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13. Fraud on Patent Office

  1. The claim for damages based on claimed violations of the antitrust laws because of willful and intentional fraud on the Patent Office requires proof by clear and convincing evidence.
  2. Patent proceedings are largely ex parte in nature.
    1. The Patent Act provides:
    2. The Commissioner shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Commissioner shall issue a patent therefor.

      Applications for patents shall be kept in confidence by the Patent Office and no information concerning the same shall be given without authority of the applicant or owner unless necessary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commissioner.

  3. This has long been an unfortunate situation and should be remedied.
    1. The Patent Reform Act of 1973, introduced on March 22, 1973, by Senator Phillip A. Hart (D-Mich.) of the Patents, Trademarks and Copy rights Subcommittee of the Senate Judiciary Committee, would eliminate ex parte prosecution. In his floor remarks introducing this legislation, Senator Hart said:
    2. The bill recognizes that the patent monopoly grant is a carefully delineated privilege designed to serve the public interest in promoting the progress of science and useful arts and not an unlimited license to the recipient. Let me highlight some of the significant features of the bill.

      First, the Patent Office would be made independent divorcing it from t he interests of the Commerce Department.

      Second, secret ex parte session wherein interested parties and a patent examiner decide the patentability of an ideas would be replaced with public adversary hearings.

      Third, a Public Counsel would be installed in the Patent Office — to argue for the public interest and to make the Office itself simply judge instead of both judge and advocate.

      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.

  4. To obtain a monopoly which can exact tremendous tribute from the public requires complete candor on the part of applicants and their attorneys.
    1. The Patent Office does not have full research facilities of its own, and it had never been intended by Congress that it should; in fact, the Patent Office relies heavily upon research by applicants.
    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 faith; 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.
    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 which may affect the patentability of the invention; public interest demands that all such facts be submitted 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.
    4. Fraud in that procurement of a patent includes not only intentional misrepresentations, but intentional concealment of material facts.
  5. M and E took oaths stating that they were the sole inventors, that there had been no public use of the ENIAC before the critical date, and that the ENIAC was not on sale before the critical date.
    1. One such oath was the oath of June 19, 1947, which was filed with the ENIAC patent application on June 26, 1947.
    2. Another such oath was the oath with the Rule 131 affidavit filed on September 16, 1963, after Eckert and Mauchly had been made aware, in the IBM attempts to institute Patent Office public use proceedings and in the BTL litigation, that the ENIAC machine had been in public use and on sale prior to the critical date.
  6. M and E knew of the Los Alamos use of the ENIAC, though permission for its use was not asked of them.
    1. Eckert and Mauchly have been made aware since 1945 that the Los Alamos calculations were an important and successful use of the ENIAC machine.
    2. Commencing in 1946, lawyers acting in the interest of Eckert and Mauchly have been aware that, when the Los Alamos calculations 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 that it was solved.
    3. Eckert and Mauchly have sworn on behalf of SR and themselves that various ENIAC 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.
    4. In the brief in BTL interference No. 85,809, submitted in 1954, lawyers for Eckert and Mauchly characterized the Los Alamos calculations as an extensive problem which was successful worked out on the ENIAC machine.
    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 invention it embodied was not reduced to practice until August, 1946.
    6. At the time that SR lawyers drafted affidavits for the signatures of Los Alamos personnel Metropolis and Frankel, which contended that they were not interested in answers to practical problems and had not obtained any useful results, they had already been otherwise informed by the Los Alamos Laboratory that the calculations were in fact a substantial effort which successfully and satisfactorily solved specified problems and that the results did no lie dormant.
    7. The use of the ENIAC machine by the Lost Alamos Laboratory personnel was not under the control of Eckert and Mauchly.
    8. 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:
    9. "Yes."

      "The problem consisted of several hundred runs. Each run in itself lasted perhaps 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.

      "Each run in fact was 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.

