Claims Not Anticipated
AMP Report & Burks Article
Fraud on Patent Office
25 Other Patents & Apps.
SR-IBM 8/21/56 Agreement
SR-IBM Settlement of Interferences
SR-BTL 1961 Agreement
SR-IBM 1965 Agreement
Pending Application Royalties
Section 7, Clayton Act
Statute of Limitations
Infringement of ENIAC
Declaratory and Injunctive Relief
Order for Judgment
Table of Authorities
- The application for the ENIAC patent was filed by M and E, whom I find to be the inventors.
- On June 26, 1947, Eckert and Mauchly (sometimes abbreviated herein as "M and E") filed U.S. patent application S.N. 757,158, later designated Sperry Rand Case-EM-6, describing the ENIAC machine "which embodies our invention."
- On June 19, 1947, Eckert and Mauchly executed an oath as the sole co-inventors in support of the ENIAC patent application.
- Honeywell contends that because the ENIAC machine was the product of a team effort comprising the intermingled contributions of all of the personnel on the ENIAC project team, others were improperly excluded as co-inventors.
- SR and ISD contend that Honeywell has not met its burden of proving that persons other than Eckert and Mauchly were co-inventors on a claim-by-claim basis.
- As set forth in Sections 1 though 3 of these Findings, the claimed invention embodied in the ENIAC machine was barred from patentability by prior public use, and on sale and "the invention" claimed in the ENIAC patent was derived from Atanasoff. Although Eckert and Mauchly were therefore not entitled to patent that claimed invention, they have not been shown to have excluded as named co-inventors, other members of the ENIAC team.
- I am inclined to be of the view that the work on the ENIAC was a group or team effort and that inventive contributions were made by Sharpless, Burks, Shaw, and others.
- Arthur W. Burks made major contributions to the design of the accumulator and multiplier of the ENIAC and signed at least 77 drawings.
- T.K. Sharpless made major contributions to the design of the high-speed multiplier, the initiating and cycling units, and the accumulator of ENIAC and signed at least 83 drawings.
- Robert F. Shaw contributed to the design of the function table, the accumulator, the master programmer, the initiating unit, the constant transmitter and the printer of ENIAC and signed at least 103 drawings.
- John H. Davis made contributions to the design of the accumulator, the initiating unit and the cycling unit of ENIAC and signed at least 56 drawings.
- Frank Mural made contributions to the design of the accumulators and the master programmer of ENIAC and signed at least 124 drawings.
- Chuan Chu made contributions to the design of the divider/square rooter of ENIAC and signed at least 28 drawings.
- In early 1944, S.B. Williams, employed by Bell Telephone Laboratories, conceived a design for the temporary storage of input information in relays which was disclosed to the ENIAC design team and later incorporated in the ENIAC machine.
- IBM provided the input and output equipment and the interface circuits for the ENIAC machine during the first half of 1944.
- The design of the ENIAC machine required contributions from many engineers at the Moore School who were a part of the ENIAC design team.
- There is, however, a failure of proof as to specific contributions by other than M and E.
- Notwithstanding Findings 4.2.1 to 4.2.9 above, Honeywell has not offered evidence applying claims of the ENIAC patent specifically to the respective and particular contributions made by each member of the ENIAC project team in the absence of which the court is unable to determine such specific matters.
- In the summer of 1941, John W. Mauchly ("Mauchly") and John Presper Eckert, Jr. ("Eckert") met at the Moore School of Electrical Engineering at the University of Pennsylvania and began a series of discussions, conversations and interchange about electronic computing.
- In August 1942, Mauchly by then a member of the faculty of the Moore School, prepared a memorandum, setting out some of the ideas he and Ekert, a graduate student, had discussed on the subject of electronic computing.
- In March 1943, the memorandum, which had been circulated to Brainerd and Chambers of the Moore School came to the attention of the Office of the Chief of Ordnance of the United States Army through Captain Herman Goldstine and Colonel Paul Gillon, both of whom thought it was a very exciting proposal.
- Thereafter, the Moore School submitted a formal proposal under the aegis of Prof. John G. Brainerd, the more technical parts of which were written by Eckert and Mauchly, and the Government and the Trustees of the University of Pennsylvania entered into a contract for "research and experimental work in connection with the development of an electronic numerical integrator and computer" [ENIAC, an acronym coined by Col. Gillon].
