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 131 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 131 of 140)
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in fact were checked out by borrowers prior to October 17, 1949 ; this same



5855

Lecture Series was also made available at the Library of Congress on or before
Xdvember 12, 1948.

14.11.1.19 The following applications or patents were based substantially on
portions of the Lecture Series, published before the earliest critical date of the
applications or patents : EM-21, 25 and 26, all filed on October 21, 1950 ; and EM-
2S, tiled February 28, 1951.

.1 Figure 1 of EM-21 shows the same circuit as that shown and described by
Eckert in Lecture 23.

.2 Figure 5 of the EM-25 case is also known and described by Eckert in Lec-
ture No. 23.

.3 Figure 1 of the EM-2G case is derived from Figure 6 of Lecture No. 46, and
Figure 2 of EM-26 shows the same circuit shown and described in Lecture 23.

.4 The alleged invention of EM-28 is shown and described in Lecture No. 46 ;
this is the case in which the examiner found the published Lecture and rejected
the application, stating : "Claims 1-7 are rejected as fully met by the Moore
School I'ublication" ; RR did not contest the rejection, but instead abandoned
the case.

14.11.1.20 By summer of 1949, more than one year before Eckert and Mauchly
filed EM-21, 25, 26 or 28, they both were aware that the published Lecture Series
was publicly available ; Mauchly observed as much to his attorney Eltgroth,
writing, on May 2, 1949. that as a result of the published review of the Lecture
Series '"a larger segment of the public will now be aware of their existence. I
believe that these lectures should be on file in the patent department" ; Mauchly
also noted in the same communication that the publication announced the
"availability of the lecture course" and "that these lectures are now available at
?5.00 per volume as long as the supply holds out."

14.11.1.21 Of the EM-21, 25. 26 and 28 applications, only EM-28 failed to issue
because the EM-2S examiner found the pulilished Lecture Series on his own
initiative and rejected the application "as fully met by the Moore School Publi-
cation [Lecture No. 46] cited above" : however, the examiners of the EM-21. 2"(
and 26 applications (all of which ultimately issued as patents) failed to find
the published Lecture Series, and defendants' predecessors' attorneys, Eltgroth
and Light, did not inform those examiners about the Lecture Series or the re-
jection of the EM-28 application thereon.

The First Draft Report

14.11.1.22 In addition to the barring of the valid issuance of the ENIAC patent,
the publication of the von Neumann First Draft Report also anticipates the
claims of the EM-1 patent No. 2,629,827 entitled "Regenerative Memory."

The Report on the UN IV AC

14.11.1.23 During the fall of 1947, Eckert and Mauchly submitted under con-
tract to the Bureau of Standards a Report on the UNIVAO. This report dis-
cussed all phases of a proposed UNIVAC computer and included many detailed
schematic diagrams of circuits to be employed in the UNIVAO computer.

14.11.1.24 In 1947 and 1948, copies of the Report on the UNIVAC were widely
distributed and effectively "published" with the knowledge and consent of high-
ranking officers of ,SR's predecessor, the Eckert-Mauchly Computer Corporation
(EMCC) ; the distribution included: making the report available to the Pruden-
tial Insurance Company ; circulating the Report, according to Mauchly, "rather
widely through governmental agencies" ; and making the Report available at the
library at Harvard University.

14.11.1.25 An employee of EMCC, Isaac Auerbach, assessed the widespread
distribution of the Report in an April 8, 1948 memo, stating with respect to a
suggestion to limit its further reproduction : "What a laugh at this late
(late! * * * Our report has already receive<l widespread circulation."

14.11.1.26 During April 1948, EMCC requested an opinion from its patent
attorneys. Busser and Harding, about the steps which it might take to call in
copies of the Report on the UNIVAC which the Bureau of Standards had already
published.

14.11.1.27 With regard to the testimony of McPherson (a disinterested non-
party witness) and Mauchly relating to Mauchly's statement to McPherson that
the Report on the UNIVAC was studied at the Harvard University Library, the
Court finds McPherson credible.



