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University of Cincinnati Law Review University of Cincinnati Law Review
Volume 90 Issue 3 Article 3
March 2022
The Way Lawyers Worked The Way Lawyers Worked
Michael Risch
Mike Viney
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The Way Lawyers Worked
, 90 U. Cin. L. Rev. (2022)
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822
THE WAY LAWYERS WORKED
Michael Risch*
Mike Viney**
TABLE OF CONTENTS
INTRODUCTION ...................................................................................... 822
I. BACKGROUND .................................................................................... 825
A. Litigation .............................................................................. 825
B. Apple Parers ........................................................................ 827
II. APPLE PARER LAWSUITS AS A WINDOW INTO NINETEENTH
CENTURY LITIGATION ................................................................. 831
A. The First Case: Sargent et al. v. Larned et al., 1855 ........... 833
1. Early Interference Practice ...................................... 833
2. The Ensuing Litigation ........................................... 838
B. The Second Case: Sargent et al. v. Seagrave, 1855 ............. 843
C. The Third Case: Sargent, et al. v. Carter, 1857 ................... 845
D. Other Cases .......................................................................... 849
III. LESSONS FOR THE DEVELOPMENT OF LAW AND PRACTICE .............. 851
A. Visibility into Legal Practice ............................................... 851
B. Information Dissemination .................................................. 852
C. Development of Law............................................................. 854
D. Patent Office Practice .......................................................... 854
CONCLUSION ......................................................................................... 855
INTRODUCTION
Due to a shortage of federal district court judges, Justice Stephen
Breyer decides to hear and try several cases in the District of
Massachusetts. In one of those cases, his brother, now semi-retired Senior
Judge Charles Breyer, appears as counsel for the plaintiff. Charles Breyer
files a one-and-a-half-page handwritten motion for a preliminary
injunction. The motion relies on the defendant’s former attorney’s
* Michael Risch. Vice Dean & Professor of Law, Villanova University Charles Widger School of Law.
We thank Cathy Lanctot, Brett Frischmann, participants of the 2018 and 2020 IP Scholars Conferences
and Villanova Law Faculty Workshops. Jennifer Black, Greg Ferroni, and Greg Habiak provided valuable
research assistance. Bob Beebe and Gene Morris, Archivists at the National Archives in Kansas City and
Maryland respectively, were invaluable resources in finding and retrieving archival records.
** Mike Viney, Teacher in Residence, Colorado State University College of Natural Sciences Education
and Outreach Center.
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deposition testimony about what that attorney and his client, the
defendant, discussed during representation. Even though Charles is the
author of a treatise in this area, he fails to cite the key Supreme Court
case—one that Stephen Breyer wrote only a few months earlier.
Nevertheless, Justice Breyer grants the injunction, citing his prior opinion
but leaving out other relevant Supreme Court precedent beneficial to the
defense. When the Supreme Court decides a similar issue a few months
later, Justice Breyer makes no mention of his district court opinion on the
same topic.
Of course, none of this happened,
1
but it would be jaw dropping if it
had. The idea of a Supreme Court justice trying cases is foreign by today’s
standards, though some appellate judges do so. That may be the least
shocking part of the story because we are familiar with the historic
practice of justices “riding circuit.”
2
Conflicts of interest, lawyers
testifying against their clients, case law missed by learned treatise authors,
and Supreme Court precedent simply ignored by a justice are the types of
eccentricities nobody expects from the legal system, either now or in the
retelling of history. And yet, all of this and more happened in three
ordinary cases about a kitchen gadget. Perhaps even more shocking, at
least one of these examples legally continued well into the Twenty-First
Century.
To know how the system worked in the 1800s is not so apparent.
Today, we take visibility into court operations for granted. Modern media
outlets not only describe cases but also routinely publish the actual court
filings for lawyers and laypeople to examine and critique. This was never
more apparent than after the 2020 presidential election, when President
Donald Trump’s lawyers filed cases throughout the country alleging
election fraud. Professional and amateur reporters alike were able to
publish the actual court filings and comment on them, allowing members
of the public to examine how the evidence presented in court matched
with rhetoric; it also allowed for a deep look into the litigation process,
including how courts handled filings made in the wrong court or the
consequences of failure to serve parties and misspellings.
The development of the law and legal systems has historically been
shrouded by a lack of published documents, especially when that
development occurred nearly 170 years ago. Litigation documents were
not typically available. Judicial rulings were not published unless a
reporter decided to share it. And after more than a century, the memories
of those involved are lost, leaving us with little insight into how lawyers
and courts went about their business.
1
. Charles Breyer remains a Senior Judge and does not practice on the side or author a treatise.
2
. Joshua Glick, On the Road: The Supreme Court and the History of Circuit Riding Comment,
24 CARDOZO L. REV. 1753 (2003).
2
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This Article shares how archived, unpublished documents can reveal
new insights about the history of our legal system and provides an avenue
for how other researchers might expand our knowledge in these areas. We
shed light on the nineteenth century legal system, perhaps unexpectedly,
by examining cases involving a simple household tool: the apple parer.
Like eggbeaters and food mills, someone had to invent this common
kitchen device; while there were many unpatented versions, early
patented parers led to a string of litigation. Using contemporaneous
records from media, litigation, and patent office filings, we closely
examine the first apple parer patent litigation to highlight how court
practices and the law developed at that time.
While everyone reads and cites nineteenth century judicial opinions,
nobody has examined how litigants behaved given the constraints of
limited communication methods available at the time. Few historical
studies have considered the mechanics of litigation, let alone patent
litigation, from that time.
3
The first court cases involving apple parer
infringement illuminate developments in litigation and patent law of the
time. Documents associated with the cases show how the law developed
and propagated, based on handwritten and often unpublished depositions,
briefs, and opinions invisible to today’s online research services.
Finally, our research reveals an interpersonal story involving many of
the same players in this area. These details, including non-reported
lawsuits and settlements, are simply unavailable from the three published
court opinions available from these first lawsuits.
Part I of this Article presents some background information. First, it
describes the sources available for assessing historical litigation practices
and the dearth of literature that actually leverages those sources. Second,
it describes apple parers, including the invention at issue in the first
litigation about them. Part II describes the three primary cases, along with
a few unreported cases. In doing so, it explains and shows the archival
material, original photos of the devices involved, and unreported court
documents.
Part III synthesizes what we can learn from these cases. The topics
range from visibility into legal practice, information dissemination,
development of the law, and patent office practice. Part IV briefly
concludes with some lessons for today.
3
. Christian G. Fritz, The Judicial Business of a Nineteenth-Century Federal Trial Court: The
Northern District of California, 1851-1891, 5 W. LEGAL HIST. 217 (Jun. 1992) (tallying the types of cases
heard in California; only 2 patent or copyright cases); Laura Hanft Korobkin, Criminal Conversations:
The Narrativity of Civil Adultery Litigation in Late Nineteenth-Century America (describing narratives in
nineteenth century civil adultery litigation); Lawrence M. Friedman, Civil Wrongs: Personal Injury Law
in the Late 19th Century, 12 AM. B. FOUND. RES. J. 351, 355 (1987) (studying nineteenth century personal
injury trials).
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I. BACKGROUND
A. Litigation
Lawyers know what they are doing—hopefully in the “competence”
sense, but certainly in the “what does law practice entail” sense. They
know which service providers offer deposition transcript and video
services, which software is best for case management, and what litigation
analytics say about judicial predilections. But even they do not know all;
continuing legal education and bar conferences allow lawyers to learn
current best practices from each other.
But the inner workings of law practice are a bit opaque to the outside
observer. In one hundred years, no one will have first-hand knowledge of
how law firms practice today. Historians will recreate such practice from
accounts of the day as well as the court system. Each of these channels
provides much more information than what was available 170 years ago.
Today, there are many more accounts of court cases and legal practice.
This includes traditional journalism, blogging, and even Twitter accounts.
But there is also a record of the continuing legal education and bar events
(though these are often lost after a number of years). Finally,
advertisements are not what they used to be. Rather than a one-inch square
advertisement in the back of Scientific American, today’s vendors have
entire websites that are archived at the Internet Archive, which stores old
versions of web pages.
4
4
Additionally, court watchers are somewhat familiar with how much of
our litigation works today. Transparency with court operations is at an all-
time high. One can easily obtain every court filing, oral argument, and
decision with the click of a few buttons. There are even blogs devoted to
watching these aspects as they happen.
Court documents are an especially important way to learn about
litigation practice and the specifics of cases. Documents filed with courts
preserve for posterity the actual evidence and underlying procedures used
in the case. That is, copies of interrogatories and deposition transcripts
show how discovery was done, motion filings show the style of argument,
and exhibits show how documents were produced. For this reason, courts
that go beyond sealing all but the most confidential information do a
disservice not only to the living
5
but future historians as well.
4
. INTERNET ARCHIVE, http://www.archive.org (last visited Feb. 14, 2022). The Internet Archive
will hopefully be available well into the future.
