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 125 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 125 of 140)
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the subject matter claimed in the ENIAC patent.

4.3.27 The group of engineers and support personnel working on the ENIAC
project, other than Eckert and Mauchly, did not make any specifically proven
inventive contribution to the inventive subject matter claimed in the ENIAC
patent.

[6] 4.3. 2R The faiUire of an alleged inventor or co-inventor to make a claim of
inventorship at the time Eckert and INIauchly were being pu!)licized as the in-
ventors is evidence permitting the inference that the alleged inventor's or co-
inventor's assertions are not sustainable.

5. Claims Not Anticipated

5.1 The claims in the ENIAC patent were not anticipated by or obvious in view
of the (1) RCA Reports and the Morton and Flory Patents, (2) Andrews, et al..
Patent, (3) Mumma Patent, and (4) claim 142 was not anticipated by or obvious
in view of the Phelps Patent.

(Dia) RCA Reports

5.1.1 The RCA Report of February 26. 1942 was an internal RCA report.

5.1.2 The RCA Report of April 22, 1942 was a classified report of the U.S.
Government.

5.1.3 Both reports concern a proposed rate device which was to determine the
average rate of speed of an aircraft.

5.1.4 The proposed rate device was to he a special purpose tool which was to
be very slow and whose only arithmetic function was to be subtraction.

5.1.5 Plaintiffs witness. Dr. Jan Rajchman, a prominent scientist employed by
RCA during the time when the reports were prepared, and who also was familiar
with the ENIAC machine, was familiar with the reports (his name appears on
tliem) and the work they applied to.

5.1.6 The rate device was never completed or used.

5.1.7 Despite Rajchman's apparent knowledge of the reports and the work they
encompassed, he nevertheless recognized tliat the ENIAC machine was a pioneer-
ing enterprise, a machine of enormous consequence that had an enormous influ-
ence in the field.

40-927—75 G3



•e



5822

5.1.8 The RCA Reports do not de.scribe any operative embodiment and do not
describe a programmable computer.

5.1.1) There is no substantial equivalence, in whole or in part, between the
RCA rate device and the apparatus described and claimed in the ENIAC patent,

5.1.10 In each of Claims 65, 69, 75, 78, 109, 36, and 122, there are one or mort
express limitations which cannot be applied to the rate device as described.

5.1.11 The rate device has utility as an all-electronic computer, capable of
performing a computation for whatever purpose.

5.1.12 Claim 109 cannot be applied to the rate device since Claim 109 has
several limitations and requirements not met by the rate device.

5.1.13 Each of Claims 36 and 122 are inapplicable to the rate device since each
claim has several limitations and requirements not met by the rate device.

5.1.14 Claim 69 cannot be applied to the rate device since Claim 69 has several
limitations and requirements not met by the rate device.

5.1.15 Claim 65 also cannot be applied to the rate device since Claim 65 has
several limitations and requirements not met by the rate device.

5.1.16 Claim 78 cannot be applied to the i-ate device since Claim 78 has several
limitations and requirements not met by the rate device.

5.1.17 Claim 75 cannot be applied to the rate device since Claim 75 has several
limitations and requirements not met by the rate device.

(i) (6) Morton et al. Patent

5.1.18 The Morton et al. patent No. 2,435,841 was considered by the Patent
Office during the prosecution of the application for the ENIAC patent.

5.1.19 The Morton et al. patent discloses a function generator for use in a
single problem type of apparatus intended to be usable in a fire control device.

5"l.20 The device of the Morton et al. patent is inoperative.

5.1.21 Each of Claims 69, 65, 78, 75 of the ENIAC patent deals with various
features of a memory arrangement, which in the ENIAC patent embodiment,
includes a function table.

5.1.22 Claim 78 cannot be applied to the Morton et al. patent since Claim 78
has several limitations and requirements not met by the patent.

5.1.23 Claim 69 cannot be applied to the Morton et al. patent since Claim 69
has several limitations and requirements not met by the patent.

5.1.24 Each of Claims 65 and 75 also cannot be applied to the Morton et al.
patent since each claim has at least one limitation and requirement not met by
the patent.

(1) (c) Flonj et al. Patent

5.1.25 The Flory et al. patent No. 2,404,047 was considered by the Patent Office
during the prosecution of the application for the ENIAC patent.

5.1.26 The Flory et al. patent does not disclose the subject matter of Claims
69, 65, 78, and 75 of the ENIAC patent.

(2) Ajidrews et al. Patent

5.1.27 The Andrews et al, patent No. 2,977,048 concerns a relay computer.

5.1.28 The Andrews et al, patent application, assigned to Bell Telephone
Laboratories (BTL), was in interference in the Patent Office with the ENIAC
patent application and thus was considered by the Patent Office.