5856

14.11.1.28 SR and ISD admit that the Report on the UNIVAC was made avail-
able to Prudential ; on October 12, 1948, EMCC was informed by Cannon of the
Bureau of Standards that the Report on the UNIVAC shall be "available to all
governmental agencies requesting it, unless you [EMCC] can furnish us with
a sound reason for refusing the request" ; EMCC replied that it had no such
objection ; on July 8, 1949, attorney Eltgroth informed Mauchly that the Report
"will be available on a reciprocal basis to parties having a legitimate interest
therein."

14.11.1.29 Many patent applications describing the UNIVAC computer were
filed by RR. These applications are anticipated by the Report on the UNIVAC
which provided a detailed description of the same UNIVAC computer. These
applications include EM-14 (filed April 13, 1950). and EM-30 through 44 and 48
(all filed March 31, 1952, except EM-43, filed March 28, 1952).

14.11.1.30 RR's patent attorney, Eltgroth, admitted that the computer de-
scribed in the BM-22 application is disclosed in the Report on the UNIVAC.
stating that "the computer described in that application [EM-22] is operable
and embodies all the essential material of the study report": Eltgroth earlier
indicated that "applications have been filed or are now being filed for a con-
sidera))le portion of the inventive material disclosed in these reports '■' * * " ;
while Eltgroth went on to conclude that the reports had not been published,
the Court finds that this was not correct.

14.11.1.31 SR admits that the EM-20 application purported to cover the en-
coding and decoding function tables used with the BINAC system shipped to
Northrop during 1949; in order to prove prior inventorship. Eckert filed an
affidavit claiming such an invention prior to May 6, 1948. and supported the affi-
davit with drawing D69-1077 entitled "Tank Selector Circuit of Memory
Switch": this drawing was a part of the Report on the UNIVAC: the subject
matter of EM-20 is disclosed in, and therefore anticipated by, the Report on
the UNIVAC but such Report was not brought to the attention of the EM-20
examiner by defendants or their predecessors.

14.11.1.32 SR has admitted that the subject matter claimed in the EM-39
through 44 and 48 applications was embodied in the Census UNIVAC system
turned over to the U.S. Census Bureau during March. 1951: the Report on the
UNIVAC described the Census UNIVAC system in comprehensive detail ; there
were some changes made to the Census UNIVAC system after the Report was
made : however, these changes do not materially affect the Report's disclosure
of the subject matter of EM-39^4 and 48 : in view of the foregoing, the Court
finds that the Report on the UNIVAC anticipates the EM-39 application and the
EM-40-44 and 48 patents.

14.11.2 Pumic Use and On Sale

14.11.2.1 Eckert. Mauchly. and EMCC placed an electrostatic information
storage .system claimed in the EM-8 application and patent in puldic use and
on sale in the United States more than one year prior to the application filing
date.

14.11.2.1.1 During January, 1948. EMCC demonstrated to personnel of the
U.S. Bureau of Standards and the U.S. Bureau of Census a model of an electro-
static information storage system which Eckert and Herman Lukoff had built.

14.11.2.1.2 During January, 1948. the electrostatic information storage system
was demonstrated to Standards and Census personnel, including Messrs. Cannon
and Alexander, to induce them to enter into a contract with EMCC for the
purchase of a UNIVAC computer.

14.11.2.1.3 During the demonstration, the storage system was operated, and
Cannon and Alexander observed the memory effects achieved by the storage
system.

14.11.2.1.4 During the period of time in which EMCC was demonstrating the
electrostatic information storage system, it was negotiating with the Bureau of
Standards for additional contracts to develop a computer having an information
storage system.

14.11.2.1.5 The demonstration of the electrostatic information storage system
for the commercial purpose of inducing Standards and Census officials to enter
into a contract to develop a computer put the system on sale and in public use.

14.11.2.1.6 On June 10, 1949, Eckert filed an application descrilung the electro-
.static information storage system demonstrated during January 1948. designated
Case EM-8, that resulted in U.S. Patent No. 2.969,478 (the '478 Patent).

