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 128 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 128 of 140)
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Fourth, the Patent Office is given subpoena, investigative, and research powers
so it may independently, and with great assurance, determine the question of
patentability before — rather than after — issuance of the patent.

Currently, the Office relies on information supplied by the applicant. Under
the present system, the average patent receives a total of about 15 hours of
review.

The new procedures would allow a full airing of the facts and hopefully
enable the Patent Office to deny patents that today are being found invalid in the
courts in such great numbers.

13.4 To obtain a monopoly which can exact tremendous tribute from the public
retpiires complete candor on the part of applicants and tlieir attorneys.

13.4.1 The Patent Office does not have full research facilities of its own, and
it has never been intended by Congress that it should; in fact, the Patent Office
relies heavily upon research by applicants.

13.4.2 By reason of the nature of an application for patent, the relationship
of attorneys to the Patent Office requires the highest degree of candor and good
faitli : and in its relation to applicants, the Patent Office must rely upon their
integrity and deal with them in a spirit of trust and confidence.

[44] 13.4.3 Those who have applications pending with the Patent Office or
who are parties to Patent Office proceedings have an uncompromising duty to
report to the Patent Office fully and fairly all facts whicli may affect the patent-
ability of the invention: public interest demands that all such facts be submit-
ted formally or informally to the Patent Office, for it is only in this way that the
Patent Office can act to safeguard the public in the first instance against illegal
patent monopolies.

13.4.4 Fraud in the procurement of a patent includes not only intentional
misrepresentations, but mentional concealment of material facts.

13.') M and E took oaths stating that they were the sole inventors, that there
had l)een no public use of the EXIAC before the critical date, and that the
EXIAC was not on sale before the critical date.

13..".1 One such oath was the oath of .Tune 19, 1947, which was filed with the
EXIAC patent application on June 26, 1947.

13. .5. 2 Another such oatli was the oath with the Rule 131 affidavit filed on
Seiitember 16, 1963, after Eckert and ^Nlauchly had been made aware, in the
IBM attempts to institute Patent Office public use proceedings and in the BTL
litigation, that the EXIAC machine had been in public use and on sale prior to
the critical date.

13.6 M and E knew of the Los Alamos use of tlie EXIAC, though permission
for its use was not asked of them.

13.6.1 Eckert and Mauclily have l)een aware since 194.1 that the Los Alamos
calculations were an important and succe.ssful use of the ENIAC machine.



5839

13.6.2 Commencing in 1946, lawyers acting in the interest of Eckert and
Mauchly liave been aware that, when the Los Ahimos culeulation.s were put on
the ENIAC machine in 1945, it was the first time that the machine as a whole
was being used ; that it was fully expected that the problem would be solved ; and
tliat it was solved.

13.6.3 Eckert and Mauchly have sworn on behalf of SR and themselves that
various EXIAC patent claims were actually reduced to practice at the time of or
prior to the use of the ENIAC machine to perform the Los Alamos calculations.

13.6.4 In the brief in BTL interference No. So,S09. submitted in 19.54, lawyers
for Eckert and Mauchly characterized the Los Alamos calculations as an ex-
tensive problem which was successfully worked out on the ENIAC machine.

13.6.5 It was only after the issue of public use of the ENIAC machine had
been raised in 1956 and 1959 by the IBM Public Use Petitions that SR reversed
the earlier position of claiming reduction to practice at or before the Los Alamos
calculations and contended instead that the ENIAC machine and hence the in-
vention it embodied was not reduced to practice until August, 1946.

13.6.6 At the time that SR lawyers drafted affidavits for the signatures of Los
Alamos personnel Metropolis and Fraukel, which contended that they were not
interested in answers to practical problems and had not obtained any useful re-
sults, they had already been otherwise informed by the Los Alamos Laboratory
that the calculations were in fact a substantial effort which successfully nad sat-
isfactorily solved specified problems and that the results did not lie dormant.

13.6.7 The use of the ENIAC machine by the Los Alamos Laboratory personnel
was not under the control of Eckert and Mauchly.

13.6..S Eckert, in sworn testimony in interference No. 85,809, was asked if the
Los Alamos problem was satisfactorily worked out on the machine. He said :

"Yes.

"The problem consisted of several hundred runs. Each run in itself lasted per-
haps 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.