    10. Eckert, in sworn testimony in interference No. 85,809 summarized in SR's interference brief, testified that "the difficulties were not with the machine but with the mathematical nature of the problem and the mistakes of the mathematicians who designed the problem for the machine."
  7. They appear not to have known of the results obtained.
  8. In view of their lack of knowledge of the problem solved and the results obtained, they may have acted in good faith.
  9. M and E knew of the public demonstrations in February 1946, and that problems were put on the ENIAC and solved, but may have acted in good faith in this regard in that the circuit designs were classified.
    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 the details in connection with it.
    2. The original 4926 contract, all supplements and change orders thereto, and the ENIAC project were from the inception Government classified "confidential".
    3. The ENIAC and EDVAC projects were still classified "confidential" on October 15, 1945, when a meeting on computing methods and devices was held at the Ballistic Research Laboratory. At the October 15, 1945, BRL meeting, it was stated:
    4. .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 computing machines along the lines pioneered by the Ordnance Department;

      .2 that in order to be of service to universities and the Navy, as soon as practicable, the ENIAC and EDVAC were to be declassified and all pertinent information on the machines made available to the country at large;

      .3 that anything less than a free exchange of information on high-speed computing 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 operational characteristics would be completely declassified, and sufficient publicity would be given to the machine in order that those who were interested in such devices would be allowed to know all details in connection with it.