14.11.2.1.7 On June 10. 1949, Eckert knew that subject matter claimed in the
EM-8 application was embodied in the electrostatic information storage system
demonstrated to Bureau of Standards personnel during January, 1948.



5857

14.11.2.2 EMCC placed a binary adder claimed in the EM-14 application and
patent in public use and on sale in the United States more than one year prior
to the application filing date.

14.11.2.2.1 By December 23. 1947, EMCC had built a demonstration model of
a binary adder of the type described in a Report on the UNIVAC.

14.11.2.2.2 The binary adder demonstration model also comprised a cycling
unit in the form of a test word generator that generated pulses representing
numbers for the binary adder to count.

14.11.2.2.3 On or about December 23. 1947, Mauchly informed the Bureau of
Standards that it was possible to demonstrate the binary adder model.

14.11.2.2.4 During January. 1948, a large number of people from the U.S.
Bureau of Census and the U.S. Bureau of Standards visited EMCC and observed
demonstrations of the binary adder model.

14.11.2.2.5 During March. 1948, the binary adder model was publicly demon-
strated by EMCC to numerous persons at a convention of the Institute of Radio
Engineers held in New York, New York.

14.11.2.2.6 The purpose of the demonstrations of the binary adder model was
to interest the viewers in the purchase of the BINAC or UNIVAC computers
then being developed by EMCC.

14.11.2.2.7 The demonstrations of the binary adder model put the subject matter
of the moiiel in pul)lic use and on sale, in the United States.

14.11.2.2.8 On April 13, 19r)0, Eckert filed an application de.signnted Case
EM-14 that resulted in U.S. Patent No. 2,687.473 (the "473 Patent).

1-J. 11. 2.2.9 The binary adder demonstration model included apparatus es.^en-
tially the same as the apparatus described and claimed in the EM-14 application
and patent.

14.11.2.2.10 On April 13, 1950, Eckert knew that the liinary adder model had
been publicly demonstrated during March 1948, and that I he test word generator
of the adder was essentially the same as the apparatus descrilied and claimed
in the EM-14 application.

14.11.2.3 EMCC placed the BINAC computer claimed in the EM-22 application
in public use and on sale in the United States more than one year prior to the
application filing date.

14.11.2.3.1 During October 1947. Electronic Control Company, a partnership
of Eckert and Mauchly and a predeces.sor of EMCC and SR, entered into a con-
tract to manufacture and sell a BINAC computer system to Northrop Aircraft,
Inc.

14.11.2.3.2 The BINAC computer system consisted of two identical BINAC
computers capable of simultaneous and independents operation upon the same
problem in such a way that their reliability could be tested by direct comparison
of their outputs.

14.11.2.3.3 Beginning in late August. 1948, EMCC jieriodically offered BIXAC
computers for sale and demonstrated the Northrop BINAC computers to prospec-
tive customers, thereby putting subject matter embodied in each Northrop
BINAC computer on sale and in public use in the United States.

14.11.2.3.4 On or about August 12, 1948. the production of the first Northrop
BINAC computer was complete.

14.11.2.3.5 On or about September 9, 1948, the production of the .second
Northrop BINAC computer was complete.

14.11.2.3.6 On September 10. 1948, Mauchly, president of EMCC, offered to
sell to the University of Illinois a BINAC computer identical to the Northrop
BINAC computers.

14.11.2.3.7 Eckert was informed at the time about this offer to sell a BINAC
computer to the University of Illinois.

14.11.2.3.8 During November. 1948. a Northrop BINAC computer was demon-
strated to representatives of the U.S. Air Controllers Office and the Council of
Economic Advisors to the President of the United States.

14.11.2.3.9 During the spring of 19^8. EMCC asked for and received permission
from Northrop to demonstrate the Northrop BINAC computers to additional
pro.spective customers.

