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 129 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 129 of 140)
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sources and from many yeai's of education and experience.

13.24 What should l)e disclosed to the Patent Office as possible sources of inven-
tion, prior art or derivation must in some degree be left to the judgment and
conscience of the applicant.

13.25 M may in good faith have believed that the mon.strous machine he helped
create had no relationship to the ABC or Atanasoff.

13.25.1 Mauchly may in good faith have believed that he did not derive the sub-
ject matter claimed in the ENIAC patent from Atanasoff. In September, 1944, he
wrote a summary of the situation as he then saw it: "I though* t) his (Atana-
soff's) machine was very ingenious, but since it was in part mechanical (involv-
ing rotating commutators for switching it was not by any means what I had in
mind."

13.25.2 Atanasoff saw the ENIAC machine as it existed on October 26, 1945,
and in early 1946 exten.sive publicity was given to the ENIAC project, acknowl-
edging Eckert and Mauchly as the inventors, but Atanasoff did not assert that
the ENIAC maehiue included anvthing of his until two decades later.



5844

13.25.3 Of the 17 claims of the ENIAC patent at issue in this suit. Honeywell
lias failed to prove the readability of claims 8, 9, 36, 52, 55, 56, 57, 65, 69, 75, 78, 83,
•86, 109, 122 and 142, or any of them, on AtanasofC's machine or any other work of
Atanasoff.

13.26 M and E have maintained that they were the sole co-inventors of the
EXIAC.

13.26.1 Eckert and Mauchly each signed sworn oaths to that effect on July 19,
1947, and again on September 11, 1963.

13.27 The fact that E directed inquiries to other members of the group or team
-would indicate that he felt that others had made contributions.

13.27.1 By August, 1945, Eckert and Mauchly informed Army Ordnance patent
attorneys that they were the inventors of all inventions arising out of the 1926
-contract.

13.27.2 Eckert and Mauchly first designated themselves as co-inventors without
the prior consent or knowledge of the University of Pennsylvania.

13.27.3 Ordnance lawyers never questioned this, and never interviewed any
other members of the ENIAC team to confirm or alter this representation.

13.27.4 In September. 1944, Eckert, without authority from the Moore School,
wrote letters to each Moore School engineer who participated in the ENIAC
■design asking each man to identify any features of the ENIAC machine to which
he claimed inventorship.

13.27.5 Eckert was not authorized by the Moore School or the University of
Pennsylvania to write the letters.

13.27.6 Dr. Brainerd reprimanded Eckert for sending the letter and told Eckert
that the letter would be interpreted as a request for a waiver of patent rights as
& natural act of loyalty to the Moore School in a cooperative spirit.

13.27.7 At least one of the members of the Moore School team, T. Kite Sharp-
less, notified Eckert that he believed he had made inventive contributions to the
design of the ENIAC machine and to the design of the acoustic delay line memory
later used in the EDVAC.

13.27.8 Robert F. Shaw also informed Eckert that he claimed inventorship
to some features of the ENIAC machine.

13.27.9 In March. 1946, Sbarpless wrote Eckert for a second time indicating
that Sliarpless still believed himself to be a co-inventor to both EDVAC and
ENIAC subject matter.

13.27.10 Army Ordnance patent attorneys were not informed about Sharpless
and Sliaw's claims as co-inventors of the ENIAC ; Mauchly told Army Ordnance
that there were no such claims, and Libman testified that he relied on this
representation in prosecuting the application.

13.27.11 None of the Moore School engineers who were members of the team,
other than Eckert and Mauchly. were interviewed by Army Ordnance patent at-
torneys to determine the actual inventorship of inventions embodied in the
ENIAC machine.

13.28 It is unfortunate that Sharpless and Shaw and Burks could not testify.

13.28.1 T. Kite Sharpless and Robert F. Shaw were decreased at the time of
trial.

13.28.2 Arthur W. Burks was asked to testify by Honeywell, which offered
to pay his reasonable expenses, but Burks would agree to testify only to pre-
determined issues (as outlined in a written "proffert" filed on his behalf by his
attorney) : no motion to intervene was filed by Burks and the Court accordingly
declined to invite him to testify under the conditions expressed.

13.29 M and E did not falsely claim to be tlie only inventors.

13.29.1 Honeywell has not proven that there were any inventors or co-inven-
tors, other than Eckert and Mauchly, of the sub.iect matter claimed in the
ENIAC patent.

