United States. Congress. Senate. Committee on the.

The Industrial reorganization act. Hearings, Ninety-third Congress, first session [-Ninety-fourth Congress, first session], on S. 1167 (Volume pt. 7) online

. (page 124 of 140)
Online LibraryUnited States. Congress. Senate. Committee on theThe Industrial reorganization act. Hearings, Ninety-third Congress, first session [-Ninety-fourth Congress, first session], on S. 1167 (Volume pt. 7) → online text (page 124 of 140)
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or the larger 20-accumulator ENIAC machine to perform at any particular
operating speed.

2.1.4.7 During the course of the prosecution of the ENIAC patent application,
the completion and successful operation of the two-accumulator ENIAC system
during mid-1944 was asserted by the applicants. Eckert and Mauchly. to embody
fully .ind constitute an actual reduction to practice of the invention claimed in
the EXTAC patent application.

2.1.4. S Any improvements to the two-accumulator system which were com-
pleted subsequent to June 30, 1944. and prior to the eiid of 1944, were also on



5816

sale and sold to Army Ordnance more than one year prior to the filing date of
the EXIAC patent application.

2.1.5 The EXIAC machine, disclosed and claimed in the EXIAC patent, was
constructed, fully tested and successfully operated in December, 1945, and was
also both on safe and sold to Army Ordnance more than one year prior to the
filing date of the EXIAC patent application.

2.1.5.1 By mid-1944, when the two accumulator units were completed and
successfully operating in the two-accumulator EXIAC system, the final design for
the 20-accumulator EX'IAC machine was essentially completed and frozen.

2.1.5.2 The completion and successful operation of the two-accumulator EXIAC
system was relied upon by the Government in its decision to authorize Supple-
ment 4 to the 4926 contrar-t for work on the EDVAC, and this constituted a
commercialization of the EX^IAC invention embodied in the two-accumulator
sy.stem.

2.1.5.3 Eckert and Mauchly, after mid-1944, devoted some of their time to the
development of an advanced computer system kno-mi as the EDVAC.

2.1.5.4 Supplement 5 of the 4926 contract, executed in mid-January, 1945. sub-
sequent to the construction, successful operation, delivery of and payment for
the two-accumulator system as it existed on June 30, 1944, provided for the com-
pletion of the 20-accumulator EXIAC "pilot model."'

2.1.5.5 By early December, 1945. the entire EXIAC machine was completed
and in oi)eration. the various units having already been individually tested, and
the Government had assumed custody, dominion and control over its use and
operation.

2.1.5.6 The entire EXIAC machine was placed on sale or sold at the time it
was completed and surrendered to the custody, dominion and control of the Gov-
ernment at the Moore School in December. 1945.

2.1.5.7 Supplement 7 of the 4926 contract required delivery of the pilot model
by December 31. 1945. There were no supplements to the 4926 contract which
extended the delivery date of the EXIAC machine beyond December 31. 1945.
The entire EXIAC machine was sold to the Government at the time of its Decem-
ber. 1945. completion, pursuant to the terms of Supplement 7 to the 4926 contract.

2.1.5.8 Xeither the 4926 contract nor any of its supplements contained any
specifications to be met other than the delivery of a Final Report and delivery
of the EX'IAC machine. The 4926 contract and its supplements did not require
that the EXIAC machine pass any performance test.

2.1.5.9 In June, 1946, Donald S. Murray. Assistant Comptroller of the Univer-
sity of Pennsylvania, wrote to Army Ordnance and requested that it formally
accept the EXIAC machine because it had been in use by Army Ordnance since
December. 1945.

2.1.5.10 The decision to document a formal acceptance of the ENIAC machine
was made at a conference held Jime 11. 1946. It was decided that an Ordnance
employee would, for purposes of transfer of property accountabilit.v within
Ordnance, furnish certification to the Philadelphia Ordnance District inspector
that the EX'IAC machine had been completed and received on behalf of Arm.v
Ordnance's Ballistic Research Laboratory. This was also desired to accompany
change order 10 which validated, after the fart, the December. 1945. actual de-
livery of the EXIAC machine F.O.B.. floor of the contrar-tor's plant.