14.11.2.3.10 During the spring and summer of 1949. prior to August 16. 1949.
the Northrop BINAC computers were demonstrated to many potential customers
bv EMCC for the purpose of sellins: computers.

" 14.11.2.3.11 Prior to August 16. 1949, visitors at the EMCC plant viewed the
same type of BINAC demonstrations later given to the press and invited guests
at public demonstrations held during the third week of August, 1949.



5858

14.11.2.3.12 One of the demonstrations involved the solution of a Poisson
equation which was a real and practical problem.

14.11.2.3.13 Prior to August 14, 1949, the purpose of the BINAC demonstrations
to visitors was to sell computers.

14.11.2.3.14 During the BINAC demonstrations to visitors, the entire EMCC
plant was used as "a gigantic salesroom."

14.11.2.3.15 During the demonstrations, the engineers employed by EMCC
cooperated with the attempts of management to sell computers.

14.11.2.3.16 The engineers gave the potential customers any information they
wanted about the Northrop BINAC computers.

14.11.2.3.17 During May, 1949, a Northrop BINAC computer was demonstrated
to representatives of Hughes Aircraft Company in an attempt to sell Hughes a
computer.

14.11.2.3.1S During the week of June 12, 1949, the Northrop BINAC computer
system was visited by R. A. Meagher of the University of Illinois.

14.11.2.3.19 During July. 1949, a Northrop BINAC computer was demonstrated
to representatives of Fairchild Engine and Aircraft Corporation in an attempt
to sell Fairchild a computer.

14.11.2.3.20 On or about July 27. 1949, a Northrop BINAC computer was
demonstrated to representatives of A. C. Neilsen Company for commercial
purposes.

14.11.2.3.21 Prior to August 16, 1949, EMCC received $20,000 for demonstrating
a Northrop BINAC computer to the Prudential Insurance Company of America
(Prudential) and for making drawings and specifications of the BINAC com-
puter available to Prudential.

14.11.2.3.22 During December. 1948, EMCC agreed to sell a c-omputer to Pru-
dential on the condition that it be paid $20,000 for disclosing and demonstrating
a binary computer to Prudential.

14.11.2.3.23 In order to receive the $20,000 payment. EMCC made available to
Prudential complete drawings of a Northrop BINAC computer.

14.11.2.3.24 In order to receive the $20,000 payment, a Northrop BINAC com-
puter was demonstrated to representatives of Prudential on Julv 29 and August 2.
1949.

14.11.2.3.25 On or about August 3, 1949, EMCC received the $20,000 payment
for disclosing and demonstrating a Northrop BINAC computer to Prudential
in accordance with the December, 1948 Agreement.

14.11.2.3.26 On August 16, 1950, Eckert and Mauchly field U.S. Application
Serial No. 179.782. still pending, designated Case EM-22, that purported to
describe and claim one of the two identical Northrop BINAC computers.

14.11.2.3.27 On August 16, 1950, Eckert and Mauchly knew that a BINAC
computer had been offered for sale to the University of Illinois in Septeml)er. 1948.
and that the Northrop BINAC computers had been demonstrated to potential
customers in the Eckert-^NIauchly Computer Corporation plant-salesroom on
numerous occasions prior to August 16. 1949.

14.11.2.4 EMCC placed a selecting network incorporated in the Northrop
BINAC Computer System and described and claimed in the EM-20 application
and patent on sale in the United States more than one year prior to the applica-
tion filing date.

14.11.2.4.1 On June 24, 1950. Eckert filed an application, designated Case E:\I-20,
that resulted in U.S. Patent No. 2.686,299.

14.11.2.4.2 The EM-20 application described and claimed the encoding and
decoding function tables used in the Northrop BINAC computers.

14.11.2.4.3 On June 24. 1950, Eckert knew that subject matter claimed in the
EM-20 application covered equipment used in the Northrop BINAC computers
and that a BINAC computer identical to the Northrop BINAC computers was
offered for sale to the University of Illinois during September. 1948.

