Lessons from Lincoln for IP Attorneys

or It's two-and-a-half months since I joined Brown, Hay & Stephens. And now I have to play my Lincoln card.

Every Illinois lawyer outside Cook County keeps a small reserve of Abraham Lincoln material. It's part of the licensure, I think. Somewhere between the character-and-fitness questionnaire and the oath, you are handed a Lincoln anecdote and told to deploy it at functions with non-Illinois attorneys or with the public. There are courthouses downstate with more Lincoln plaques than working restrooms. There are attorneys in this state who will tell you, unprompted, that Lincoln once tried a case in the very room you're standing in, and who are quite consistently correct.

Lincoln is our avatar. Our patron saint. The guy we point to when someone from a tower in the Loop implies that the real law happens north of I-80. Sure. Sure. Anyway, the Great Emancipator rode this circuit. So permit me my moment: I merged my boutique IP practice to the firm where Honest Abe was the second lawyer: And he was a prolific intellectual property attorney!

BHS History

As I understand it, Brown, Hay & Stephens traces to 1828, when John Todd Stuart opened a practice in Springfield, ten years after statehood. It is the oldest law firm in Illinois. On April 12, 1837, the Sangamo Journal ran an advertisement announcing the partnership of J.T. Stuart and A. Lincoln. Lincoln was 28, newly licensed, living above Joshua Speed's store, and had been walking twenty miles from New Salem to borrow Stuart's law books. The partnership lasted four years and handled something north of seven hundred cases.

Now, the honest asterisk. Stuart's first partner was Henry E. Dummer, a Bowdoin man with a semester of Harvard Law, who practiced with Stuart from roughly 1834 until 1837 and then decamped for Beardstown on the theory that it offered better professional opportunities than Springfield. I have family in Beardstown. I don’t know what it was like then, but I think Mr. Dummer was ultimately mistaken. The same issue of the Sangamo Journal that announced Stuart & Lincoln announced the dissolution of Stuart & Dummer.

Which means the lawyer who got to the firm before Lincoln is remembered today almost entirely for having described the young Lincoln as the most uncouth-looking man he'd ever seen and for leaving Springfield right before it became Springfield. This is the most Illinois fact I know.

Yawn, I am Here for IP Stuff, Not an Illinois History Lesson

Here's the thing that makes this more than the standard downstate Lincoln invocation. Well, for me. Lincoln was an intellectual property lawyer. And an inventor. And, to this day, the only President of the United States to hold a patent.

I practice intellectual property law. Trademark, copyright, design patent. To me, the modern machinery of protecting things people made. So when I say I'm at Lincoln's firm, I'm not just doing the thing. I'm claiming a professional ancestor.

U.S. Patent No. 6,469

Lincoln filed on March 10, 1849, and the Patent Office issued him Patent No. 6,469, "Buoying Vessels Over Shoals," on May 22, 1849.

The invention was a set of adjustable, inflatable air chambers. A device comprised of bellows, essentially, of india-rubber cloth or similar waterproof fabric mounted along a vessel's hull. When a steamboat or flatboat found itself grounded on a sandbar or approaching shallow water, the chambers could be lowered and inflated by a system of shafts, poles, and ropes, reducing the vessel's draft and floating it free without having to offload cargo. Clever.

This was not an abstract exercise for ole Honest Abe. Lincoln had spent time on the western rivers and the Great Lakes ferrying people and freight, and had personally been aboard vessels that hung up on obstructions. This included, famously, a flatboat stuck on the New Salem milldam in 1831. The future President had a problem, and he had the problem repeatedly, and he designed a solution. Its what I often see from inventors coming into my office. With luck, one of them will also be a President.

Whether it would have worked is contested. The prevailing critique is that the apparatus added enough weight that the vessel sat lower in the water when the chambers weren't deployed, making it more likely to ground in the first place, and that Lincoln's rig of poles and lines was too complicated to be practical. It was never manufactured. One scholarly evaluation of the device concludes the underlying concept was scientifically sound and genuinely prescient though.

Which, if you have ever prosecuted a patent for a client with a brilliant idea and an unworkable mechanism, will feel extremely familiar.

How You got a Patent in 1849: Both alien and Recognizable

Lincoln was operating under the Patent Act of 1836, which had rebuilt the American system a decade earlier: it created professional patent examiners, established a prior-art library, and, critically, reinstituted examination before issuance. Before 1836, the office issued patents on essentially everything filed, including direct copies of earlier patents, and left validity entirely to the courts. What a mess! Examination for novelty and utility, the thing we now take as the baseline of the bargain, was still a fairly new idea when Lincoln walked into the office.

Back then, what was required?

A model was required. Not a drawing, an actual miniature working example. Lincoln had his built at the Springfield shop of a mechanic named Walter Davis, and reportedly whittled portions of it himself. That model is now at the Smithsonian's National Museum of American History, where a curator has described it as among the half-dozen most valuable objects in the collection.

A specification consisting of a petition and oath. Lincoln’s were on a printed form, sworn to before a Washington justice of the peace.

The always present filing fee, only $30.00 then.

