Henry Stanley's Rotary Stove and U.S. Patent Law

This started out as an add-on to "Henry Stanley and the Rotary Stove" in August 2016, and was mostly responsible for so messing up the formatting of the original that I took it all down, saved it in draft, and left it there until the last couple of days.  It's probably worth standing here on its own, because its detailed examination of one inventor and his inventions' encounters with U.S. patent law makes better sense that way.  A reasonable rule of thumb for determining whether a stove inventor's work was important and influential is to see if he and it left much of a trace among reported U.S. patent cases, or resulted in much other obvious patent management (notably reissues).  The investment of so much effort and expense in defending and extending a patent was a sure indication of its value.  There was also a huge volume of local proceedings and cases not deemed worth reporting at the time, submerged beneath this visible bit of the iceberg.  But, given that the rest of patent litigation is buried in local court and Patent Office records (which is where the rest of the evidence for management also resides -- extensions, reissues, assignments), contemporary newspaper reports, and occasional surviving publications,  if indeed any trace of it survives at all, it seems sensible as well as practical to focus on what is more readily available and also impressed contemporaries as more significant.

Henry Stanley's Rotary Stove and U.S. Patent Law

Two of Stanley's many stove patent cases were important enough to be officially reported: Stanley v. Hewitt (1835) and Stanley v. Whipple (1839). What they make clear is that Stanley's claim to originality was fiercely disputed right through the 1830s, the period of his greatest commercial success, partly because, like so many inventions at the time, his patent stove was not in fact altogether original, but also simply because it was a sufficiently attractive idea, eminently useful and marketable, to attract imitation and challenge.

Stanley v. Hewitt, a case before the Circuit Court for the Eastern District of New York (the most important in the nation for stove patent cases) in late November 1835, shows Stanley as a novice inventor navigating the uncertainties of the pre-1836 patent system.  Before then patentees did not usually have the services of experienced attorneys or specialised agents at their disposal, as they soon would, and until 1836 patents were granted without being examined professionally for their originality or the extent to which they met the other criteria of the law.  Instead, these matters -- and thus the validity of the patent -- were only settled by jury trial, if they were contested, which the best and/or most valuable, like Stanley's, usually were.  The problem was already sufficiently serious before the patent was two years old for Stanley to publish this notice in local papers:

New Hampshire Patriot & State Gazette, 3 Nov. 1834, p. ##.

Stanley's patent was, according to an advertisement in the Troy Daily Whig in the summer of 1836 by two of his most persistent rivals, local stove makers and merchants Maynard French and Rensselaer D. Granger (see the next post), doing very badly in the courts before Stanley v. Hewitt was decided.  In suit after suit, none of them unfortunately recorded in The Federal Cases, and at a cost to him of between $4,000 and $6,000 in legal fees alone, he had been unable to defend his patent successfully.  [Advertisement "New Rotary Stove Store," 29 Aug. 1836, p. 4].  The Hewitt case gave him at least a partial victory, and established sufficiently important principles that the proceedings were reported in the New York Journal of Commerce and even local papers while it was ongoing, and the judge's decision was published in the leading national technical journals, notably the Journal of the Franklin Institute, afterwards, and thereby entered the lasting record of the making of federal law.

Dr Henry Hewitt, a St Lawrence County, NY stove manufacturer, had been making and selling direct copies of Stanley's stove, recording at least a hundred sales in Vermont alone before being detected and sued.  His was the most flagrant sort of patent piracy, or in modern parlance intellectual property theft: the patterns for casting his stoves were made directly from castings of Stanley's own.  This was not disputed, because it was neither a crucial point in the case nor even clearly unlawful behaviour at the time.  Instead, the argument turned on matters of priority and originality, and the interpretation of what exactly patent law protected.  

Hewitt and his four lawyers, led by Roger Minot Sherman, a luminary of the Connecticut and Massachusetts bar, defended their case by arguing, amongst other things, that the principle of the rotary had been invented by Elisha Town of Montpelier, the Vermont state capital, almost a decade before Stanley, and that he had even had a prototype of it made (see the following post and this older one, for Town).  In addition a Mr Gould (probably the Manhattan stove manufacturer Gould Thorp, whose home and business was just five doors away from Stanley's manufactory and sales depot on the north side of Water Street on the Lower East Side) testified that he had designed and made a stove with an arrangement of raised collars and flues on the top plate for the purpose of conveying heat evenly to all four boiler holes that was similar to Stanley's, and that Stanley and others had used it long before he had included it within his patent claims.  Finally, Hewitt claimed that the fact that Stanley had made and sold his stoves and therefore "given his invention to the public" before filing his patent claim in October 1832 invalidated it.    

