Support the IHA
eniac

1. Public Use

  1. The claimed invention disclosed in the ENIAC ('606) patent was in public use prior to the critical date
    1. The ENIAC patent, No. 3,120,606, discloses and claims the ENIAC machine constructed at the Moore School of Electrical Engineering of the University of Pennsylvania.
      1. The ENIAC machine was an electronic computer of monstrous size, built during wartime with government funds by a team of Moore School employees. It employed some 18,000 vacuum tubes, hundreds of switches, thousands of relays, and miles of wiring. Defendants contend that the ENIAC machine is properly regarded as the pioneer electronic computer from which all others evolved.
      2. The ENIAC machine is described in a Final Report which was prepared by the Moore School team, transmitted to and accepted by the Army Ordnance by about June 6, 1946. There are no significant differences between the ENIAC machine as constructed and placed in operation, and the ENIAC machine described in the Final Report.
      3. The descriptive content of the ENIAC patent disclosure was extracted from and based upon corresponding portions of the Final Report description of the ENIAC machine. There are no significant differences between the subject matter described in the Final Report and the claims of the ENIAC patent.
      4. The patentees of the ENIAC patent state therein that the ENIAC machine "embodies our invention" and are bound thereby. Conduct with respect to that ENIAC machine is, therefore, conduct with respect to "the invention."
      5. SR and ISD have further characterized the subject matter of the ENIAC patent as "the invention of the Automatic Electronic Digital Computer," and are bound thereby. Conduct with respect to an automatic electronic digital computer is, therefore, conduct with respect to "the invention."
      6. Each of the claims of the ENIAC patent reads on the ENIAC machine as it was constructed and placed in operation at the Moore School and described in the Final Reports.
      7. The ENIAC machine which was represented by Eckert and Mauchly to be that which "embodies our invention" is identical to the ENIAC invention, however claimed.
      8. Counsel for defendants did not object to the Court's statement at the trial that there was no dispute about the fact that Eckert and Mauchly claimed to be the two sole joint inventors of the ENIAC, from input all the way through output.
      9. For the foregoing reasons, there is no necessity to make specific reference to the individual claims of the ENIAC patent where conduct barring the valid issuance of a patent is conduct involving either the same ENIAC machine (as will be set forth hereinafter with respect to the bars of public use and on sale), or involving a prior automatic electronic digital computer (as will be set forth hereinafter with respect to the bars of derivation from Atanasoff and prior publication by von Neumann).
      10. Where an additional bar to less than the all-inclusive entirety of "the invention" has also been found herein, specific selected claims of the ENIAC patent have been applied and essentially cumulative further findings particularized by claims are also hereinafter included.
      11. 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 since that machine was in public use in this country more than one year prior to the date of the application for patent on June 26, 1947. The one-year-prior or statutory bar date is referred to as the "critical date," and is June 26, 1947.
    2. The ENIAC machine was constructed by mid-November, 1945.
      1. The design for the ENIAC machine was frozen prior to the end of 1944 so that the construction of the machine could be completed as rapidly as possible to confirm the usefulness of electronic computation with such large machines.
      2. By mid-1945, the construction of the various ENIAC units, was complete and testing of the completed units was commenced.
      3. The ENIAC was placed in operation as a system in mid-November, 1945.
      4. Moore School and Army Ordnance representatives considered that the ENIAC machine was being operated rather than tested after December 1, 1945.
    3. The ENIAC machine which embodied "the invention" claimed by the ENIAC patent was in public use and non-experimental use for the following purposes, and at times prior to the critical date:
    4. Los Alamos calculations December 1945-February, 1946