•Eaeli run 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 every few runs a test
problem which ascertained that the machine was functioning correctly was also
run, so that the problems were in effect tests for self-consistency, 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."

13.6.9 Eckert, in sworn testimony in interference No. 85.809 summarized in
SR's interference brief, testified that "the difficulties were not with the machine
br.t with the mathematical nature of the problem and the mistakes of the mathe-
maticians who designed the problem for the machine."

13.7 They appear not to have known of the results obtained.

13.8 In view of their lack of knowledge of the problem solved and the results
obtained, they may have acted in good faith.

13.9 M and E knew of the public demonstrations in February 1946, and that
prol)lems were put on the ENIAC and solved, but may have acted in good faith
in this regard in that the circuit designs were classified.

13.9.1 Army Ordnance sufficiently declassified the ENIAC machine prior to the
press demonstration, dedication and open house in February, 1946, in order to give
wide-spread publicity to the machine so that persons interested in such devices
would be allowed to know all details in connection with it.

13.9.2 The original 4926 contract, all supplements and change order thereto,
and the ENIAC project were from the inception Government classified "con-
fidential".

13.9.3 The ENIAC and EDVAC projects were still classified "confidential" on
■October 1.".. 1945, when a meeting on computing methods and devices was held
nt the Ballistic Research Laboratory. At the October 15, 1945, BRL meeting, it
was stated :

.1 that a number of academic institutions as well as other government agencies
were beginning to display the greatest possible interest in new, high-speed com-
puting machines along the lines pioneered by the Ordnance Department ;

.2 that in order to be of service to universities and the Navv. as soon as prac-
ticable, the ENIAC and EDVAC were to be declassified and all pertinent infor-
mation on the machines made available to the country at large ;



5840

.3 that anything less than a free exchange of information on high-speed com-
puting machines would be detrimental to the best interest of the United States ;
and

.4 that as soon as the ENIAC was successfully working, its logical and opera-
tional characteristics would be completely declassified, and sufficient pr.blicity
would be given to the machine in order that those who were interested in such
devices would l)e allowed to know all details in connection with it.

13.!).4 In a December 7, 1J>15, meeting on EXIAC and EUVAC at the Ballistic
Research Laboratory, it was agreed that the ENIAC would l)e declassitied as soon
as possible, and detailed plans were made for the dedication ceremony of the
EXIAC machine.

13.y.5 Ordnance Committee Memorandum 29!>04, which was read for record
before the Ordnance Committee on December 20. 11)45, rechissifled the EXIA('
project; on January 4, 1!)46, a copy of Ordnance Committee Memorandum 2i)!)04
was sent to Goidstine by Gillon with tlie explanation that the item would facili-
tate existing work on publicity for tlie EXIAC.

13.9.6 In February, 1946, when Army Ordnance held a press demonstration,
dedication and open house of the EXIAC machine, persons attending the cere-
monies were allowed, by reason of the reclassitication of the EXIAC machine, to
view it and its operative parts and units in actual problem solving operation and
their questions concerning its performance capabilities and design princip.es were
answered.

13.10 M and E knew of the running of the Hartree problem, but again were
possibly unaware (»f the results obtained and may thus have acted in good faith.

13.11 M and E were, of course, bound by the actions of their lawyers.

13.12 There appears to have been suppression of rlie Hartree notes or letters
or results by counsel for applicants who appeared before the Patent Office and
the District Court.

13.12.1 In 1961, documents describing details of the Hartree problem were with-
held by SR from Beil Telephone Laboratories, and were not offered in evidence
before the District Court for the Southern District of Xew York in SR v. BTL.

13.12.2 On June 24, 1955, SR patent agent Charles p:nglish wrote to T. H.
Tliiemann, in England, seeking his aid in collecting diaries, programming notes,
and other such records pertaining to Hartree's 11K16 use of the EX'IAC machine.

13.12.3 English indicated that this course of action to obtain Hartree's original
records was suggested by Hartree "when he discussed the matter with Dr.
^Mauchly, of this company."

13.12.4 On August 8, 1956, a year after the original inquiry by English, Hartree
wrote to SR's London office enclosing : (a ) Hartree's original programming sheets,
(b) a page of notes attached to the program sheets which Hartree had written in
order to point out how the specific information recjuested could be found on
these sheets and (c) a published paper entitled The Laminar Boundary Layer in
Compressible P^low, by W. F. Cope and D. R. Hartree, F.R.S., Royal Society of
London Philosophical Tran.sactions, Series A (publislied June 22, 1948, manuscript
received May 13, 1947).

