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A DEPLORABLE MADNESS
By Robert Swartz
Robert Swartz is an attorney and gun collector. He became interested in the Rollin White Patent story and has spent countless hours poring over legal documents, court transcripts, depositions and other documents to bring the full story of the proceedings that hobbled an industry for many years
The agreement in place, Smith & Wesson (their partnership was soon formalized) went about improving their cartridge and designing a revolver. They could not make commercial use of White’s patent before Colt’s patent expired and, in any event, it would be some time before their work advanced to the stage at which they could manufacture and market in earnest. White continued running his dry goods store, but by 1858 he had closed the doors of Rollin White & Co. for the last time. The business undoubtedly suffered in the aftermath of the financial Panic of 1857 that was set off by the Supreme Court’s decision in the infamous slavery case of Dred Scott.1 Unlikely as it may seem, that case will play a significant role in this story.
Smith & Wesson .22 caliber Model 1 may have been a small gun, but it was soon big business. The partners had trouble keeping up with demand and other gun makers began marketing competing models. With no shop to tie him down, White went hunting for infringers and he found them. One writer catalogued 19 models that were direct infringements and 10 that were attempts at circumvention, almost all from different gun makers.
The first suit was filed in 1859 against gun makers Ethan Allen and Thomas Wheelock. A second suit was filed 1861 against the dealer Herman Boker, a seller of Manhattan Firearms.3 White’s royalties may have been adding up, but Smith & Wesson’s offset White’s obligation for $17 thousand legal expenses took a bite. 4 That amount represented sales of 70,000 guns for which White received nothing while Smith & Wesson profited to the tune of about $200 thousand. White apparently found himself a new lawyer because he now took a simple step to get the monkey off his back.
White may have been obligated to fund the lawsuits, but the obligation was personal to him; it was not bound up with the royalty. So when White assigned the royalty to his wife who was not a party to the agreement, Smith & Wesson had no choice but to pay royalties to her without offsetting legal expenses owed them by White under the agreement.5 It is generally thought that White expended most of his royalties to fund lawsuits that primarily benefited Smith & Wesson, but from here on out when the
Figure 1 -Lucius Pond went both ways. The upper gun is a clear infringement of the White patent, the lower gun is his front-loading, non-infringing version of the same pistol-- both chambered for the 32 short rimfire.
partners defended the patent it was on their dime. White remained obligated for the costs, certainly, but the partners would have had better luck getting blood from a stone and could not risk killing the goose that had many golden eggs yet to lay.
White’s new lawyer was probably Charles Keller. Keller had been the nation’s first patent examiner and was now a well-regarded patent attorney. He would represent White in the two cases previously mentioned and in related matters that would drive Smith & Wesson to distraction.
Interestingly, in 1859, the year the case against Ethan Allen was filed, Keller wrote to Sam Colt saying he could defeat the claim for the bored-through cylinder based on the Lefaucheux and Johnson patents mentioned earlier. What prompted Keller’s letter we do not know. Colt would have been interested in the outcome of the case against Allen, naturally, but he was not a party. Could Keller have been hoping for a retainer or some type of engagement? He did not say so. Was there an ulterior motive and if so what could it have been? Keller might have assumed Colt would weigh in with Allen. Could it be he was encouraging the gun making community to think that the one thing White and Smith & Wesson feared most was being thrown into the LefaucheuxJohnson briar patch?
Figure 2 - Two circumventors who solved the problem in similar fashion- a bove is the Pond revolver, below is the Slocum. Both used sliding chamber pieces to enable loading from the front.
Figure 3 - Another maker who couldn't resist testing the White Patent was Moore. His 32 rimfire "7-Shooter" was very popular with Union officers, but landed him in trouble as Figure 5a shows. His circumventing testfire "National" revolver used distinctive front loading cartridges and was a popular pocket weapon.
Justice: Not So Blind
Patent cases were within the exclusive jurisdiction of the U.S. Circuit Courts and heard by Associate Justices of the Supreme Court when on their circuits. Rollin White and Smith & Wesson v. Herman Boker et al.7 was the first of the cases to come to trial. It was heard by Justice Samuel Nelson in the New York District. E.W. Stoughton, representing plaintiffs Smith & Wesson, was joined by the aforementioned Charles Keller who represented White. George Gifford represented the defendants.
The Boker file is thin, and Nelson’s opinion thinner still. We can discern the defense had two primary arguments. First, there was no infringement because the chambers in White’s cylinder were conical, whereas those of the gun said to be infringing were straight. That was a loser. The defense also challenged Patent 12648 with what Nelson said was considerable evidence relative to prior art, but as to what this included he did not say.