5
. Kenneth R. Thomas, Public Courts and Private Litigation: Proposed Changes to the Use of
Confidentiality and Sealing Orders in Civil Cases, 37 WAYNE L. REV. 1761, 1767–69 (1990–1991)
(describing harms to the current public of sealing court records).
4
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There was no internet in the nineteenth century.
6
Court records were
unavailable for easy retrieval, and indices either did not exist or were
unavailable to the masses. Even today, the only electronic index available
from the National Archives is sorted by name and/or case number rather
than individual court documents. There were few legal periodicals,
7
and
many of them served primarily as legal digests of court outcomes.
8
Further, published discussion often lingered on study of the past rather
than explanation of the present.
9
There were also legal dictionaries, which
included short, useful summaries.
10
And there were treatises, which
provided a concise statement of the law.
11
Finally, of course, there were
contemporaneous accounts, letters, archives, and other materials from
which historians construct history.
12
And yet, almost nobody has written about the specifics of litigation,
how lawyers found precedent to cite, how official documents were
distributed, or how the law developed in the shadow of technological
limitations. While people have written about justices riding circuit, they
have not addressed whether justices actually used the district court
experience as a breeding ground for new legal theories—one of the
purported purposes of the practice.
13
Others look at the business of the courts in terms of types of cases,
rather than the behavior of advocates in those cases.
14
For reasons of
importance and availability, there is some attention devoted to practice
6
. See generally, TOM STANDAGE, THE VICTORIAN INTERNET: THE REMARKABLE STORY OF
THE TELEGRAPH AND THE NINETEENTH CENTURY’S ON-LINE PIONEERS (Bloomsbury Publishing USA
May 2009).
7
. Michael L. Closen & Robert J. Dzielak, The History and Influence of the Law Review
Institution, 30 AKRON L. REV. 15 (1996–1997) (describing history of legal periodicals and law reviews).
8
. LAWRENCE M. FRIEDMAN, A HISTORY OF AMERICAN LAW 538–48 (Simon and Schuster
1973); Timothy W. Gleason, 19th-Century Legal Practice and Freedom of the Press: An Introduction to
an Unfamiliar Terrain, 14 JOURNALISM HIST. 26, 29 (1987) (“Earlier law reviews consisted of edited
summaries of judicial opinions and treatise-like articles that did little more than recite the pertinent recent
case law on a given subject.”).
9
. Emory Washburn, On the Legal Profession in New England, 19 AM. JURIST & L. MAG. 49
(1838).
10
. 1 JOHN BOUVIER, A LAW DICTIONARY ADAPTED TO THE CONSTITUTION AND LAWS OF THE
UNITED STATES OF AMERICA, AND OF THE SEVERAL STATES OF THE AMERICAN UNION; WITH
REFERENCES TO THE CIVIL AND OTHER SYSTEMS OF FOREIGN LAW 408 (Childs & Peterson 6th ed. 1856)
(The entry for deposition begins: “The testimony of a witness reduced to writing, in due form of law,
taken by virtue of a commission or other authority of a competent tribunal.”).
11
. 3 JOHN BOUVIER, INSTITUTES OF AMERICAN LAW (Robert E. Peterson & Co. 1854) (providing
wide ranging law summaries, ranging from structure of the courts to evidence to substantive law, including
patents). This book was dedicated to a pre-Dred Scott Justice Taney.
12
. Thomas J. Young, Jr. A Look at American Law Reporting in the 19th Century, 68 LAW LIBR.
J. 294 (1975) (using contemporaneous accounts to discuss role of opinion reporters).
13
. Glick, supra note 2 at 1761.
14
. See, e.g. Fritz, supra note 3.
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methods before the Supreme Court.
15
Those articles that address specific
narratives tend to present aggregate details about the industry and legal
developments, rather than specifics about how the law was practiced.
16
And, here and there, archivists might use source material to comment on
nineteenth century practices.
17
Nineteenth century cases are much more than the opinions we read
today. Fully understanding these cases requires an examination of
archival case records to uncover the essential details.
B. Apple Parers
The apple parer is an American invention that appeared sometime
during the late eighteenth century. Don Thornton’s book Apple Parers
documents an astonishing variety of early parer designs made by artisans
for their local community, which included: direct drive, belt drive, cord
drive, wood pegs and teeth, and cast-iron pegs and gears.
18
Despite the
many varieties, the concept remained the same: an apple rotated, and a
hand-held or mounted knife pared the apple.
Few patents marked the early years of apple paring inventions.
Although many parers are known from the first half of the nineteenth
century, only a handful received patents. Moses Coates (1746-1816) was
granted the first U.S. patent for an apple parer on February 14th, 1803.
19
In order to obtain a patent, inventors filed an application with the Patent
Office, just as they would today. Patent examiners then considered what
others had previously invented and determined whether the claimed
invention was novel. Upon issuance of a patent, the owner had the right
to exclude others from making, using, or selling the patented claim.
Ephraim Loriston Pratt (1817-1869) was a prolific inventor of apple
parers, with eight U.S. patents granted for improvements in apple parer
designs and one patent for an apple-slicing machine. Pratt established
himself as an inventor of apple parers during the 1850s, a time when
parers were increasingly mass-manufactured from interchangeable cast
iron parts and designed to work solely by turning a crank. The mass
manufacture of parers coincided with a dramatic increase in patents
15
. See, e.g. David C. Frederick, Supreme Court Advocacy in the Early Nineteenth Century, 30 J.
SUP. CT. HIST. 1 (2005) (discussing advocacy and oral arguments before the Supreme Court).
16
. See, e.g. Korobkin, supra note 3; Friedman, supra note 3.
17
. Solomon Mitchell, Depostion, Civil War Governors of Kentucky Digital Documentary
Edition, http://discovery.civilwargovernors.org/exhibits/show/duly-sworn/deposition (“The concluding
paragraph ... points out some other interesting things. Notice that the testimony was read back to the
deponent Solomon Mitchell, who presumably asked that some of the text be edited and clarified.”).
18
. DON THORNTON, APPLE PARERS (Off Beat Books 1997).
19
. Cutting Apples & Paring/Apple Parer, U.S. Patent No. X425 (issued Feb. 14, 1803).
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granted for innovative apple parer designs.
20
The first litigation involving
a patent for an apple parer followed on the heels of these changes to apple
parer design and manufacture.
Pratt’s creative power was evident from the very first apple parer
design he chose to patent. An 1852 New York agricultural report takes
note of Pratt’s invention: “One Pratt’s patent Automatic Apple Parer, J.
Sargent, Shelburne Falls, Mass.; a "very ingenious and perfect
contrivance to avoid personal labor; works expeditiously, evenly and
surely, Thomas Fruit Cultivator $2.,” fig. 1.
21
Figure 1. Automatic Apple Parer - Wooden base stamped E. L. Pratt’s
Patent Pending. Later examples have Sargent & Foster Paper labels.
Pratt was granted a patent for his Automatic Apple Parer on Tuesday,
October 4, 1853. The Automatic Apple Parer was a quick return design—
after paring an apple, the knife returned to its original position, under
spring tension, with a snap, fig. 2.
20
. Mike Viney, Appeal to American Apple Parers: Historical Perspectives on Orchards and
Yankee Ingenuity, 58 MIDWEST Q. 9-27 (2016).
21
. 5 DOCUMENTS OF THE ASSEMBLY OF THE STATE OF NEW YORK, SEVENTY-SIXTH SESSION,
no. 112 (1853).
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Figure 2. Figures 1 and 3 from Pratt’s Patent Application (issued Oct. 4,
1853), National Archives College Park, Cartographic Branch, 241-
PATENTUT-10078.
The patent did not secure the quick return mechanism, however. By
describing it but not claiming it, Pratt dedicated that portion of the patent
to the public domain. It appears that other patents disclosed self-returning
mechanisms as well.
22
Instead, Pratt claimed as his invention a
mechanism that allowed “the knife to vibrate and accommodate itself to
any irregularity in the surface of the apple or vegetable pared.”
23
This
22
. Decision of Commissioner in Case of E.L. Pratt Assigned to Sargent & Foster (Aug. 1853).
If the reader desires, copies of this source and similarly-aged sources throughout this Article are available
both at the National Archives and from the authors.
23
. Machine for Paring Apples, U.S. Patent No. 10,078 (issued Oct. 4, 1853).
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830 UNIVERSITY OF CINCINNATI LAW REVIEW [VOL. 90
“vibration,” which also allowed for a rotation “around the rod in a circular
direction” was the primary inventive leap of Pratt’s first patent. It allowed
the knife to better conform to the curves of the apple on each end as well
as any other odd shapes.
Many pre-patent versions of this parer are made with a block carrying
the knife, known as the paring head, which did not rotate about the paring
arm, fig. 1. This is a seemingly minor difference, but the rigidly mounted
knives left parts of an apple, especially the ends, unpeeled. Indeed, during
one of the cases discussed below, the defendants elicited testimony from
a machine craftsman, John Williams (1806-1882), who testified that he
built the exact machine described in Pratt’s patent, except for the loose
knife.