13.12.5 On August 27, 1956, the material which had been sent by Hartree was
forwarded to patent agent English by John C. Sims. Jr., or SR, with the suggestion
that it be in turn forwarded to one of SR's patent attorneys. William I). Hall, at
an early date so that Hall could evaluate it in connection with his work on a
Patent Office interference involving the EXIAC patent application.

13.12.6 On Ajn-il 3, 1958, Englisli forwarded the Hartree letter, original notes,
and published paper to Hall, stating that Mauchly believed that the problem
which ILirtree ran on the EXIAC, and which was described in the Hartree/Cope
published )tai)er, had lieen Problem No. 4 on the EXIAC machine.

13.12.7 The progranuning sheets received by SR and Hall from Hartree dc-
.scrilied how the EXIAC machine was connected in the spring of 194(5 to calculate
the null-order functions of Hartree's work; the relevant pages of Hartree's jiub-
lished paper to this effect, as sent by him, had been hand marked by Hartree
personally.

13.12.8 Since August 8, 1956. to date. SR has been in possession of these mate-
ria's supplied by Hartree relative to his u.se of the P]XIAC machine before the
critical dale.

13.12.9 From 1956 to 1963, SR was in litigation with BTL. and Hall was an
attorney of record for SR.

13.12.10 In the 1956^63 SR-BTL litigation, the question of whether or not the
EXIAC macliine had been in public use, so as to bar the issuance of any valid
patent, was in direct controversy.



5841

13.12.11 Tn the SR-BTL litigation, on November 29, 1960, BTL served upon SR
and its individual co-defendants, Mauclily and Eckert, a set of interrogatories, in-
eluding Interrogatories l."> to 20, specilicaliy seeking information with respect to
certain problems, including the Hartree problem "No. 4" run on the ENIAC
machine.

13.12.12 The answer to Interrogatories 15 to 20 was given and signed on
February 17, 1961, by each of the individuals, Mauchly and Eckert, and an
officer of Sperry Rand.

13.12.13 In this answer, ,SR did not identify either Ilartree's published paper
as marked by him or his programming sheets and explanatory letter and note,
or the correspondence relating to it.

13.12.14 The scope of BTL's Interrogatories 15 to 20 necessarily rcfpiired
the identitication of all of these Hartree materials.

13.12.15 On January 14. 1!K!0, Hall iiled an opposition brief in the IBM
attempted public use proceeding before the Patent Office, attacking the de.scrip-
lion Goldstine had given of the Hartree problem in an affidavit, although the
description was corroborated by the documentation from Hartree then in Hall's
piissession. Hall charged that Goldstine's description of the Hartree problem
was based on hearsay, and that "unfortunately, Hartree is dead, so rebuttal is
not easy."

13.12.16 Only certain of the evidence held by SR concerning Hartree's use
of the ENIAC machine was placed before Judge Dawson through the affidavits
and or deposition testimony of the following: Herman Goldstine, John Hol-
berton. Frances Holberton, Kathleen Mauchly, Jean Bartik, Homer Spence.

13.12.17 SR"s advocacy against the Hartree work as a public use of the EXIAC
machine was made despite knowledge of facts and possession of unproduced rele-
vant documents to the contrary.

13.13 The record may support the running of other problems of use of the
EXIAC before the running of problem No. 9 upon which defendants rely as the
iirst proldem run and solved.

13.13.1 For example, in addition to Los Alamos and Hartree, Harry Huskey
operated the ENIAC machine in April. 1946, as set out under 1.1.7.8 above.

13.14 It appears that attorney Libman, who was primarily responsible for
the pi-eparati(m of the application, knew in November 1946 that the EXIAC
bad been in public use since Decemljer 10, 1945.

13.14.1 Army Ordnance patent attorneys began consideration of filing EX'IAC
patent applications in early 1944. and worked on application material pertinent
to EDVAC and EXIAC intermittently from 1944 through the June 26, 1947,
filing date of the EXIAC application.

13.14.2 On February 25. 1944, Eckert and Brainerd met with Gillon and Majors
Windham and Ruestow of the Army Ordnance legal branch to discuss the trans-
niittal of detailed disclosure information for the patenting of EXIAC project
inventions: as a result, the Army Ordinance patent l.'ranch midertook the prepa-
ration of a patent application to cover inventions made imder the 4926 contract.