Patents-at-Law are presumed valid, and though a defendant may rebut the presumption, he bears the burden of proof which requires clear and convincing evidence. Nelson held the defense did not meet its burden and found for the plaintiffs, Rollin White and Smith & Wesson.
After Boker, Smith & Wesson was able to bring most of the infringing gun makers to heel with modest settlements. But Ethan Allen held out.
Allen was heard the following year in the Massachusetts District by Justice Nathan Clifford. Again, Smith & Wesson were represented by Stoughton and White by Keller. Allen was represented by Benjamin Curtis, Causten Brown, and George Gifford.
Eighteen witnesses appeared for the plaintiffs; nineteen for the defense. The record of their depositions runs 240 pages,11 but to Clifford all that mattered were the 16 pages of direct testimony by Rollin White. To hear Clifford tell it, White was an Horatio Alger hero come to life.
Allen went straight at the patent arguing prior art, delay in filing, and failure to reduce the concept to practice.
Prior Art. Allen cited ten foreign patents and three U.S. patents all with issue dates earlier than 1855. Of these he introduced copies of the English patent of Johnson (1854), the Belgian patent of Hartog and Devos (1853), and the French patents of Lefaucheux (1845) and Renette (1835).
To show prior use, Allen cited the names of 40 persons, including well-known personalities such as Kittredge, Folsom, Cooper, Bacon, and Lower, who had used breech-loading guns well before White received his patent. There was also testimony regarding a breech-loading revolver made by Jubal Harrington in 1842 or 1843 that fired metallic cartridges.
White countered that he first had the idea for a breech-loading revolver in 1837, eighteen years before he applied for the patent. That presented a problem because White could not show that since 1837 he had diligently attempted to reduce his idea to practice.
Justice Clifford provided an assist in reciting White’s journey through trial and error culminating in a final conception of his invention sometime between 1849 and 1852. This allowed him to establish a date of invention within that period and knock out the patents of Johnson (1854) and Hartog and Devos (1853).
Dealing with the 1845 Lefaucheux patent gave Clifford an opportunity to wax eloquent and at length, not that he made any sense. Author’s note: I have read that portion of the opinion several times and still have not a clue what he was saying.
By the time one finishes reading Clifford’s soliloquy on patent law and his interpretation of phrases of the patent translated from the French, the reader, his mind numbed by the experience, may be excused for not realizing that after dispensing of the Lefaucheux patent Clifford simply ignored the Renette patent and the Harrington gun. Perhaps that was his intent.
Delay in Filing. An inventor seeking a patent must file his application within a reasonable time after he reduces his concept to practice. The defense argued that, assuming White accomplished this sometime between 1849 to 1852, the three to five year delay in filing was unreasonable.
White said he delayed filing because of a rumor floating around the Colt Armory that Sam Colt would fire anyone caught experimenting with pistols. White was worried, he explained, for his own position and those of his two brothers who also worked at the Colt Armory. For all their sakes, he kept his work secret until he lost his job in December 1854. What about protecting his brothers then? He was not asked.
It was ridiculous of course to think Sam Colt attempted to hold back the future by firing whole families of workers because one of them had ideas of his own. Even if White perceived there was a risk, even if the perception was reasonable, would that have been legally sufficient? Colt who had died in January 1862 could not testify on the point, but others were available if the defense thought it necessary. Apparently, they did not for there was no rebutting testimony.
White’s testimony is replete with lies, but in spinning his tangled web he inadvertently dropped hints of what really may have happened. He testified that he lost his position at Colt in December 1854 when the company stopped the practice of using contractors for piece-work. Even as he testified, though, that system was still in place and would be for many years. He also said he took from the factory refuse cylinders for his experiments. No doubt there were cylinders which were imperfect and so not usable for finished arms, but they would have been recycled or sold for scrap. They were not for the taking, but stolen. It is conceivable he was caught and fired.
Figure 4 - Moore's popular "teat fire" "National Revolver" . Shown here with several of its unique cartridges
Be that as it may, the implication was that for so long as he was employed at the Colt Armory, White was going to sit on his inventions. How long would the world have to wait for White to unveil his secret before the delay was not excused? To Clifford’s mind, White could wait until the earth went flat.
Reduction to Practice: Allen saved his strongest argument for last; the one Smith & Wesson had hoped to avoid when they secured a license only for the claim for the bored-through cylinder.
William Hibbard, a mechanical engineer, was another voice that described cylinder chambers as being but part of a barrel and that boring through was nothing new. He explained in detail, as other experts would later, how it was that White’s gun design was utterly flawed.