24
Williams described how the serendipitous discovery occurred.
The threads of the knife were stripped and no longer secured the knife.
So, Pratt carved a V-shaped groove in the rod to hold it in place, but it
held much more loosely than the threads would. Pratt then discovered that
his new construction was better at paring apples than the rigid knife.
Williams went on to testify that Pratt was “not a responsible man to
work for” and that Pratt had Williams look to Sargent & Foster to pay for
his work. This might explain why Pratt wound up selling his invention.
25
Pratt explicitly noted and claimed as his invention a paring head that is
designed to rotate about the block to accommodate itself to irregular
surfaces being pared. Thus, his parer removed the apple skin completely,
except for the “small space” right next to where the apple was mounted.
Pratt transferred the rights to his invention by listing himself as
assignor to James Sargent (1824-1910) and Dan Packard Foster (1815-
1893). Pratt’s design would now be advertised and sold as Sargent &
Foster’s Patent Automatic Apple Parer. An advertisement for Sargent &
Foster’s patented parer appears in a September 1, 1855 issue of The Ohio
Cultivator, fig. 3—advertisements appeared in newspapers as well.
26
24
. Deposition of John Williams, Sargent v Larned (Printed Version) (May 1855).
25
. Pratt did sell his inventions to several different companies over the course of his life.
26
. J.M. McCullough, Sargent & Foster’s Apple Parer Advertisement, Ohio Cultivator, Columbus
(Sept. 1, 1855) vol. 11, no. 17, page 271, Library of Congress, Washington, DC.
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Figure 3. Sargent & Foster’s Patented Automatic Apple Parer. One of
the first known parer advertisements, it shows a single hand turning the
crank, where most prior parers required a second hand to hold the knife.
After inflation this would cost nearly $50 today.
II. APPLE PARER LAWSUITS AS A WINDOW INTO NINETEENTH CENTURY
LITIGATION
Cases asserting infringement of Ephraim Pratt’s 1853 patent for an
improved apple parer comprise the first three trial court cases involving a
patent for an apple parer invention, but as discussed below, these reported
cases were not the only cases involving this patent. The National Archives
includes files of more litigation, which provide valuable details about
attempts to avoid litigation through interferences and written agreements.
Sargent & Foster sued many infringers during the 1850s. The three
primary cases involved two competitors. The first was John Seagrave and
the second was Charles Carter. Seagrave and Carter were also apple
paring device inventors and manufacturers but ran into trouble when they
attempted to use Pratt’s improvement in their products.
These first three cases were heard in circuit courts, two in
Massachusetts and one in Rhode Island. All were presided over by
Benjamin Robbins Curtis (1809-1874), a Supreme Court justice. Like
other members of the Supreme Court during this period in U.S. history,
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Justice Curtis “rode circuit.” Much of a Supreme Court justice’s time
during the year was spent traveling between several circuit courts to hear
cases. When they did so, they sat as trial judges. Many of the famous
patent trial court opinions were written by Supreme Court justices riding
circuit, though maybe the cases became famous due to the authors’
identity. Even so, the pay was modest, there were no pensions, and time
away from home could be stressful.
27
Worse yet, traveling expenses were
not covered. One positive aspect of the job description is that it resulted
in more interaction between the public and Supreme Court justices.
Curtis served as a Supreme Court justice for only six years, from 1851-
1857. He was the first justice to have formal legal training and the only
Whig ever to serve on the Court. Curtis was one of two dissenters in the
Dred Scott decision.
28
In fact, Curtis eventually resigned from the
Supreme Court over bitter disagreements with Roger Taney (1777-1864)
precipitated by the Dred Scott case, making him the first and only justice
to resign as a matter of principle.
Despite his short time on the Court, Curtis was no stranger to patents.
His brother, George Ticknor Curtis (1812-1894), was a well-known
patent lawyer who wrote a leading treatise of the time, Curtis on Patents.
The second edition of the treatise was published in 1854, just as the apple
parer cases were being heard.
29
The justice himself had learned patent law
while practicing in Boston beginning in 1834.
30
Curtis’s familiarity with patents was probably a good thing for the
development of patent law in the trial courts.
31
At that time, federal courts
were localized and politicized, so having a Supreme Court justice with
patent experience to decide patent cases was unusual
32
but helpful.
33
It is
reasonable to assume that he both understood the nature of cases before
him and had an interest in shaping patent law.
27
. Glick, supra note 2.
28
. Dred Scott v. Sandford, 60 U.S. 393 (1857).
29
. GEORGE TICKNOR CURTIS, A TREATISE ON THE LAW OF PATENTS FOR USEFUL INVENTIONS
IN THE UNITED STATES OF AMERICA (Little, Brown and Company 2nd ed. 1854).
30
. BENJAMIN ROBBINS CURTIS, A MEMOIR OF BENJAMIN ROBBINS CURTIS, LL.D.: MEMOIR
(Little, Brown, and Company 1879).
31
. Glick, supra note 2, at 1758–59 (“Having the justices ride circuit allowed cases to receive
immediate attention from the nation’s highest judges.”); Steven Lubar, The Transformation of Antebellum
Patent Law, 32 TECH. AND CULTURE 932, 956-57 (discussing complaints of contemporaneous trial judges
about difficulty of trying patent cases) (1991).
32
. Andrew P. Morriss & Craig Allen Nard, Institutional Choice & Interest Groups in the
Development of American Patent Law: 1790–1865, 19 SUP. CT. ECON. REV. 143, 241 (2011) (Curtis wrote
the seventh-most Supreme Court patent opinions from 1839-1859).
33
. Howard Gillman, How Political Parties Can Use the Courts to Advance Their Agendas:
Federal Courts in the United States, 1875-1891, 96 AM. POL. SCI. REV. 511, 514 (2002).
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A. The First Case: Sargent et al. v. Larned et al., 1855
Collectors of apple parers have noticed that parers similar to that of
Pratt’s design contain labels attributed to different manufacturers.
34
In
fact, we discovered that these unusual parers relate to the first case
involving an apple parer patent, in which Sargent & Foster brought a suit
in equity against Larned and Seagrave.
35
The case was more complicated
than a mere infringement suit, and the judge eventually determined
whether a covenant signed between the two parties was valid.
36
In fact,
the court considered two contracts signed by both parties.
1. Early Interference Practice
The first contract considered in this first case resulted from an
interference declared by the Patent Office. An interference is a trial held
in the Patent Office to determine the first inventor when two applicants
claim the same invention. Both E. L. Pratt and John Dorrington Seagrave
(1814-1893) had claims to a similar improved apple parer design, but the
patents had not yet been granted. Pratt’s patent appears to have been in a
better position, because Pratt had filed a “caveat” with the Patent Office
two years earlier, which gave public notice of his early invention date. A
caveat was a filing that allowed inventors to be notified if someone else
tried to claim the same invention before a patent was filed.
37
It had the
effect of placing a stake in the ground. Today’s closest analogue is
probably a provisional patent, which allows the applicant to secure a filing
priority date without actually applying for a patent; however, the Patent
& Trademark Office no longer notifies applicants of similar patent filings.
34
. Figure 4. Parer similar to Pratt’s design with known examples that have different
manufacturing labels.
35
. Bill of Complaint, Sargent v. Larned, 21 F. 501 (C.C.D. Mass. 1855).
36
. Sargent v. Larned, 21 F. 501 (C.C.D. Mass. 1855).
37
. Paul Israel & Robert Rosenberg, Patent Office Records as a Historical Source: The Case of
Thomas Edison, 32 TECH. AND CULTURE 1094, 1098 (1991).
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Figure 4. Quick Return Parer, similar to Sargent & Foster (Pratt’s
design), found with two different manufacturing labels, either Larned &
Seagrave or Sargent & Foster.
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The interference involved the design of the knife blade attachment. In
this first agreement, Seagrave verbally consented to withdraw opposition
to Pratt’s patent in the interference, essentially conceding that Pratt was
the first inventor. Withdrawing the opposition would give Pratt the patent
and leave Seagrave with nothing. Seagrave testified that both parties
agreed that, if Pratt were granted his patent, then each would use the
other’s improvements and, in all events, Seagrave could use Pratt’s
improvement for a license fee. Seagrave claimed that Sargent, who had
purchased Pratt’s invention, did not want that part in writing because it
would endanger the patent.
Thus, the resulting written contract, dated September 6, 1853, merely
stated that John D. Seagrave was engaged in making certain paring
machines that incorporated an improvement invented by E. L. Pratt for
which Pratt had a patent pending to which Sargent & Foster were
assignees.
38
The contract gave Seagrave license to assemble and sell
castings already made at a market price equivalent to Sargent & Foster’s
machines. But there was no mention of a license by Sargent & Foster that
would allow Seagrave to use Pratt’s improvement in Seagrave’s future
parers. Thus, any use of Pratt’s invention would be infringement if the
written agreement were followed to the letter.