13.14.3 In August, 1944. further EXIAC/EDVAC meetings between Eckert.
Mauchly and the Ordnance patent attorneys were held in AVashington, and
Army Ordnance patent attorney Horace AVoodward began preparation of at
least one patent application on the EXIAC machine in September 1944: by late
1944. Ordnance patent attorneys had prepared at least two patent application
drafts on EXIAC/EDVAC subject matter and delivered them to INIauchly.

13.14.4 On .Tune 28, 1945, ^lax IJbman was assigned by Army Ordnance as the
attorney to complete the patent applications which had been started by Wood-
ward more than one year before.

13.14.5 Libman was directed to devote his full time to the preparation of the
p]XIAC application, and to begin "from scratch" witliout using the parts of the
EX'IAC application Woodward had previously prepared.

13.14.6 In addition to the Army Ordnance patent attorneys, Libman and
Woodward. Eckert and Mauchly's personal patent counsel. George E. Smith,
was also given copies of the EXIAC Final Report so that he could help in
preparing the patent application.

13.14.7 Tn the late fall of 1946. Libman through Ke.ssenich asked the Moore
School in supply information indicating when public use of the ENIAC
machine began.

13.14.8 The Moore School, in response to the Libman-Kessenich reouest. in-
formed Army Ordnance and Kessenich. by letter dated X'ovember 18. 1946. that
successful operation of the ENIAC machine began with the Los Alamos cal-
culations on December 10, 1945.



5842

13.14.9 It would not have been possible for the Army Ordnance Patent Sec-
tion to have filed the EXIAC patent application prior to December 10, 1946,
after receiving the November IS, 1946, answer to the request for public use
dates.

13.14.10 Libmau ncAertheless proceeded on the clearly erroneous assumption
that there had been no public use of the ENIAC : he did not interview anyone
at the Moore School, or do any further investigating of fact or law but decided
there had been no public use on the sole ground that he personally deemed it
doubtful that a pilot model of a machine could be in public use.

IS.l.'i. Public use was at issue before the Patent Office in two petitions filed
by IBM.
13.15.1 One such petition was filed on July 1, 1946.
13.15.2 The second petition was filed on February 20, 1959.

13.16 The first was ruled to be premature and in the second, after an adverse
ruling by the assistant commissioner, no further proceedings were had.

13.16.i See 13..34.5 and 13.34.25, infra.

13.17 The question of public use was also an issue in. SR v. BTL, but litigated
without any kind of a trial.

13.17.1 Although Patent Office procedings are in general ex parte, the ENIAC
patent application was involved in numerous adversary proceedings : eleven inter-
ferences, IBM's public use petitions, and the litigation with Bell Telephciue
Laboratories in the U.S. District Court for the Southern District of New York.

13.17.2 The controversy which led to that trial began in the Patent Office in
1952 over the issue of priority of invention between ENIAC and a 1042 BTL
automatic electronic digital computer, and ended in the Southern District of
New York with the BTL and SR litigation on the question of public use.

1.3.17.3 On July 1. lUGl. prior to the SR v. BTL trial, Western Electric Companj-
(acting for the Bell System, including BTL) and SR executed a complete cross-
license of all their patents and applications (including EDP patents and patent
applications).

13.17.4 The Agreement had the effect of mooting BTL's attack on the validity
of Sperry Rand's ENIAC patent application and put BTL in a position in wliich
it had nothing to gain and patent protection to lose by establishing the invalidity
for the ENIAC patent.

13.17.5 BTL did not pursue the public use issue vigorously in the SR v. BTL
ca.se after the execution of the July, 1961, Agreement ; at the time when the
question of the public use was submitted in the fall of 1961, BTL had no real or
legal interest in establishing public use.

13.17.6 BTL's internal memoranda indicate that it desired to complete the SR
V. BTL litigation at the least expense and with the least possible amount of effort :
BTL submitted its evidence in affidavits and deposition transcripts with no live
testimony in open court.

13.17.7 Most of the volume of the .stipulated evidence in the SR v. BTL trial
did not bear on the public use issue at all, but instead boi'e on the priority issue
which had previously been eliminated from the case by agreement.

