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
2. On Sale
- The claimed invention disclosed in the ENIAC was on sale prior to the critical date.
- The entire subject matter of the ENIAC machine, represented by Eckert and Mauchly to be that which "embodies our invention," is barred from valid patentability because that machine was on sale in this country prior to the critical date.
- The subject matter of the ENIAC patent, the invention of the automatic electronic digital computer, is barred from valid patentability because that subject matter was on sale in this country prior to the critical date.
- All of the development activities at the Moore School, which resulted in the construction and placing in public use of the ENIAC machine, were financed by the United States Government.
- In 1943, officials of Army Ordnance ordered their Philadelphia office to enter into a fixed price contract (W-670-ORD-4926, hereinafter referred to as the 4926 contract) with the Moore School for research and experimental work in connection with the development of an electronic numerical integrator and computer, generally referred to thereafter by the acronym "ENIAC." On June 21, 1943, the Moore School executed the 4926 contract which was dated June 5, 1943, as a fixed price contract. The 4926 contract provided that any completed part or unit was to be delivered to the government F.O.B., floor of contractor's plant, as soon as possible after December 31, 1943. It was not until Supplement 5 of the 4926 contract was executed in mid-January 1945 that there was a requirement to complete and deliver any hardware.
- Supplement 1 of the 4926 contract, dated December 31, 1943, extended the work on ENIAC development from January 1, 1944, until June 30, 1944. In January, 1944, Supplement 2 was added to the 4926 contract to replace the original antidiscrimination clause which was deleted from Supplement 1.
- The second six months' work done under the 4926 contract, from January 1, 1944, through June 30, 1944, resulted in the freezing of an ENIAC machine design and the completion of a two accumulator ENIAC system. The two accumulator ENIAC system was operating by about June 30, 1944, and was used to solve second order differential equations for a sine wave at the same pulse rate later used on the completed ENIAC machine.
- Supplement 3 to the 4926 contract extended the time period for the work a third six months until December 31, 1944. Supplement 4 to the 4926 contract provided for research and experimental work on an EDVAC from January 1 to September 30, 1945. The work done under the 4926 contract from July, 1944, to December 31, 1944, was primarily directed toward production and manufacture of the ENIAC machine and little work on the EDVAC was done.
- Supplement 5 to the 4926 contract, agreed to after the expiration of the previous supplement providing for work on the ENIAC, retroactively provided funds for ENIAC work for a fourth six-month period from January 1 to June 30, 1945, and added, for the first time, a requirement for the delivery of an ENIAC "pilot model" machine. Supplements 1 to 3 of the 4926 contract had not required the delivery of a pilot model of the ENIAC machine, but rather had provided for the delivery to the government a the contractor's plant of any equipment completed. Neither the 4926 contract nor any of its supplements included performance requirements for the ENIAC pilot model or a requirement that any hardware be tested before being accepted by the government.
- Supplement 6 of the 4926 contract extended the delivery date of the ENIAC pilot model to September 30, 1945. Although Supplement 6 of the 4926 contract required for the first time that the ENIAC pilot model be delivered and accepted before the final contract payment, the contract contained no requirement that the machine do anything, meet any specifications or pass any tests.
- Supplement 7 of the 4926 contract, dated November 28, 1945, provided for the extension of the work relating to the ENIAC until December 31, 1945, and the work relating to the EDVAC until January, 31, 1946. Supplement 7 did not add any performance requirements to be met prior to acceptance of ENIAC.
- Supplements 8 and 9 to the 4926 contract affected only the EDVAC work and did not provide for any further work relating to ENIAC.
- No subsequent supplement to the 4926 contract either extended the completion date for the ENIAC work beyond December 31, 1945 or added performance requirements for the ENIAC machine.
- The ENIAC machine was in fact under the exclusive custody, dominion, and control of Army Ordnance from December 31, 1945, onward.
- Supplement or change order 10 to the 4926 contract did not provide for any change in delivery date for the ENIAC pilot model or any further ENIAC work but merely corrected the contract term pertaining to place of delivery. Supplements 11 and 12 to the 4926 contract did not in any way affect the delivery schedule or requirements for the ENIAC machine or provide for any further ENIAC work.
- Contract W-18-001-ORD-1706 (hereinafter referred to as the 1706 contract), dated November 1, 1945, provided for services of the University of Pennsylvania in connection with the initial operation of the ENIAC machine pending completion of the Ballistic Research Laboratory Computing Annex Building.
- Army Ordnance operation of the ENIAC machine at the Moore School was provided for by the 1706 contract, under which the University of Pennsylvania supplied electrical power, space to house the ENIAC machine and a government computing group, and provided the services of two wiremen to maintain the ENIAC machine for Army Ordnance. It was contemplated by the Moore School that expenses incurred in the testing of the ENIAC machine by the Moore School would be charged against the 4926 contract rather than the 1706 contract. Goldstine, as Army Ordnance representative at the Moore School, agreed to approve bills for services under the 1706 contract in connection with the operation of the ENIAC machine by Army Ordnance for the period beginning December 1, 1945. Both the Moore School and Army Ordnance representatives considered that the ENIAC machine was being operated rather than tested after November, 1945.
