COLT TURNS TO THE COURTS
After struggling for twenty years, Colt had—with the help of the Mexican War—turned himself into a millionaire almost overnight. But he was facing a major problem. By 1848, copycats were hitting the gun stores and Colt’s patent was about to expire. Valid for 14 years, the patent was set to lapse in 1850. Without his patent, Colt would be hard pressed to stop gun makers from producing revolvers.
Fortunately, Colt had one of the country’s best patent attorneys, Edward N. Dickerson, who knew how to make the most of the patent system. Seeing that litigation was imminent, in 1848 Dickerson filed a request to have Colt’s patent “reissued.” This was a process where Colt could argue that the patent was partly defective; that is, Colt had left out some kind of improvement or failed to fully explain his idea. Because the patent was defective, Colt could fix the mistake in the patent office. It was a common practice, done by Morse as well, and it enabled Colt to strengthen his patent before initiating a lawsuit.
A year later, Dickerson petitioned to have Colt’s patent extended for another seven years. To qualify, Colt had to show that this was a valuable patent to the country and that Colt was unable to reap the expected profits. As part of this process, Colt had to give notice of his intention to let others, usually competitors, object to the extension. When all the evidence was considered, Congress granted the petition, extending Colt’s patent until February 25, 1857.
With more patent life, Colt focused his attention on wielding his patent to stop the infringements. In the spring of 1851, Colt decided to enforce his patent against Massachusetts Arms in a Boston court, which also was where Goodyear was preparing to assert his patent against Day.
Boston was a good choice for Colt to start his fight. It was close to home, meaning he would have more time to spend on other pursuits, such as spending his new-found wealth. Colt had recently purchased a speculative tract of land on the Connecticut River and was studying how to keep out the flood waters so he could build a factory. At the same time, he was also making plans to sail for England where he would exhibit five hundred guns at London’s Crystal Palace Exposition with a not-so-novel marketing strategy—pouring free brandy down the parched throats of his visitors.
The trouble with Colt’s most formidable infringer began when two of Colt’s former employees started manufacturing their own revolvers in Springfield, Massachusetts. The company was aptly named the Massachusetts Arms Company. Secretly, Colt had his cousin purchase one of the infringing revolvers from the factory. “I do not want them to know the arms are for me,” he told his cousin. “I want them immediately & you will confer a grate favour on me by getting & forwarding them as soon as you can, & much oblige.”
Convinced the revolvers infringed his patent, Colt had his patent lawyer, Dickerson, promptly file a patent infringement suit in Boston in May 1851. The case was assigned to Justice Woodbury and would turn out to be one of America’s liveliest and most publicized patent infringement suits. Colt’s choice of lawyers proved to be a wise one. During the next three years, four of America’s greatest patent cases would come to trial, and Dickerson would have his hand in three of them. It was Dickerson who a year later would assist Daniel Webster in the Great India Rubber case, then four years later would advise William Seward in McCormick’s reaper case. The notoriety generated by these cases would attract not only Dickerson, but also many of the most influential figures of the nineteenth century. Never in America’s history have so many prominent individuals fought over such significant, ground-breaking technologies, ones that would drastically change the country’s future: the revolver, the telegraph, vulcanized rubber, the sewing machine, and the reaper.
With Colt still in England, Dickerson moved ahead with Colt’s case against Massachusetts Arms, generally making all of the strategic decisions without input from Colt. If he had waited for Colt to return, the case would have been over. Unlike today’s trials that can last two or more years, the case was tried and decided by August of the same year, while Colt was on his sales campaign in Europe.
What made Colt’s case so interesting—besides the immense popularity of the revolver and Colt’s propulsion into riches and stardom—were the charges of fraud and corruption raised by both sides. Foremost among these were raised by the infamous Rufus Choate, who represented Massachusetts Arms. His presence alone brought in hoards of press into Boston, giving Dickerson all he could handle.
Rufus Choate was the Johnny Cochran of his day, and perhaps the leading trial lawyer of the decade. But this was far from an O.J. murder trial. Choate had already had his fair share of those. His most famous was a case in which he defended a Boston man who had allegedly sneaked into his lover’s room and slashed the prostitute’s throat with a razor. Then the man attempted to burn the whorehouse to the ground. Choate spun several tales as he crafted his defense, including the argument that the woman had committed suicide. If it wasn’t that, her death must have been the result of the defendant’s sleepwalking, where in his sleep he had sauntered across town and killed his lover. Whatever the reason, the jury seemed captivated by Choate’s charisma and acquitted the man.