Seagrave did withdraw any overlapping claim to the same invention.
39
This withdrawal looks strange by today’s standards, as it simply
withdraws any interfering subject matter with no mention of any specific
details. However, it sheds light on how nineteenth century interferences
were conducted. Today, patent claims are considered “peripheral,”
meaning that each claim describes the exact metes and bounds of the
claimed invention.
40
As a result, an interference always required
essentially identical claims, at least until the practice was abolished in
2011. Indeed, patent applicants would sometimes copy a claim right out
of someone else’s patent and put it in their own application to trigger an
interference. Thus, an amendment to end an interference will very
specifically drop the conflicting, identical claim. But prior to the late
1800s, “central” claiming ruled, meaning that patentees claimed some set
of elements as set forth in the patent specification.
41
For example, Pratt’s
patent claim included “Hanging or connecting the block S…substantially
as described.” The first phrase would be remarkable today, because
modern patent claims are more general than this and do not refer back to
the drawings (“block S”) except in rare, statutorily defined situations. The
38
. Answer, Sargent v. Larned 21 F. 501 (C.C.D. Mass. 1855).
39
. Letter from John Seagrave to Patent Office (Sep. 1853).
40
. Dan L. Burk & Mark A. Lemley, Fence Posts or Sign Posts - Rethinking Patient Claim
Construction, 157 U. PA. L. REV. 1743 (2009).
41
. Id.
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second phrase would also be remarkable today but was standard for the
time.
The changing interference practice is relevant to the Pratt/Seagrave
interference, because the proposed claims in the competing applications
were completely different.
42
If the patent office found a similarity for
interference, it must have been in the description rather than the claimed
invention. In fact, Seagrave’s initial claim had nothing to do with knife
vibrations:
I do not claim as my invention the general structure of the machine nor any
part thereof, except the following. The forks capable of being changed by
the set screw. The sheath of the fork and the arrangement for throwing off
the fruit [and other elements of the fork]…as hereinbefore described.
43
Seagrave’s attorney wrote to the Commissioner of Patents asking what
Pratt’s invention and filing date were, reiterating that his invention was
about throwing the fruit off.
44
At the time, all patent application
information was kept secret until the patent was issued. As a result, the
Patent Office declined the request unless Sargent & Foster agreed as
assignees.
45
Interestingly, the letter from counsel was sent after Seagrave
had withdrawn any interfering subject matter, so Seagrave subsequently
told the Patent Office to ignore the request for information.
46
So, when Seagrave “withdrew” any offending invention in the
interference, he did not actually amend his patent at all. Instead, he simply
disclaimed any subject matter, “so far as [it] interfere[d] with the junior
application of E.L. Pratt…” The withdrawal appears to have been in name
only, as Seagrave never attempted to patent a loose knife attachment,
despite his insistence that Pratt “admit[] that he ha[d] the junior right.”
47
Seagrave’s final issued claim differed from the initial application by
disclaiming other prior art and including a very specific description of the
claimed arrangement. Rather than naming Pratt’s patent, Seagrave instead
disclaimed Carter’s 1849 patent for a return-style parer. Indeed, the final
claim was drafted by someone at the Patent Office and suggested as an
acceptable amendment to overcome novelty concerns associated with the
Carter patent.
48
This type of recommendation is also highly unusual
today.
49
As discussed below, Charles Paige Carter claimed that he was
42
. Machine for Paring Apples, U.S. Patent No. 10,078 (issued Oct. 4, 1853); Specification and
Claims as Amended (Dec. 1853).
43
. Specification and Claims as Amended, supra note 42.
44
. Letter from Dwight Foster to Commissioner of Patents (Sep. 1853).
45
. Letter from Patent Office to John Seagrave (Sep. 1853).
46
. Letter from John Seagrave to Patent Office (Nov. 1853).
47
. Letter from John Seagrave to Patent Office, supra note 39.
48
. Letter from Patent Office to John Seagrave (Dec. 1853).
49
. Charles deGrazia et al., Examination incentives, learning, and patent office outcomes: The
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the original inventor of Pratt’s innovation as a defense against a suit
brought by Sargent & Foster. The Patent Office apparently agreed, at least
with respect to the broad notion of an automatic return parer, which was
Seagrave’s initial claim. Despite all this effort, no known model of
Seagrave’s apple parer included removable forks or a “throwing off”
functionality so important to the patent.
This strange, short-lived interference differs from modern practice in
how it began and how it ended. From a legal standpoint, it illustrates the
differences between patent claiming practice in the 1850s and today. At
the beginning, that an interference would be instituted on such different
claims is surprising by today’s standards because today’s interference
requires identical claims, while the 1850s Patent Office clearly had a
broader understanding of the term “interfere” in the statute.
50
At the end,
it is shocking from a public notice standpoint that a pending interference
action could be terminated through such a non-substantive withdrawal of
subject matter. It would have been nearly impossible to identify the
overlapping invention or the released patentable subject matter. From a
marketplace standpoint, it shows the importance of Pratt’s vibrating knife
invention. Though claiming to be the first inventor, Seagrave’s push-off
fork assembly was easily avoided by others—Seagrave gave up the
opportunity to pursue what turned out to be an important invention that
could not be replicated without infringing.
51
It appears that Seagrave
represented himself for at least a part of the interference, while Pratt,
Sargent, and Foster had counsel.
After settlement of the interference, E. L. Pratt’s patent of October 4,
1853 was the thirteenth patent granted for an apple parer. The U.S.
granted its fourteenth patent for an apple parer to John D. Seagrave on
April 18, 1854, fig. 5.
52
Seagrave made no mention of a loose knife in
the 1854 patent, either in the description, illustrations, or in the claims.
use of examiner’s amendments at the USPTO, 50 RSCH POL'Y (2021).
50
. Compare former 35 U.S.C. § 102(g)(1) (abrogated in 2011) (requiring an interference when
the invention -which is the claim - is the same) with § 8 of the Patent Act of 1836, Ch. 357, 5 Stat. 117
(July 4, 1836) (requiring adjudication when an application would “interfere” with another patent or
application).
51
. Cf. Elizabeth Webster & Paul H. Jensen, Do Patents Matter for Commercialization?, 54 J. L.
& ECON. 431, 433 (May 2011) (finding that inability to get a patent after applying inhibits
commercialization).
52
. Machine for Paring Apples, U.S. Patent No. 10,785 (issued Apr. 18, 1854).
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Figure 5. Seagrave patent drawing that matches parer in figure 4, Patent
Application, National Archives College Park, Cartographic Branch, 241-
PATENTUT-10785.
2. The Ensuing Litigation
After Seagrave’s 1854 patent issued, the parties could not come to an
agreement based upon their first contract, presumably because Seagrave
was unhappy with his agreement to withdraw his claim, and Sargent
refused to grant a license. Indeed, Sargent & Foster even sued Seagrave
in April of 1854 and then quickly dismissed the case. The court stated that
the plaintiffs discovered their error—presumably the existence of a
contract—but it was more likely that Seagrave threatened to sue them for
fraud or breach of contract. So, a second written agreement was
formulated and dated May 26, 1854 that was slightly fairer to Seagrave.
In the second contract, Seagrave agreed not to “make any apple paring
machines.” In exchange, Sargent & Foster agreed to pay $117 for castings
already made by Seagrave. Seagrave was entitled to sell machines that
were already assembled, numbering 1,500 in Worcester and 500 to 700 in
other places at prices equivalent to Sargent & Foster. All machines were
to be sold within eight months or not at all. Sargent & Foster retained the
right to extend this deal another eight months during which Seagrave
would be allowed to build and sell his machines.
53
Seagrave signed the
second contract and received due compensation. Despite its importance,
Sargent lost his copy of the agreement and had to request a court order for
53
. Answer, Sargent v Larned, 21 F. 501 (C.C.D. Mass. 1855).
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Seagrave to produce a copy.
Furthermore, due to technological limitations at the time, printed
patents were not created and copied immediately. Indeed, issued patents
were not regularly printed until 1867, and the printed patents seen before
this time, including Pratt’s, were likely later transcriptions of the original
handwritten patents held by patentees and copied in the Patent Office
binders.
54
The patent in evidence in Sargent v. Larned was a handwritten
copy, including the drawings, fig. 6.
55
Most of the patents in all these
cases were referred to by name and date, rather than by patent number,
which was presumably assigned later when the patent was bound in the
Patent Office volumes.
Figure 6. Drawing from Pratt’s Patent from Litigation Files.