13.29.2 Honeywell has not proven by clear and convincing evidence that Eckert
and Mauchly. their attorneys, successors or assigns, committed willful and in-
tentional fraud on tlie Patent Ofl[ice in connection with any alleged co-inventors of
the subject matter claimed in the ENIAC patent.

13.30 The claims anticipated and not anticipated were cited to the Patent
Office.

13..30.1 All of the patents relied on by Honeywell as showing anticipation
of claims of the ENIAC patent were considered by the Patent Office during the
prosecution of the ENIAC patent application.

13.30.2 See 5 and 12 above.



5845

13.31 The First Draft Report, ^Yllich bars the patent, was referred at one time
to the Patent Office and seems to have gotten lost or been misfiled in the Patent

13.31.1 As set out in the Findings under 7 above, it was concluded at the April
8, 1947, meeting, including Ecliert, Mauchly and Army Ordnance patent at-
torneys in attendance, that the von Neumann First Draft Report had been pub-
lished more than one year prior to the meeting and would bar patents for all
material disclosed by the report.

13.31.2 Of the 17 claims of the ENIAC patent at issue in this suit, Honeywell
has failed to prove the readability of claims 30, 83, 86, 88, lUU, 122 and 142, or any
of them, on the First Draft Report.

13.31.3 On May 20, 1947, before the EXIAC patent application was filed. Army
Ordnance patent attorney Kessenich sent the Patent Office a copy of the June
30, 1945, von Neumann report ; the transmittal did not indicate that the Army
Ordnance Patent Section believed it to be a publication, and did not correlate
the publication to any specific patent application or to the contemplated EXIAC
application; Kessenich noted in his cover letter to the Patent Office only that
the report "may be of interest to those examining divisions w-hich are concerned
with this subje'ct matter, particularly Div. 23 ;"' however, the transmittal alone
was not sufficient to bring the report before any EXIAC examiner; Church
anticipated this result when he told Eckert and Mauchly at the April 8, 1947,
meeting that a patent examiner might not find the report for years if it was not
brought to his attention.

13.31.4. The von Neumann report was never specifically found and cited by
any examiners who dealt with the ENIAC application ; nor was it ever brought to
the attention of those examiners by Eckert and Mauchly or their attorneys at
any time during the prosecution of the ENIAC application ; the report was not
included in the lengthy list of prior art cited by Eckert and Maiichly during
the only prosecution on the merits, which commenced with the amendment of
May 23^ 1963 ; Manny Pokotilow, the patent examiner who conducted the exami-
nation of the ENIAC application under pressure during its 1963 amendment
and thereafter to its issuance, testified that he never saw tlie First Draft Re-
port until it was shown to him in the courtroom ; the Court credits the Pokotilovf
testimony.

13.32 Church and Libman knew, or should have known, that the report was
a printed publication which barred the patent.

13.32.1 During 1946, von Neumann submitted a copy of his First Draft Report
to the Army Ordnance patent attorneys : Mauchly had been instructed to deliver
the report to these attorneys much earlier, but had not done so.

13.32.2 On April 1, 1947, Jules Warshaw of the Moore School staff met with
Mtiuchly and with Kessenich. Church, Libman and Woodward (patent attorneys
for Arriiy Ordnance) and told those present about the publication of the First
Draft Report: "I pointed out that this report was unclassified and as such
had probably had a general distribution such as to make it a publication in
the legal sense."

13.32.3 During the subsequent April 8. 1947. meeting. Church and Libman both
agreed that the First Draft Report was a printed publication under the patent
statute and would be a statutory bar reference against any application filed
thereafter; Church stated at the meeting: "It is our firm belief from the facts
that we now have that this report of yours dated June 30. 1945, is a publication
* * *." and Libman concurred: "That [the report was unclassified] taken to-
gether with widespread distribution there seems to be very little doubt about
it" : Eckert agreed : "The puldication makes what is in the report public
property."

13.33 The fact that the Patent Office had the report may excuse the appli-
cants and their counsel.

13..33.1 Although the First Draft Report was forwarded to the Patent Office,
there is no evidence tliat any examiner responsible for the ENIAC application,'
ever knew of the report, and Examiner Pokotilow had no knowledge of it when
the patent was granted.

13.33.2 Contrary to Church's advice at tlie April 8. 1947. meeting, Mauchly
stated that inasmuch as he and Eckert did not publish or distribute the First
r)raft Report, they should try to claim whatever they could.

13.34 There is evidence of lack of good faith and candor on the part of counsel
for defendants in attempting to frustrate the efforts of IBM and others to
obtain documents relating to ENIAC from the Government.



