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 126 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 126 of 140)
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Moore School.

8.1.1.2 The report is sixty -eight pages in length, and includes a description of
Ihe ENIAC machine with drawings and appendixes discussing the arithmelic
operation, programming, and construction data of the ENIAC machine.

8.1.1.3 Tlie report was joint autliorcd by Brainerd, Goldstine, Eckert and
Mauchly.

8.1.2 In excess of one hundred copies of the AMP Report were printed, sep-
arately numbered, and distributed during or prior to March, 1946, to numerous
persons skilled in the art at that time. This distribution was made with the
aijproval of Army Ordnance.

8.1.3 The per.sons receiving the AMP report represented or were alBliated with
such institutions as Ballistics Research Laboratory, University of Chicago,
Princeton Institute for Advanced Study. Los Alamos Scientific Laboratory, the
National Academy of Sciences, University of Micliigan, University of Vermont,
RCA, New York University and University of Pennsylvania.

8.1.4 The AMP Report, as distrilnited, was marked "Restricted." However, this
classification permitted dissemination of material to anyone for official purposes
and was, at the time of the publication of the A:MP Report, the lowest level of
Government security classification. In any event, the general principles of design
and f»perational and functional characteristics of the ENIAC were declassified
from military security by Army Ordnance on r>ecember 7, 1945, and the "Re-
stricted" stamp failed to prevent actual publication.

8.1. .5 The ENIAC patent was, in substantial part, based upon and copied from
the AMP Report. Tlie report's stated purpose was "to give the reader a rather
complete account of the general features of the ENIAC * * *", and had the
intended effect. For example, one of its readers. Major Sterne, received "a much
clearer idea of the working employment of the ENIAC." Sterne also stated that
the report dealt "clearly with tlie theory of the design of digital computing
devices." and the Court concurs in tliis contemporaneous comment.

8.1.6 The Burks article, entitled "Super Electronic Computing Machine," is a
seven-page description of the ENIAC machine having as its stated purpose "to
ex]ilain how the ENIAC solves mathematical problems electronically." Included
in the article are photographs of a layout of the ENIAC machine and of the
initiating and cycling units. Also shown are the master programmer and ac-
cumulatfir, and a diagram of the actual connections between units of the ENIAC
machine to solve a representative differential equation. Separate schematic
diagrams of various logic gates (e.g., a flip-fiop, "and" gate and "or" gate employ-
ing vacuum tubes) and of a typical ENIAC circuit showing the interconnection
of two i>rogram control circuits with an accumulator, also are set forth and dis-
cussed in the article. The text of the article sets forth and discusses the basic
ENIAC units including aritlimetic units, the control units, and the input/output
equipment.

8.1.7 Although the Burks Article appeared in the July, 1946 issue of Electronics
Industry (a date after the critical date), the credible evidence shows that the
article was first published on June 25, 1946, before the critical date.

[7] 8.1.8 The fact of publication of the Burks article on this date is evidenced,
pursuant to 17 U.S.C. § 209, by the certificate of copyriglit registration for the
article which states : "This issue was published on the 25 day of June 1946" by
the Guide Printing Company, New York, N.Y.



5828

8.2 Plaintiff Ims not. however, proved the readability of the claims of the
EXIAC on either the A:MP Reiwrt or the Buries Article.

8.2.1 Honeywell did not prove that the AMP report describes to those skilled
in the art how to make and use the invention disclosed in Claim 142 or any other
claim of the ENIAC patent.

8.2.2 The Burks Article was considered by the Patent Office and the patent
examiner found that it did not anticipate the claims of the EXIAC patent appli-
cation in interference.

8.2.3 Honeywell did not prove that the Burks Article describes to those skilled
in tlie art how to make and use the invention disclosed in Claim 8 or any other
claim of the EXIAC patent.

8.2.4 Honeywell offered no testimony to show readability of any of the claims
of the EX'IAC patent on the AMP report or the Burks Article.

8.2.5 Honeywell did not meet its burden of proving that the inventive subject
matter claimed in the EXIAC patent was anticipated by or obvious in view of the
AMP report or that any claims of the EXIAC patent read on the AMP report.

5.2.6 Honeywell did not meet its Inirden of proving that the inventive subject
matter of Claim 8 or any other claim of the EXIAC patent was anticipated by or
obvious in vievr of tlie Burks Article or that any of the claims of the EXIAC
patent read on the Burks Article.