5.1.29 Andrews, one of the inventors named in the Andrews et al. patent,
reviewed the ENIAC patent after it issued and concluded that Claim 36, among
others, could not be applied to any BTL relay computer. The Andrews et al.
patent disclosed one of the BTL relay computers.

5.1.30 Claim 36 relates to the interruption of the operation of the apparatus
which controls the sequencing of a computer such that its operation may be
stepped manually at a slow rate through steps which it ordinarily would proceed
through synchronously at electronic speeds. In contrast, the Andrews relay iua-
chine always operates asynchronously.

5.1.31 Claim 36 cannot be applied to the Andrews et al. patent since Claim 36
has several limitations and requirements not met by the Andrews et al. patent.

5.1.32 Claim 122 relates to the ability to stop the computer during its automatic
sequencing and to advance it either one add time or one pulse time per depres-
sion of a switch and to display, for example, with lamps, quantities contained
in the accumulators and other iTuits. In contrast, the Andrews et al. relay ma-
chine is asynchronous and thus cannot provide pulse signals in sequence and in



5823

definitive groups. The Andrews et al. patent does not even sliow an arrangement
for producing discrete signals in sequence and in definitive groups as required by
Claim 122.

5.1.33 Claim 122 cannot be applied to the Andrews et al. patent since Claim 122
has several limitations and requirements not met by the Andrews et al. patent.

(3) Mumma Patent

5.1.34 The Mumma patent No. 2,422,428 discloses a non-programmable console
calculator apparatus which can perform a single addition, a single subtraction, or
a single multiplication only.

5.1.35 The Mumma patent was considered by the Patent Office in the prosecu-
tion of the ENIAC patent application as early as March of 1950, when it was first
cited by the examiner, and it appeared as a reference on the printed ENIAC pat-
ent when it issued.

5.1.36 Claims 52, 55, 56 and 57 relate to certain features for programming a
data processor. In contrast, the calculator apparatus disclosed in the Mumma
patent fails to meet these claims since it is not an electronic digital computer so
arranged as to allow cue to program it to carry out a series of mathematical
operations.

5.1.37 In the Mumma calculator apparatus, data is entered manually on a set
of keyboards by key depression and another button must be pressed for a multi-
plication, for example, to occur ; and thus Mumma's calculator only perfomis one
operation per key depression and pushing of a start button.

5.1.38 Mumma himself acknowledged that the tally impulse generator of the
device disclosed in the Mumma patent merely keeps track of a single value and
thus involves no selectivity such as is called for by Claims 56 and 57 of the
ENIAC patent.

5.1.3D Claim 56. and also Claim 57 which is dependent on Claim 56, cannot be
applied to the Mumma patent because each claim has several limitations and re-
quirements not met by the Mumma patent.

5.1.40 Claims 52 and 55. which also relate to programming, cannot be applied
to the Mumma patent since each claim has several limitations and requirements
not met liy the Mumma patent.

5.1.41 Claim 109 cannot be applied to the Mumma patent since it has several
limitations and requirements not met by the Mumma patent.

5.1.42 The Mumma patent cannot meet the language of either Claim 8 or Claim
9, each of which calls for more than one arithmetic operation. Mumma himself
recognized that his apparatus fails in this respect; additionally, each of these
claims has several other limitations and requirements not met by the Mumma
patent.

(4) Claim 142 of the Phelps Patent

5.1.43 The Phelps i)atent No. 2,624,507 concerns a multiplying device and not a
programmable electronic digital computer.

5.1.44 The Phelps patent discloses two embodiments and Honeywell relied on
the first embodiment which discloses a relay multiplier.

5.1.45 An IBM patent attorney, while preparing the application for the Phelps
patent, suggested the second embodiment which is the electronic version.

5.1.46 In contrast to that which is desci'ibed and claimed in the ENIAC patent,
the device disclosed in the Phelps patent cannot chain together a series of multi-
plications to be carried out in a desired order* or otherwise, much less can it per-
form multiplications and other operations in accordance with a program.

5.1.47 Claim 142 of the ENIAC patent relates to a timing mechanism having a
stepping circuit.

5.1.48 Claim 142 requires, among other things, an output signal whicli must be
a single pulse repeated regularly but with a lower frequency or a frequency re-
lated to the source frequency. In contrast the Phelps patent does not disclose a
signal, but rather a bui'st of ten pulses occurring and spaced fi'om another l)urst
of ten pulses, and does not disclose a stepping circuit.