    5. In a December 7, 1945, meeting on ENIAC and EDVAC at the Ballistic Research Laboratory, it was agreed that the ENIAC would be declassified as soon as possible, and detailed plans were made for the dedication ceremony of the ENIAC machine.
    6. Ordnance Committee Memorandum 29904, which was read for record before the Ordnance Committee on December 20, 1945, reclassified the ENIAC project; on January 4, 1946, a copy of Ordnance Committee Memorandum 29904 was sent to Goldstine by Gillon with the explanation that the item would facilitate existing work on publicity for the ENIAC.
    7. In February, 1946, when Army Ordnance held a press demonstration, dedication and open house of the ENIAC machine, persons attending the ceremonies were allowed, by reason of the reclassification of the ENIAC machine, to view it and its operative parts and unites in actual problem solving operation and their questions concerning its performance capabilities and design principles were answered.
  10. M and E knew of the running of the Hartree problem, but again were possibly unaware of the results obtained and may thus have acted in good faith.
  11. M and E were, of course, bound by the actions of their lawyers.
  12. There appears to have been suppression of the Hartree notes or letters or results by counsel for applicants who appeared before the Patent Office and the District Court.
    1. In 1961, documents describing details of the Hartree problem were withheld by SR from Bell Telephone Laboratories, and were not offered in evidence before the District Court for the Southern District of New York in SR v. BTL.
    2. On June 24, 1955, SR patent agent Charles English wrote to T.H. Thieman, in England, seeking his aid in collecting diaries, programming notes, and other such records pertaining to Hartree's use of the ENIAC machine.
    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 his company."
    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 requested could be found on these sheets and (c) a published paper entitled The Laminar Boundary Layer in Compressible Flow, by W.F. Cope and D.R. Hartree, F.R.S., Royal Society of London Philosophical Transactions, Series A (published June 22, 1948, manuscript received May 13, 1947).
    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 D. Hall, at an early date so that Hall could evaluate it in connection with his work on a Patent Office interference involving the ENIAC patent application.
    6. On April 3, 1958, English forwarded the Hartree letter, original notes, and published paper to Hall, stating that Mauchly believed that the problem which Hartree ran on the ENIAC, and which was described in the Hartree/Cope published paper, had been Problem No. 4 on the ENIAC machine.
    7. The programming sheets received by SR and Hall from Hartree described how the ENIAC machine was connected in the spring of 1946 to calculate the null-order functions of Hartree's work; the relevant pages of Hartree's published paper to this effect, as sent by him, had been hand marked by Hartree personally.
    8. Since August 8. 1956, to date, SR has been in possession of these materials supplied by Hartree relative to his use of the ENIAC machine before the critical date.
    9. From 1956 to 1963, SR was in litigation with BTL, and Hall was an attorney of record for SR.
    10. In the 1956-63 SR-BTL litigation, the question of whether or not the ENIAC machine had been in public use, so as to bar the issuance of any valid patent, was in direct controversy.
    11. In the SR-BTL litigation, on November 29, 1960, BTL served upon SR and its individual co-defendants, Mauchly and Eckert, a set of interrogatories, including Interrogatories 15 to 20, specifically seeking information with respect to certain problems, including the Hartree problem "No. 4" run on the machine.
    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. In this answer, SR did not identify either Hartree's published paper as marked by him or his programming sheets and explanatory letter and note, or the correspondence relating to it.
    14. The scope of BTL's Interrogatories 15 to 20 necessarily required the identification of all these Hartree materials.
    15. On January 14, 1960, Hall filed an opposition brief in the IBM attempted public use proceeding before the Patent Office, attacking the description Goldstine had given of the Hartree problem in the affidavit, although the description was corroborated by the documentation from Hartree then in Hall's possession; 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."
    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 Holberton, Frances Holberton, Kathleen Mauchly, Jean Bartik, Homer Spence.
    17. SR's advocacy against the Hartree work as a public use of the ENIAC machine was made despite knowledge of facts and possession of unproduced relevant documents to the contrary.
  13. The record may support the running of other problems of use of the ENIAC before the running of problem No. 9 upon which defendants rely as the first problem run and solved.