2.1.6 The subject matter disclosed and claimed by the EXIAC patent was con-
tained in the Final Report on the EX'IAC. which embodied all results of the
EX^AC work under the 4926 contract, and that Final Report was delivered to
and formally accepted by Army Ordnance prior to the critical date.

2.1.6.1 The 4926 contract also required the delivery to the Government of a
Final Report.

2.1.6.2 The EXIAC Final Report required by the contract was completed and
delivered to the Government and formallv accepted as conforming requirements
by June 6. 1946.

2.1.6.3 The Final Report contains a written description of the invention claimed
by the EXIAC patent in at least as great detail as the patent specification which
was based on it.

2.1.7 The EX'IAC machine was constructed and "the invention" which it em-
bodied was completed, reduced to practice in operative form, and therefore ready
for patenting, by December. 1945.

2.1.7.1 The EXIAC machine, when it was used to perform the Los Alamos
calculations in 1945. was being used for its intended purpose and gave correct
answers to problems. Any experimental staee was passed prior to December,
1&45.



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2.1.7.2 Eckert and Mauchly, in eight affidavits prepared between 1951 and 1955
and submitted to the Patent Office in connection witli the prosecution of the
EXIAC patent application, swore that tlie reduction to practice of "the inven-
tion"' of tlie ENIAC patent liad occurred on or prior to December 10, 1945.

2.1.7.3 In his testimony in 1954 in Patent Office Interference 85,809 witli the
Williams patent of Bell Laboratories, Eckert, in answer to a question by his own
attorney as to whether the Los Alamos "problem" was satisfactorily worked out
on the ENIAC machine, stated :

"Yes.

"The problem consisted of several hundred runs. Each run in itself lasted
perhaps 20 minutes. Each of these runs were related to the next run so that
the previous run had to be satisfactorily completed before the next run
could be undertaken.

"Each run was in fact run twice, the results punched into punch cards,
the punch cards put into a reproducer, what is known as a comparing board,
and the two runs checked against one another for consistency. Then each few
runs a test problem which ascertained that the machine was functioning
correctly was also run, so that the problems were in effect tested for self-con-
sistency, errors of a permanent nature, and errors of an intermittent nature.

"Incidentally, this problem was sufficiently classified that Dr. Goldstine
and myself, plus the two men from the other agency who ran the problem,
were the only people who were aware of the nature of the problem at the
Moore School. The Dean of the school and other members of the staff, no
one else knew the nature of this problem. And I have never been told that
this problem was declassified."

2.1.7.4 In his testimony in Patent Office Interference 85,809 in 1954, Mauchly
described the use of the ENIAC machine in 1945 as follows :

They actually worked with the computer and began setting it up in Decem-
ber, and if I recall correctly they obtained some useful results before the end
of the year.

Q That is before the end of 1945?

A Yes.

Q Thereafter was the machine in more or less continuous use solving
problems ?

A Yes. * * *

2.1.7.5 The brief submitted on behalf of Eckert and Mauchly in Interference
85,809 adopted the testimony of Eckert and Mauchly. For example, the testimony
of Eckert was summarized in 1955 as follows :

"The completed machine was first used for working problems approxi-
mately two and one-half years after they started, on balistic problems and
on another classified problem as to which the subject matter is still classi-
fied. That problem took considerably over one month, the actual running
time of the problem being somewhere around two weeks. The difficulties
were not with the machine but with the mathematical nature of the problem
and mistakes of the mathematicians who had designed the problem for the
machine (REC 641 to 643 Q122 to 126). The problem consisted of three si-
multaneous partial differential equations with an empirical function in the
kernel of the equation (REC 643, 644 Q121, 128)."