Not required, but heavily recommended as it is today, Lincoln hired a patent attorney for his patent. Abe Lincoln was a competent lawyer. But he still hired a specialist with a very old-timey name, Zenas C. Robbins.

The patent issued in seventy-three days. Not a half decade later. Jealous?

I want to dwell on one point: Lincoln hired a patent lawyer. A sitting congressman, a practicing attorney with a decade at the bar, an inventor who understood his own device better than anyone alive, and he retained specialized counsel to prosecute a single-claim application. There's a professional lesson in there that hasn't aged a day. Notably, now, only attorneys licensed to practice at the USPTO can prepare and prosecute patents.

Lincoln the IP litigator

The patent wasn't a one-off flirtation. Lincoln handled patent litigation, on both sides.

• Parker v. Hoyt (1850). Lincoln defended against a claim that his client's water wheel infringed a patent. His argument was essentially that the thing patented was commonsense technology that shouldn't have been eligible in the first place. He explained the behavior of water against a wheel to the jury from his own experience working a sawmill. The jury found no infringement. It's unreported, which is a shame, because it's a §103 obviousness argument delivered in 1850 by a man who understood the machine because he'd stood in one.

• Myers v. Edmunds. Lincoln represented plaintiffs who claimed they'd been told the patent they were buying covered the function of a grain cradle rather than merely its design. He won at trial and lost on appeal. Anyone who has ever had to explain to a client what a design patent does and does not cover will feel that one in their spine.

• McCormick v. Manny (1855). This is the Reaper case, his most famous one. And it's famous for the wrong reason. Cyrus McCormick sued John H. Manny's company for infringement of his reaper patents. Manny's team retained the Philadelphia patent lawyer George Harding, and Harding brought in Lincoln, initially to deliver the closing argument, largely because the case was expected to be tried in Illinois. Then the venue moved to Cincinnati, Harding got nervous about Lincoln's folksy style and lack of patent-bar pedigree, and brought in Edwin M. Stanton, who treated Lincoln as a rustic and froze him out. Lincoln had prepared thoroughly. He was never heard. He went home.
  Manny won before Justice McLean in January 1856, and the Supreme Court affirmed in McCormick v. Talcott, 61 U.S. (20 How.) 402 (1857). Lincoln was paid $1,000, the largest single fee of his career to that point.
  The Court's holding in Talcott is still, functionally, black-letter. McCormick had obtained his patent by limiting his claim to a particular arrangement and combination of parts. Having narrowed to get allowance, he could not then invoke the doctrine of equivalents to sweep in a competitor's differently-configured improvement. An improver of a known machine, Justice Grier wrote, cannot use equivalents to suppress every later improvement that isn't a colorable evasion.
  Claim scope is a bargain. You get what you claimed. Prosecution has consequences. Every patent litigator in the country made a version of that argument in the past several months.
  And, yes, that is the same Stanton that Lincoln later made his Secretary of War and who went at it with Andrew Johnson to keep reconstruction going after President Lincoln was assasinated.

• Dawson v. Ennis (1859–60) was Lincoln's last patent case, filed in the federal circuit court and worked while he was about eighteen months from the White House.

Lincoln's Actual Theory of IP

In 1858 and again in 1859, Lincoln delivered a lecture on discoveries and inventions, first to the Young Men's Association in Bloomington, later in a revised version to the Phi Alpha Society at Illinois College in Jacksonville. While not his best work as oratory, it contains one of the most-quoted lines in American intellectual property law.

Lincoln placed patent laws alongside writing, printing, and the discovery of America as the handful of developments most responsible for accelerating everything else. Before patent law, he said, anyone could immediately use what another had invented, so the inventor gained no special advantage from his own invention. The patent system changed that by securing exclusive use for a limited time, and thereby, in his phrase, "added the fuel of interest to the fire of genius."

That's the incentive theory, stated in 1859, better than most law review articles state it now. Well, at least with a great deal more brevity.

Lincoln is not saying the genius comes from the patent. The fire is already burning. Human beings invent because that's what human beings do. The patent system supplies fuel. It's a claim about marginal effect and about duration ("for a limited time"), and it is a fundamentally modest claim, which is why it has held up.

He believed it enough to act on it. During the Civil War the United States issued more than 30,000 patents; the Confederacy issued 266. He offered George Harding, the lawyer who had sidelined him in Cincinnati, the post of Commissioner of Patents. Harding declined. He offered Stanton, who had treated him worse, the War Department. Stanton accepted.

So, two-and-a-half months at Brown, Hay & Stephens. The work is good, the colleagues are good, and the history is pretty good too.

And yes, I will be mentioning the Lincoln thing again. Repeatedly. With escalating casualness. I have earned this and I intend to spend it slowly.

Henry Dummer, wherever you are: Beardstown was a bold call.

Jonathan L.A. Phillips is an attorney at Brown, Hay, and Stephens, with office across Central Illinois. These are his views, not his Firm’s. And he is not your attorney unless he agrees to be, in writing. As always, this is legal information, not advice. Contact Jon for your IP needs, or Lincoln history, at jphillips@bhslaw.com, (309) 643-6518, or HERE.