      International Publicity

      1. Press demonstration use February 1, 1946

      2. Newsreel use February 8, 1946

      3. Formal dedication use February 15, 1946

      4. Open house use February 16, 1946

      Hartree calculations April, 1946-July 1946

      Constant practical use December, 1945-1946

      Commercial solicitation uses February, 1946-April, 1946

      1. The Court finds that PX 4245, a March 19, 1946 letter from Major W.J. Stephens, Jr., to Mr. A. Borbeck, Artillery Branch, which was never previously called to the attention of either the Patent Office or the late Judge Archie O. Dawson in the case of Sperry Rand Corporation, et al. v. Bell Telephone Laboratories, Inc. (hereinafter SR v. BTL) before the Southern District of New York, clearly indicates that prior to March, 1946 the ENIAC machine was "completed with the performance of research and experimental work in connection with the development of an Electronic Numerical Integrator and Computer."
      2. SR and ISD contend that the correspondence of November, 1946, between the Moore School and the Army Ordnance patent section responsible for preparation of the ENIAC patent application (referred to by the names of the writers as the "Sharpless/Libman letters") has no probative value. Despite an error in the date of the press demonstration as recited in PX 5374, the Sharpless/Libman letters otherwise have great probative value and clearly indicated to Army Ordnance attorney Max L. Libman, who was then preparing the ENIAC patent application, that the completed ENIAC machine was first put to work for practical purposes on December 10, 1945, on a set of partial differential equations for the Manhattan Engineering District (hereinafter "the Los Alamos calculations or problem"). That initial work was not considered experimental since the letter states that "when the first problem was put on the machine it was the first time that the machine as a whole was being used, it was fully expected that the problem would be solved and it was."
    5. The Los Alamos calculations which commenced December 10, 1945, were the first problem placed on the ENIAC machine. When the first problem was put on the machine, it was the first time that the machine as a whole was being used. It was fully expected that the problem would be solved. It was.
      1. The ENIAC machine, and hence any invention claimed in the ENIAC patent, was reduced to practice no later than the date of commencement of the use of the machine for the Los Alamos calculations, December 10, 1945.
      2. The ENIAC project for the development of a high-speed electronic computer was made known to Dr. John von Neumann (Army Ordnance scientific consultant) by Dr. Herman H. Goldstine (Army Ordnance liaison officer on the ENIAC project) in the summer of 1944, after the ENIAC design had been frozen. Von Neumann visited the Moore School on July, 1944, and witnessed two ENIAC accumulator units and a cycling unit wired to function as a small ENIAC machine. By early 1945, von Neumann had begun consideration of how the ENIAC machine could be organized and operated to solve complex problems.
      3. By the summer of 1945, Dr. Edward Teller, Dr. Stanislaw Ulam and other scientists of the Los Alamos Laboratory had already recognized the urgent need for large-scale numerical calculations designed to verify the feasibility of a hydrogen bomb design concept having several parameters including various mixtures of deuterium and tritium. Teller discussed his computational needs with von Neumann who indicated his belief that the ENIAC machine would be suitable for performing certain calculations regarding the feasibility of the hydrogen bomb, called the "Super."
      4. The calculations to be performed were complex and required a large number of arithmetical computations. They were not intended to provide a particular numerical answer or a series of answers, but rather were contemplated to provide, and did provide, the basis for a yes or no answer on the utility of the continued scientific exploration of the "Super."
      5. Useful results could be and were obtained from such calculations on the ENIAC machine even though calculational errors may have occurred in some of the primary and intermediate calculations.
      6. Army Ordnance agreed, in 1945, to allow the use of the ENIAC by Los Alamos Laboratory personnel at the Moore School for the Los Alamos calculations.
      7. At or about the time in December, 1945 when the Los Alamos calculations were placed on the ENIAC machine at the Moore School in Philadelphia, the machine had passed all component and system tests and was operating quite satisfactorily. The Los Alamos calculations employed 99 percent of the capacity of the ENIAC machine.
      8. The satisfactory operation of the ENIAC machine was verified during the Los Alamos calculations by:
      9. .1 repeating a particular production run twice and then verifying that the results obtained for each repetition were identical;

        .2 stepping the ENIAC through a calculation and checking all answers after each add time;

        .3 running a test problem between successive runs and checking the answer obtained to determine that it corresponded to the known answer of the test problem.

      10. After satisfactory operation of the ENIAC machine was verified by comparing a hand calculated answer to the ENIAC machine answer for selected calculations, various conditions of the Los Alamos problem were changed to obtain production runs for which the answer had not been previously hand calculated.
      11. By January, 1946, many production runs for the Los Alamos calculations were completed. The calculations continued in progress for considerably over one month.
      12. Any difficulties encountered 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.
      13. The use of the ENIAC machine by the Los Alamos Laboratory personnel was not under the control of Eckert and Mauchly, nor under any condition of secrecy for their private benefit. The Moore School also had no control over the use of Army Ordnance's ENIAC machine by the Los Alamos personnel.
      14. The ENIAC machine was used to perform numerous production runs for the Los Alamos calculations beginning in December, 1945, and continuing in January-February, 1946 and the consequences of these calculations were far-reaching and thoroughly practical.
      15. The results of the Los Alamos calculations using the ENIAC machine were included in three Los Alamos reports which show or state in substance that without the ENIAC machine, important work on nuclear energy release problems could not have been done at the time. The Court concurs with Dr. Teller that one of the reports in April, 1946, delivered a verdict on the feasibility of a thermo-nuclear bomb: difficult, but with hard work and concentrated effort, hopeful.
      16. The contribution of the ENIAC machine in performing the Los Alamos calculations was acknowledged on March 18, 1946, by Dr. Norris Bradbury, Director of the Los Alamos Laboratory, as being of very great value in the work on the project. The Los Alamos calculations using the ENIAC machine were a substantial effort which successfully and satisfactorily solved problems, and the results were useful and did not lie dormant.
      17. The use of the ENIAC machine for the Los Alamos calculations was a non-experimental public use in this country prior to the critical date of the claimed invention disclosed in the ENIAC patent, and an absolute statutory bar to the valid issuance of the ENIAC patent.
      18. The Court credits the live testimony of distinguished scientists who were contemporaneous participants in these events including Drs. Teller, Ulam, Mark, Metropolis, and Frankel of the Los Alamos Laboratory and Dr. Goldstine of Army Ordnance. The testimony of Eckert and Mauchly did not contradict such testimony or the contemporaneous circumstances.
    6. Upon completion of the construction of the ENIAC machine by mid-November, 1945, and commencement of its full-scale operating use by December, 1945, Army Ordnance generated international publicity to show all the world the developments in computing which had been proved operational.
      1. The general principles of the ENIAC design and the machine's operational and functional characteristics were unclassified after December 17, 1945.
      2. Only certain design details and circuits of the ENIAC remained classified Confidential after December 17, 1945, and this designation:
      3. .1 was not made for the benefit or protection of Eckert and Mauchly;