Next up was Henry Renwick. He had been chief examiner of the Patent Office and in the ten years since leaving that position was a much sought after expert witness in matters pertaining to mechanisms and processes. Renwick had been engaged in part to put White’s gun to the test.
Because the only known model of the gun was that which White had sent to the Patent Office with his application, Allen had one built. Renwick inspected the model and Renwick opined that, except for the shape of the stock, it met White’s specifications.
Renwick tested the gun with a variety of cartridges of different loads, and, for safety purposes, had no more than three chambers loaded at any time. The gun was placed in a vise, a string was tied to the trigger, and before pulling the string Renwick and the three witnesses retreated around a corner.
The gun was fired 44 times and only once did it work as intended, and then just barely. Cartridges in all but two instances were thrust out of their chambers which made rotation of the cylinder impossible; cartridge shoes were blown off and hurled backwards; flames shot past the corner where the men had taken cover; and on 38 occasions the place was rented with the deafening bursts of multiple explosions.
One of the observers later testified, “I should rather be the man to be shot at, than the one to use the pistol.”
Smith & Wesson countered with a gun and a test of its own. Henry Renwick as
a witness for the defense examined the Smith & Wesson gun and opined that
though it had a bored-through cylinder, in many respects it was not as White
had specified; changes had been incorporated into the design to overcome design defects and improve performance. In short, it was not at all like the gun of
Witnesses for the plaintiffs who examined the gun stated it had a bored-through cylinder, but were silent on White’s other specifications. One of the witnesses was Edward Renwick, a relationship unknown. From the length of his answers he must have been paid by the word and his caution bore on the extreme. He discussed lateral fire as if it were a thinking creature capable of deciding for itself upon the direction it would travel.
Wesson tested the gun using both paper and metallic cartridges (not self-contained, but open at the rear). One such cartridge was similar to the Smith & Wesson .22 caliber cartridge, having a flanged metal case and a very small hole at the rear. Henry Renwick examined examples of the cartridges and found precautions had been taken to ensure there were no untoward results. The loads, Renwick said, had been reduced by one-third to one-half and leather shoes had been varnished to prevent the entry of lateral fire.
Wesson’s test took place in two days about a week apart, which seems unusual given the total number of rounds fired was about 25. The gun worked flawlessly.
Clifford rightly stated that to be patentable an idea must be reduced to practice, or in his words “embodied into working machinery and adapted to practical use.” In deciding whether White’s gun worked, did Clifford consider any expert testimony or weigh the results of the tests? Not so you would notice. White had testified his gun worked and for Clifford that settled the question.
In concluding his opinion, Clifford gave a nod to the license agreement and its limitation to the bore-through claim. “Rollin White,” he wrote. “[I]s the original and first inventor of the improvement described in the patent . . . so far as respects the first claim of the patent, which is the only one involved in the controversy.” It was as if the challenge to the entirety of Patent 12648 had never been made.
Clifford found for the plaintiffs and students of the Supreme Court may say it is no surprise. Justice Clifford has been roundly criticized because his opinions are generally marked by stream-of-consciousness narratives that defy law and logic and that in these regards Allen is no exception. Except that here, Clifford’s aimless meandering and disjointed reasoning appear purposeful, and if so, to what end?
Could Clifford have been motivated by Nelson’s opinion in Boker? Nelson had broad experience in patent cases and because Clifford had relatively little, it would have been natural for Clifford to consider what Nelson had to say. But as precedent, Nelson’s opinion was not useful. It is conclusory, without analysis, and being decided in a different jurisdiction against different defendants it was not controlling. Moreover, Clifford does not cite Boker for any proposition, so if we are to find something that explains why he rode roughshod over facts and law, we must look elsewhere. It may be that Clifford’s decision had nothing to do with the case itself, but had everything to do with what is regarded as the worst decision ever handed down by the Supreme Court.
That was the case of Dred Scott v. Sanford, cited earlier. The decision in that case fueled passions of those on both sides of the slavery question. It divided the Democrats along sectional lines and cleared a path for the Republican Abraham Lincoln to the presidency. Some observers draw a straight line from Dred Scott to the Civil War.
The majority opinion was delivered by Chief Justice Richard Taney and it remains an indelible stain on his legacy. Two justices dissented: Robert McLean and Benjamin Curtis, but it is the dissent of Curtis which is remembered. It was lengthy, blistering, and many saw in it a personal attack on the Chief Justice himself. Taney was quick to retaliate. He made Curtis’s life on the court a perpetual misery which ended only when Curtis resigned.17 President Buchanan filled the vacancy with Nathan Clifford who could be counted upon as a Taney ally.