2.1.7.6 The Court has considered the representations of Eckert, Mauchly and
their attorneys, who also represented SR's predecessors, before the Patent Office
during the procurement of the ENIAC patent, and has balanced them against
the trial testimony here of Eckert and Mauchly. The more nearly contemporane-
ous statements made before the Patent Office, many years nearer to the events
and prior to the emergence of iiublic use and on sale as substantial issues, are
binding admissions entitled to be credited.

2.1.8 The Moore School's procurement of further government-financed work
to design and build an EDVAC automatic electronic digital computer, utilizing
the know-how and competence derived from the ENIAC invention subject matter,
was a commercialization of "the invention" constituting an on sale within the
meaning of 35 U.S.C. § 102(b).

2.1.8.1 Subsequent to the successful completion and reduction to practice of
the two-accumulator ENIAC system in July, 1944, a Supplement 4 to the 4926
•contract was negotiated to begin development and construction of a new machine,
EDVAC, which would handle problems beyond the scope of ENIAC.

2.1.8.2 As stated in the Progress Report on the EDVAC. describing work done
under Supplement 4 of the 4926 contract, EDA^AC and ENIAC are both electronic
digital computing machines.



5818

2.1. 5.3 Subsequent to the successful completion, reduction .to practice and
commencement of practical use of the ENIAC machine by its purchaser, Army
Ordnance, in December, 1945, a new separate contract for the EDVAC was
negotiated in April 1946, and given the designation AV-36-034-ORD7593 (herein-
after referred to as the 7593 contract).

2.1.8.4 The completion both of the two-accumulator ENIAC system and of the
ENIAC machine was used to demonstrate the capability of the Moore School
and its team to build electronic digital computers such as ENIAC or EDVAC.
That demonstrated capability resulted in the award of Supplement 4 of the
4926 contract and the award of the 7593 contract (both relating to the EDVAC)
to the Moore School.

2.1.8.5 Supplement 4 to the 4296 contract and the 7593 contract were each an
exploiting or commercialization by the Moore School of the ENIAC invention
subject matter, the "electronic digital computer," after it was ready for patent-
ing and prior to the critical date.

2.2 Implicit in this finding (2.1) is that Mauchly and Eckert obviously at-
tempted to commercialize the ENIAC prior to the critical date.

2.2.1 Findings 1.1 8 to 1.1.8.19 above as to public use are pertinent, and refer-
ence thereto is hereby made in connection with the statutory bar of "on sale."

2.3 The standards of proof stated (in 1.2, 1.3, and 1.4) above apply here.

3. Atanasoff

3.1 The subject matter of one or more claims of the ENIAC was derived from
Atanasoff, and the invention claimed in the ENIAC was derived from Atanasoff.

3.1.1 SR and ISD are bound by their representation in support of the counter-
claim herein that the invention claimed in the ENIAC patent is broadly "the
invention of the Automatic Electronic Digital Computer."

3.1.2 Eckert and Mauchly did not themselves first invent the automatic elec-
tronic digital computer, but instead derived that subject matter from one Dr.
John Vincent Atanasoff.

3.1.3 Although not necessary to the finding of derivation of "the invention" of
the ENIAC patent, Honeywell has proved that the claimed subject matter of the
ENIAC patent relied on in support of the counterclaim herein is not patentable
over the subject matter derived by Mauchly from Atanasoff. As a representative
example, Honeywell has shown that the subject matter of detailed claims 88
and 89 of the ENIAC patent corresponds to the work of Atanasoff which was
known to Mauchly before any effort pertinent to the ENIAC machine or patent
began.

3.1.4 Between 1937 and 1942, Atanasoff, then a professor of physics and mathe-
matics at Iowa State College, Ames, Iowa, developed and built an automatic
electronic digital computer for solving large systems of simultaneous linear
algebraic equations.

3.1.5 In December, 1939, Atanasoff completed and reduced to practice his basic
conception in the form of an operating breadboard model of a computing machine.