- In April of 1946, Dr. Travis, the then Director of Research at the Moore School, explained to Dean Pender that the Army was not charged under the 1706 contract in November, 1945, but was charged for December because in November the Moore School engineers had still been testing the ENIAC machine.
- Formal documentary confirmation of acceptance of the ENIAC machine by Army Ordnance occurred after the University of Pennsylvania, on June 4, 1946, noted that the government had been using the machine since December, 1945, and requested formal acceptance of the machine so that the final payment to the University could be made.
- Although formal acceptance of the ENIAC machine was not actually documented until July 25, 1946, the ENIAC machine was at all times after December 10, 1945, in the custody, dominion and control of Army Ordnance.
- The two-accumulator ENIAC system, called a "small ENIAC," embodied "the invention" of the automatic electronic digital computer, and was both on sale and sold to Army Ordnance prior to the critical date.
- The two-accumulator ENIAC system was constructed, fully tested and successfully operated by July, 1944.
- The requirement contained in the 4926 contract that all equipment completed prior to the termination of each contract period was to be delivered to the government F.O.B., floor of contractor's plant, was fully understood and complied with by the parties of the contract. All contract payments required to be made by the government to the contractor pursuant to the 4926 contract were made by March, 1944, for work during the period ending December 31, 1943; by September, 1944, for the period ending June 30, 1944; and by August, 1945, for the period ending December 31, 1944.
- Prior to July 3, 1944, the team at the University of Pennsylvania had completed the construction of the two-accumulator ENIAC system comprising two accumulator units, a cycling unit and associated power supplies. The two-accumulator ENIAC system was successful employed in mid-1944 to solve the second order differential equations for a sine wave and for a simple exponential at the same operating speed used in the ENIAC machine and disclosed in the ENIAC patent.
- The test on the two-accumulator ENIAC system were in essence a successful test of the fundamental principles of design of the ENIAC machine.
- The two-accumulator ENIAC system was an electronic numerical integrator and computer. According to the ENIAC project progress reports, the two-accumulator system constituted a small ENIAC machine.
- The 4926 contract did not require the two-accumulator ENIAC system or the larger 20-accumulator ENIAC machine to perform at any particular speed.
- During the course of the prosecution of the ENIAC patent application, the completion and successful operation of the two-accumulator ENIAC system during mid-1944 was asserted by the applicants, Eckert and Mauchly, to embody fully and constitute an actual reduction to practice of the invention claimed in the ENIAC patent application.
- Any improvements to the two-accumulator system which were completed subsequent to June 30, 1944, and prior to the end of 1944, were also on sale and sold to Army Ordnance more than one year prior to the filing date of the ENIAC patent application.
- The ENIAC machine, disclosed and claimed in the ENIAC patent, was constructed, fully tested and successfully operated in December, 1945, and was also both on sale and sold to Army Ordnance more than one year prior to the filing date of the ENIAC patent application.
- By mid-1944, when the two accumulator units were completed and successfully operating in the two-accumulator ENIAC system, the final design for the 20-accumulator ENIAC machine was essentially completed and frozen.
- The completion and successful operation of the two-accumulator ENIAC system was relied upon by the Government in its decision to authorize Supplement 4 to the 4926 contract for work on the EDVAC, and this constituted a commercialization of the ENIAC invention embodied in the two-accumulator system.
- Eckert and Mauchly, after mid-1944, devoted some of the time to the development of an advanced computer system known as the EDVAC.
- Supplement 5 of the 4926 contract, executed in mid-January, 1945, subsequent to the construction, successful operation, delivery of and payment for the two-accumulator system as it existed on June 30, 1944, provided for the completion of the 20-accumulator ENIAC "pilot model."
- By early December, 1945, the entire ENIAC machine was completed and in operation, the various units having already been individually tested, and the government had assumed custody, dominion and control over its use and operation.
- The entire ENIAC machine was placed on sale or sold at the time it was completed and surrendered to the custody, dominion and control of the government at the Moore School in December, 1945.
- Supplement 7 of the 4926 contract required delivery of the pilot model by December 31, 1945. There were no supplements to the 4926 contract which extended the delivery date of the ENIAC machine beyond December 31, 1945. The entire ENIAC machine was sold to the government at the time of its December, 1945, completion, pursuant to the terms of Supplement 7 to the 4926 contract.
- Neither the 4926 contract nor any of its supplements contained any specifications to be met other than the delivery of a Final Report and delivery of the ENIAC machine. The 4926 contract and its supplements did not require that the ENIAC machine pass any performance test.
- In June, 1946, Donald S. Murray, Assistant Comptroller of the University of Pennsylvania, wrote to Army Ordnance and requested that it formally accept the ENIAC machine because it had been in use by Army Ordnance since December, 1945.
- The decision to document a formal acceptance of the ENIAC machine was made at a conference held June 11, 1946. It was decided that an Ordnance employee would, for purposes of transfer of property accountability within Ordnance, furnish certification to the Philadelphia Ordnance District inspector that the ENIAC machine had been completed and received on behalf of Army Ordnance's Ballistic Research Laboratory. This was also desired to accompany change order 10 which validated, after the fact, the December, 1945, actual delivery of the ENIAC machine F.O.B., floor of the contractor's plant.