9. Description

9.1 The description and disclosure in the ENIAC are sufficient.

0.1.1 The description and disclosure in the EXIAC patent are sufficient to en-
able one skilled in the art to practice the invention defined by the claims.

[8] 9.1.2 There is a presumption that the Patent Office reviewed the EXIAC
patent application for suflJiciency of its description and that the patent's dis-
closure is sufficient to teach one skilled in the art how to practice the invention.

9.1.3 Honevwell did not meet its burden of proving that the disclosure and
description of the ENIAC patent are insufficient.

[9] 9.1.4 It is not necessary that the patent description describe all possible
embodiments of the invention.

10. Pulse

10.1 The claims of the ENIAC which use the word pulse and which were
covered by the May 20, 1963 amendment redefining the term pulse are invalid.

10.1.1 Both the ENIAC Patent as issued in 1964 and the application for the
patent as originall.v filed in 1947 contain claims which employ the term "pulse."
That term was a defining element of the claims and was of material importance
to the determination of their patentability.

10.1.1.1 The original application specification described a synchronized com-
puter using coordinated "pulses" as a characterizing part of the description
of the invention. The term was expressly defined for purposes of the description
of, and the claims to, the invention as follows :

"A pulse is a positive or negative change in potential which has a dura-
tion of about two to five microseconds (fi sec.)." [A "microsecond" is
one millionth of a second.]
The lengthy specification is replete with detailed operational descriptions desig-
uatiuff tlie pulses employed as being of 2 microseconds or longer duration.

10.1.1.2 There is no indication of any recognition by the applicants, either
in the original application for patent as filed or in the ENIAC patent as issued,
that pulses having less than two microseconds duration could be used in a
computer, or that higher speed operation would result from the use of such
pulses.

10.1.1.3 The patentability of the EX'IAC claims employing the term "pulse,"
over such prior art as the Harvard Mark I computer system, depended upon
material representations of electronic high speed made to the Patent Office.
The term used in the claims as originally presented upon the basis of the 1947
disclosure was a material one.

10.1.1.4. SR's attorneys repeatedly manifested their awareness that the term
"pulse" in the ENIAC claims was limited by the definition of the term in the
application as filed.

10.1.1.5 During the case of Sperry Rand et al. v. Bell Telephone Labora-
tories, Inc., SR, Ek^kert and IMauchly represented to the Court that the word
"pulse" as used in the ENIAC application, was limited to a duration of 2 to 5
microseconds.



5829

10.1.1.6 As late as December 1962, SR's atorney, Hall, recognized that iu the
ENIAC application, "* * * the claims use the word 'pulses,' and the specifica-
tion at page 66 defines this word as referring to changes of potential of dura-
tion on the order of two to five microseconds."

10.1.1.7 In December 1962, Hall recognized that this definition was "something
of very critical character" and that "many modern computers operate with
pulses shorter than two microseconds."

10.1.2 During tlie period from 1947 to 1963, the state of the art of electronic
computers advanced dramatically. The contributions of numerous others in the
electronic industry, including Honeywell, had produced speeds of operation many
orders of magnitude faster than that of the ENIAC machine.

10.1.2.1 For example, a modern day CDC computer is about two thousand times
faster than the ENIAC machine.

10.1.2.2 During 19(iO ami l!t!>l. Honeywell marketed the 11-800 computer which
used pulses liaving a duration of less than 0.25 microseconds.

10.1.2.3 At the time of the filing of the ENIAC patent application in 1947,
the ENIAC machine had already been obsoleted by more advanced planning, such
a.s that described for example in the von Neumann First Draft Report. Eckert
and Mauchly knew this.

10.1.3 In an amendment to the ENIAC patent application, filed on May 20,
19(>3. by SR's patent lawyer, Hall, the original definition of the term "pulse"
was changed by a broadening addition, as follows :

"Within the meaning of the appended claims "pulse" will be construed
to mean a change or excursion in potential or current which has a dura-
tion not exceeding about five microseconds."

10.1.3.1 By this change, the lower limit of the original speed range (two micro-
seconds) was effectively eliminated, thereby rendering the original claims for a
circa-1947 computer readable on the circa-1963 computer technology of others,
no matter how much faster.

10.1.3.2 Hall knew that the use of shorter pulses, now covered by the new
definition, had been made possible by the intervening advances of others in the
computing art.

10.1.3.3. There is evidence that Eckert and Mauchly did not read the 1963
Amendment before it was filed, and were not consulted about this change in
definition.