Stanley and his three lawyers counter-argued "that Town's stove, whatever it was, was useless, and had been abandoned as such; and that the plaintiff had no knowledge of it when he made his invention and improvement, and that his stove, in all the important improvements by him claimed, was wholly unlike Town's stove."  As for Gould [Thorp]'s design, it was in fact Stanley's idea in the first place, and had been suggested to Gould by him.  Finally, he countered that "all the stoves delivered out before the application for the patent were delivered to be used on trial, and with a view to test the utility of its improvements," i.e. he was testing the product with potential consumers rather than testing the market to see if his stove was worth patenting.  This seems to be quite a claim, given the evidence that they had in fact been on regular commercial sale for months.

As was so often the case in disputes of this sort, the actual history of the invention was lost in a morass of conflicting he said/she said evidence stretched over a five-day trial, and the final judgement rested more on technicalities rather than the resolution of key substantive issues of priority and originality, where Stanley agreed to a non-suit, probably because he was clearly going to lose again.

Stanley appeared to have drawn up his patent application without proper legal advice, and to have claimed more than he should have: that he had invented the rotary principle and the design of the stove top, whereas in fact he should simply have claimed for a novel combination of existing features, some of which (notably the stove top) had even been used by him on other, unpatented stoves since 1828.  Hewitt and his lawyers insisted that Stanley "had so worded his specification that it would not bear that construction [claiming for the combination rather than the separate parts], and that it really claimed the different parts comprising the top and cap of the stove separately and independently of any combination, and that his specification was otherwise defective."  

They won on that point, but Stanley was vindicated on the lesser matter of whether he had invalidated his own claim by trialling stoves in customers' hands: as the judge, Supreme Court Associate Justice  Smith Thompson, who was quite sympathetic to Stanley, determined,

putting the stoves out on trial and for the purpose of experiment and improvement was not such a public use of them as would be considered as a dedication to the public; ... the plaintiff was justified and had a right to test the utility of his invention, and see what improvements might be made before he applied for his patent, [as] this was an article which would be tested by being put into several families, where it might be differently used by different housekeepers.

Though Stanley's patent 7333X was declared and admitted as invalid, he was able to surrender it and resubmit an amended version on the same day right after the trial, 2 December 1835, probably the one listed in the patent records as 9282X which was lost in the Great Fire at the U.S. Patent Office in December 1836 and not restored thereafter.  Despite the equivocal outcome, Stanley and his principal sales agents, Church & Dana of Troy, NY, claimed an immediate moral victory, and resumed their struggle against rivals with renewed vigour.

Delaware Gazette, 6 Jan. 1836, p. 3.

New Bedford Mercury 29 Jan. 1836, p. 3.

After the Patent Office fire, Stanley reinstated a new version of 7333X, almost identical to his new patent 91 which he had taken out at the end of November under the revised patent law of that year and which was probably just a version of 9282X, which he did not bother to restore.  They had both been rewritten to meet the requirements Judge Thompson had sketched out so helpfully, essentially that an original combination of new and old design principles and features was also quite patentable, a long-established interpretation of British and American patent law of which Stanley could have taken advantage in 1832 if only he had sought good professional advice.  His patent agent for doing the rewriting and resubmission/new application was none other than Thomas P. Jones himself, formerly the U.S. Commissioner of Patents, which may help explain why Jones thought the decision partly in his client's favour was sufficiently important to print it in the Franklin Institute Journal, which he edited.  