But Seagrave read “any” to mean only apple paring machines that
infringed Pratt’s patent. This was not an unreasonable reading; the court
noted that Sargent collected only the infringing parts as part of the written
agreement and left Seagrave with parts for other apple parers. Thus,
Seagrave continued to make parers using his April 18, 1854 patent but did
not leave the knife loosely connected to the rod as set forth in the Pratt
patent. Seagrave instead modified the paring arm, leaving it loose where
it met the main machine. Seagrave argued he was using an improved
paring arm design that was unique and did not infringe upon Pratt’s
54
. Nathan Reingold, U. S. Patent Office Records as Sources for the History of Invention and
Technological Property, 1 TECH. AND CULTURE 156, 163–64 (1960).
55
. Pratt’s Apple Parer Patent (Pre-Print Version) (Oct. 1853).
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patent, thereby complying with the May 26, 1854 covenant. Perhaps
Seagrave truly believed that a “loose arm” was different than a “loose
knife.” This improvement would later appear on another apple parer
patent granted to Seagrave.
56
However, Seagrave only described the rod’s
turning motion, rather than claiming a loose rod as a patentable invention.
Nonetheless, Sargent & Foster moved for a temporary (now called
preliminary) injunction.
57
The motion was two and a half handwritten
pages—almost comically short by today’s standards. Also short was the
testimony, with a deposition transcript taking up maybe five or six
handwritten pages instead of the more than 200 transcribed pages per day
in today’s depositions. Though it was short, the final submission was not
that short. The parties submitted entire transcripts, despite being several
pages, in evidence. Thus, the short motion was supported by much longer
testimony than would be expected today when parties cut and paste a
single question and answer or photocopy select pages of a printed
transcript. Other litigation in the nineteenth century followed these norms,
but the complex aspects of patent cases, including testimony from expert
witnesses and prior art references, meant that litigants and courts were
particularly hamstrung by the available litigation technology.
The first question was whether Larned and Seagrave could challenge
the validity of the patent at all because of their agreement with Sargent.
The court—still Justice Curtis—noted that “equity will not allow
Seagrave to violate his covenant and defend himself by attacking the
validity of the patent.” Though this holding is but a side point to the story
here, it was an important one, implicitly affirmed in a Supreme Court
opinion authored by Justice Curtis a few months later.
58
In this sense, the
district court was a testing ground for legal rules; Sargent v. Larned was
not even cited in the Supreme Court opinion. More than one hundred
years later—much too late for Seagrave—the Supreme Court finally ruled
that licensees are not estopped from challenging the validity of licensed
patents.
59
After disposing of the validity challenge, the court turned to
infringement. Justice Curtis considered Seagrave’s argument by
comparing Pratt’s patented improvement with Seagraves new design, fig.
7.
The improvement patented consists in so attaching the knife block to the
rod which moves it, as to allow it to rotate around the rod at right angles
therewith, and thus the knife accommodates itself to any irregularity in the
56
. Machine for Paring Apples, U.S. Patent No. 15,148 (issued Jun. 17, 1856).
57
. Motion for Temporary Injunction, Sargent v. Larned (1856).
58
. Kinsman v. Parkhurst, 59 U.S. (18 How.) 289 (1855).
59
. Lear, Inc. v. Adkins, 395 U.S. 653 (1969).
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surface of the vegetable to be pared. The defendants, instead of making
the knife thus movable on the rod, have made the rod movable in its socket.
The knife block has the same motion; but in one it is around the rod, in the
other, it is with the rod.
60
Justice Curtis concluded that Seagrave’s change in mechanical
structure was merely a change in form and did not introduce “a new mode
of operation, within the meaning of the patent law.” Thus, the Court held
that it was an infringement of Pratt’s patent—citing Winans v. Denmead
for support.
61
Justice Curtis also authored the opinion in Winans v.
Denmead, which held that an octagonal-shaped railroad car was close
enough to a circular-shaped car to infringe.
62
Winans is considered by
many to be important in the evolution of the doctrine of equivalents.
63
To
this day, the doctrine of equivalents can be used to find infringement of a
patent even when the accused product is not an exact copy. The Winans
case introduced the test in this way: “In our judgment, . . . [the accused
railroad car] must be so near to a true circle as substantially to embody
the patentee's mode of operation, and thereby attain the same kind of
result as was reached by his invention.”
64
The decision was five-four, with
Taney in the dissent. And though it was a close case, the doctrine of
equivalents continues as a viable infringement theory today. The current
standard echoes Winans, asking whether a similar but not identical
element performs the same function, in the same way, with the same
result.
65
60
. Sargent v. Larned, 21 F. 501, 504 (C.C.D. Mass. 1855) (emphasis added).
61
. Winans v. Denmead, 56 U.S. 330 (1854).
62
. Id.
63
. Morriss & Nard, supra note 32 at 165 (Winans was first case to recognize non-literal
infringement).
64
. Winans, 56 U.S. at 344.
65
. Graver Mfg. Co. v. Linde Co., 339 U.S. 605, 608 (1950).
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Figure 7. Top, Sargent & Foster’s paring arm is hinged, but with a paring
head that can rotate 90 degrees about the paring arm rod. Bottom, Larned
& Seagrave design in which the paring head has very little play, but the
rod is in a socket to allow the paring arm to rotate (note that this example
has a Sargent & Foster label – discussed below).
It surely did not hurt that Sargent & Foster were represented by Justice
Curtis’s brother, George Ticknor Curtis. Surprisingly, however, the basis
for the decision did not yet appear in the Curtis on Patents treatise.
66
While the 1854 second edition of the treatise had a section on
infringement by equivalents, which cited several lower court decisions,
the 1853 Winans decision, in which the Supreme Court put the issue to
bed, was missing from it. In the temporary injunction motion filed with
the court, George Curtis instead cited the O’Reilly v. Morse case for the
proposition that an infringing product need not exactly match the patent
claim.
67
The curious non-citation of Winans is addressed further below.
Justice Curtis ruled that Seagrave was bound by the second covenant,
and selling the revised parer was therefore an infringement. The court
66
. CURTIS, supra note 29.
67
. Motion for Temporary Injunction, Sargent v Larned, supra note 57; O’Reilly v. Morse, 56
U.S. 62 (1853).
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enjoined sales and awarded Sargent & Foster an accounting of Seagraves’
profits. Pitt A. Larned (1811-1897) is named as the first defendant in this
case. The judge noted that Larned was merely a workman for Seagrave
and should not be affected by the judgment. Perhaps Larned was named
in the case because his name appears first on paper labels made for their
parers. He was related to John D. Seagrave by marriage; Seagrave was
married to Pitt Larned’s half-sister Sarah Burnap Larned (1814-1865).
Thus, the plaintiffs may have reasoned they were business partners. In
October of 1855, Larned and Seagrave settled the case with Pratt. They
agreed to a permanent injunction and a return of $500 in profits.
68
A quick return parer similar to Pratt’s patent, but with a different gear
arrangement, is well known to collectors, as shown in fig. 4, above. Some
examples of this parer bear Sargent & Foster’s paper labels, as noted in
fig. 7, while others have Larned & Seagrave paper labels. In fact, one
known example has one company’s label pasted over another company’s
label.
69
Don Thornton noted in his book Apple Parers that the relationship
between the two manufacturers was unknown at the time his book was
published.
70
The label issue has thus always been a mystery to apple parer
enthusiasts. Antique collectors have long thought that the parer shown in
fig. 4 was manufactured by both Sargent & Foster and Larned &
Seagrave.
The litigation reviewed here, however, explains the enthusiasts’
confusion and solves the unknown source of different labels. This first
court decision provides evidence that parers of this design were most
likely manufactured by Larned & Seagrave, but some were eventually
labeled and sold by Sargent & Foster through their parts purchase of May
26, 1854 and any settlement after the injunction.
B. The Second Case: Sargent et al. v. Seagrave, 1855
The first case was not the end of the dispute, though. John’s brother,
Joseph Day Seagrave (1824-1898), started making the Larned & Seagrave
parer after the above judgment. In a new case in Rhode Island, with
Justice Curtis riding circuit, Sargent & Foster asked the court for a
preliminary injunction to stop Joseph from making and selling the
improved parer because it infringed on Pratt’s patent in the previous court
decision.
71
While this seems like an obvious end-run around the court’s earlier
68
. Final Decree, Sargent v Larned (Oct. 1855).
69
. THORNTON, supra note 18 at 104.
70
. Id.
71
. Sargent v. Seagrave, 21 F. 505 (C.C.D.R.I. 1855).
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ruling, it was a shrewd legal strategy by the Seagrave brothers. While
John Seagrave was estopped from challenging the validity of the patent
due to the license, Joseph was not bound by such a limitation. As such, he
provided the court with several prior unpatented apple parers that he
claimed practiced the same improvement patented by Pratt. This strategy
worked in part; while Justice Curtis expressed doubt that any of the prior
parers would invalidate Pratt’s invention, he left the question for trial to
answer.