    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.
  14. It appears that attorney Libman, who was primarily responsible for the preparation of the application, knew in November 1946 that the ENIAC had been in public use since December 10, 1945.
    1. Army Ordnance patent attorneys began consideration of filing ENIAC patent applications in early 1944, and worked on application material pertinent to EDVAC and ENIAC intermittently from 1944 through June 26, 1947, filing date of the ENIAC application.
    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 transmittal of detailed disclosure information for the patenting of ENIAC project inventions; as a result, the Army Ordnance patent branch undertook the preparation of a patent application to cover inventions made under the 4926 contract.
    3. In August, 1944, further ENIAC/EDVAC meetings between Eckert, Mauchly and the Ordnance patent attorneys were held in Washington, and Army Ordnance patent attorney Horace Woodward began preparation of at least on patent application on the ENIAC machine in September, 1944; by late 1944, Ordnance patent attorneys had prepared at least two patent application drafts on ENIAC/EDVAC subject matter and delivered them to Mauchly.
    4. On June 28, 1945, Max Libman was assigned by Army Ordnance as the attorney to complete the patent applications which had been started by Woodward more than one year before.
    5. Libman was directed to devote his full time to the preparation of the ENIAC application, and to begin "from scratch" without using the parts of the ENIAC application Woodward had previously prepared.
    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 ENIAC Final Report so that he could help in preparing the patent application.
    7. In the late fall of 1946, Libman through Kessenich asked the Moore School to supply information indicating when public use of the ENAIC machine began.
    8. The Moore School, in response to the Libman-Kessenich request, informed Army Ordnance and Kessenich, by letter date November 18, 1946, that successful operation of the ENIAC machine began with the Los Alamos calculations on December 10, 1945.
    9. It would not have been possible for the Army Ordnance Patent Section to have filed the ENIAC patent application prior to December 10, 1946, after receiving the November 18, 1946, answer to the request for public use dates.
    10. Libman nevertheless proceeded in 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.
  15. Public use was at issue before the Patent Office in two petitions filed by IBM.
    1. One such petition was filed on July 1, 1946.
    2. The second petition was filed on February 20, 1959.
  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.
    1. See 13.34.5 and 13.34.25, infra.
  17. The question of public use was also an issue in SR v. BTL, but litigated without any kind of trial.
    1. Although Patent Office proceedings are in general ex parte, the ENIAC patent application was involved in numerous adversary proceedings; eleven interferences, IBM's public use petitions, and the litigation with Bell Telephone Laboratories in the U.S. District Court for the Southern District of New York.
    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 1942 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.
    3. On July 1, 1961, prior to the SR v. BTL trial, Western Electric Company (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).
    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 which it had nothing to gain a patent protection to lost by establishing the invalidity of the ENIAC patent.
    5. BTL did not pursue the public use issue vigorously in the SR v. BTL case after the execution of the July, 1961, Agreement; at the time when the question of public use was submitted in the fall of 1961, BTL had no real or legal interest in establishing public use.
    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.
    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 bore on the priority issue which had previously been eliminated from the case by agreement.
    8. After Judge Dawson incorrectly found no public use on the scanty evidence 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 execution of the patent cross-license between Western Electric and Sperry Rand on July 1, 1961.
  18. Though I have found that the ENIAC was on sale before the critical date and the 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.
  19. The work of Atanasoff was current and was of great importance to M.
    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.
    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.
    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:
    4. "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 thirty variables. It can be adapted to do the job of the Bush differential analyzer more rapidly than the Bush machine does, and it costs a lot less. My own computing devices use a different principle, more likely to fit small computing jobs."

