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Denison Olmsted, Memoir of Eli Whitney, Esq. (New Haven: Durrie & Peck, 1846), 26-32.

The issue of the first trial they were able to obtain, is announced in the following letter from Mr. Miller, dated May 11, 1797.

"The event of the first patent suit, after all our exertions made in such a variety of ways, has gone against us. The preposterous custom of trying civil causes of this intricacy and magnitude, by a common jury, together with the imperfection of the patent law, frustrated all our views, and disappointed expectations, which had become very sanguine. The tide of popular opinion was running in our favor, the Judge was well disposed towards us, and many decided friends were with us, who adhered firmly to our cause and interests. The Judge gave a charge to the jury pointedly in our favor; after which the defendant himself told an acquaintance of his, that he would give two thousand dollars to be free from the verdict; and yet the jury gave it against us after a consultation of about an hour. And having made the verdict general, no appeal would lie.

"On Monday morning, when the verdict was rendered, we applied for a new trial; but the Judge refused it to us on the ground that the jury might have made up their opinion on the defect of the law, which makes an aggression consist of making, devising, and using, or selling: whereas we could only charge the defendant with using.

"Thus after four years of assiduous labor, fatigue and difficulty, are we again set afloat by a new and most unexpected obstacle. Our hopes of success are now removed to a period still more distant than before, while our expenses are realized beyond all controversy."

Great efforts were made to obtain a trial in a second suit, at the session of the court in Savannah, in May, 1798. A great number of witnesses were collected from various parts of the country, to the distance of a hundred miles from Savannah, when, behold, no Judge appeared, and of course no court was held. In consequence of the failure of the first suit, and so great a procrastination of the second, the encroachments on the patent-right had been prodigiously multiplied, so almost entirely to destroy the business of the patentees.

In April, 1799, Mr. Miller writes as follows. "The prospect of making any thing by ginning in this State, is at an end. Surreptitious gins are erected in every part of the country; and the jurymen at Augusta have come to an understanding among themselves, that they will never give a verdict in our favor, let the merits of the case be as they may."

The company would now have gladly relinquished the plan of working their own machines, and confined their operations to the sale of patent-rights; but few would buy a patent-right which they could use with impunity without purchasing, and those few, hardly in a single instance, paid cash, but gave their notes, which they afterwards to a great extent avoided paying, either by obtaining a verdict from the juries declaring them void, or by contriving to postpone the collection until they were barred by the statute of limitations, a period of only four years. When thus barred, the agent of Miller & Whitney, who was dispatched on a collecting tour through the State of Georgia, informed them, that such obstacles were thrown in his way from one or the other of the foregoing cause, he was unable to collect money enough from all these claims to bear his expenses, but was compelled to draw for nearly the whole amount of these upon his employers.

The agent here referred to was Russel Goodrich, Esq., who had engaged in the service of Miller & Whitney, as early as the year 1798. He was educated at Yale College, in the same class with Mr. Miller, and was for many years an able and zealous agent in the affairs, first of the company, and after the decease of Mr. Miller, of Mr. Whitney.

In a letter addressed to Mr. Whitney, dated Georgia, September 3d, 1801, Mr. Goodrich writes thus: "I have spent a part of this summer in South Carolina, upon the business of Miller & Whitney. Many of the planters of that region expressed an opinion, that if an application were made to their legislature by the citizens to purchase the right of the patentees for that State, there was no doubt that it would be done to the satisfaction of all parties. Accordingly, they had petitions circulated among the people, which appeared to be generally approved of, and were very generally signed." Mr. Goodrich further urges the importance of Mr. Whitney’s coming on to South Carolina, to attend at the approaching session of the legislature, in order to make the proposed contract.

Accordingly, Mr. Whitney repaired to Columbia, taking the city of Washington in his way, where he was furnished with very obliging letters from President Jefferson and Mr. Madison, the Secretary of State, testimonials which no doubt were of great service to him in his subsequent negotiations. Soon after the opening of the session of the legislature, in the month of Dec., 1801, the business was regularly brought before the legislature, and a joint committee of both Houses appointed to treat with the patentees. To this committee Messrs. Miller & Whitney submitted the following proposals:-

"To the Joint Committee of both Houses of the Legislature of South Carolina.