That is how Clifford, when riding his circuit, came to preside over White v. Allen and when the attorneys representing Allen rose to introduce themselves to the court, who of all people should be standing before him? Why it was none other than the Taney nemesis, the man whom Clifford had succeeded, the former Associate Justice of the Supreme Court, Benjamin Curtis.
Allen may be just another of Clifford’s abysmal opinions, but we should at least give credit to the man who had been Attorney General for both Maine and the United States, Secretary of the Navy, Ambassador to Mexico, and a member of the House of Representatives, for knowing on which side his bread was buttered.
Allen appealed to the Supreme Court, but clerical problems kept it off the docket until late 1868. Until then, prudent gun makers thought to profit from making breech loading revolvers bowed to reality and first sought a license. Now the fun began. . .
Keller Goes to Town
Figure 5a & 5b- As settlement to lawsuits brought on by White, infringing revolvers were required to be marked and turned over to Smith and Wesson as part of the damages judgment. These two images are representative of those markings.
Through most of the Civil War, Colt’s enjoyed a highly profitable business furnishing revolvers to the Union army and the retail and overseas markets. That abruptly ended in February 1864 when a Confederate saboteur destroyed Colt’s pistol works.18 But the sun always shines somewhere, and in Colt’s misery Cooper & Pond sensed an opportunity. They placed an order with Smith & Wesson for 3000 revolvers of military caliber. Smith & Wesson thought to have the guns manufactured by Eli Whitney, Jr. of New Haven under a sub-license, but none would be produced.
One of the few rights White had retained under the agreement with Smith & Wesson was that over approval of sub-licenses. Bolstered by the court victories, White demanded from Cooper & Pond an outsized royalty and the deal foundered. It was not the last time a suitor was left empty-handed.
While he was scotching offers, in his dealings with Smith & Wesson became increasingly belligerent and even threatened to sue. On June 12, 1865 he excoriated the partners writing:
“You have no right to use any other of my improvements. I have continually protested against your using said improvements. . . You refuse all positions wherein directly or indirectly I should get any credit for my invention. . . . You use me only where you cannot possibly get along without me and it is only by my assistance you have or can sustain a monopoly. . . You have made a fortune while I have expended the most of my income and time to sustain the patents.”
Did he have grounds for a suit and could he possibly have other improvements that Smith & Wesson were using without White’s consent? Keller certainly thought so. And why not, he created them.
The Patent Act of 1836 was intended to restrain the abuse that had earlier made individuals run rampant when patents were registered without examination. That system had allowed scoundrels to slap patents on ideas that were already old and use them to extort payoffs from legitimate businesses.22 The Act replaced the registration system with the examination system which would be administered by the newly created Patent Office staffed with a cadre of qualified examiners. In closing one door, Congress opened another.
A patent holder’s statement of claims, as we have seen, is the only part of a patent with legal effect and a defect in the statement, whether by mistake or omission, could for the inventor prove costly. To provide inventors relief, the Act gave patent holders leave to remedy claim defects through a process called “reissue.” It was called “reissue” because the corrections were effective as of the date the original patent was issued
Never ones to miss an opportunity, patent pirates grabbed up old and often worthless patents, changed them by appropriating ideas from later patents, and then threatened the holders of later patents with infringement. Unfair? Of course, but that is how it was. The rules may have changed, but the game remained the same.
Figure 6 - Although patents were supposed to be issued only for practical and useful inventions, quite a few like this one made their way into history.
No sooner had Clifford handed down his decision in Allen than Keller secured for White three reissues for 12649. As described earlier, the gun of Patent 12649 was self-fed, front to rear, from a magazine forward of the cylinder. The chambers, though not sealed at the rear, were open only enough for the tip of a paper cartridge to protrude and so be exposed to cap fire for ignition.
By the time Keller got done with the reissues, the front-loading Patent 12649 was transformed into a dual-loader with cylinder chambers that could be loaded from both the front and the rear. He also
Figure 7 - Another circumventor was Merwin & Bray with their Plant and Eagle revolvers- both loaded from the front
embellished Patent 12649 with inventions of other gun makers that were covered by later issued patents.
This gave White claims under two patents for guns with a breech-loading feature, and as a result neither patent could be used without infringing the other. Thus, with every gun Smith & Wesson sold under Patent 12648 they infringed Patent 12649. But White could not use the invention of Patent 12649 without infringing Patent 12648. It was a Mexican standoff – with .22’s.
sought to force the partners either to revisit the original agreement and cut him a better deal, or simply buy him off. But the threats of a lawsuit were all bluff. For a host of reasons, a court might throw out the reissues for the dual-loader and that was a risk Keller and White were not about to take.