10.1.4 The 1963 amendment to broaden the scope of all "pulse" claims was
unreasonably delayed, and was not merely a logical development of the original
application l)Ut rather an exigent afterthouglit to capture the subsequent con-
tril)utions of others already in the public domain.

10.1. .5 The "pulse" claims are invalid because (1) they are directed to an
invention which had not theretofore been claimed in the application, and (2)
the claimed invention had been in public use more than one year before the
claims were presented.

10.1.6 The prior rights intervening between 1947 and 1963. by reason of the
widespread manufacture, use and sale of computers of vastly greater speed than
the two to five microsecond pulse characteristic of the ENIAC machine disclosed
and claimed by the ENIAC patent application as filed, render the broadening
amendment of May 20, 1963 as improper "late claiming" of the invention thereby
defined.

10.1.7 ENIAC patent claims 8, 9. 52, 65, S3, 86. 88, 109 and 122 which use the
term "pulse", and claim 36 which uses the equivalent term "impulse" are invalid ;
also, since the word "signal" is defined by defendants as a "pulse", claims con-
taining such word are equivalently invalid, e.g., 69, 75, 78. 142.

[10] .1 Where the applicant does not originally assert claims which are
added later by amendment and the subject matter of such late claims is dis-
closed or in general use and applicant stands by to await developments in the
industry before asserting them, there is an unreasonable delay and neglect on
the applicant's part rendering such late claims invalid.

[11] .2 W^here a late-filed amendment of the jiatent specification is important
enough to constitute the basis for alleged patentability, the amendment con-
stitutes new matter and cannot in fact be a ba.sis for patentability.

[12] .3 The long delay of a patentee in adding broaden^^d claims to a patent
application warrants an inference that such claims were added as an afterthought
and not as a logical development of the original application, and where the sub-
ject matter of the later claims was in public use more than one year before such
claims very first introduced, such claims are Invalid.



5830

[13] .4 The repeated entry into interferences, resulting in long delays inci-
dent to their detei-mination, affords no just excuse for the failure of a patent
applicant to assert broader claims at an earlier date. Ix>ng delay in coming to
the point with new and broader or different claims strongly confirms that the
final determination to do so was an exigent afterthought, rather than a logical
development of the original application.

[14] .5 An applicant for patent cannot enlarge his pending application in
such a manner as to embrace and include for the first time the essential elements
of an article, device, or structure which has been in public use or on sale more
than one year prior thereto, and a patent obtained in that manner does not
represent patentable invention, but is mere appropriation of the inventive skills
of others.

[15] .6 Courts must regard with disfavor any attempts to enlarge the scope
of an application once filed, the effect of which would be to enable the patentee
to appropriate other inventions made prior to such alteration, or to appropriate
that which has, in the meantime, gone into public use.

11. Delay

11.1 The ENAIC application was filed in 1947 and issued in 1964.

11.1.1 The application for the ENIAC patent was filed in the Patent Ofiice on
June 26, 1947.

11.1.2 The ENIAC patent contains 91 sheets of drawings and 232 columns of
specifications and claims. There are 148 claims.

11.1.3 The ENIAC patent application and patent describe the ENAIC machine
which was a pioneering achievement.

11.1.4 Patent applications on pioneering achievements are said to be involved
more frequently in interferences tlian other inventions, particularly if the patent
application is pending over a substantial period, because other people may learn
generally about it and move into the field.

11.1.5 During 1949, counsel for E and M agreed to keep patent cases such as
EM-1 pending in the interest of taking into account during their prosecution
the interim developments of others following their filing ; the same view was ■
expressed in 1959 by Hall.

11.1.6 Tlie amendment of May 20, 1963, with respect to the term "pulse" was
an abuse of the long pendency of the ENIAC patent application.

11.2 The complaint in SR v. BTL was filed in November, 1955. a one day trial
was held in March, 1962, and the District Court decision followed in September,
1962.

11.2.1 The trial was based upon a stipulated submission of documentary evi-
dence and briefs, and no testimony was presented in open court.

11.2.2 The court was afforded no opportunity to judge witness credibility on
the basis of manner and demeanor.

11.3 Plaintiff claims that defendant SR and its counsel intentionally and un-
rea.sonably delayed proceedings before the Patent Office and the courts by
deliberate action taken through deliberate lack of action.

11.3.1 This Court found a prima facie showing of deliberate delay upon the
testimony of Honeywell's expert witness. Professor .Tames B. Gambrell.