14.11.2.5 EISICC placed a UNISERVO tape drive and recording device described
and claimed in the E^I-19 application and patent in public u.se and on sale in
this country more than one year prior to the application filing date.

14.11.2.5.1 EMCC entered into a Purchase Agreement with Prudential, dated
December 8. 1948. for the sale of a UNI VAC system including 12 UNISERVO tape
drive and recording devices.

14.11.2.5.2 On May 5. 1949. representatives of Prudential witnessed a demon-
stration of the UNISERVO device at the EMCC plant and expressed .satisfac-
tion with the device.



5859

14.11.2.5.3 On or about May 5, 1949, Eckert was notified that the UNISER^■<)
flevice had been successfully demonstrated to Prudential, and that EMCC would
receive $20,000 for having completed the apparatus.

14.11.2.5.4 On or about May G. 1949, Prudential accepted a TXI SERVO device
as complying with Exhibit C of the December 8, 1948 Agreement and paid
EMCC $20,000 for having completed the UNI SERVO device, thereby placing the
UNISERVO device on sale and in public use.

14.11.2.5.5 On July 29, 1950. Eckert filed an application, designated Case EM-19.
describing and claiming the UNISERVO device accepted by Prudential in May
1949.

14.11.2.5.6 Preparations for the May, 1949 UNISERVO demonstration received
priority from EMCC, because completion of the demonstration would generate
income for the corporation.

14.11.2.(5 SR's predecessor placed a Census UXIVAC System described and
claimed in the EM-39— EM-44 and EM-48 ai)plications And patents on sale and
in public use in the United States more than one year prior to the application
filing dates.

14.11.2.0.1 During 1948. EMCC entered into an agreement to sell a UNIVAC
System ( hereinafter the Census UNIVAC System) to the U.S. Government for use
bv the U.S. Census Bureau; the Census UNIVAC System included a UNIVAC
Comiuiter, a UNIPRINTER. a UNITYPER, a CARD-TO-TAPE CONVERTER
and other UNIVAC equipment.

14.11.2.6.2 By February 2, 1951, the Cen.sus UNIVAC System was completely
assembled and under test.

14.11.2.6.3 Prior to March 28, 1951. the Census UNIVAC System was demon-
strated to a continual flow of potential customers in the e:MCC plant for the
purpose of selling UNIVAC Systems.

14.11.2.6.4 During the demonstrations, there was every intent to make the
customers aware of the capabilities of the UNIVAC system and there were no
orders for secrecy.

14.11.2.6.5 Prior to March 28. 1951, Dr. All)ert Auerbach programmed the Census
T'NIVAC Sy.stem to solve a genetics problem which was run on the Census
I'NIVAC System as a demonstration for visitors: the program for solving the
genetics problem was of the type actually used in genetics field work.

14.11.2.6.6 Prior to March 15. 1951. SRs predecessor turned over the Census
T'NIVAC System to the U.S. Government for acceptance testing, thereby placing
the system on sale.

14.11.2.6.7 ^\^lile the acceptance tests were being planned, the Census Bureau
dealt with employees of RR.

14.11.2.6.8 There was general agreement between the U.S. Government and RR
that passage of any acceptance test meant that the corresponding erpiipment
liecame the property of the U.S. Government.

14.11.2.6.9 UNIVAC System Test A was passed March 15. 1951: the UNI-
I'RINTER acceptance test was passed during the period of time from March 19
through March 25, 1951 : the CARD-TO-TAPE Unit acceptance test was passed
and the CARD-TO-TAPE unit was accepted for payment by at least March 27,
1951: UNIVAC System Test B was passed March 30, 1951, thereby completing
the last of the acceptance tests.

14.11.2.6.10 Beginning at least by March 20 or ^March 21, 1951, Census Bureau
emi>loyees commenced work on actual Census tabulations using the Census
T'NIVAC System.

14.11.2.6.11 On March 31, 1951, after all the acceptance tests had been passed,
the CensiLs Bureau employees just continued to do the same type of tabulations
they had been doing before with the help, permission and assistance of employees
of SR's predecessor.