5.1.49 Claim 142 cannot be applied to the Phelps patent since Claim 142 has
several limitations and requirements not met by the Phelps patent.

5.1.50 The application for the Phelps patent was filed in the Patent Office on
SeptemVser 27, 1945.

5.1.51 Honeywell has not met its burden of proving that any of Claims 69, 65,
78. 75. 109. 36. or 122 of the ENIAC patent is identically disclosed in either or both
RCA reports.



5824

5.1.52 Honeywell has not met its burden of proving that any of Claims 69, 65,
78, 75, 109, 36, or 122 of the ENIAC patent is anticipated by either or both RCA
reports.

5.1.53 Honeywell has not met its burden of proving that any of Claims 69, 65,
78, 75, 109. 36, or 122 of the ENIAC patent was obvious in view of anything de-
scribed in the RCA reports.

5.1.54 Honeywell has not met its burden of proving that any of Claims 69, 65,
78, or 75 of the ENIAC patent is anticipated by the Morton et al. patent or the
Flory et al. patent.

5.1.55 Honeywell has not met its burden of proving that any of Claims 69, 65,
78, or 75 of the ENIAC patent was obvious in view of the Morton et al. patent
or the Flory et al. patent.

5.1.56 Honeywell has not met its burden of proving that either Claim 36 or
Claim 122 of the ENIAC patent is identically anticipated by the Andrews et al.
patent.

5.1.57 Honeywell has not met its burden of proving that either Claim 36 or Claim
122 of the ENIAC patent is obvious in view of the Andrews et al. patent.

5.1.58 Honeywell has not met its burden of proving that any of Claims 8, 9, 52,
55, 56, 57, or 109 of the ENIAC patent is identically anticipated by the Mumma
patent.

5.1.59 Honeywell has not met its burden of proving that any of Claims 8, 9, 52,
55, 56, 57, or 109 of the ENIAC patent is obvious in view of the Mumma patent.

5.1.60 Honeywell has not met its burden of proving that Claim 142 of the ENIAC
patent is anticipated by the Phelps patent.

5.1.61 Honeywell has not met its burden of proving that Claim 142 is obvious in
view of the Phelps patent.

6. Claims Anticipated

6.1 Claims 83, 86, and 88 were anticipated by or obvious in view of the Phelps
patent.

6.1.1 During the 1930's IBM experimented with the use of electronic counting
devices as high-speed substitutes for the mechanical adding wheels used in their
commercial products. IBM engineers developed and built an electronic multi-
plier and tests were successfully carried out at its rated punching speed in
November 1942.

6.1.2 The electronic multipling apparatus developed and constructed at IBM
was later described in detail in a patent application filed by an IB;\I engineer,
Phelps, on September 27, 1945, now U.S. Patent No. 2,624,507. Although the
Phelps patent did not issue until January 6, 1953. the same disclosure by Phelps
issued earlier in the form of the equivalent British Patent No. 616,962 on Jan-
uary 28, 1949.

6.1.3 The IBM multiplier consisted of a mechanical card feeding, reading and
punching unit electrically coupled to a separate electronic multiplying unit. The
only mechanical part of the IBM electronic multiplier was that necessary to
read and punch the cards, the arithmetic operations of the multiplication being
performed at electronic speed.

6.1.4 Factors punched on an IBM card were read in the reading unit, the mul-
tiplication was performed in the electronic computing unit, and the result was
then punched on the same card as it passed through the punching station. The
electronic multiplier was pulse-responsive and operated under the control of a
first timer at a rate of 8.000 pulses per second while the peripheral card handling
equii)nient was operated by a second timer at the rate of 23 pulses per second.

6.1.5 The Patent Ofl^ce rejected claims of the ENIAC patent application as
"obviously fully met" by the British Phelps disclosure. Examiner Pokotilow ad-
vised Eckert and Mauchly's attorney, William D. Hall, that the Phelps disclosure
w\is "very pertinent to the claims in the ENIAC application." The Phelps patent
was overcome as prior art only after the filing by Eckert and Mauclily of an
affidavit representing that the invention was made by them before the filing
date of the IBIM application for the Phelps patent.

6.1.6 Notwithstanding the affidavit which "overcame" the application filing
date of the Phelps patent as prior art in the Patent Office, Phelps had in fact
made the invention of the rejected ENIAC claims before the ENIAC project
work had even begun, and such invention was not thereafter abandoned, sup-
pressed or concealed.