5846

13.34.1 InfovBiation which would have otherwise been available from the Gov-
'eriiment eonceruiug the ENIAC project was withheld at the urging of counsel
for defendants from IBM when that company was attempting to institute public
Tuse proceedings against the ENIAC patent application. Attorneys for Reming-
ton Rand (later SR) served as co-counsel with attorneys for the Ordnance
Department, together representing Eckert and Mauchly in Patent Office proceed-
ings, from at least June 20, 1950, onward.

13.34.2 On October 14, 1955, IBM attorney Charles P. Boherg wrote a letter
asking that Army Ordnance verify that OCM 29904 declassified the general de-
sign principles and the operational and functional characteristics of the ENIAC.

13.34.3 On November 1, 1955, Army Ordnance attorney Thibodeau wrote to
Bolierg and stated that "your information regarding the OC^I item referred to
in your letter is incorrect" ; Thibodeau said that it was OCM 31419, dated
Febi-uary 13, 1947, that declassified the ENIAC general principles of design and
operational and functional characteristics.

13.34.4 On June 1, 1956, IBM filed a petition for the institution of public use
proceedings against the ENIAC application in the U.S. Patent Office : until such
public proceedings use should be allowed (which never occurred), IBM had no
Tight to employ any discovery procedures such as are provided in the Federal
Rules of Civil Procedure.

13.34.5 On July 18, 1956, the Patent Office dismissed IBM's petition for the
institution of public use proceedings filed on June 1, 1956, as premature but
without prejudice to a subsequent timely renewal following termination of the
pending interference No. 46,576.

13.34.6 On December 19, 1955, IBM asked the Government for copies of con-
tract W-670-ORD-4926, including all supplementary and amendatory papers and
any papers evidencing a formal acceptance of the ENIAC by the Government
or a transfer of title to the Government.

13.34.7 The 4926 contract (with supplements) established that title to the
ENIAC passed to the Government at the time the machine was completed, that
the time for delivery of the ENIAC was never extended beycmd December 31,
1945, and that no work on ENIAC was required to be done under the 4926
contract after December 31, 1945.

13.34.8 On January 18, 1956, Boberg stated in a memorandum that IBM
needed a copy of the ENIAC contract in order to determine whether or not
there was a sale of the ENIAC in the statutory sense more than one year prior
to the ENIAC application filing date.

13.34.9 On February 17. 1956. Thibodeau of Ordnance notified IBM that its
request for the contract had been considered, but that, in accordance with Army
regulations, it was not available for the purpose of assisting IBM in Patent
Office proceedings.

13.34.10 On February 2, 1956, IBM requested that Ordnance supply a certified
copy of OCM item 29904, dated December 20, 1945.

13.34.11 On February 7, 1956, IBM sent a telegraphic message to Army Ord-
nance, asking that its February 2, 1956, letter be answered, whereupon Thibodeau
informed IBM by telephone that its request for OCM item 29904 was denied.

13.34.12 On February 20, 1956, IBM again wrote Ordnance, stating that in
lieu of item 29904, IBM was willing to accept from Ordnance a statement that,
effective 20 December 1945. the general principles of design and the operational
and functioiml characteristics of the ENIAC equipment were unclassified under
the authority of OCM item 29904.

13.34.13 On February 28, 1956, a conference was held between Thibodeau and
McGee (of Ordnance), and Boberg and Hogan (attorneys for IBM), in which
it was pointed out by IBM that, if a dedication to the public of the inventions
claimed in the ENIAC application because of public use could be shown, tlie
claims being contested in the IBM-Sperry Rand interferences would fall into the
public domain.

13.34.14 On February 20, 1959, IBM, still without the benefit of formal discov-
ery procedures or access to documents filed in other interferences, filed a renewal
of its petition for the institution of public use proceedings in the Patent Office.

13.34.15 On June 4, 1959, First Assistant Commissioner Crocker of the Patent
Office directed the primary examiner of Division 23 to make a report, following
investigation, of whether the documents submitted with the renewal petition
made a prima facie showing of public use of the ENIAC prior to the critical date.

13.34.16 On October 27, 1959, SR attorney Hall notified Army Ordnance that
he had retained Thibodeau (the ex-government attorney who had been respon-



5847

sible for denying IBM access to Government documents), and Hall told Army
Ordnance that Thibodeau would help SR secure information from Army Ord-
nance to help SR win any or all ENIAC interferences and public use proceedings
connected therewith.