There is no discussion in either opinion about whether the Pratt patent
constituted an “invention”—what we would call obviousness today. For
modern day patent law, obviousness is a critically important patent
doctrine. It invalidates any patent that a skilled artisan would have
invented given the state of the art at the time, even if the exact invention
had not been known before. The point of the rule is to keep inventors from
patenting minor improvements to existing technology, only to block
others from using minor achievements and crowd industries with low
value patents. This judge-made doctrine was called “invention” for about
a century but was codified and renamed obviousness in the 1952 Patent
Act.
72
But obviousness/invention was in its infancy at the time of Sargent v.
Seagrave,
73
and perhaps Justice Curtis did not have it front of mind. Then
again, he may have had a desire for full trial testimony before allowing
Seagrave to make validity arguments in an attempt to invalidate the Pratt
patent. Obviousness was indeed an issue, though. During the Pratt patent
prosecution, the Patent Office was concerned that, “The only doubt about
the propriety of granting a patent grows out of the obviousness of the
contrivance….After due reflection and some consultation with others I
am disposed to think there sufficient ingenuity manifested to entitle the
applicant to a patent….”
74
In fact, the Patent Office did not allow a second
claim, which it considered to lack invention—or to be obvious—in
obviousness light of the prior art.
In a full-blown litigation with appeal, however, the “invention” of
Pratt’s asserted claim might have been challenged. Pratt’s accidental
invention illustrates an interesting gloss on obviousness. While nineteenth
century cases generally spoke of “invention,” accidental invention was
frowned upon at least as early as 1941, when the Supreme Court required
a “flash of creative genius.”
75
However, the 1952 Patent Act reversed this
line of cases, stating explicitly that the manner of invention shall not
72
. 35 U.S.C. § 103.
73
. Hotchkiss v. Greenwood, 52 U.S. 248 (1851).
74
. Decision of Commissioner in Case of E.L. Pratt Assigned to Sargent & Foster, supra note 23.
75
. Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941).
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render an invention obvious.
76
But Seagrave’s gambit to challenge the validity of the patent only
worked so well, because the judge ordered a preliminary injunction
pending trial anyway:
He voluntarily assumed the position of infringing an existing patent, in the
validity of which, his brother had so far acquiesced as to be enjoined….
This does not prevent him from contesting its validity. But it does prevent
him from alleging that any particular hardship attends his case, … that he
must refrain from further infringing, until he has proved the invalidity of
the patent on a trial at law.
77
Apparently, the preliminary injunction was enough to dissuade
Seagrave.
78
The matter proceeded to trial, and after a jury was empaneled,
Seagrave withdrew his answer and defaulted.
79
The Court ordered a
permanent injunction and referred the matter to a special master to
determine damages. The archives do not contain the results of the special
master’s hearing (if there was one prior to a settlement). Given that
Seagrave chose to default rather than try the case, there were likely low
damages. Due to the injunction, Seagrave had probably not sold many
parers upon (re)entering the market.
C. The Third Case: Sargent, et al. v. Carter, 1857
A third case involving Sargent & Foster’s Automatic Patent Apple
Parer was brought against Charles P. Carter. Sargent & Foster applied for
a preliminary injunction to stop Carter from making and selling parers
that contained the loose knife improvement protected by Pratt’s October
4, 1853 patent. This case was filed in Massachusetts, once again before
Justice Curtis.
Carter admitted to making a considerable number of parers bearing the
mark P under contract with a wholesale dealer to make and sell the same
model in large numbers. Justice Curtis noted that Carter’s parers are
indistinguishable (with respect to the patented improvement) from the
parers found to be an infringement of the October 4, 1853 patent in the
previous two cases.
In his defense, Carter claimed that he was in fact the original inventor
of Pratt’s improvement used in Sargent & Foster’s Automatic Patent
Apple Parer. Carter claimed that his apple parer patent of October 16,
1849 accidentally failed to mention the loose knife improvement.
76
. 35 U.S.C. § 103(a).
77
. Sargent v. Seagrave, 21 F. 505 (C.C.D.R.I. 1855).
78
. Lubar, supra note 31 at 958 (of 1850s patent litigation: “A hearing before a judge, followed
by an injunction, became the general rule in patent cases.”).
79
. Final Decree, Sargent v. Seagrave (Jun. 1856).
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This was not the only time Carter claimed to have been an earlier
inventor. For example, he claimed to invent the phonograph before
Thomas Edison, alleging that he had simply failed to patent it. Carter also
claimed to have invented the very first apple parer and to obtain the first
patent on one, both of which were demonstrably false.
80
Like many cases,
this is an example where evidence presented to the court varied
significantly from statements made to the public. The laws of evidence
are the great equalizer.
Carter sought and obtained a reissue of his 1849 patent, which was
granted on August 12, 1856, fig. 8. The reissue corrected the supposed
oversight of claiming a loose knife. Carter claimed as his invention:
“Giving to the knife a slight play around its axis independent of the
mechanism which actuates it, for the purpose herein set forth.”
81
The
supposed purpose set forth was to allow the knife to accommodate itself
to uneven surfaces of the apple. Carter believed this language to be
equivalent to Pratt’s loose-knife improvement.
Figure 8. Left, fig. 2 from Carter’s 1849 Patent Application (reissued
1856), National Archives College Park, Cartographic Branch, 241-
PATENTUT-6789. Right, only known example of Carter’s 1849/1856
patented parer, photo by Jared Silbersher.
82
To rebut Carter’s claim that the oversight was a mistake, Sargent &
Foster used the testimony of Carter’s own patent solicitor. This litigation
took place before the attorney-client privilege applied to patent lawyers,
80
. Cutting Apples & Paring/Apple Parer, U.S. Patent No. X425 (issued Feb. 14, 1803); Sudden
Death of Charles P. Carter, 39 KINGSTON DAILY FREEMAN 254 (Aug. 1910),
https://news.hrvh.org/veridian/?a=d&d=kingstondaily19100813&e=-------en-20--1--txt-txIN-------.
81
. Improvement in Apple-Parers, U.S. Patent No. RE385 (issued Aug. 12, 1856).
82
. Note, the only known example is missing some parts, including the paring head—the
infringing part!
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and Carter’s solicitor, Robert Henry Eddy (1812-1887), testified via
deposition in the Larned case, but that same testimony was used in the
Carter case, where validity was more of an issue, fig. 9.
83
Eddy was not
new to litigation; he had testified in another case where he helped obtain
the patent for using ether as a surgical anesthetic.
84
Figure 9. An example of patent solicitor testimony that would be barred
today.
Eddy testified that Carter never told him about a construction that
would have allowed for the loose knife. If Carter had, then Eddy would
have put it in the original Carter patent specification. In other words, there
was no mistake. Carter apparently used a different patent solicitor to
obtain his reissue patent.
85
More importantly, Carter’s patent solicitor Eddy was also Pratt’s patent
agent on the patent in suit. At the time, most patent practitioners were not
lawyers but unregulated patent agents.
86
By today’s standards, this would
likely have been a conflict of interest—to prosecute competing patents on
very similar technology at the same time. Eddy testified that the invention
of Pratt’s patent was the vibrating knife and he was unaware of seeing or
hearing about that invention anywhere else, presumably including from
Carter. This was surely devastating testimony to Carter’s claim of prior
invention.
While dual representation is problematic today, the testimony is not so
foreign to today’s mores. Until very recently, the “conduit” theory was
the primary theory of patent lawyer-client privilege.
87
So long as the
information sought was technical information about the invention, from
83
. Deposition of Robert H. Eddy, Sargent v Larned (Printed Version) (May 1855).
84
. RICHARD J. WOLFE, TARNISHED IDOL: WILLIAM THOMAS GREEN MORTON AND THE
INTRODUCTION OF SURGICAL ANESTHESIA-A CHRONICLE OF THE ETHER CONTROVERSY (Norman
Publishing 2001).
85
. Carter’s Reissue Patent was the only patent file that we could not retrieve from the National
Archives.
86
. Kara W. Swanson, The Emergence of the Professional Patent Practitioner, 50 TECH. AND
CULTURE 519, 530 (2009).
87
. See, e.g., In re Queen's Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016) (recognizing patent
agent privilege for the first time).
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the client, intended to be conveyed to the patent examiner, with the patent
lawyer as a conduit between the two, then it was not privileged.
88
Eddy’s
testimony fell within the conduit exception and was not only allowed in
the 1850s but would have been allowed in the 1980s.
The defendant, Carter, produced an affidavit from two experts who
testified that Carter’s invention was substantially the same as Pratt’s. He
also produced several affidavits from witnesses who claimed that they had
seen a similar invention. These affidavits were by and large ignored, as
they often were. Affidavits are still ignored because of a principle set forth
in a much later Supreme Court case:
[A]lmost every important patent, from the cotton gin of Whitney to the one
under consideration, has been attacked by the testimony of witnesses who
imagined they had made similar discoveries long before the patentee had
claimed to have invented his device, [which] has tended to throw a certain
amount of discredit upon all that class of evidence, and to demand that it
be subjected to the closest scrutiny.
89
Figure 10. Affidavit of farmer Samuel Morse…No Relation to the
Samuel Morse.