    5. 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.
    6. 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.
    7. On September 30, 1941, Mauchly wrote to Atanasoff from the Moore School:
    8. "A number of different ideas have come to me recently anent computing circuits----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 building some sort of computer which incorporates some of the features of your machine? For the time being, if 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?"

    9. Dr. Atanasoff 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.
  20. The latter had further contact with Atanasoff in 1944 and invited him to the public demonstrations in February 1946.
    1. The April, 1943, proposal for the ENIAC contract referred to the Atanasoff work, but did not identify it.
    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 form Atanasoff's prior work.
    3. The apparent purpose of this visit to Atanasoff in 1944 was to seek his assistance in he perfection of the recirculating delay line memory for ENIAC.
    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 ENIAC and EDVAC inventions, including the recirculating memory.
    5. Neither Eckert nor Mauchly disclosed Atanasoff's work to their attorneys prior to filing the ENIAC patent application.
  21. If Atanasoff had proceeded in 1942 or 1943 to file an patent application, the information in the application would have been available to the Patent Office.
    1. The ABC was described in a definitive manuscript and in a draft patent application specification which was prepared by Clifford Berry but, because it was never filed, the Patent Office had not means by which it could have become aware of the ABC or of Mauchly's prior knowledge of the ABC.
  22. Complete candor with and disclosure to the Patent Office is required.
  23. At the same time, knowledge of the applicant may come from a variety of sources and from many years of education and experience.
  24. What should be disclosed to the Patent Office as possible sources of invention, prior art or derivation must in some degree be left to the judgment and conscience of the applicant.
  25. M may in good faith have believed that the monstrous machine he helped create had no relationship to the ABC or Atanasoff.
    1. Mauchly may in good faith have believed that he did not derive the subject matter claimed in the ENAIC patent form Atanasoff. In September, 1944 he wrote a summary of the situation as he then saw it: " I though(t) his (Atanasoff's) machine was very ingenious, but since it was in part mechanical (involved rotating commutators for switching) it was not by any means what I had in mind."
    2. Atanasoff saw the ENIAC machine as it existed on October 26, 1945, and in early 1946 extensive publicity was given to the ENAIC project, acknowledging Eckert and Mauchly as the inventors, but Atanasoff did not assert that the ENIAC machine included anything of his until two decades later.
    3. Of the 17 claims of the ENIAC patent at issue in this suit, Honeywell has 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 Atanasoff's machine or any other work of Atanasoff.
  26. M and E have maintained that they were the sole co-inventors of the ENIAC.
    1. Eckert and Mauchly each have signed oaths to that effect on July 19, 1947, and again on September 11, 1963.
  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.
    1. By August, 1945, Eckert and Mauchly informed Army Ordnance patent attorneys that they were the inventors of all inventions arising out of the 4926 contract.
    2. Eckert and Mauchly first designated themselves as co-inventors without the prior consent or knowledge of the University of Pennsylvania.
    3. Ordnance lawyers never questioned this, and never interviewed any other members of the ENIAC team to confirm or alter this representation.
    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.
    5. Eckert was not authorized by the Moore School or the University of Pennsylvania to write the letters.
    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 a natural act of loyalty to the Moore School in a cooperative spirit.
    7. At least on of the members of the Moore School team, T. Kite Sharpless, notified Eckert that he believed he had made inventive contributions to the design of the ENAIC machine and to the design of the acoustic delay line memory later used in the EDVAC.
    8. Robert F. Shaw also informed Eckert that he claimed inventorship to some features of the ENIAC machine.
    9. In March, 1946, Sharpless wrote Eckert for a second time indicating that Sharpless still believed himself to be a co-inventor to both EDVAC and ENIAC.
    10. Army Ordnance patent attorneys were not informed about Sharpless and Shaw's claims as co-inventors of the ENIAC; Mauchly told Army Ordnance that there were not such claims, and Libman testified that he relied on this representation in prosecuting the application.
    11. None of the Moore School engineers who were members of the team, other than Eckert and Mauchly, were interviewed by Army Ordnance patent attorneys to determine the actual inventorship of inventions embodied in the ENIAC machine.
  28. It is unfortunate that Sharpless and Shaw and Burks could not testify.
    1. T. Kite Sharpless and Robert F. Shaw were deceased at the time of trial.
    2. Arthur R. Burks was asked to testify by Honeywell, which offered to pay his reasonable expenses, but Burks would agree to testify only to predetermined 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.
  29. M and E did not falsely claim to be the only inventors.
    1. Honeywell has not proven that there were any inventors or co-inventors, other than Eckert and Mauchly, of the subject matter claimed in the ENIAC patent.
    2. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with any alleged co-inventors of the subject matter claimed in the ENIAC patent.
  30. The claims anticipated and not anticipated were cited to the Patent Office.
    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.
    2. See 5 and 12 above.
  31. The First Draft Report, which bars the patent, was referred to at one time to the Patent Office and seems to have gotten lost or been misfiled in the Patent Office.
    1. As set out in the Findings under 7 above, it was concluded at the April 8, 1947, meeting, including Eckert, Mauchly and Army Ordnance patent attorneys in attendance, that they von Neumann First Draft report had been published more than one year prior to the meeting and would bar patents for material disclosed by the report.
    2. Of the 17 claims of the ENIAC patent at issue in this suit, Honeywell has failed to prove the readability of claims 36, 83, 86, 88, 109, 122 and 142, or any of them, on the First Draft Report.
    3. On May 20, 1947, before the ENIAC 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 ENIAC application; Kessenich noted in his cover letter to the Patent Office only that the report "may be of interest to those examining divisions which are concerned with this subject matter, particularly Div. 23; " however, the transmittal alone was not sufficient to bring the report before any ENIAC 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.