- Even before the contract had been awarded, Eckert and Mauchly began to develop things to be assigned to others to work on when the latter were assigned to the ENIAC project.
- Eckert was made the laboratory supervisor and chief engineer of the ENIAC project by Brainerd; and Mauchly, along with Eckert, was placed in charge of engineering and testing.
- A group of engineers and other supporting personnel was assembled to work with Eckert and Mauchly on the ENIAC project. Included in this group were: Arthur W. Burks, Joseph Chedaker, J. Chuan Chu, James Cummings, John H. Davis, Harry Gail, Robert Michael, Frank Mural, Thomas Kite Sharpless, and Robert Findley Shaw.
- Eckert and Mauchly explained to the engineers what was to be done and assigned them specific jobs.
- While others on the project were working on and building test equipment, Eckert and Mauchly were working out the details of what the ENIAC machine should be.
- Those working on the ENIAC project, under Eckert and Mauchly, were employees of the Moore School who assisted in the engineering work, construction and testing of the ENIAC machine.
- During the project, Eckert and Mauchly continued to refine and clarify the conception of how the computing system was going to be implemented and realized.
- By September 27, 1944, Eckert and Mauchly's conception of the ENIAC machine was complete.
- On September 27, 1944, Eckert wrote a letter to all the engineers on the project advising them that any patents "must be taken out in the name or names of the inventors in order to be valid" and asking the engineers to write out and submit to him or Mauchly any claims to which they believed they were entitled.
- None of the responses to Eckert's letter identify or claim any inventive contribution to anything claimed in the ENIAC patent.
- There is no evidence that any project engineer or anyone else, other than Eckert or Mauchly, identified or asserted any inventive contribution to the inventive subject matter claimed in the ENIAC patent until some 20 years after Eckert sent his September 27, 1944 letter.
- Contemporary documents and publicity described only Eckert and Mauchly as the co-inventors.
- Both Army Ordnance and Moore School officials knew that Eckert and Mauchly were naming themselves as inventors and that the patent application for the ENIAC patent was being prepared in the names of only Eckert and Mauchly but there is no evidence that other engineers knew of this or of the nature or scope of the claims finally made.
- Eckert and Mauchly and the project engineers who testified, knew of no one, other than Eckert or Mauchly, who made any inventive contribution to the inventive subject matter claimed in the ENIAC patent.
- Honeywell has not proven that any of the following are inventors or co-inventors of the inventive subject matter claimed in the ENIAC patent: Arthur W. Burks, Joseph Chedaker, J. Chuan Chu, James Cummings, John H. Davis, Harry Gail, Robert Michael, Frank Mural, Thomas Kite Sharpless, Robert Findley Shaw, Arthur H. Dickinson, John Wheeler, S.B. Williams, and Adele Goldstine.
- U.S. Patent #3,120,606 (the ENIAC patent) issued on February 4, 1964. Eckert and Mauchly are named the inventors.
- The ENIAC patent is presumptively valid and the named inventors, Eckert and Mauchly, are presumed to be true and actual inventors,
- Honeywell has a heavy burden to overcome the presumption of validity.
- Honeywell has failed to establish by a preponderance of the evidence that there were any inventors or co-inventors of the inventive subject matter claimed in the ENIAC patent, other than Eckert and Mauchly.
- To meet its burden Honeywell would have had to establish that there were other inventors of the subject matter of the claims of the ENIAC patent. "Each claim of a patent...shall be presumed valid independently of the validity of other claims..."
- The work, experiments, and suggestions of others — not rising to the level f invention — in assisting Eckert and Mauchly in carrying out the conception does not entitle such others to be treated as inventors or co-inventors of the subject matter claimed in the ENIAC patent.
- The group of engineers and support personnel working on the ENIAC project, other than Eckert and Mauchly, did not make any specifically proven inventive contribution to the inventive subject matter claimed in the ENIAC patent.
- The failure of an alleged inventor or co-inventor to make a claim of inventorship at the time Eckert and Mauchly were being publicized as the inventors is evidence permitting the inference that the alleged inventor's or co-inventor's assertion is not sustainable.