For Massachusetts Arms, Choate was the ideal selection. If anyone could invalidate Colt’s patent, Choate could. And he planned to do just that.
Although the patent laws in America were still developing, they had come far enough so that patent rights were delineated by claims—a summary of what the inventor believed to be the inventive concept. Patents could have multiple claims, and to infringe the entire patent, the defendant had to infringe only one of them. “I am instructed to request you to consider [the claims] separately,” Justice Woodbury told the jury in Colt’s case. “If the defendants use one of them it is enough; and it is of no consequence to this result whether they use more than one, or more than two.”
But to get to that point, the jury had to understand exactly what Colt had invented. “What did Colt do?” Justice Woodbury asked them. “He undertook, undoubtedly, from all that appears in the case, and from the specification, to get the power, through a revolver, of having more discharges in a short space of time than by a single barrel. That is one great essence of this principle of revolving fire-arms. He introduced revolvers, undoubtedly, which might be fired oftener within the same space of time.”
Infringement of Colt’s patent was almost a given, and so Choate turned to another tactic: to argue that Colt’s patent was invalid. While an invalidity defense is a common strategy in any patent case, Massachusetts Arms went about this in a very unconventional way. In an attempt to confuse the jury, Choate argued that Colt wasn’t the first to invent the revolver. It was a classic Choate tactic—move to another issue where it would be easier to fabricate evidence and confuse the jury. The only problem was that each of the guns Choate showed the jury were made after Colt invented his revolver.
None of these shenanigans slipped past Justice Woodbury. “The Smith gun,” the judge said, “which is the one pressed most strongly as to date, was not finished, according to the mass of the testimony, until 1833—some considered that it was in 1834—but it was not finished, so as to be an operative piece, until 1833; and if so, it is wholly immaterial to go into any consideration as to how near it resembled the plaintiff’s, for if it was of subsequent date, it does not impair or impeach his.”
But the attempt to deceive the jury went far beyond irrelevant prior art. Choate had dug up evidence of an early revolver made by a Mr. Colburn. During the trial, it came to light that this revolver had been put together just for the trial. Dickerson told the jury a story about how the gun had been lugged half way around the country to rust it up and make it look worn so that it would look antiquated.
The one credible argument raised by the Massachusetts Arms defense involved the discovery of a gun described in an early French patent. If the defense could show this was the same thing Colt tried to patent, then the judge could rule that Colt’s patent was invalid. As for “what is called the French or Coolidge gun,” the judge said, “that was patented abroad about 1818, and published in 1825, so that it is early enough in date; and the only question is, whether the combination and the machinery used there, to effect the object, was the same in substance or principle with that in Mr. Colt’s.”
To this, the judge told the jury that the French pistol used a spring to revolve the chamber while Colt’s gun operated by “drawing up the hammer, and in that way causing the chamber to revolve without any coil spring.” His charge was for them to decide whether the two were based on the same principle. However, by the mere way in which he asked the question, it was clear how the jury would decide the issue, especially when the judge said that he “must confess my inability to do it.” While not proper in today’s courts, this interjection by a respected judge certainly nudged the jury to what appears to be a just ruling.
Choate also personally attacked Colt. His clients were furious about the argument Colt had used to obtain a patent term extension—from 14 years to 21 years—on the basis that Colt’s patent wasn’t sufficiently commercialized during the original term. The defense argued that Colt failed to give the proper public notice of his intent to apply for an extension by altering papers at the patent office. Knowing Colt, it’s certainly likely that the allegation had some basis of truth. The allegation impressed the press, but not the judge. “Whatever may have been the cause, … the commissioner made the extension; it is, therefore, in point of law, valid, and I see in it no evidence of fraud. If there was any fraud at all, it would be in the commissioner, rather than anybody else. The jury cannot find fraud without evidence.”