    4. The von Neumann report was never specifically found an cited by any examiners who dealt with the ENIAC application; nor was it ever brought to the attention of those examiners by Eckert or 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 Mauchly during the only prosecution on the merits, which commenced with the amendment of May 23, 1963; Manny Pokotilow, the patent examiner who conducted the examination of the ENAIC application under pressure during its 1963 amendment and thereafter to its issuance, testified that he never saw the First Draft Report until it was shown to him in the courtroom; the Court credits the Pokotilow testimony.
  32. Church and Libman knew, or should have known, that the report was a printed publication which barred the patent.
    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.
    2. On April 1, 1947, Jules Warshaw of the Moore School staff met with Mauchly and with Kessenich, Church, Libman and Woodward (patent attorneys for Army 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."
    3. During the subsequent April 8, 1947, meeting, Church and Libman both agreed that the First Draft Report was a printed publication under that 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 date June 30, 1945, is a publication..." and Libman concurred: "That [the report was unclassified] taken together with widespread distribution there seems to be very little doubt about it"; Eckert agreed: "The publication makes what is in the report public property."
  33. The fact that the Patent Office had the report may excuse the applicants and their counsel.
    1. Although the First Draft Report was forwarded to the Patent Office there is no evidence that any Examiner responsible for the ENAIC application ever knew of the report, and Examiner Pokotilow had no knowledge of it when the patent was granted.
    2. Contrary to Church's advice at the April 8, 1947, meeting, Mauchly stated that inasmuch as he and Eckert did not publish or distribute the First Draft Report, they should try to claim whatever they could.
  34. There is evidence of a lack of good faith and candor on the part of counsel for the defendants in attempting to frustrate the efforts of IBM and others to obtain documents relating to ENIAC from the Government.
    1. Information which would have otherwise been available from the government concerning the ENIAC project was withheld at the urging of counsel for defendants from IBM when that company was attempting to institute public use proceedings against the ENIAC patent application. Attorneys for Remington Rand (later SR) served as co-counsel with attorneys for the Ordnance Department, together representing Eckert and Mauchly in Patent Office proceedings, from at least June 20, 1950, onward.
    2. On October 14, 1955, IBM attorney Charles P. Boberg wrote a letter asking that Army Ordnance verify that OCM 29904 declassified the general design principles and the operational and functional characteristics of the ENIAC.
    3. On November 1, 1955, Army Ordnance attorney Thibodeau wrote to Boberg and stated that "your information regarding the OCM item referred to in your letter in incorrect"; Thibodeau said that it was OCM 31419, dated February 13, 1947, that declassified the ENIAC general principles of design and operational and functional characteristics.
    4. On June 1, 12956, IBM filed a petition for the institution of public use proceedings against the ENIAC application in the U.S. Patent Office; until such public use proceedings use should be allowed (which never occurred), IBM had no right to employ any discovery procedures such as are provided in the Federal Rules of Civil Procedure.
    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.
    6. On December 19, 1955, IBM asked the government for copies of contract 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.
    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 beyond December 31, 1945, and that no work on the ENIAC was required to be done under the 4926 contract after December 31, 1945.
    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.
    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.
    10. On February 2, 1956, IBM requested that Ordnance supply a certified copy of OCM item 299904, dated December 20, 1945.
    11. On February 7, 1956, IBM sent a telegraph message to Army Ordnance, asking that its February 2, 1956, letter be answered, whereupon Thibodeau informed IBM by telephone that its request for OCM item 29904 was denied.
    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 functional characteristics of the ENIAC equipment were unclassified under the authority of OCM item 29904.
    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, the claims being contested in the IBM-Sperry Rand interference's would fall into the public domain.
    14. On February 20, 1959, IBM, still without the benefit of formal discovery 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.
    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.
    16. On October 27, 1959, SR attorney Hall notified Army Ordnance that he had retained Thibodeau (the ex-government attorney who had been responsible for denying IBM access to government documents), and Hall told Army Ordnance that Thibodeau would help SR secure information from Army Ordnance to help SR win any or all ENIAC interferences and public use proceedings connected therewith.
    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 attorney for Eckert and Mauchly.
    18. On October 30, 1959, attorney Rotondi of Army Ordnance recommended that Thibodeau, as well as Hall, be permitted free access to all the unclassified Army Ordnance files pertinent to the ENIAC interference and public use proceedings.
    19. On November 2, 1959, Hall prepared an affidavit for signing by George E. Stetson of Army Ordnance 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 accompanied by communications between such parties and Army Ordnance and by other documentation, all of which would be matters of record in the Ordnance Department if such had ever occurred.
    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.
    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.
    22. On November 6, 1959, McGee of Ordnance informed Ostman, IBM's Washington counsel, by telephone that its request for certified document copies was denied.
    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 public use proceeding involving the ENIAC, but rather should assist and make available government documents only to SR to assure that the ENIAC patent application remained pending and ultimately issued into a patent.
    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 lead 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 checked 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 demonstration, (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.
    25. On May 26, 1960, First Commissioner Crocker of the Patent Office denied IBM's renewal petition to institute public use proceedings.
  35. Apparently, eventually some or all of the documents were obtained.
  36. No effort was made, however, by counsel for the defendants to obtain information from the AEC when that agency offered to provide additional information.
    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.
    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.
    3. On November 5, 1954, in BTL interference 85,809, SR, in an effort to establish an early reduction-to-practice, represented to the Patent Office:
    4. .1 that the first real problem to be put on the ENAIC 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;