11.4 the first interference was filed more than 314 years after the filing of the
application.

11.4.1 In ]\Tarch 1951. while the application for the ENIAC patent was being
prosecuted, the first (No. 85,131) of eleven interferences was declared in the
Patent Office.

11.4.2 Interference No. 85.131 was declared following the copying of claims
by Eckert and Mauchly from NCR's Mumma patent No. 2.495.075.

31.4.3 The interference was dissolved after Eckert and Mauchly filed an aban-
donment of the contest.

11.5 ;Many of the interferences filed were unwarranted.

11.5.1 Interferences are proceedings in the Patent Office to determine who.
between two or more parties, is entitled to priority of invention. Before an inter-
ference is declared the Patent Office nuist determine that there is sufficient
common subject matter claimed by the parties to warrant declaring the inter-
ference.

11.5.2 Defendants instigntrd numerons intei'ferences by copying claims of
patents on devices developed by competitors.

11.5.3 The first interference was concluded by .June 14. 1951.



5831

11.5.4 The second interference was declared in May 1951 and was concluded in
the fall of 1951.

11.5.5 From 1951 through 1957, defendants copied 156 claims from competitors'
patents in order to initiate interference proceedings. 152 of these claims were
copied from patents based on applications filed subsequent to the ENIAC applica-
tion, and resulted in the setting up of numerous interference proceedings in-
volving NCR, BTL, Stromberg-Carlson, IBM, and Clary Corp.

11.5.6 AVhcn the interferences were ultimately terminated, the Patent Oflice
held that 147 of the 152 claims were for improvements to which defendants had
no legitimate claims. With respect to many of the 147 claims, the Patent Oflice
held that there was no support for them in the ENIAC patent application.

11.5.7 Tlie is-'Hiance of the ENIAC patent was delayed by these interferences.
11.5.7.1 There was no intentional delay during the first two interferences.

11.5.8 The third interference, No. 85,809, began in May 1952 as a result of Bell
Telephone Laboratories' (BTL's) copying of two claims from the ENIAC patent
application.

11.5.8.1 The third interference involved the question whether or not, as to
CLiinss .39 and 42 of the ENIAC patent application (Claims 8 and 11 of ENIAC
patent). Eckert and Mauchly were entitled to priority over Samuel B. Williams,
whose patent application No. 22,784 was assigned to BTL.

11.5.8.2 The Board of Patent Interferences awarded priority to Williams (BTL)
on Seittember 29, 1955, over 9 months after the final hearing.

11. 5.8. .3 There was no intentional or undue delay during Interference No. 85809
in the Patent Office, especially in view of the complexity of the case, and it
probably moved more expeditiously than might have been expected.

11.5.9 The remaining interferences were declared sub.sequent to Interference
No. .S5809 and terminated prior to September 6, 1962 when the United States Dis-
trict Court of the Southern District of New York handed down its decision in a
litigation growing out of the third interference.

11.6 Defendants failed to obtain the services of counsel with the time or interest:
in pursuing a matter which defendants considered important.

11.6.1 The subject matter of SR v. BTL case, the ENIAC application and the
AYilliams patent, was complex and required large amounts of time.

11.6.2 SR recognized that a team effort was required in order to prepare the
SR V. BTL case for trial within a reasonable period of time.

11.6..3 The aggregate time devoted to the SR v. BTL case by all of the SR
attorneys during the first six years of the litigation averaged substantially less
than the reasonable lulling time of a single attorney.

11.7 Deliberately extending the expiration of a monopoly is a seiious violation
of the Constitution and the patent laws.

11.7.1 Intentional delay by an applicant for patent invalidates the patent.

11.7.2 The only legitimate purpose of an interference proceeding is determining"
the question of priority of inventorship.

11.8 In the SR v. BTL suit plaintiff's counsel for much of six years failed
to a dequately prepare for trial.

11.8.1 On November 25. 1955, within the allotted 60 day period. SR filed a civil
action under 35 TJ.S.C. Section 146 in the United States District Court of the
Southern District of New York to overturn the decision of the Board of Pateiit
Interferences.

11.8.2 From .Tanuary. 1957 until October. 1961. Sp'^rry Rand's chief trial coun-
sel for the SR v. ItTL case conducted interparty discovery only when :

.1 he was faced with the necessity ". . . becau.se the case might be on the
dismissal calendai' ;

.2 he faced a coui t-imposed deadline ; or

.3 in the ca.se of depositions, the health of a witne^-'s of advanced a-re (80>
was of concern (Williams), and a distant witness happened to be passing through
town (Huskey).