3.1.6 This breadboard model machine, constructed with the assistance of a
graduate student, Clifford Berry, permitted the various components of the ma-
chine to be tested under actual operating conditions.

3.1.7 The breadboard model established the soundness of the basic principles
of design, and Atanasoff and Berry began the construction of a prototype or pilot
model, capable of solving with a high degree of accuracy a system of as many
as 29 simultaneous equations having 29 unknowns.

3.1.8 By August, 1940, in connection with efforts and further funding. Atanasoff
prepared a comprehensive manuscript which fully described the principles of
his machine, including detail design features.

3.1.9 By tlie time the manuscript was prepared in August, 1940, construction
of the machine, destined to be termed in this litigation the Atanasoff-Berry com-
puter or "ABC." was already far advanced.

3.1.10 The description contained in the manuscript was adequate to enable
one of ordinary skill in electronics at that time to make and use an ABC
computer.

3.1.11 The manuscript was studied by experts in the art of aids to mathemati-
cal computation, who recommended its financial support, and these recommen-
dations resulted in a grant of funds by Research Corporation for the A.BC's
continued construction.



5819

3.1.12 In December, 1940, Atanasoff first met Manclily while attending a meet-
ing of the American A.ssociation for the Advancement of Science in Philadelphia,
and generally informed Mauchly about the computing machine which was under
construction'at Iowa State College. Because of Mauchly's expression of interest
in the machine and its principles, Atanasoff invited Mauchly to come to Ames,
Iowa, to learn more about the computer.

3.1.13 After correspondence on the subject with Atanasoff, Mauchly went to
Ames, Iowa, as a houseguest of Atanasoff for several days, where he discussed
the ABC as well as other ideas of Atanasoff's relating to the computing art.

3.1.14 Maiichly was given an apportunity to read, and did read, but was not
permitted to take with him, a copy of the comprehensive manuscript which Ata-
nasotf had prepared in August, 1940.

3.1.15. At the time of Mauchly's visit, although the ABC was not entirely com-
plete, its construction was sufBcienlly well advanced so that the principles of
its operation, including detail design features, was explained and demonstrated
to Mauchly.

3.1.16 The discussions Mauchly had with both Atanasoff and Berry while at
Ames were free and open and no significant information concerning the ma-
chine's theory, design, construction, use or oi>eration was withheld.

3.1.17 Prior to his visit to Ames, Iowa, Mauchly had been broadly interested
in electrical analog calculating devices, but had not conceived an automatic
electronic digital computer.

3.1.18 As a result of this visit, the discussions of Mauchly with Atanasoff and
Berry, the demonstrations, and the review of the manuscript. Mauchly derived
from the ABC "the invention of the automatic electronic digital computer"
claimed in the ENIAC patent.

3.1.19 The Court has heard the testimony at trial of both Atanasoff and
^Mauchly, and finds the testimony of Atanasoff with respect to the knowledge
and information derived by Mauchly to be credible.

4. Inventors

4.1 The application for the ENIAC patent was filed by M and E, whom I find
to be the inventors.

4.1.1 On June 26, 1947, Eckert and Mauchly (sometimes abbreviated herein as
"M and E") filed U.S. patent application S.N. 757,158, later designated Sperry
Rand Case-EM-6, describing the ENIAC machine "which embodies our
invention."

4.1.2. On June 19, 1947, Eckert and Mauchly executed an oath as the sole co-
inventors in support of the ENIAC patent application.

4.1.3 Honeywell contends that because the ENIAC machine was the product
of a team effort comprising the intermingled contributions of all of the per-
sonnel on the ENIAC project team, others were improperly excluded as
co-inventors.

4.1.4 SR and ISD contend that Honeywell has not met its burden of proving
that persons other than Eckert and Mauchly were co-inventors on a claim-by-
claim basis.