As far as we can tell, White and Smith & Wesson kept their two-patent fandango a private matter. We see this in the negotiations that unfolded when, after the Civil War, Colt Firearms joined the list of license-seekers.
Sam Colt had pioneered the revolver and the company he founded had owned the revolver market. But that was when muzzle-loading percussion arms were all that was available. Technology was sweeping those guns aside--the demand was on for metallic cartridge breech-loaders, and constrained by White’s patent, the company struggled to change with the times.
After Sam Colt’s death in January 1862, his brother-in-law, Richard Jarvis,26 whom he had groomed for management, became the chief executive. But the armory itself remained the domain of the mechanical genius who had turned Sam Colt’s vision into the marvel of the Industrial Age, Elisha Root. Then, in September 1865, Root suddenly died.
The loss of Root was monumental, but the company had a good bench of mechanical engineering talent. What it lacked was an operations manager and for that Jarvis hired General William B. Franklin. A West Point graduate, Franklin was educated as a civil engineer with a demonstrated ability to manage large and complex projects.27 The general having spent his life in the army would take some time to adjust to corporate life. To assist him in making the transition, Jarvis called on a fellow Colt’s director and the company’s outside counsel, Richard Hubbard, to make himself available as the general’s mentor. Franklin kept a daily log from which the following account is drawn.
Franklin was officially hired at a special meeting of the directors on November 15, 1865. As if to demonstrate the urgency of Jarvis’s commitment to get the company into the breech-loading market, as soon as the corporate formalities of the meeting were concluded, the board turned to a discussion of whether the company might take hold of a pistol being developed by Col. Silas Crispin and Thomas Poultney. The two Figure 7 - Another circumventor was Merwin & Bray with their Plant and Eagle revolvers- both loaded from the front. men touted their gun and the metallic cartridge it would fire as means to provide the benefits of a breech-loading repeater without infringing White’s patent.
Four days later, Franklin was on a train to New York to meet with Colt’s patent attorney, George Gifford. Gifford concluded Crispin would infringe Patent 12648. Franklin next sent the plant superintendent, Horace Lord, to ask Smith or Wesson about a license. The meeting did not come off and it was not until February 1866 that Franklin met with White. Smith & Wesson were apparently leaving it to White to deal with third parties, rather than face embarrassment if they could not deliver his consent.
White said Crispin indeed infringed his patent and the price for his consent to a sub-license would be $1.25 for each small pistol, $1.50 for large. Franklin had authority for only $1.50 all in, including fees to White and Crispin and Poultney. The meeting
Figure 8 - The Crispin revolver had a split cylinder so special cartridges could be introduced from midpoint.
Figure 9 - The distinctive Crispin cartridge was in fact a rimfire with the fulminate contained in the central band. This one is in .44 caliber, the pistol would have used a smaller round of the same design.
ended inconclusively. It is not clear that Franklin then understood the sub-license he sought required not only White’s consent, but also that Smith & Wesson grant the sub-license in the first place.
At a meeting two months later, on April 18, 1866, White presented Franklin a letter from Smith & Wesson by which the partners offered to sell their license to White, or his designee (Colt’s was surely intended), for $600,000. That was an enormous sum in the weak postwar economy, especially for a patent that would expire three years hence with no guarantee of extension.
Was Smith & Wesson serious? It would have been a terrific windfall for them and relieve them of having to deal with White. But it would have meant getting out of the gun business for at least three years and then only if White’s application for extension Figure 8 - The Crispin revolver had a split cylinder so special cartridges could be introduced from midpoint. Figure 9 - The distinctive Crispin cartridge was in fact a rimfire with the fulminate contained in the central band. This one is in .44 caliber, the pistol would have used a smaller round of the same design. was refused.
It is possible Smith & Wesson used the offer to give White a dose of reality. If he thought his patent was so valuable, he should see what the best-financed firearms company in the world thought of it. This view finds support from what happened next.
After allowing Colt’s three days to mull over Smith & Wesson’s letter, White tacked on another half-million dollars for his interest in Patent 12648. That brought the total price for the patent to $1.1 million. Franklin did not have to think long about that. He told White to take a hike.
White is not again mentioned in Franklin’s long until almost ten months later when, in February 1867, a patent attorney from Boston solicited Colt’s to join a group of gun makers who were prepared to oppose White’s application for extension. Keller had taken the unusual step of filing an application for extension when White’s parents still had two and one-half years to run! Thinking Colt might still want to take hold of the patent,