[48] 14.11.2.6.12 By turning the Census UNIVAC System over to the T'.S.
Government for acceptance testing, SR's predecessor put the system on sale.

14.11.2.6.13 On March 28, 1952 Eckert filed an application describing the Census
T'NIVAC System Pulse Cycling Circuit, designated Case EM-43 that resulted in
T'.S. Patent No. 2,781,446.

14.11.2.6.14 On March 31, 1952. Eckert filed application Serial No. 279.710 EM-
39), still pending, and other applications de.scribing various portions of the Cen-
sus T'NIVAC Svstem designated cases EM-40. EM-41. EM-42, EM^4, and E.M-
48. that resulted in U.S. Patent Nos. 2.860.756: 2,860,325; 3,133,190; 3.056.947;
and 2.748,720.



5860

14.11.2.6.15 Sul».1eet matter claimed in each of these applications and patents
was embodied in the Census UNIVAC System.

14.11.2.6.16 On March 28 and March 31, 1952, Eckert was aware that the Census
ITXIVAC System had been sold to the U.S. Government under a contract executed
in 1948, that the System had been turned over to the U.S. Govenmient for accept-
ance testing by March 15. 1951, that the System had been used by Census Bureau
•employees to run census tabulations prior to March 28, 1951. and that tlie UNI-
PRINTER and CARD-TO-TAPE Units had been accepted for iwiyment by the
U.S. Government prior to March 28, 1951.

14.11.2.6.17 The Census UNIVAC System was on sale and in public use in the
United States prior to March 28, 1951.

14.11.2.7 SR's predecessor placed a high-speed printer described and claimed in
U.S. Patent Nos. 2,842.663 ; 2,915.966 and 2.938,193 on sale and in public use in the
United St-ates more than one year prior to June 10, 1955. the earliest filing date
of the applications resulting in these patents.

14.11.2.7.1 Prior to March 31, 1954, units of the high-speed printer were de-
livered for installation in customers" offices, thereby putting the high-speed
printer on sale and in public use.

14.11.2.7.2 Tbe high-speed printer claimed in U.S. Patent Nos. 2.842,663 : 2,915,-
966 and 2.938.193 was placed on sale and in public use prior to March 31. 1954.

14.11.3 Subject matter claimed in the EM-1 patent was derived from Atanasoff.

14.11.3.1 On October 31, 1947. Eckert and Mauchly filed an application de-
scribing various memory systems, designated case EM-1, that resulted in U.S.
Patent No. 2.629,827 (the '827 patent).

14.11.3.2 Subject matter claimed in the EM-1 application as the joint invention
of Eckert and Mauchly was disclosed to Mauchly by Atanasoff in June of 1941.

14.11.3.3. In one embodiment of the EM-1 application, information is stored in
a coded sequence of pulses, the pulses being temporarily recorded on a rotating
carrier as electrostatic charges, carried by rotation to another station where they
give rise to electrical potential pulses which are handled through an external
feedback circuit for replacement or reinforcement of the pulses on the carrier.

14.11.3.4 This subject matter as claimed in the '827 patent was anticipated
by the disclosure contained in the Atanasoff manuscript disclOvSed to Mauchly.

14.11.3.5 Atana.soff's concept of the recirculating or regenerative memory was
used in the EDVAC program, with Atanasoffs rotating electrostatic charge car-
rier being replaced by the recirculation of pulses through an electrical delay line :
this delay line version of a recirculating memory was disclosed in the EM-1
application as an embodiment of Eckert and Mauchly's invention.

14.11.3.6 The Atanasoff electrostatic charge version of a recirculating memory
was also disclosed in the EM-1 application as yet another embodiment of Eckert
and Mauchly's alleged invention.

14.11.3.7 In October 1953, after the "827 patent was granted on the EM-1 appli-
cation. Eckert. stated that prior to 1942. Atanasoff had developed what was prob-
ably the first example of what could be termed regenerative memory : Eckerfs



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 131 of 140)