4.1.5 As set forth in Sections 1 through 3 of these Findings, the claimed inven-
tion embodied in the ENIAC machine was barred from patentability by prior
public use and on sale and "the invention"' claimed in the ENIAC patent was
derived from Atanasoff. Although Eckert and Mauchly were therefore not en-
titled to patent that claimed invention, they have not been shown to have in-
correctly excluded as named co-inventors, other members of the ENIAC team.

4.2 I am inclined to be of the view that the work on the ENIAC was a group
or team effort and that the inventive contributions were made by Sharpless,
Burks, Shaw, and others.

4.2.1 Arthur W. Burks made major contributions to the design of the accumu-
lator and multiplier of ENIAC and signed at least 77 drawings.

4.2.2 T. K. Sharpless made major contributions to the design of the high-speed
multiplier, the initiating and cycling units, and the accumulator of ENIAC
and signed at least 83 drawings.

4.2.3 Robert F. Shaw contributed to the design of the function table, the ac-
cumulator, the master programmer, the initiating unit, the constant transmitter
and the printer of ENIAC and signed at least 103 drawings.

4.2.4 John H. Davis made contributions to the design of the accumulator, the
initiating unit and the cycling unit of ENIAC and signed at least 56 drawings.



5820

4 2 5 Frank Mural made contributions to the design of the accumulators and
the master programmer of ENIAC and signed at least 124 drawings.

4.2.6 Chuan Chu made contributions to the design of the divider/square
rooter of ENIAC and signed at least 28 drawings.

4 '> 7 In early 1944, S. B. Williams, employed by Bell Telephone Laboratories,
conc'eived a design for the temporary storage of input information in relays
which was disclosed to the ENIAC design team and later incorporated in the

ENIAC machine. . -, .^, . . ^

4.2.8 IBM provided the input and output equipment and the interface circuits

for the ENIAC machine during the first half of 1944.

4 2 9 The design of the ENIAC machine required contributions from many

engineers at the Moore School who were a part of the ENIAC design team.
4.3 There is, however, a failure of proof as to specific contributions by others

than M and E. , , ^ ,

4 3.1 Notwithstanding Findings 4.2.1 to 4.2.9 above, Honeywell has not offered
evidence applving claims of the ENIAC patent specifically to the respective and
particular contributions made by each member of the ENIAC project team in the
absence of which the court is unable to determine such specific matters.

4.3.2 In the summer of 1941. John W. Mauchly (Mauchly") and John Presper
Eckert, Jr. ("Eckert") met at the Moore School of Electrical Engineering at the
University of Pennsylvania and began a series of discussions, conversations and
interchanges about electronic computing .

4.3.3 In August 1942, Mauchly, by then a member of the faculty of the Moore
School, prepared a memorandum, setting out some of the ideas he and Eckert, a
graduate student, had discussed on the sul).iect of electronic computing.

4.3.4 In March 1943. the memorandum, which had been circulated to Brainerd
and Chambers of the Moore School came to the attention of the Office of the Chief
of Ordnance of the United States Army through Captain Herman Goldstine and
Colonel Paul Gillon, both of whom thought it was a very exciting proposal.

4.3.5 Thereafter, the Moore School submitted a formal proposal under the
aegis of Prof. John G. Brainerd. the more technical parts of which were written
by Eckert and Mauchly. and the Government and the Trustees of the University
of Pennsylvania entered into a contract for "research and experimental work in
connection with the development of an electronic numerical integrator and com-
puter" [ENIAC. an acronym coined by Col. Gillon].

4.3.6 Even before the contract had been awarded, Eckert and Mauchly began
to develop things to be assigned to others to work on when the latter were as-
signed to the ENIAC project.

4.3.7 Eckert was made the laboratory supervisor and chief engineer of the
ENIAC project by Brainerd : and Mauchly, along with Eckert, was placed in
charge of engineering and testing.