      .3 that, at the time, the ENIAC machine was a complete and operable calculating 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 operated on a continuous basis.

    5. 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.
    6. Harper's inquiry of December 1, 1961, was directed to Roland Anderson, Assistant General Counsel for Patents, United States Atomic Energy Commission, Germantown, Maryland.
    7. 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.
    8. 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.
    9. 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, and entitled "Ignition of Deuterium-Tritium Mixtures, Numerical Calculations Using the ENIAC," the number, date and title of which were not classified and asked the A.E.C. if it could be declassified.
    10. In addition to writing Anderson on December 1, 1961, Harper also discussed the substance of his request with Anderson by telephone on the same day.
    11. 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 concerning the nature of the relevant ENIAC calculations and what was done with the results, to the extent that secrecy restrictions would permit.
    12. At the request of Anderson, Strausser of the A.E.C. office of classification reviewed report number LA-525 and confirmed that it was not declassifiable in its entirety; at trial it was established that its substance could have been procured on relevant points.
    13. At the request of Anderson, Willaim B. Holton, of the A.E.C. headquarters technical staff in Maryland, with Strausser, studied classified reports describing the Los Alamos problem, and each of them concluded:
    14. .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 that the results were useful; and

      .4 that the results did not lie dormant.

    15. 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.
    16. 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 was a substantial effort which successfully and satisfactorily solved specific problems and that the results were useful and did not lie dormant, and offered to establish this position by affidavit.
    17. On the same day, December 13, 1961, Anderson also wrote to Mr. Henry Heyman, Los Alamos Scientific Laboratory, Los Alamos, New Mexico, asking 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.
    18. On December 18, 1961, Anderson discussed with Harper by telephone the possibility of submitting affidavit evidence concerning the Los Alamos problem; 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 helpful".
    19. On December 18, 1961, in his telephone conversation with Anderson, Harper 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 that affidavits were to be submitted in evidence to the court on January 19, 1962.
    20. 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.
    21. 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.
    22. On or about January 4, 1962, Mark also informed Heyman that the Los Alamos problem was of a scientific investigative nature and was by no means a simple one, and that the ENIAC machine correctly handled the mathematical processes based upon the information coded into the machine.
    23. Harper's letters of December 1, 1961, and December 5, 1961, as well as Anderson's response of December 13, 1961, have been in the possession of the defendant's counsel, John P. Dority, since 1963.
    24. On June 13, 1968, Honeywell served interrogatories on SR in this action, seeking the identification and ultimate production of all material in defendant's possession which involved the operation of the ENIAC machine during the time period July 1, 1944 through August 25, 1946, and which were not introduced into evidence in any interferences or public use proceeding or in the litigation between SR and BTL.
    25. The Harper-Anderson correspondence was not identified in SR's answers to Honeywell's interrogatories and was not produced for Honeywell until after SR had been given notice, in April, 1970, that Honeywell intended to take the deposition of the custodian of documents at Los Alamos.
    26. On October 16, 1970, Honeywell brought motion in this action to abrogate SR's claim of privilege as to all materials relating to the Los Alamos problem, this motion having been based in part upon Honeywell's external discovery of the existence of correspondence between Harper and Anderson which had never previously been produced of identified for either BTL or Honeywell.
    27. Honeywell's motion to abrogate the claim of privilege with respect to the Los Alamos problem documents was set for hearing on November 23, 1970.
    28. On November 13, 1970, SR attorney Hall in Washington, D.C. telephoned Anderson to inquire concerning Anderson's December 13, 1961, letter to Harper; Hall was informed by Anderson that the A.E.C. had in its possession the letter by Heyman dated January 4, 1962, and that the letter was available to him upon written request.
    29. SR did not produce or report its knowledge of the Heyman letter of January 4, 1962, at the November 23, 1970, hearing held before this Court on Honeywell's motion to abrogate the claim of privilege with respect to Los Alamos documents.
    30. The Heyman letter of January 4, 1962, was first made known to Honeywell by SR when it was ultimately produced for the court on December 18, 1970, with the explanation that SR did not have the latter until subsequent to the argument on November 23, 1970.
  37. Counsel for defendants chose instead to confine the investigation to Metropolis and Frankel.
    1. The Los Alamos Laboratory personnel who performed the calculations with the ENIAC machine at the Moore School, and reported their results to Teller and others, were Dr. Nicholas Metropolis and Dr. Stanley Frankel.
    2. On or about October 29, 1959, Libman, then in private practice, prepared an affidavit for the signature of Metropolis for use in opposition to the IBM public use petition, wherein Metropolis was to swear that, although he (Metropolis) had a complex problem, he knew it could not be solved on the ENIAC machine and that he visited to Moore School only in the hope of obtaining information about the potentialities of an electronic digital computer.