The complainants, Sargent & Foster, submitted an affidavit from an
expert who detailed experiments with Carter’s parer and found that the
knife could not move independently of the mechanism that actuated it
once the machine was in motion. In other words, although Carter’s patent
described the ability to move the knife arm to accommodate different
apple shapes, once paring, the knife blade locked into place and could not
vibrate back and forth, thus operating differently than Pratt’s invention.
The expert testimony of a rigid knife was consistent with Carter’s own
initial advertisements, which stated that the knife was held steady.
90
The defense offered two additional improvements, which were made
by Carter, that they argued were equivalent to Pratt’s patent but predated
it—a flexible arm carrying the knife block that could undergo torsion, and
a socket/pin mechanism for securing the rod carrying the knife block.
Both modifications, the defense claimed, allowed the knife to oscillate to
88
. See, e.g., Jack Winter v. Koratron Co., 54 F.R.D. 44, 47 (N.D. Cal. 1971).
89
. Washburn & Moen Mfg. Co. v. Beat ‘Em All Barbed-Wire Co., 143 U.S. 275, 284-285 (1892).
90
. Carter’s Apple Parer, 7 SCI. AM. 242 (1852), http://www.jstor.org/stable/24934606.
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accommodate itself to irregularities in the surface of the fruit. Justice
Curtis noted that the flexible arm was not described in the patent
application. Furthermore, Carter was not currently using the design on his
parers. Justice Curtis also noted that the socket/pin system was not
described in the patent application. And an affidavit from the
complainants stated that their expert demonstrated experimentally that the
socket/pin system did not oscillate once the machine was in motion.
Justice Curtis denied, at least until trial, the defendant’s claim that he
was the original inventor of the loose knife improvement.
91
This ruling
demonstrates two important features of patent law. First, claims added
later (here in the reissue) must be supported by the written description of
the invention at the time of first filing. This is still an important rule today,
although this case is never cited for that proposition. Second, even if a
patent does not describe an improvement, a defendant may still argue
prior invention by demonstrating evidence that such an invention was
made.
92
Here, the Court deferred to a jury trial the question of whether
any of Carter’s prior models practiced the Pratt invention before Pratt did,
even if Carter failed to describe them in his patent application.
In September 1856, Curtis issued a preliminary injunction preventing
Carter from making or selling parers that were found to infringe upon
Sargent & Foster’s patent, though the case was not reported until May
1857 along with the denial of Carter’s claim to first inventorship.
93
As
with the Seagraves, the preliminary injunction was enough to halt the
infringing activity. The parties agreed to make the injunction permanent
in 1857, and the court assessed costs of about $100, most of which
appeared to be from obtaining copies of the record from prior cases.
94
Unlike Larned & Seagrave, the damages were low, only $5. This was a
highly competitive and fast-moving area. As the next section discusses,
this invention was not the first time these inventors would tussle for
priority.
D. Other Cases
The first three cases were the only reported decisions, but they were
not the only cases brought to enforce Pratt’s loose knife patent. Sargent
& Foster also sued David Henshaw Whittemore (1832-1892), who later
invented a lathe-style parer, on the same day they sued Carter.
95
It may
91
. Sargent v. Carter, 21 F. 495 (C.C.D. Mass. 1857).
92
. The America Invents Act patent reform of 2012 changes the rules a bit, but the general
proposition still stands that prior art need not be present in a patent only.
93
. Decree of Temporary Injunction, Sargent v. Carter (Sep. 1856); Sargent v. Carter, 21 F. 495.
94
. Bill of Costs, Sargent v. Carter (Sep. 1857); Final Decree, Sargent v. Carter (1857).
95
. Bill of Complaint Against Charles P. Carter, Sargent v Carter (Jul. 1856); Bill of Complaint
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be an accident of history or deliberate strategy, but the concurrent lawsuits
filed by Sargent & Foster against Carter and Whittemore in the vibrating-
knife cases were filed on the same day that depositions were taken on
behalf of Pratt—July 11, 1856—in a separate three-way interference on
the later lathe-parer invention, which all three claimed to have invented.
Perhaps knowing that each party would be in the room, George Curtis
decided on the expedient solution for service of process. Or perhaps this
was strategic behavior designed to maximize settlement leverage.
The court granted a preliminary injunction in September 1856, the
same day as Carter.
96
However, due to the informal nature of case
reporting at the time, only the Carter injunction was reported. The
Whittemore case settled about a year later (in September 1857, on or
around the same day as Carter) for $5 and a permanent injunction.
97
The
low dollar amount implies that Whittemore had also sold very few units,
though the case files do not reveal information either way. The timing of
the motions and settlement imply that Whittemore tied his defense to
Carter’s, and when Carter failed, Whittemore settled as well.
Carter and Whittemore were further tied together in refusal to pay after
settlement. Sargent & Foster had U.S. Marshals seize more than 10,000
pounds of apple paring machines and casted and wood parts from each of
the defendants on the same day, January 27, 1858.
98
This method of
obtaining property to satisfy a judgment is still in use today, and it is still
carried out by the U.S. Marshal Service in federal cases.
Carter and Whittemore were not the only defendants sued on that same
day. Sargent & Foster also sued Ephraim Brown (1820-1900) on that day
in July of 1856. Brown settled for $50 and a permanent injunction about
three months after the suit began but only about two weeks after receiving
the affidavits filed by Carter in his case. Brown settled before Justice
Curtis issued the preliminary injunction. It appears that both Whittemore
and Brown relied on Carter to make the invalidity defense (though
Whittemore also included some affidavits), and when that failed, they
settled.
The complaints against Brown, Carter, and Whittemore all reference
another settlement with James L. Haven (1825-1901) and Benjamin F.
Paddock (1837-1908) in Ohio for $200 and an agreement to cease using
the patent. The parer at issue was likely one invented by John David
Browne (1807-1891), as those were the parers offered by J. L. Haven &
Against D.H. Whittemore, Sargent v Whittemore (Jul. 1856).
96
. Decree of Temporary Injunction, Sargent v Whittemore (Sep. 1856).
97
. Agreement for Judgment, Sargent v Whittemore (Sep. 1857); Final Decree and Permanent
Injunction, Sargent v Whittemore (Sep. 1857).
98
. Writ of Execution, Sargent v Carter (Jan. 1858); Writ of Execution, Sargent v Whittemore
(Jan. 1858).
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Co. during that time period.
99
Browne received two patents in 1856.
100
This settlement may account for the rarity of the Browne parers today.
While these cases were nowhere near the “litigation explosion” of the
time,
101
they were an example of a manufacturer aggressively filing suit
against infringers, which is reminiscent of patent litigation campaigns
today. Sargent & Foster sued at least five infringers and must have
expected to sue more because they went to the trouble of printing a “form”
complaint, in which they could handwrite the names of the defendants and
the infringing devices, fig. 11. In the days before computerized word
processing, this was a big step from the usual handwritten complaint.
102
Figure 11. Portions of a Form Complaint Against Charles Carter.
III. LESSONS FOR THE DEVELOPMENT OF LAW AND PRACTICE
We can learn several lessons from these initial apple parer cases that
exemplified the growing sophistication of legal analysis at the time. They
provide previously unexplored visibility into legal practice. The cases
highlight information dissemination problems associated with limited
communication and travel means. They show how the early stages of
patent law developed. Finally, they illuminate patent practices that
previously puzzled others.
A. Visibility into Legal Practice
These cases illustrate some of the vagaries of nineteenth century
litigation practice, which are usually glossed over in historic analyses. For
example, the use of form complaints appears to have been a cutting-edge
99
. THORNTON, supra note 18.
100
. Machine for Paring Apples, U.S. Patent No. 14,800 Reissued Aug. 21, 1866, No. 2,339 (issued
May 6, 1856); Apple Parer, U.S. Patent No. 15,689 (issued Sep. 9, 1856).
101
. Christopher Beauchamp, The First Patent Litigation Explosion, 125 YALE L.J. 848 (2016).
102
. We are unaware of any literature detailing a shift to form complaints in the nineteenth century.
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technique, juxtaposed with rudimentary, filled-in, handwritten blanks.
The short length of deposition testimony is also very different from
today’s epic-length transcribed affairs. Although here, too, George
Ticknor Curtis appeared to have been technologically advanced, having
the testimony printed for a future case. There is no mention of the
evidentiary rules getting such testimony admitted, as such testimony
would have been hearsay in a later case, even back in the 1850s.
103
This led to extremely short motion papers. Today, courts will limit
parties to 10, 15, or 25 typewritten pages, depending on the motion.
104
Two-or-three-page handwritten motions would have been necessarily
focused. But were they complete? As discussed below, the short motion
in this case failed to cite the most important available precedent. While
some people today likely lament the length of court filings, there is
probably a middle ground between bloated, irrelevant filings and too-
short filings that ask the court to read all the testimony in whole to
determine a winner.