4.3.8 A group of engineers and other supporting personnel was assembled to
work with Eckert and Mauchly on the ENIAC project. Included in this group
were : Arthur W. Burks, Joseph Chedaker, J. Chuan Chu, James Cummings. John
H. Davis. Harry Gail, Robert Michael, Frank Mural, Thomas E[ite Sharpless and
Robert Findley Shaw.

4.3.9 Eckert and Mauchly explained to the engineers what was to be done and
assigned them specific jobs.

4.3.10 "While others on the project were worldng on and building test equipment,
Eckert and Mauchly were working out the details of what the ENIAC machine
should be.

4.3.11 Those working on the ENIAC project, under Eckert and Mauchly. were
employees of the Moore School who assisted in the engineering work, construc-
tion and testing of the ENIAC machine.

4.3.12 During the project. Eckert and Mauchly continued to refine and clarify
the conception of the group as to how the computing system was going to be im-
plemented and realized.

4.3.13 By September 27, 1944, Eckert and Mauchly's conception of the ENIAC
machine was complete.

4.3.14 On September 27. 1944. Eckert wrote a letter to all the engineers on the
project advising them that any patents "must be taken out in the name or names
of the inventors in order to be valid" and asking the engineers to write out
and subit to him or Mauchly any claims to which they believed they were entitled.

4.3.15 None of the responses to Eckert's letter identify or clainii any inventive
contribution to anything claimed in the ENIAC patent.

4.3.16 There is no evidence that any project engineer or anyone else, other than
Eckert and INIauchly, identified or asserted any inventive contribution to the



5821

inventive sulgect matter claimed in the ENIAC patent until some 20 years after
Ec-kert sent his September 27, iy44 letter.

4.3.17 Contemporary documents and publicity described only Eckert and
Mauchly as the co-inventors.

4.3.18 Both Army Ordnance and Moore School officials knew that Eckert and
Mauchly were naming themselves as inventors and that the patent application
for the ENIAC patent was being prepared in the names of only Eckert and-
Mauchly but there is no evidence that other engineers knew of this or of the
nature or scope of the claims finally made.

4.3.19 Eckert and Mauchly and the project engineers who testified, knew of no
one. other than Eckert and Mauchly, who made any inventive contribution to the
inventive subject matter claimed in the ENIAC patent.

4.3.20 Honeywell has not proved that any of the following are inventors or
co-inventors of the inventive subject matter claimed in the ENIAC patent : Arthur
"W. Burks, Joseph Shedaker, J. Chuan Chu, James Cummings, John H. Davis,
Harry Gail, Robert Michael, Frank Mural, Thomas Kite Sharpless, Robert Find-
ley Shaw, Arthur H. Dickinson, John AMieeler, S. B. Williams, and Adele
Goldstine.

4.3.21 U.S. Patent #3,120.606 (the ENIAC patent) issued on February 4, 1964.
Eckert and Mauchly are the named inventors.

[4] 4.3.22 The ENIAC patent is presumptively valid and the named inventors,
Eckert and Mauchly. are presumed to be the true and actual inventors.

4.3.23 Honeywell has a heavy burden to overcome the presumption of validity.

4.3.24 Honeywell has failed to establish by a preponderance of the evidence
tliat there were any inventors or co-inventors of the inventive subject matter
claimed in the ENIAC patent, other than Eckert and Mauchly.

4.3.25 To meet its biirden Honeywell woiTld have bad to establish that there
were other inventors of the subject matter of the claims of the ENIAC patent.
"Each claim of a patent * * * shall be presumed valid independently of the
validity of other claims * * *."

[5] 4.3.2(1 Tlie work, expei-iments. and suggestions of others — not rising to the
level of invention — in assisting Eckert and Mauchly in carrying out the con-
ception does not entitle such others to be treated as inventors or co-inventors of



Online LibraryUnited States. Congress. Senate. Committee on theThe Industrial reorganization act. Hearings, Ninety-third Congress, first session [-Ninety-fourth Congress, first session], on S. 1167 (Volume pt. 7) → online text (page 124 of 140)