13.17.8 After Judge Dawson incorrectly found no iiublic use on the scanty evi-
dence before him, BTL pursued an appeal to the Court of Appeals for the Second
Circuit which dismissed it because the case had been rendered moot by the execu-
tion of the patent cross-license between Western Electric and Sperrv Rand on
July 1, 1961.

13.18 Though I have found that the ENIAC was on sale before the critical date
and that M and E attempted its commercialization, it may be that M and E
acted in good faith in that they did not know what on sale meant.

13.19 The work of Atanasoff was current and was of great importance to M.

13.19.1 Detailed findings and conclusions concerning the work of Atanasoff and
John Mauchly's knowledge of that work have previously been set forth under
Finding 3, above.

13.19.2 Prior to his visit to Ames, Iowa, Mauchly had been broadly interested
in electrical analog calculating devices, but had neither conceived nor built any
electronic digital calculating device.

13.19.3 In a letter dated June 29, 1941, to H. Helm Clayton, John Mauchly
described Atanasoff's work, and its relationship to Mauchly's prior thinking,
as follows :

"Immediately after commencement here, I went out to Iowa State University
to see the computing device which a friend of mine is constructing there. His
machine, now nearing completion, is electronic in operation, and will solve within
a very few minutes any system of linear equations involving no more than



5843

thirty variables. It can be adapted to do the job of the Bnsh differential analyzer
mure rapidly than the Bush machine does, and it costs a lot less. My own com-
puting? devices use a ditt'erent principle, more likely to fit small computing job^:."'

13.19.4 After his visit with Atanasoff, Mauchly left his employment at Ursinus
College and joined the staff of the Moore School of Electrical Engineering at the
University of Pennsylvania.

13.19.5 Mauchly took a short course in electronics at the Moore School and
then joined the faculty, during which time he began to consider applying his
understanding of the new impulse or digital principles he had been taught by
Atanasoff.

]3.r.).() On September 30, 1941, Mauchly wrote to Atanasoff from the Moore
School :

"A number of different ideas have come to me recently anent computing cir-
cuits — some of which are more or less hybrids, combining your methods with
other things, and some of which are nothing like your machine. The question
in my mind is this : Is there any objection, from your point of view, to my liuild-
ing Slime ^ort of computer which incorporates some of the featxires of your
machine? For the time being, of course, I shall be lucky to find time and material
to do more than merely make exploratory tests of some of my different ideas,
with the hope of getting something very speedy, not too costly, etc.

"Ultimately a second question might come up, of course, and that is. in the
event that your present design were to hold the field against all challengers, and
I got the Moore School interested in having something of the sort, would the way
be open for us to build an 'Atanasoff Calculator' (a la Bush analyzer) here?"

13.19.7 Dr. Atana.soff responded that, while he had no qualms about having
disclosed his ideas to Mauchly, he did not wish to have his concepts made public
until adequate steps had been taken to obtain patent protection for his ideas.

13.20 The latter had further contact with Atanasoff in 1944 and invited him to
the public demonstrations in February 1946.

13.20.1 The April. 1943, proposal for the ENIAC contract referred ot the
Atanasoff work, but did not identify it.

13.20.2 In August, 1944, Eckert and Mauchly visited with Atanasoff on the same
day they began the process of filing patent applications involving subject matters
which stemmed from Atanasoff's prior work.

13.20.3 The apparent purpose of this visit to Atanasoff in 1944 was to seek hsi
assistance in the perfection of the recirculating delay line memory for EDVAC.

13.20.4 The purpose of Eckert and Mauchly's visit with Ordnance patent
lawyers on the same day was to lay plans for making patent claims to EXIAC
and EDVAC inventions, including the recirculating memory.

13.20.5 Neither Eckert nor Mauchly disclosed Atanasoff's work to their attor-
neys prior to filing the ENIAC patent application.

13.21 If Atanasoff had proceeded in 1942 or 1943 to file a patent application, the
information in the application would have been available to the Patent Office.

13.21.1 The ABC was described in a definitive manuscript and in a draft patent
applicaticm specification which was prepared by Clifford Berry but, because it was
never filed, the Patent Office had no means by which it could have become aware
of the ABC or of Mauchly's prior knowledge of the ABC.

[4.5] 13.22 Complete candor with and disclosure to the Patent Office is
required.

13.23 At the same time, knowledge of the applicant may come from a variety 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 128 of 140)