application and filed it May 10, 1861, his application was rejected less than three weeks later and officially declared in interference with Armstrong on July 17. By now, both he and his competitor were in Philadelphia, as Morgan had moved there the previous fall. The patent dispute that began in Clinton continued to haunt him in Philadelphia.

Morgan immediately contacted his friend and former Massachusetts governor, attorney George S. Boutwell. Both sides began taking depositions. Morgan had five witnesses: his brother Henry, Erastus Bigelow, Charles H. Waters and two others. Armstrong fielded 11 witnesses initially, including his son, their housekeeper, a roller manufacturer named Conrad Seistman and a business associate, William Steadman. After hearing Morgan’s primary witnesses clearly establishing an earlier date of invention, Armstrong added to his list a frame maker named Louis Weegner.

Weegner claimed to have seen in early August 1859 a machine making 100 bags a minute operating on the second floor of Armstrong’s offices, with two or three women at work in the room. Morgan’s witnesses date his invention to early September 1859, when he described it in detail to Waters and Bigelow in two separate conversations.

The difficulty, as one examiner pointed out, was that Armstrong worked on the fourth floor of his office, not the second. Additionally, he was not skilled in making machinery, and would have had to find assistance to build such a machine so quickly after finalizing his plans.

In discussing the case with Boutwell, Morgan was not certain of victory. He wrote in September 1861 that Armstrong may have been making smaller versions of conventional paper bags:

From what I can learn I think Mr. A did have a machine in the early part of 1860 that made the “half bags” but not till after I had made the drawing for a Caveat which shows the invention of a complete machine at that date.

“It is my opinion,” he continued, “that if the Commissioner admits the evidence of William Steadman as proof that Armstrong had a machine for making the half bag as early as Nov. 10th 1859 and throws out the evidence of Mr. Waters and my brother, that the office must grant the Patent” to Armstrong.

On November 16, Boutwell filed his 18-page case with the Patent Office, and the examiner, T.R. Peale, responded December 4 that while “there appears to have been an oversight in not calling up the caveat filed by C.H. Morgan, on the 21^st of January, 1860, but no injury to either party has resulted,” and therefore the priority remained with Armstrong.

Morgan appealed to the Examiners-in-Chief January 31, 1862 with another attorney, A.B. Stoughton. By March, S.H. Hodges affirmed the decision for Armstrong. While he acknowledged that Bigelow was “a fully competent expert, and appears to be very intelligent,” and also laid aside Weegner’s testimony as inconsistent, he reviewed the case against the country’s first patent law of 1836 which requires the inventor use “reasonable diligence in adapting and perfecting” his invention. Because Morgan did not build his first machine until August 1860, Hodges wrote,

It is not in proof that he took a single step, such as the statue required, for nearly eleven months. This is not using reasonable diligence. While he has been lingering, his present competitor has obtained a patent. He is entitled to keep it, and Morgan’s application must be denied.

The Commissioner of Patents, D.P. Holloway, received a formal appeal from Boutwell less than three months later, on June 6, 1862. Stoughton submitted arguments for a hearing held on the second Monday in July. The Commissioner issued a two-page decision awarding Morgan priority on October 24, but a final appeal from Armstrong sent the case to the Circuit Court for the District of Columbia.

Assistant Judge William M. Merrick heard the case in his chambers on January 30, 1863. He discounted Weegner’s testimony regarding the machine “rapidly throwing off paper bags” in early August 1859, and credited Morgan with his January 1860 caveat ruling in advance of Armstrong’s patent application. He interpreted the 1836 law in a different light than Hodges, writing in his opinion:

Here, then, we have an invention completed within the meaning of the patent law, so as to give the inventor priority over all others, provided he followed up the invention with reasonable diligence, by reducing the same to practice, and claiming in due season the fruits of his discovery. Has Morgan done so? ... Upon the proof, I find him to be the first inventor.

Second page of Rice paper bag machine patent drawing, witnessed by Charles H. Morgan, 1860

Morgan was awarded patent number 37,726 on February 17, 1863. By the time the court made its ruling, Armstrong had assigned his (now invalid) patent to the Union Patent Paper Bag Company.