"Gentlemen,

"The subscribers, in estimating the value of their property in the Patent Machine for cleaning cotton, commonly called the Saw Gin, are influenced by the following considerations, viz:

"That no right of property is so well founded in nature, as that of one’s own invention; that their fellow citizens by their representatives in the national Government, from considerations both of policy and justice, have declared that individuals who will use their exertions to acquire this species of property, shall enjoy an exclusive right in the same for fourteen years; that influenced by, and relying on, these declarations of their country, they have spent a number of years, and exhausted their funds, in inventing and bringing into use, their Saw Gin; that notwithstanding the innumerable misrepresentations and prejudices which have gone forth respecting this concern, they have firm reliance on the laws of their country, and feel a conscious rectitude in the justice of their cause.

"When we look around and see many of our fellow citizens, who are engaged in pursuits exclusively for their own benefit, guarded and protected in those pursuits by the laws of their country, we cannot believe that those who have contributed, in any degree, to benefit their fellow citizens and the public, will be deprived of the same protection, and abandoned to poverty.

"We will not go into any detailed calculations as to the value of this invention, but only observe, that the citizens of South Carolina have gained, and will gain, many millions of dollars by the use of this machine, which they never could have acquired without it. Being under embarrassments in consequence of debts incurred in prosecuting this undertaking, and desirous of obtaining some compensation for our labors, we will not measure our demand by the value of the property, but are willing to dispose of it to the State of South Carolina for a sum far below its real value; and therefore we submit to the committee the following Proposals:

"The subscribers will relinquish and transfer to the legislature of South Carolina so much of their patent-right of the machine for separating cotton from its seeds, commonly called the Saw Gin, as appertains to said State, for the sum of one hundred thousand dollars, the one half of the said sum to be paid on the transfer of said right, the other by installments, as shall be hereafter agreed upon.

Miller & Whitney."

After some discussion, it was agreed by the legislature to offer to the patentees the sum of fifty thousand dollars. We subjoin a letter, addressed at this time by Mr. Whitney to his friend Stebbins, both as a statement of the particulars relating to the contract, as evincive of the feelings of the writer:

"Columbia, South Carolina, Dec. 20, 1801.

"Dear Stebbins,

"I have been at this place a little more than two weeks attending the legislature. They closed their session at ten o’clock last evening. A few hours previous to their adjournment, they voted to purchase, for the State of South Carolina, my patent-right to the machine for cleaning cotton, at fifty thousand dollars, of which sum, twenty thousand is to be paid in hand, and the remainder in three annual payments of ten thousand dollars each.

"This is selling the right at a great sacrifice. If a regular course of law had been pursued, from two to three hundred thousand dollars would undoubtedly have been recovered. The use of the machine here is amazingly extensive, and the value of it beyond all calculation. It may, without exaggeration, be said to have raised the value of seven eights of all the three Southern States from fifty to one hundred per cent. We get but a song for it in comparison with the worth of the thing; but it is securing something. It will enable Miller & Whitney to pay all their debts, and divide something between them. It establishes a precedent which will be valuable as it respects our collections in other States, and I think there is now a fair prospect that I shall in the event realize property enough to render me comfortable, and in some measure independent.

"Though my stay here has been short, I have become acquainted with a considerable part of the members of the legislature, and of the most distinguished characters in the State. My old classmate, H. D. W., is one of the Senate. He ranks among the first of his age in point of talents and respectability. He has shown me much polite attention, as have also many others of the citizens.

Truly your friend,

Eli Whitney."

J. Stebbins, Esq.

In December, 1802, Mr. Whitney negotiated a sale of his patent-right with the State of North Carolina. The legislature laid a tax of two shillings and sixpence upon every saw employed in ginning cotton, to be continued for five years, which sum was to be collected by the sheriffs in the same manner as the public taxes; and after deducting the expenses of collection, the avails were faithfully paid over to the patentee. At that time the culture of cotton had made comparatively little progress in the State of North Carolina; but, in proportion to the amount of interest concerned, this compensation was regarded by Mr. Whitney as more liberal than that received from any other source.

While these encouraging prospects were rising in North Carolina, Mr. Goodrich, the agent of the company, was entering into a similar negotiation with the State of Tennessee. The importance of the machine began to be universally acknowledged in that State, and various public meetings of the citizens were held, in which were adopted resolutions strongly in favor of a public contract with Miller & Whitney. Accordingly, the legislature of Tennessee, at their session in 1803, passed an act laying a tax of thirty seven cents and a half per annum on every saw, for the period of four years.

But while a fairer day seemed dawning upon the company in this quarter, an unexpected and threatening cloud was rising in another. It was during Mr. Whitney’s negotiation with the legislature of North Carolina, that he received intelligence that the legislature of South Carolina had annulled the contract made with Miller & Whitney the preceding year, had suspended payment of the balance (thirty thousand dollars) due them, and instituted a suit for the recovery of what has already been paid to them.