The significance of Stanley v. Hewitt was that, while the case was pursuing its way through the courts, and until Stanley had registered his revised patent and then tested it at law again too, other inventors were in effect almost invited to find their own ways around it, and rival makers could use their own patents or imitate Stanley's rotary more or less closely but with little risk.  It would take until Stanley won in Stanley v. Whipple (1839), by which time his rotary stove was soon to be superseded by newer designs, before his intellectual property was really secure, or at least as well protected as statute and case law then provided.  In other words, for the entire period during which Stanley's stove enjoyed technical advantages over much of the competition, which his novel production and distribution methods probably increased, and right through the stove boom of the mid-1830s, he was never able to capitalize fully on his intellectual property or escape his imitative competitors.

There is extensive correspondence between John R. Conant of the Brandon Iron Company in Brandon, VT and Henry W. Miller, a stove dealer in Worcester, MA who was a big customer, between March 1835 and July 1838.  This is all transcribed and annotated in this new post.  Though it does pay some attention to the strengthening of Stanley's legal case in 1836, probably as a result of the Hewitt judgment and his revised and new patents, Conant carried on making and selling his own rotaries in direct competition with Stanley's, and reassured all of his customers that he and they had nothing to fear and he would even indemnify them against costs if there was any legal challenge.

C.W. & J.A. Conant, "Stoves" [12 Oct. 1835-] Vermont Telegraph 25 Feb. 1836, p. 4 (and other near dates).

As for Hewitt, he carried on merrily in business, depending for his legal foundation on joining with some of Stanley's other pirate competitors in the purchase of Elisha Town's rival 1834 patent in 1836, and threatening anybody infringing on his rights (such as, presumably, Stanley) like any legitimate manufacturer.

Henry Hewitt, "New Rotary Cooking Stoves!!" St Lawrence Republican 15 Jan. 1839, p. 2.

Stanley v. Whipple, 1839

Stanley and Emor Whipple of Cincinnati had agreed in October 1832, i.e. well before Stanley's original defective patent had even been granted, that Whipple would pay Stanley a $5 royalty for every stove he made and sold in the Cincinnati market (an area much larger than the city itself, but not precisely delimited).  This was about half of the profit (c. $9 per stove) that, according to testimony in Stanley v. Hewitt,  Stanley realised on stoves sold through independent wholesalers in 1833-1835 rather than directly by his own family firms.  But presumably it was worth taking less money in order to expand his market quickly into a region that he did not expect at that time to be able to supply immediately from Vermont.  

Whipple made, advertised, and sold the Stanley stove for years, approximately 3,000 of them.  He even published, in 1834, his own local version of the Stanley firm's guide for users of its stoves.  But what he did not do was pay the royalty, apparently confident that the patent would not be sustained, even after Stanley had in 1836 remedied the defects that Justice Smith Thompson had pointed out to him.  

He miscalculated; this time, represented by the leading Cincinnati lawyer Salmon P. Chase (future Chief Justice of the U.S. Supreme Court), Stanley won outright: his "good" patent in 1836 meant in law that Whipple's agreement with him in anticipation of the "bad" patent of 1832 stood, and was enforceable.  This does not necessarily mean that Stanley succeeded in collecting any or all of his money -- the report stretches no further than the judgment itself, not its outcome -- but it does mean that his patent had finally been validated in a federal court, and the risk and perhaps price of violating it had been increased sharply.  

The pity of it was that this deliverance came too late.  By the end of the 1830s the heyday of the rotary stove was almost over, and new, cheaper designs of large-oven, four-boiler cook stoves with downdraft flues and no complicated mechanical features (Hathaway's, Buck's, and their numerous imitators') would soon sweep it from the market.

Stanley and his brothers' firms became insolvent in the early 1840s, and they lost control of their Vermont foundry, upstate New York iron furnace, and New York City, Philadelphia, and Baltimore manufactories and wholesale/retail establishments.  But his career as a stove inventor was not over, and one of his later new designs was also sufficiently important to lead to a reported patent case three decades later. 

Ruggles v. Eddy et al. (1874)

Morning Herald (NY), 2 November 1839, p. 4.

