Documenting Patent Litigation Records
The Lemelson Center for the Study of Invention and Innovation at the Smithsonian’s National Museum of American History began a preliminary study of patent attorney records in 2002. This was part of a larger framework for studying and analyzing existing collections, and setting goals and action steps. These together enabled the Center’s staff to engage in more strategic and focused documentation activity. By studying the process of patent filing, litigation, and other categories of invention work undertaken by patent attorneys, we began to understand better what these records reveal about how inventors articulate and document their ideas.
Additionally, we hoped to contribute to the preservation of significant invention documentation created in the process of the inventor/attorney relationship and how these two parties interact. In 2005, the Archives Center acquired the first of three collections of independent inventors containing significant patent litigation documentation—the Eisler Engineering Company Records, the Segre A. Scherbatskoy Papers, and the Arthur Ehrat Papers.
The Eisler Engineering Company Records document Charles Eisler, a Hungarian immigrant who was a skilled mechanic and engineer and his company, Eisler Engineering Company of Newark, New Jersey, which manufactured equipment for producing electric lamps, television and radio tubes, welding equipment, and laboratory equipment. The company’s Litigation and Patent Records, 1897–1953 (bulk 1926–1929) consist primarily of briefs (for the defendant, Eisler, and plaintiff, General Electric) and the transcript of record in the case General Electric vs. Charles Eisler and Eisler Engineering Company, 1926–1929. The company was sued at least four times by G.E. between 1923 and 1928 for alleged patent infringement, but won each case. The cases involved four U.S. patents owned by G.E. The published brief, transcripts, and other materials, when assembled together, provide a comprehensive overview of the litigation and are an important resource for interpreting claims.
The Serge A. Scherbatskoy Papers provide insight into the relationship between inventors and the United States oil industry between the 1930s and 1990s, the evolution of applied geophysics, and the development of technological innovation in oil prospecting. One of the strengths of the collection is the patents he pursued, renewed, or impeded. As sole proprietor of his own company, Geophysical Measurements Corp., Scherbatskoy meticulously constructed an international patenting program, which made him a successful player among the giants of the oil industry. Legal files illustrating litigation over the infringement of his patents are also found in the collection. The papers demonstrate how the oil prospecting industry worked from scientific, commercial, and legal perspectives. It is one of the most comprehensive collections we have acquired where patent and litigation records comprise the bulk of the collection. Scherbatskoy’s collection also reveals his intimate involvement in the patenting process—from assisting in writing the patent itself to tracking infringement. It is important to note that his expertise and subject knowledge was a critical aspect of his working relationship with his attorney(s).
Arthur Ehrat was an Illinois inventor who patented a breakaway basketball rim, fashioning his prototypes from bolts, metal braces, and one key part: a piece of the heavy-duty coil spring from a John Deere cultivator. His invention helped to revolutionize the way basketball is played because players could slam dunk the ball with fewer injuries and without bending the rims or breaking backboards. The bulk of the collection is made up of attorney correspondence, patent infringement documents, and patent licensing documents. The collection also contains handwritten notes by Arthur Ehrat and his attorneys, sketches of his inventions, an oral history interview, and photographs. While processing this collection we learned that the correspondence found throughout the collection is key to understanding the legal documents. It provides insight into the legal negotiations behind the settlement and licensing process, and the diligence necessary to protect a viable patent from infringement. The correspondence, when read in conjunction with litigation and licensing documents, provides a better sense of the negotiations between attorneys and how and why the legal documents were created.
The collection also helped us define more clearly several legal terms. A patent file history/file wrapper contains all of the documents filed by an applicant and examiner, and Bates numbers. Bates numbers—named after the Bates Automatic Numbering Machine and patented in the late 1800s—are unique numbers used to identify documents. The parties to a lawsuit use these numbers to keep papers in order when they are sent to the other party during discovery.
Patent attorneys’ records are a potentially valuable resource for historians of science and technology. The more we learn about this aspect of the process of invention and the documentary record created, the better able archivists will be to assist scholars.
For more information about the Lemelson Center and its work documenting invention, contact Archivist Alison Oswald at email@example.com.