6.1.7 Claims S3. 86 and 88, shown to be readable in all material respects on
the prior Phelps work, are thereafter barred from patentability by the provisions
of 35 U.S.C. §§ 102(g) and 103.



5825

7. The First Draft Report

7.1 The First Draft Report was a printed publication prior to the critical
date, and was an anticipatory publication, and contains an enabling disclosure
of the ENIAC.

7.1.1 In 1944, Dr. John von Neumann, a mathematician of international dis-
tinction, was serving as a consultant with the Ballistics Research Laboratory
of the Army Ordnance. During this same period, he also was serving as scientific
advisor and counselor to the Los Alamos Laboratories in nuclear weapons re-
search matters.

7.1.1.1 Dr. Herman H. Goldstine, of the Ballistics Research Laboratory
("BLR"), sparked van Neumann's interest in the ENIAC during a train ride
which the two took to Philadelphia in late summer 1944. Almost immediately
thereafter, von Neumann viewed the ENIAC two-accumulator system in operation
and became deeply involved in the ENIAC project, meeting frequently with Eck-
ert, Mauchly, Burks and Goldstine.

7.1.1.2 Von Neiimann's dual roles BLR and Los Alamos led him to recommend
the use of high-speed computing machines as an aid to the computations of the
Los Alamos Laboratories and to Dr. Edward Teller in particular.

7.1.1..3 Goldstine and von Neumann agreed that a report should be prepared to
summarize the general ideas regarding the art of high-speed automatic electronic
digital computers discussed at the Moore School and, as a result, von Neumann
prepared a document entitled "First Draft of a Report on the ED VAC". This
First Draft Report was authored by von Neumann between February and .Tune
of 1945 and was a substantial and major part of the total report he intended to
write.

7.1.1.4 Von Neumann's First Draft Report, a comprehensive document of one
hundred pages, contains fifteen chapters, each having subsections, and deals
in detail with the logical organization and makeup of a high-speed automatic
electronic digital computer. Included in the report are definitions of report termi-
nology and a chapter devoted to the procedure used by the author for discus-
sion. Specific hardware was not detailed, in order to avoid governmental security
classification and. in Eekert's and Mauchly's words, to avoid raising engineer-
ing problems which might detract from the logical considerations under discus-
sion.

7.1.2 Goldstine, with the approval of von Neumann, circulated a large number
of mimeographed copies of the First Draft Report for the express purpose of
making the knowledge therein publicly available to advance the state of the
computer art.

7.1.2.1 The purpose of early publication of the First Draft Report was to fur-
ther the development of the arm of building high-speed automatic electronic
digital computers, and to advance scientific engineering thinking on this subject
as widely and as early as feasible.

7.1.2.2 After its completion in mimeographed form, the Draft Report, which
was unclassified with the knowledge and approval of Army Ordnance, was im-
mediately distributed to members of the technical staff in the Moore School, and
thereafter, to other persons in the United States and England variously repre-
senting the Ballistics Research Laboratory ; the Princeton Institute for Advanced
Study; the Applied Mathematics Panel on the National Defense Research Com-
mittee; the Radiation Laboratory at the Massachusetts Institute of Technology;
Scientific Computing Ltd. in London, England; United States Army Ordnance;
United States Naval Ordnance : the Computing Lal)oratory at Cambridge Uni-
versity in England : the Mathematics Institute at New York University ; and
the University of Chicago.

7.1.2.3. The First Draft Report was a printed publication, within the meaning
of 8.5 U.S.C. § 102, by .June 30, 1945, prior to the ENIAC patent critical date.

7.1.2.4 The distril>utinn of the First Draft Report had an important influence
on tlie continuing development of electronic computers.

7.1.2.5 The computing system described by von Neumann in the First Draft
Report featured the use of the computer's high-speed memory to store not only
numbers but operating instructions as well. Called "stored programming." this
concept introduced new dimen.sions in the speed, flexibility and usefulness of
automatic electronic digital computers.

7.1.3 While the First Draft Report does not include a detailed disclosure of
the specific hardware to mechanize the machine disclosed within the report,
it does include a disclosure sufficient to teach one skilled in the art how to



5826

accomplish the logical control of a high-speed automatic digital computing
system.

7.1.3.1 Each of the logic elements (referred to as "organs") disclosed in the
Fir.st Draft Report had existing physical counterparts and/or could have been
constructed by the exercise of ordinary skill in the art at the time the report
was published, before the critical date for the ENIAC patent. Experts in the held
testified at trial that the report is, and was at the time of its publication sufficient
to enable persons skilled in the art to make and use the computer set forth in
the report.