On the 4th of January 1845 Henry Stanley patented a smart style of very efficient columnar heating stove which he called "Stanley's Coal Burner," number 3876, an earlier (unpatented) version of which he had been selling since at least 1839.  (I have no idea why he called this a "Patent" stove too, when it was not -- this was an offence under the Patent Act; or why he took a further six years to actually patent it.  Patent Office archives might contain some clue.)  By 1853 he no longer had a foundry of his own, so continuing to monetise his ideas depended not so much on making and selling products of his own design (his original business model), but more on selling ("assigning") his patent rights to other manufacturers.  As his relationship with Whipple demonstrates, he was not new to this game.  But assigning for cash was probably more secure than doing so for a royalty payment.  The unexpired term of his patent was bought by Henry Jenks Ruggles, a Poultney native born the same year as Stanley himself.  Ruggles and Stanley had a business relationship stretching back years: he had started at the Stanley foundry in 1832 as a clerk, advanced to manager and overseer, and in 1844 bought the foundry and patterns after the Stanley brothers' brush with bankruptcy in 1842, and continued it in his own name, even inventing and patenting stoves of his own in 1851-1852 (patents 8472, 8535, and 9436).  Ruggles passed it in turn to his lawyer son Horace, then pursuing a career in New York, in July 1858.  

On the face of it this was a strange decision by Ruggles père, given that the patent was shortly to expire and become almost valueless.  However on Christmas Eve Stanley exercised his right as patentee and applied successfully to extend its term for seven years, i.e. until January 1866.  Thinking (or so he said) that the extended term was not part of the original assignment to Henry Ruggles, he assigned it to his son John on 4 January 1859 (its first new day of validity), who assigned it in turn to two Troy stove makers, Charles Eddy and Jacob Shavor, that March.  

Eddy and Shavor did what they could to maximize the value of their acquisition by reissuing it in their own names the following year, not just once but three times: Reissues 944 (10 April 1860), 958 (8 May), and 1078 (13 November), during the course of which the text of the patent grew from two to five pages, and their claims on its behalf extended far beyond the original.  Henry Stanley knew what was going on, and may even have participated even more actively than is indicated by his witnessing Reissue 958.  

This sort of aggressive patent management demonstrated very clearly that the old patent did indeed have value -- not necessarily just for production directly from it, but probably also as part of a patent portfolio for deployment in the litigation battles highly competitive stove makers fought with one another in the base-burner section of the market.  Base burners were a new design of columnar heating stoves experiencing rapid innovation and commanding very high prices -- the most prestigious items in any self-respecting stove maker's product line.  If the old Stanley patent contained (or could be made to contain...) the first claim to useful features for incorporation into a base burner, Eddy and Shavor would be able to prevent any of their rivals from using them too, or charge them for the privilege, or bargain with them for permission to use their patents without charge or suit.

Horace Ruggles did not take this challenge lying down.  He proceeded against them in May or June 1859, i.e. within a couple of months, but gave up after he failed to win an injunction because of doubts about whether the title to the patent was indeed still his.  Eddy and Shavor's three reissues in 1860 may have been motivated in part by their desire to strengthen and extend their claim, including the new features.  

The claim remained undisputed until 1871, when Horace, now running the family business with his brother after their father's death in 1869, resumed his legal action and flushed out the information that they had produced and sold 10,097 stoves from their patent in the eleven years they had owned it.  Horace seems to have been an example of the third way of monetising intellectual property, other than using it or selling it to other users.  For him, it was just an asset to be used for profitable lawyering.

The litigation between Ruggles, Eddy and Shavor dragged on for years, until the defendants changed their argument at the very last stage.  After losing at all of the earlier hearings they now claimed that they had in fact "made an alteration in one of the devices contained in the Stanley stove, which withdrew the stoves made by them from the operation of the Stanley patent," after eleven profitable years under its protection.  

Judge Blatchford ruled against them, not so much because he disbelieved their last-minute statement of different facts than those they had agreed to in all of the previous litigation since 1859, but because of the gross unfairness to Ruggles as rightful owner of the original patent that would have resulted.  This was not the end of the litigation, but as the subsequent stages were not reported it is not clear who won in the end, or how much (if anything) Ruggles finally collected.  The answers to these questions will lie, if anywhere, in the archives of the U.S. judicial system and perhaps of the U.S. Patent and Trademark Office.  But, even in incomplete outline, the story of Henry Stanley's 1845 heating stove patent, which remained a property worth owning and going to law about until a very few years before his death in Brooklyn in 1878, illustrates the ways in which stove makers and others attempted to work the maturing patent system in their favour in the three decades after he invented  it.