Also of interest is the clear conflict associated with having a lawyer
argue a case before his brother. While such a conflict might be waived,
there is no record of even an objection. This appears to have been
commonplace: George Curtis was co-counsel for Dred Scott while his
brother heard the case and ruled in Scott’s favor. It is difficult to imagine
a lawyer today in high stakes litigation leaving such a conflict untouched.
The further conflict of having the same patent agent pursuing patents on
(literally) competing patents is something that happens today, but such a
tactic would be recognized and weaponized by one of the parties.
105
105
B. Information Dissemination
Perhaps the biggest mystery of litigation practice is George Curtis’s
failure to cite Winans v. Denmead (the leading equivalents case) to his
brother, the author of Winans. There are a few potential explanations.
Perhaps G. Curtis did not know about the case because it was new. It was
not cited in the latest version of his treatise. However, reliance on
O’Reilly, a case from the same year as Winans—a more directly
applicable case—implies that the case reporting system (in which court
observers—not the courts—published opinions)
106
sometimes hindered
103
. 3 BOUVIER, supra note 11, at 359 (hearsay exception only applies to testimony of unavailable
witnesses).
104
. See, e.g., L.R., D. Mass. 7.1.4(b)(4) (describing the default page limit in the District of
Massachusetts as 20 pages).
105
. General Elec. Co. v. Valeron Corp., 608 F.2d 265, 268 (1979) (affirming lawyer
disqualification where lawyer drafted patents for opposing party).
106
. Young, supra note 12.
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the spread of information regarding new court decisions.
107
Volume 15
of Howard’s Supreme Court Reports was not published until sometime in
1854. Delay in publication was likely not an explanation, though, given
that O’Reilly was decided after Winans and was reported in the same
volume. Thus, it is hard to believe that George Curtis knew about O’Reilly
but not Winans. It is also possible that Curtis was just not that good and
missed the clear import of Winans. This too is unlikely, but if true, it
speaks volumes about the quality of nineteenth century lawyering that we
hold in high esteem. The most likely explanation is that George Curtis
learned of the case because both he and his judicial brother represented
Samuel Morse. In fact, Benjamin Curtis recused himself from the
O’Reilly v. Morse case. This explanation implies that information about
other people’s cases travelled much more slowly than information about
one’s own cases, even if one is writing a treatise on the subject. This is
undoubtedly true today, though the delay today is typically minutes or
hours rather than months.
That may be the primary takeaway, whatever the reason: information,
even as important as Supreme Court opinions, flowed much more slowly
and intermittently in the mid-1800s.
108
This phenomenon is certainly
present in other aspects of these cases. There is no published record of
Sargent & Foster suing Whittemore, even though they did so on the same
day they sued Carter, and even though Whittemore was subject to the
same injunction that applied to Carter. This information was only
available by a name search in the National Archives.
Furthermore, even though Sargent v. Larned decided an important
issue of licensee estoppel, Justice Curtis did not refer to the case in a later
Supreme Court opinion on the same topic. It may be that the injunction
ruling had not been reported in citable form yet. As noted, Sargent v.
Carter was not reported until long after the issue ordered. Even so, if the
point of justices riding circuit was to get them familiar with local law, this
was the perfect opportunity to do so.
Despite slowness of the law, it appears that information about who to
sue traveled well enough, as Sargent & Foster had no trouble finding
defendants.
109
Advertisements, fairs, and word of mouth appear to have
provided sufficient information about competing parers on the market.
107
. Sargent v. Larned was the second case to cite Winans. The first was a case decided in
September of 1854. See Am. Pin Co. v. Oakville Co., 1 F. Cas. 712, 713 (C.C.D. Conn. 1854).
108
. CARL BRENT SWISHER, THE TANEY PERIOD, 1836-64 503 (Macmillan Publishing 1974)
(discussing contemporary complaints about how slowly the O’Reilly v. Morse decision was released to
the public).
109
. Beauchamp, supra note 101 (describing plaintiffs who sued hundreds of defendants around
the country).
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C. Development of Law
The primary patent infringement theory discussed herein, the doctrine
of equivalents, was still evolving at the time and it influenced judgments
in all three cases. According to the doctrine of equivalents, the inventive
scope being patented by Pratt was not just the specifically claimed
elements but also insignificant differences from those elements made to
achieve the same purpose and operation. Thus, a parer with a slight
change in form, such as Seagrave’s, or even a completely different design,
like Carter’s, could be found to infringe on Pratt’s patented invention so
long as there was a mechanism to allow the knife arm to loosely rotate.
Here, despite the failure of counsel to point it out, the law developed
exactly as one would expect. The court applied the recent Winans case to
this new fact pattern.
There were other important legal questions answered, without the
benefit of precedent. The doctrine of licensee estoppel applied to bar John
Seagrave from challenging the validity of the Pratt patent even though the
Supreme Court had yet to rule on that question. The public’s
“acquiescence” in the Pratt invention allowed the court to find little injury
in granting preliminary injunctions.
At a time when reissue patents were considered a growing problem,
110
Carter’s written description limited the new claims he attempted to add
after seeing Pratt’s solution.
The doctrine of obviousness was fledgling and appeared to sway the
court in allowing the matter to go to a jury without explicit mention of it.
The Patent Office, on the other hand, expressly considered obviousness
in granting Pratt’s patent. Finally, Carter was allowed to submit evidence
of prior inventions, even though they were not patented.
Other than licensee estoppel, each of these doctrines is still used in
some form today. Although one wonders whether a modern court (not
being argued by the judge’s brother) would have resolved the factual
issues of each case the same way.
D. Patent Office Practice
Some takeaways from the cases have to do with how the patent system
operated. Patent interference practice, though robust, appears to have
been much less rigorous than we would expect by today’s standards.
Rather than identifying specific overlapping claims, the Patent Office
appeared content with general subject matter conflict. This allowed for
settlements through waiver of subject matter without requiring any kind
110
. Kendall J. Dood, Pursuing the Essence of Inventions: Reissuing Patents in the 19th Century,
32 TECH. AND CULTURE 999 (1991) (discussing broadening reissues generally).
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of claim amendments. The interference resulting in Pratt’s patent
reflected the peculiar claiming methods of the time and allowed Seagrave
to yield without amending his patent.
One eccentricity of nineteenth century technology, which was not
reported in the patent administration literature but revealed in both Pratt’s
and Seagrave’s patent files, is that the entire patent specification would
be returned to the applicant to strike out or otherwise amend the
application. At the end of the process, a series of edits to the same
document constituted the final patent.
111
This process seems reasonably
efficient, given that there were only 12 patent examiners in the entire
office at that time.
112
Abandonment in those days was much simpler—
simply fail to return the patent specification. There is likely little historical
record of such failed patents, especially because the original application
would be missing.
113
This is contrary to other suppositions that such
abandoned files are missing simply because they were destroyed in the
1930s.
114
However, this does explain a mystery, namely the “interlined”
patent of Oliver Evans.
115
IV. CONCLUSION
These few cases, picked from a sea of litigation, reveal so much about
how lawyers, judges, courts, and agencies worked in the 1800s. To be
sure, none of this detail was available on the face of the opinions; it took
digging in the National Archives to reveal the underlying detail. However,
there is more to be learned from other cases, should scholars choose to
look for these details.
This Article has uncovered things unknown before, especially about
patent office practice. The practice of sending patent applications back to
the applicant for editing is not something discussed in other articles.
Similarly, the loose interference practice is not widely discussed, but even
the court proceedings provided more than was available in just the
reported court opinion.
This Article also solved some mysteries on the business side. Apple
parer enthusiasts had long wondered why identical parers bore differing
111
. We have not seen this particular method of patent examination reported in the literature, so
we point it out here. It does explain the mystery of Oliver Evans’ s “interlined” patent, challenged in at
least one court case. Evans v. Chambers, 8 F.Cas. 837, 837 (1807). Interlineation is not defined in the
case, but we assume that it refers to the process of adding text to the original patent application to form
the final patent document, as described in this case.
112
. HARRY KURSH, INSIDE THE U.S. PATENT OFFICE 31 (1959).
113
. Reingold, supra note 54, at 160 (noting that even some granted applications were returned to
inventors).
114
. Id. at 164.
115
. Evans, 8 F.Cas. 837.
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labels or why some parers had one label on top of another. The detailed
accounts of parts purchases, injunctions, and judgment executions explain
how this could have happened. The business-type studies are more
common,
116
but there were many more skirmishes than have been
recorded to date. This Article adds one more story to the literature.
Most importantly, this Article has paved a way forward for others. The
National Archives are not useful only for obtaining specific documents.
The collection—and the inferences made from it—tells a story not only
of the parties to a specific case but to the very process itself. We learn not
just what lawyers and judges did but how they did it.
116
. See, e.g., CHRISTOPHER BEAUCHAMP, INVENTED BY LAW (Harvard University Press 2015)
(describing Bell’s business and litigations in detail).
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