The ostensible causes of this extraordinary measure adopted by the legislature of South Carolina, were a distrust of the validity of the patent-right, and failure on the part of the patentees to perform certain conditions agreed on in the contract. Great exertions had constantly been made in Georgia to impress the public with the notion, that Mr. Whitney was not the original inventor of the cotton gin, somebody in Switzerland having conceived the idea of it before him, and, especially, that he was not entitled to the credit of the invention in its improved form, in which saws were used instead of wire teeth, inasmuch at this particular form of the machine was introduced by one Hodgin Holmes. It was on these grounds that the Governor of Georgia, in his message to the legislature of that State in 1803, urged the inexpediency of granting any thing to Miller & Whitney.

_______________

Law Case.--At a Circuit Court of the United States, for the district of Georgia, lately holden in this city, [Savannah,] was tried the case of Eli Whitney vs. Isaiah Carter, for infringing a right vested by patent, "for a new and useful improvement in the mode of ginning cotton" The plaintiff supported his declaration by proving the patent, model, and specification, and proving the use of the machine in question by the defendant. He also introduced the testimony of several witnesses residing in New Haven, to prove the origin and progress of his invention.

The defendant rested his defence on two grounds--First: That the machine was not originally invented by Whitney.--Second: That the specification does not contain the whole truth, relative to the discovery.

General Mitchell, of counsel for the defendant, produced a model which was intended to represent a machine used in Great Britain for cleaning cotton, denominated the "Teazer or Devil."--A witness was produced, who testified that he had seen in England, about seventeen years ago, a machine for separating cotton from the seed, which resembled in principle the model now exhibited by defendant.

Another witness testified, that he had seen a machine in Ireland, upon the same principle, which was used for separating the motes from the cotton before going to the carding machine.

By the machine, of which a model was exhibited, the cotton is applied in the first instance to rollers made of iron, revolving conversely. By these rollers, the fibres are separated from the seeds and protruded within the sweep of certain straight pieces of wire, revolving on a cylinder, which tear and loosen the cotton as they revolve. It was contended by the defendant’s counsel, that this model conforms in principle to Mr. Whitney’s machine, and that the evidence given in support of it, establishes a presumption, that he must have derived the plan of his machine from a similar one used in the cotton manufactories in Great Britain.

In support of the second ground of defence, evidence was produced to show that Mr. Whitney now uses, and that the defendant also uses, teeth formed of circular iron plates, instead of teeth made of wire. And it was contended that this is a departure from the specification, and an improvement on the original discovery, which destroys the merit of that discovery, and the validity of plaintiff’s patent. It was also insisted that the plaintiff had concealed the best means of producing the effect contemplated.

Mr. Noel, of counsel for the plaintiff, in opposition to the first ground of defence, stated two points--First: That if the principle be the same, yet the plaintiff’s application of that principle being new, and for a distinct purpose, has all the merit of an original invention. Second: That the principle of Mr. Whitney’s machine is entirely different from that exhibited by defendant.

He defined the term principle, as applied to mechanic arts, to mean the elements and rudiments of those arts, or, in other words, the first ground and rule for them: that for a mere principle, a patent cannot be obtained: that neither the elements, nor the manner of combining them, nor even the effect produced, can be the subject of a patent, and that it can only be obtained for the application of this effect to some new and useful purpose.

To prove this position, several examples were stated of important inventions, for which patents had been obtained, which had resulted from principles previously in common use, and an argument of a celebrated Judge, at Westminster Hall, was cited, in which it was asserted, "that two thirds or three fourths of all patents granted since the statute passed, are for methods of operating and manufacturing, producing no new substances, and employing no new machinery;" and he adds, in the significant words of Lord Mansfield, "a patent must be for method, detached from all physical existence whatever."

The second point was principally relied on, to wit: That the principle of Mr. Whitney’s machine is distinct from that produced by defendant, and new in its origin.

It consists of teeth, or sharp metallic points, of a particular form and shape, and its application is to separate cotton from the seed; whereas the principle of the model exhibited by the defendant, and of every other machine before invented, and used for the same, or any similar purpose, consists of two small rollers made of wood or iron. In illustration of this point, the plaintiff’s counsel cited the opinion of this court, delivered by Judge Johnson, in December term, 1807, in the case of Whitney and others vs. Fort, upon a bill for injunction.