13.34.17 Remington Rand (later SR) had previously retained Libman (at
least as early as September 22, 1952) he having been the Army Ordnance attorney
who prepared and filed the ENIAC application as attorneys for Eckert and
Mauchly.

13.34.18 On October 30, 1959, attorney Rotondi of Army Ordnance recom-
mended that Thibodeau, as well as Hall, be permitted fi'ee access to all the im-
classified Army Ordnance files pertinent to the ENIAO interference and public
use proceedings.

13.34.19 On November 2, 1959, Hall prepared an affidavit for signing by
George E. Stetson of Army Oi'dnance for use in the public use proceedings, in
which Stetson swore that the absence of documentation on use of the ENIAC
machine was of negative significance to any contention of public use because the
use of ENIAC by non-Ordnance Department personnel would have been accom-
panied liy communications between such parties and Army Ordnance and by
other documentation, all of wiiich would be matters of I'ecord in the Ordnance
Department if such had ever occurred.

13.34.20 The November 2. 1959, SR memorandum in opposition to the IBM
renewed public use petition also stated that SR had filed certified copies of actual
orders issued by the Army setting forth the military classification of the ENIAC
project throughout the entire period in question, even though SR had never filed
OCM 29904, and a copy of it had been denied to IBM by Army Ordnance.

13.34.21 On November 5, 1959, A. C. Lazure, an Army Ordnance attorney,
stated that SR should be given whatever assistance is available in the files of
Ordnance, but that IBM's request for information should continue to be denied.

13.34.22 On November fi, 1959, McGee of Ordnance informed Ostmann, IBM's
Washington counsel, by telephone that its request for certified document c<»pies
was denied.

13.34.23 On November 12, 1959, Hall recorded in writing his previous advice
to Army Ordnance as to why it .should not assist IBM in the Patent Office pui)lic
use proceeding involving the ENIAC, but rather should assist and make avail-
able Government documents only to SR to assure that the P]XIAC patent appli-
cation remained pending and ultimately issued into a patent.

13.34.24 On December 14, 1959, Hall filed a reply memorandum in opposition
to the IBM renewed public use petition, pointing out that IBM had been unable
to refer to (1) a single leak in the Government's security order, (2) the name
of a single person, not under injunction to secrecy, who either received, or had
available to him, any information about any novel circuit of the ENIAC, (3) a
single practical problem that was put to the machine because someone wanted to
know the answer to it, (4) a single answer that was cliecked and found correct,
(5) a .single instance in which anybody connected with the project attempted to
make a single penny profit from any alleged use of the machine. (6) a single
mention of any particular part of the ENIAC, allegedly involved in the demon-
stration. (7) a single allegation, other than hearsay, implying that the machine
was beyond the test stage, (8) a single document, indeed not even anything as
big as a postage stamp, showing the structure alleged to be in public use.

13.34.25 On May 16, 1960, First Commissioner Crocker of tlie Patent Office
•denied IBM's renewal petition to institute piiblic use proceedings.

13.35 Apparently, eventually some or all of the documents were obtained.

13.36 No effort was made, however, by counsel for defendants to obtain infor-
mation from the AEC when that agency offered to provide additional information.

13.36.1 The existence of documents and potential testimony concerning the
Los Alamos calculations was not revealed to BTL or the District Court for the
Southern District of New York.

13.36.2 The ENIAC machine was used between December 10, 1945 to mid-
March, 1946, to calculate the solutions to numerical equations relating to studies
of the feasibility of hydrogen bomb designs being considered by the Los Alamos
Laboratory.

13.36.3 On November 5. 19.54, in BTL interference 85,809. SR, in an effort to
establisli an early reduction-to-practice, represented to the Patent Office:

.1 that the first real problem to be put on the ENIAC was one originating in
the Los Alamos scientific laboratories under the atomic energy project ;

.2 that the problem took approximately one month, of which two weeks were
actual running time;



5848

.3 that, at the time, the ENIAC machine was a complete and operable calculat-
ing instrument;

.4 that there were no difficulties with the machine, but rather any difficulties
were with the mathematical nature of the Los Alamos problem, and mistakes of
the mathematicians ;

.5 that there were no long periods of maintenance or repair shutdown ; and

.6 that the general practice was to operate on a continuous basis.

13.36.4 On December 1, 1961, Carroll G. Harper, an associate in the patent law
firm of Byerly, Townsend, Watson & Churchill of New York City, which had
been retained by SR as counsel for the litigation with BTL, wrote the Atomic
Energy Commission, asking for information concerning the Los Alamos problem.