- The subject matter disclosed and claimed by the ENIAC patent was contained in the Final Report on the ENIAC, which embodied all results of the ENIAC work under the 4926 contract, and that Final Report was delivered to and formally accepted by Army Ordnance prior to the critical date.
- The 4926 contract also required the delivery to the government of a Final Report.
- The ENIAC Final Report required by the contract was completed and delivered to the government and formally accepted as conforming to contract requirements by June 6, 1946.
- The Final Report contains a written description of the invention claimed by the ENIAC patent in at least as great detail as the patent specification which was based on it.
- The ENIAC machine was constructed and "the invention" which it embodied was completed, reduced to practice in operative form, and therefore ready for patenting, by December, 1945.
- The ENIAC machine, when it was used to perform the Los Alamos calculations in 1945, was being used for its intended purpose and gave correct answers to problems. Any experimental stage was passed prior to December, 1945.
- Eckert and Mauchly, in eight affidavits prepared between 1951 and 1955 and submitted to the Patent Office in connection with the prosecution of the ENIAC patent application, swore that reduction to practice of "the invention" of the ENIAC patent had occurred on or prior to December 10, 1945.
- In his testimony in 1954 in Patent Office Interference 85,809 with the Williams patent of Bell Telephone Laboratories, Eckert, in answer to a question by his own attorney as to whether the Los Alamos "problem" was satisfactorily worked out on the ENIAC machine, stated:
"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 was in fact run twice, the results punched into 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 each few runs a test problem which ascertained that the machine was functioning correctly was also run, so that the problems were in effect tested 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. The Dean of the school and other members of the staff, no one else knew the nature of this problem. And I have never been told that this problem was declassified."
- In his testimony in Patent Office Interference 85,809 in 1954, Mauchly described the use of the ENIAC machine in 1945 as follows:
They actually worked with the computer and began setting it up in December, and if I recall correctly they obtained some useful results before the end of the year.
That is before the end of 1945?
Thereafter was the machine in more or less continuous use solving problems?
- The brief submitted on behalf of Eckert and Mauchly in Interference 85,809 adopted the testimony of Eckert and Mauchly. For example, the testimony of Eckert was summarized as follows:
"The completed machine was first used for working problems approximately two and one-half years after they started, on ballistic problems and on another classified problem as to which the subject matter is still classified. That problem took considerably over one month , the actual running time of the problem being somewhere around two weeks. The difficulties were not with the machine but with the mathematical nature of the problem and mistakes of the mathematicians who had designed the problem for the machine (REC 641 to 643 Q122 to 126). The problem consisted of three simultaneous partial differential equations with an empirical function in the kernel of the equation (REC 643, 644 Q121, 128)."
- The Court has considered the representations of Eckert, Mauchly and their attorneys, who also represented SR's predecessors, before the Patent Office during the procurement of the ENIAC patent, and has balanced them against the trial testimony here of Eckert and Mauchly. The more nearly contemporaneous statements made before the Patent Office, many years nearer to the events and prior to the emergence of public use and on sale as substantial issues, are binding admissions entitled to be credited.
- The Moore School's procurement of further government financed work to design and build and EDVAC automatic electronic digital computer, utilizing the know-how and competence derived from the ENIAC invention subject matter, was a commercialization of "the invention" constituting an on sale within the meaning of 35 U.S.C. §102(b).
- Subsequent to the successful completion and reduction to practice of the two accumulator ENIAC system in July, 1944, a Supplement 4 to the 4926 contract was negotiated to begin development and construction of a new machine, EDVAC, which would handle problems beyond the scope of the ENIAC.
- As stated in the Progress Report on the EDVAC, describing work done under Supplement 4 of the 4926 contract, EDVAC and ENIAC are both electronic digital computing machines.
- Subsequent to the successful completion, reduction to practice and commencement of practical use of the ENIAC machine by its purchaser, Army Ordnance, in December, 1945, a new separate contract for the EDVAC was negotiated in April 1946, and given the designation W-36-034-ORD7593 (hereinafter referred to as the 7593 contract).
- The completion both of the two accumulator ENIAC system and of the ENIAC machine was used to demonstrate the capability of the Moore School and its team to build electronic digital computers such as ENIAC or EDVAC. That demonstrated capability resulted in the award of Supplement 4 of the 4926 contract and the award of the 7593 contract (both relating to the EDVAC) to the Moore School.
- Supplement 4 to the 4926 contract and the 7953 contract were each an exploiting or commercialization by the Moore School of the ENIAC invention subject matter, the "electronic digital computer," after it was ready for patenting and prior to the critical date.
- Implicit in this finding (2.1) is that Mauchly and Eckert obviously attempted to commercialize the ENIAC prior to the critical date.
- Findings 1.1.8 to 188.8.131.52 above as to public use are pertinent, and reference thereto is hereby made in connection with the statutory bar of "on sale."
- The standards of proof stated (in 1.2, 1.3, and 1.4) above apply here.