7.1.3.2 Plaintiff's tutorial expert witness, Kenneth Rose, read and understood
the First Draft Report and presented an in-court demonstration model of the
stored program technique taught in the First Draft Report.

7.1.3.3 The Court also heard the testimony of plaintiff's exi^ert witness Paul
Winsor. who studied the First Draft Report extensively with a view toward
determining whether or not a computer could have been constructed at the time
(194.5) from the report's teachings. He examined the wartime technology avail-
able, when the report was published, to construct the elements referred to in
the report. As a result of his study, Winsor concluded, and this Court concurs,
that the report was sufficient to enable persons .skilled in the art in 1945 to
construct the computer set forth therein with the available technology. ^Moreover,
documents written by persons concerned with the report, contemporaneous
with its publication, corroborate this testimony. For example, EXIAC patent
attorney Church commented on the First Draft Report.

"I think the broad conception is there and to one skilled in the art it is
sufficient to put them on the road of accomplishing a development."
Yon Neumann's attorney Townsend agreed, despite the fact that his conclusion
prejudiced any possible patent rights his client might have sought. The Court
credits this testimony.

7.1.4 Tlie claims of the ENIAC patent asserted in this suit are anticipated by
or obvious in view of the First Draft Report. The Court i-eaches this finding
Ihrough an independent study of the record, including the testimony of plaintiff's
(fixpert. Winsor.

7.1.4.1 Claims 8, 9, 52, 55, 56, 57, 65, 75 and 78 are each anticipated by the
First Draft Report.

7.1.4.2 The inventive subject matter of "the Automatic Electronic Digital Com-
puter" is either anticipated by or obvious in view of the First Draft Report.

7.1.5 The finding that the First Draft Report disclosed the liasic concepts of
the ENIAC invention is supported by statements of those who considered the
same issue prior to the time the ENIAC application was filed.

7.1.5.1 The applicants for the ENIAC patent were informed before the ENIAC
j)atent application was filed, by Army Ordnance patent lawyers who prepared
jand prosecuted the ENIAC application, that the First Draft Report was a bar-
ring publication. [See also Findings 13.31 et seq. herein]

7.1.0.2 Defendants have admitted that by April 8. 1947, Eckert and Mauchly
had lieen advised that the Army Ordnance patent lawyers considered the First
Draft Report to be a printed publication within the meaning of tlie patent statute.

7.1.5.3 On April 8. 1947, a meeting including the patentees, Eckert and Mauchly,
and Libman (the principal active lawyer who prepared and filed the ENIAC
application on behalf of Eckert and Mauchly) and Church (later an attorney
of record for Eckert and Mauchly in the ENIAC application), was held to con-
sider the impact of the First Draft Report on the patentability of inventions
theretofore made by them. During this meeting. Church stated :

"It is our firm belief from the facts that we have now that this report
of yours dated .30 .Tune 1945 is a publication and will prohibit you or anyone
else from obtaining a patent on anything it discloses because it has been
published more than a year and statute provides that if you don't file dis-
closures within a year it constitutes a bar to patenting that device."

7.1.5.4 During the April 8, 1947 meeting, Eckert admitted that the report was
a barring imblication, and it was clearly and unequivocally established, in the
presence of the patentees Eckert and Mauchly and their patent lawyers Church
and liibman, that the report was an enabling publication dated more than one
year before the ENIAC patent application was filed.

7.1.6 It is apparent from the distribution list of the June 30. 1945 First Draft
Report that Mauchly was charged with the duty of delivering the report to the
Army Ordnance Patent Department. The list also makes clear the report's rele-
Tance to Eckert's and Mauchly's patent matters. On the list, it is stated :



5827

"Dr. J. W. Mauchly (2) (to be given to patent lawyer and patent Dept. of
Ordnance)"

Tliere is no evidence tliat Mauchly ever carried out this duty, and the Frst Draft
Report did not come to the attention of the Army Ordnance Patent Department
until it was later submitted by von Neumann.

8. The AMP Report and Burks Article

8.1 The AMP Report and Burks Article state printed publications prior to tlie
crirical date.

8.1.1 The AMP Report No. 171.2R, portions of which wore copied into tlie
ENIAC application, is a general de.scription of tlie ENIAC macliine. Its title
indicates its purpose : "Description of the ENIAC and Complaints on Electronic
Digital Computing Machines."

8.1.1.1 The AMP report was prepared for the Applied Mathematics Panel of
the National Defense Research Committee at the request of Dr. Brainerd of the



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 125 of 140)