11.8.3 Between the commencement of the action and the trial in March 1962.
inside counsel and other personnel at SR as well as outside counsel from New
York. Philadelphia, and Washington were less than diligent in obtaining formal
and informnl discovery, preparing and answering interrogatories, takins- depo-
sitions, securing aflSdavits. working with fact and expert witnesses, researching
the law. learning about the extremely complex electronic subject matter, conduct-
ing negotiations for simplification of procedure in the case, and generally pre-
paring the ca.se for trial.



5832

il.8.4 The outside attorneys who worked on this case for SR included : C. Blake
Townsend. William D. Hall, Carroll G. Harper, Nelson Moore, Robert Kosinski,
Elliott Pollock, Zachary T. Wobeusmith II, Reynolds Brown, Max L. Libman,
and Mr. Hussey.

11.8.5 The inside attorneys and personnel who worked on the case for SR
included : John P. Dority, C. A. Norton, Joseph Forman, L. Etlinger. Louis
Altman. Francis McNamara. C. E. McTiernan, Marshall Truex, C. C. English,
Jerry Light, and Dr. Throckmorton.

ll!8.6 SR also had at least two outside experts, Dr. Stibitz and Mrs. Loveday,
Avorking part-time on the electronic aspects of the case with Stibitz hired to
work approximately 50% of his time. Stibitz wrote a number of reports for and
consulted on many occasions with counsel for SR in order to aid them with
various technical issues in the case, including the question of the operativeness
of the Williams (BTL) patent.

11.8.7 SR's New York counsel had billed SR approximately $120,000 for its
work from the fall of 1955 through the fall of 1961, the latter date being some six
months prior to the trial before Judge Dawson.

11.8.8 Carroll Harper, a young lawyer working under C. Blake Townsend, SR's
lead counsel, spent approximately 3,000 hours on the case.

11.8.9 William D. Hall, SR's Washington counsel, testified that he began
spending 50% of his time on ENIAC matters including SR in Augu.st 1955, and
by mid 1980, when all the interferences and IB;M public use proceedings had
concluded. Hall said he was spending 50% of b.is time on SR.

11.8.10 Judge Cashin, Judge Palmieri, Chief Judge Clancy, and Judge Dawson
of the United States District Court for the Southern District of New York
encouraged the parties' efforts toward settlement and/or a simplified procedure
in this complex case.

11.8.11 On December 10, 1958, SR made an application to Chief Judge Clancy for
the appointment of a single judge and in that application SR stated in its con-
chiding paragraph :

'•In view of the nature and complexity of the subject-matter, the necessity for
detail and prolonged preparation and pretrial proceedings, and the prol)able
length of time which will be required for trial, it is believed that the designation
of a single Judge to hear all further proceedings in this case will exjjedite
considerably the resolution of the controversy and will materially reduce the
burden upon this Court.

11.8.12 On December 17, 1958, Chief Judge Clancy assigned the case to the
Honorable Archie O. Dawson "for all purposes including trial.''

11.8.13 The issuance of the ENIAC patent was delayed by Sperry Rand's failure
diligently to prepare the SR v. BTL case for trial.

11.9 Plaintiff's (SR) management was in part at fault because of unnecessary
and unreasonable delays in carrying on settlement negotiations.

11.9.1 SR allowed negotiations for an overall cros.s-licensing arrangement with
BTL and Western Electric to extend over a period of more than seven years.

11.9.1.1 The priority dispute of the SR v. BTL case had begun in 1952. at the
Instigation of BTL, by the declaration of Patent Office interference procee<ling
No. 85,809.

11.9.1.2 By April 30. 1954, SR recognized that it would eventually endeavor
to perfect a cros.s-licensing arrangement with BTL.

11.9.1.3 The cross-licensing arrangement was completed on July 1. 1961.

11.9.2 SR's uiuiecessary and unreasonable delay of the SR v. BTL case was
suited to the convenience of its overall cross-licensing negotiations.

11.9.2.1 As late as 1957. BTL ui-ged that no action or consideration be taken in
the case until the parties first consummated an overall cross license including
other patent rights.

11.9.2.2 SR's counsel. Townsend, contacted BTL's counsel, Pugh, to make sure
that be "was not coasting along in a 'fool's i>aradise' by taking no further action
in this ca.se pending the outcome of the present negotiations."



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 126 of 140)