13.36.5 Harper's inquiry of December 1. 1961, was directed to Roland Anderson,
Assistant General Counsel for Patents, United States Atomic Energy Commis-
sion, Germantown, Maryland.

l.S.36.6 In his December 1. 1961. letter to Anderson, Harper pointed out that
BTL and SR had agreed that evidence would be submitted to the U.S. District
Court for the Southern District of New York largely upon affidavits, depositions
and exhibits, all of which were to be submitted and marked in evidence in court
on January 19, 1962.

13.36.7 In his December 1, 1961, letter to Anderson, Harper asked the A.E.C.
to confirm SR's position that the Los Alamos problem was simply an initial,
extremely simplified problem, the results of which could not have been put to
any practical use nor could have formed the basis for any design or construction
of an actual device, and the results, in any event, lay dormant in the Government
files for a number of years.

13.36.8 On December 1, 1961, SR knew of the existence of an official Los Alamos
classified report, designated report number LA-525. issued March 2. 1950. ond
entitled "Ignition of Deuterium-Tritium Mixtures. Numerical Calculations Using
the ENIAC," the number, date and title of wliich were not classified and asked
the A.E.C. if it could be declassified.

13.36.9 In addition to writing Anderson on December 1, 1961. Harper also
discussed the substance of his request with Anderson by telephone on tlie same
day.

13.36.10 On December 5, 1961, Harper again wrote Anderson, pointing out that,
if report number LA-525 could not be declassified, SR desired to obtain an
affidavit from at least one person in an official position at Los Alamos concern-
ing the nature of the relevant ENIAC calculations and what was done with the
results to the extent that secrecy restrictions would permit.

13.36.11 At the request of Anderson, Strausser of the A.E.C. office of classifica-
tion reviewed report number LA-.525 and confirmed that it was not declassifiable
in its entirely : at trial it was established that its substance could have been pro-
cured on revelant points.

13.36.12 At the request of Anderson. William B. Holton. of the A.E.C. head-
quarters technical staff in Maryland, with Strausser. studied classified reports
describing the Los Alamos problem, and each of them concluded :

.1 that the problem worked on the ENIAC machine by Los Alamos personnel
beginning about December, 1945, was not trivial or a mere test problem :

.2 that it was a substantial problem which was successfully and satisfactorily
solved ;

.3 tliat the results were useful ; and

.4 tliat the results did not lie dormant.

13.36.13 On December 8. 1961, Holton delivered a handwritten memorandum
to Anderson describing the nature of the Los Alamos problem, and observing
that the facts regarding that problem were directly contrary to the view SR
hoped to establish.

13.36.14 On December 13. 1961. Anderson wrote to Harper informing him of
the A.E.C.'s position that the Los Alamos work on the ENIAC machine wns a
substantial effort which succes.sfully and satisfactorily solved specific problems
and that the results were useful and did not lie dormant, and offered to e.stabli.sh
this position by affidavit.

13..36.15 On the same day. December 13. 1961, Anderson also wrote to Mr.
Henrv Heyman, Los Alamos Scientific Laboratory. Los Alamos. New Mexico, ask-
ing Heyman to ascertain whether or not there was someone at Los Alamos who
could make an affidavit as to the work and extent of use of the ENIAC machine
on the Los Alamos problem.



5849

13.36.16 On December IS, 1961, Anderson discussecl with Harper hy telephone
the possibility of submitting affidavit evidence concerning the Los Alamos prob-
lem : Harper informed Anderson that, based on the information contained in
Anderson's letter of December 13, 1961, SR considered that an affidavit "might
not be too helpful".

13.36.17 On December 18, 1961, in his telephone conversation with Anderson,
llari^er stated that SR and BTL were going to exchange proofs on the following
day. although in his December 1, 1961. letter to Anderson, Harper had stated
(hixt affidavits were to be submitted in evidence to the court on January 19,
1962.

13.36.18 Meanwhile, at the Los Alamos Scientific Laboratory in New Mexico,
in response to Anderson's request of December 13, 1961, Heyman discussed
the Los Alamos problem with Dr. Carson Mark in order to obtain the requested
information.

13..36.19 On or about January 4. 1962, Mark informed Heyman that the
problem run on the ENIAC machine related to the Super (the hydrogen bomb)
and was run in the latter part of 1945 and early part of 1946.

13.36.20 On or about January 4. 1962, Mark also informed Heyman that the
Los Alamos problem was of scientific investigative nature and was by no means



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 129 of 140)