In August 1851 the jury concluded their deliberations and found Colt’s patent both valid and infringed. As was customary, the damages issue went undecided, leaving the parties to resolve the issues among themselves. However, with an injunction in place, Massachusetts Arms would need to settle with Colt or risk losing the ability to license Colt’s patent in the future. This allowed Dickerson to work out a deal with Massachusetts Arms to pay Colt $15,000.
With all the controversy surrounding the trial, Colt decided to have the entire trial transcript published. But that didn’t end the matter. Colt’s tussle with Massachusetts Arms was just beginning.
While Colt was in Europe celebrating his victory, Massachusetts Arms was busy manufacturing more infringing revolvers without obtaining a license. With Colt still overseas, Dickerson took it upon himself to file a second lawsuit in October, 1852, against company officials Hiram Terry and Edwin Leavitt. This time, however, the case was filed in New York. As with the Boston press, the New York papers were in heaven, latching onto the same stories of intrigue and deception—Colt bribing patent officials to extend his patent, and the defendants fabricating evidence about prior art revolvers.
At trial, Dickerson used his previous script, taking issue with the defense for doctoring up old weapons in an attempt to show that Colt wasn’t the first to invent the revolver. He began with the Smith gun.
Now your Honors will see (showing the gun to the Court) … that in the slot was once the cock of this gun, and that through that screw hole was the centre of that cock. Where are they gone? Now the lock is changed, and another sort of lock occupies its place—one in which the manner draws back straight and strikes on end. This is obvious from inspection, and bears the most convincing evidence of fraud on its face.
As if that weren’t convincing enough, Dickerson then told the court that “a little domestic vinegar” was used to rust the metal and make it old.
Then he turned to the Colburn gun.
Here is the ‘original sin,’ the very one which was made up for the Boston trial by the defendants there, and rusted with sulphuric acid and browning, to make it look old. It has been produced here, under the pressure of my notice, by the defendants, most reluctantly, and has been accompanied by the affidavit of T. W. Carter, of Springfield, to show that he did not rust the gun, nor know of the trick till after it was done.
After ridiculing each of the prior art guns in turn, Dickerson summed up his case. “Neither the ‘Smith,’ ,Colburn,’ ‘Fisher,’ or ‘Collier’ gun has any means of unlocking and relocking the chamber with the lock, in the act of cocking, and this, I submit, entitles the plaintiff to the relief prayed for.”
As in the first trial, Massachusetts Arms argued Colt used fraud in obtaining his patent extension. The court was in no mood to entertain this argument, telling Massachusetts Arms that it already had its day in court on the matter. The court then held in favor of Colt.
Choate had tried his best, but a win for his client with such unfavorable facts was unlikely. Even so, the dirty lawyering for which Choate was famous would also attract the attention of Horace Day, who engaged Choate to take on Daniel Webster in the Great India Rubber Case.
With two victories in hand, Dickerson went on the offensive. Wanting to head off any future lawsuits, Dickerson published a circular telling the industry that, “All rotary arms constructed with such combinations, whether made by the Springfield Arms Co., by Young & Leavitt, by Allen & Thurber, by Blunt & Syms, by Marstin & Sprague, by Bolen, or by any other person, are a plain violation of Col. Colt’s patent.” The notice concluded with a warning: “You will please to take notice to desist forthwith from the sale of any REPEATING FIRE ARMS, in which rotation, or locking and releasing, are produced by combining the breech with the lock … except such as are made by Col. Colt, at Hartford. … I shall proceed against you and hold you responsible for damages, if you persist in the sale of any such arms.”
The notice, along with two successful lawsuits, had the desired effect. The industry took heed and the infringements virtually stopped. In fact, Colt’s patent policing activities essentially ended until his patent expired in the beginning of 1857. After that, Colt had other patents on other aspects of the revolver that in 1859 took him back into the courtroom.
Only one company, Allen & Thurber, came forward to ask for a license. On December 29, 1852, they paid Colt’s attorney $15,000 for permission to keep manufacturing revolvers. The one problem with this settlement was that Dickerson brokered the deal while Colt was in Europe, trying to stop the numerous knock-offs being sold there. When Colt returned, he was furious with Dickerson and wanted to undo the deal. Dickerson told Colt, in essence, to calm down and not push his luck, which had been better than that of any other American inventor. He told Colt to let the matter drop, and Colt reluctantly did.