The second objection relied on by the defendant, was "that the specification does not contain the whole truth respecting the discovery." To this it was answered, that by the testimony it appears Mr. Whitney, in the original construction of his machine, contemplated each mode of making the teeth, and doubted which mode was best adapted to the purpose. If the alteration which forms the basis of this objection has the merit of an improvement, how far does it extend? An improvement, not in the principle, nor in the operation of the machine, but in making one of its component parts; merely in forming the same thing, to produce the same effect, by means somewhat different. In the case above cited, Judge Johnson remarked on this point, as follows:

"A Mr. Holmes has cut teeth in plates of iron, and passed them over the cylinder. This is certainly a meritorious improvement in the mechanical process of constructing this machine. But at last, what does it amount to, except a more convenient mode of making the same thing? Every characteristic of Mr. Whitney’s machine is preserved. The cylinder, the iron tooth, rotary motion of the tooth, the breast work and brush, and all the merit that this discovery can assume, is that of a more expeditious mode of attaching the tooth to the cylinder."

The counsel for Whitney admitted that an improvement in a particular part of the machine would entitle the inventor to a patent for a new and better mode of making that specific part, but not for the whole machine, as in the case of Boulton vs. Bull, where a patent was granted for an invention to lessen the quantity of fuel in the use of a certain Steam Engine. It was decided "that the patent was valid for this improvement, but that it gave no title to the engine itself."

It was also stated, that by experiments made on plaintiff’s model in the face of the court and jury, and by testimony produced, it was apparent no improvement had resulted from this alteration; that no beneficial change or amendment in the principle had taken place; nor had the effect been aided or facilitated. In the charge of the court to the jury, Judge Stephens remarked, that the case cited, Whitney and others vs. Fort, was decided without any evidence on the part of the defendant:--that from the testimony now produced, his opinion is, that the plaintiff must have received his first impressions from a machine previously in use, on a similar principle; and that an improvement had been made as to the teeth, by which the merit of Mr. Whitney’s original invention was diminished. For these reasons Judge Stephens had some doubts whether the plaintiff ought to recover.

Judge Johnson remarked to the jury, that after hearing the evidence which had been relied on by the defendant, he remained content with the opinion which he had given in the case of Whitney against Fort, and that he was also as fully satisfied with the charge he was about to give, as any he had delivered. That as to the origin of this invention, the plaintiff’s title remained unimpeached by any evidence which has been adduced in this cause. He agreed with the plaintiff’s counsel, that the legal title to a patent consists not in principle merely, but in an application of a principle, whether previously in existence or not, to some new and useful purpose. And he was also of opinion, that the principle of Mr. Whitney’s machine was entirely new, that it originated with himself, and that it had no resemblance to that of the model exhibited by the defendant.

He considered the defendant’s second objection equally unsupported, and referred to the sixth section of the Patent Law of the United States, by which it is required that the concealment alledged (in order to defeat the patentee’s recovery) must appear to have been made for the purpose of deceiving the public. That Mr. Whitney, in the original formation of this machine, could have no motive for such concealment, and that in making use of wire, in preference to the other mode, he appears to have acted according to the dictates of his judgment. If in this instance he erred, the error related to a point not affecting the merit of his invention, or the validity of his patent. Verdict for plaintiff--damages two thousand dollars.

Same Term, Whitney against Gachet, same cause of action. Verdict for plaintiff--damages one thousand five hundred dollars.

The influence of these decisions, however, availed Mr. Whitney very little, for now the term of his patent-right was nearly expired. More than sixty suits had been instituted in Georgia before a single decision on the merits of his claim was obtained, and at the period of this decision, thirteen years of his patent had expired. In prosecution of this troublesome business, Mr. Whitney had made six different journeys to Georgia, several of which were accomplished by land, at a time when, compared with the present, the difficulties of such journeys were exceedingly great, and exposed him to excessive fatigues and privations. which at times seriously affected his health, and even jeopardized his life. A gentleman* of much experience in the profession of law, who was well acquainted with Mr. Whitney’s affairs in the South, and sometimes acted as his legal adviser, observes, in a letter obligingly communicated to the writer of this memoir, that "in all his experience in the thorny profession of the law, he has never seen such a case of perseverance, under persecution; nor (he adds) do I believe that I ever knew any other man who would have met them with equal coolness and firmness, or who would finally have obtained even the partial success which he had. He always called on me in New York, on his way South, when going to attend his endless trials, and to meet the mischievous contrivances of men who seemed inexhaustible in their resources of evil. Even now, after thirty years, my head aches to recollect his narratives of new trials, fresh disappointments, and accumulated wrongs."

EOD

 
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