    3. Metropolis refused to sign the October, 1949, affidavit prepared by Libman, but on November 2, 1959, Metropolis did sign a revise affidavit which had been prepared by SR and which was thereafter filed in the Patent Office.
    4. The revised, November 2, 1959, Metropolis affidavit differed materially from the earlier draft, omitting any reference to the complex problem, except what could be deduced from the newly formulated statement that Metropolis learned about some of the preliminary qualitative features of the physical problems the calculational form of which represented a considerable simplification.
    5. An affidavit purporting to describe the Los Alamos problem was obtained from Metropolis on January 31, 1962, and filed with the court in the SR v. BTL case.
    6. An affidavit of Frankel was obtained on February 6, 1962, which also purported to describe the Los Alamos problem.
    7. Such affidavits did not state sufficient facts to prevent their conclusory content from being misleading as now appears from the record of this case.
  38. They may have thus withheld information from the Patent Office and the District Court.
    1. The District Court for the Southern District of New York, based on the limited evidence presented, found that the work done by the ENIAC machine on the Los Alamos problem was highly classified, and (erroneously) that the only two persons who knew the nature of the problem were Metropolis and Frankel, who submitted affidavits that the results were not checked for accuracy, that there were almost certainly some errors.
    2. Because no effort was made to obtain information from the A.E.C. and information may thus have been withheld, all of the essential facts presented at this trial concerning the Los Alamos problem, had not been placed before Judge Dawson through the limited affidavits and/or deposition testimony of witnesses.
    3. The New York District Court's finding was thus directly contrary to the clear and convincing evidence presented in this action which established that the Los Alamos work on the ENIAC was in fact a substantial effort which successful and satisfactorily solved specific problems and that the results were useful and did not lie dormant.
  39. This Court finds and concludes that despite the various derelictions of M and E, defendants and their counsel that the claim of willful and intentional fraud on the Patent Office has not been proved by clear and convincing evidence.
    1. Honeywell has not proven by clear and convincing evidence any willful and intentional fraud on the Patent Office concerning the ENIAC patent.
    2. Honeywell has not proven that defendants or their predecessors violated the Sherman Act in the filing and prosecution of the ENIAC patent application and/or in the enforcement of the ENIAC patent.
    3. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with the public use of the claimed subject matter of the ENIAC patent.
    4. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with the Los Alamos problem.
    5. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with the February, 1946, demonstration and dedication.
    6. Honeywell has not yet proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with Hartree's use of the ENIAC machine.
    7. All of the essential facts presented at this trial concerning the investigation of alleged public use by the attorneys responsible for filing the ENIAC patent application were not placed before Judge Dawson through the deposition testimony of Max L. Libman.
    8. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with the alleged "on sale" condition of the inventive subject matter claimed in the ENIAC patent.
    9. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with the work of Atanasoff.
    10. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with alleged anticipation by prior art patents.
    11. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with the RCA Reports, the AMP Report and/or the Burke Article.
    12. Honeywell has not proven by clear and convincing evidence that Eckert and Mauchly, their attorneys, successors or assigns, committed willful and intentional fraud on the Patent Office in connection with the First Draft Report.
    13. Apart from attorney's fees, Honeywell has not proven that it suffered any injury to its business or property by reason of the existence of the ENIAC patent.
    14. Honeywell has not proven that defendants or their predecessors violated the Sherman Act in the filing and prosecution of the ENIAC patent application and/or in the enforcement of the ENIAC patent against Honeywell.
    15. To recover antitrust damages based on alleged fraud in obtaining a patent, the plaintiff must prove (1) willful and intentional fraud, (2) injury to business or property cause by the fraudulently procured patent, and (3) the other elements necessary to a Section Act violation.
    16. Good faith or an honest mistake is a complete defense to an antitrust action based on fraud on the Patent Office.
    17. To prove an antitrust violation based on fraud on the Patent Office, the proof of fraud must be by clear, unequivocal and convincing evidence; a mere preponderance of the evidence is not enough.
    18. "The road to the Patent Office is so tortuous and patent litigation is usually so complex, that 'knowing and willful fraud' as the term is used in Walker, can mean no less than clear, convincing proof of intentional fraud involving affirmative dishonesty, 'a deliberately planned and carefully executed scheme to defraud...'"
    19. "A person attacking the validity of a patent for alleged fraudulent representations must prove that the representations were material — that the patent would not have issued but for the representations."
    20. An applicant for a patent need not set up "straw men which he reasonably and in good faith believes he can knock down."
    21. The requirement of "full, frank disclosure... does not mean an applicant must list out the full spectrum of his knowledge to establish bona fides."

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