        .2 was not made at the request of Eckert and Mauchly;

        .3 but was made by Army Ordnance to protect circuits of the machine being used by other military departments, including the Army Signal Corps.

      4. The security classification of the ENIAC circuits and design details was not a matter under the control of Eckert and/or Mauchly. After the declassification in 1945, the design details and circuits of the ENIAC were left confidential until February, 1947, solely at the discretion of and for the benefit of the government, and not for the commercial business interest and private benefit of Eckert and Mauchly.
      5. The Army Ordnance international publicity program for the ENIAC machine was extensive and well planned, and Eckert and Mauchly as participants therein had been warned that the display of the machine would foreclose any of their private patent rights if not promptly pursued.
      6. In January, 1946, formal press releases were prepared by Army Ordnance for release immediately following the dedication ceremony which was scheduled to be held on February 15, 1946. Mauchly's diary entries attest to his role in personally editing the Army Ordnance press releases to insure specific recognition of Eckert and him.
      7. Eckert and Mauchly cooperated in the preparation and planning of the efforts of Army Ordnance and the Moore School to achieve saturation publicity for the completion of the ENIAC, including press releases, interviews, speeches, newsreels, press demonstrations, formal dedication and the Moore School open house, such as:
      8. .1 Eckert and Mauchly delivered prepared remarks on the utility and speed of the ENIAC machine to reporters who attended the press demonstration;

        .2 Mauchly prepared and delivered a speech to the reporters at the press demonstration explaining that the ENIAC machine demonstrated that it was possible to utilize electronic computers to solve many problems never previously solved; and

        .3 Eckert delivered a speech at the press demonstration and informed reporters that the ENIAC machine had sounded the death knell to the era of electromechanical computing devices, and that the advent of the ENIAC machine had made electronic computers a part of the concrete present rather than a vague promise of the future.

      9. The ENIAC machine was operated at the press demonstration on February 1, 1946, for publicity purposed, and in a manner calculated to be impressive through the press to the general public.
      10. One of the calculations illustratively demonstrated was the use of the ENIAC machine to add the number 97,367 to itself 5,000 times, as was visible on the face of the accumulators. After the 5,000 additions were completed, the result was checked and it was determined that the ENIAC machine had properly performed the calculation.
      11. As another demonstration calculation, the ENIAC machine multiplier was used to multiply 13, 975 time 13,975 500 times, and the product was checked and found to have been properly calculated.
      12. As another demonstration calculation, the ENIAC machine was used to produce a table of squares and cubes of the numbers from 1 to 100. The ENIAC machine functioned properly during the preparation of the table, and the results were error free.
      13. As another demonstration calculation, the ENIAC machine was used to compute the sines and cosines for 100 different angles, and the table prepared was punched on so-called tab cards, printed on paper, and distributed to members of the press. The ENIAC machine functioned properly during the preparation of the table of sines and cosines, and correct results were obtained for each computation.
      14. As another demonstration calculation, the ENIAC machine performed representative calculations arising out of the Los Alamos Laboratory work. A printed copy of the results or so-called printout of a number of Los Alamos-type calculations was prepared and distributed to the attendees at the press demonstration. These calculations utilized substantially the full capacity of the ENIAC machine, and contained no errors attributable to malfunction of the ENIAC machine.
      15. Although the demonstration calculations performed on the ENIAC machine for the press were not intended by the Army Ordnance or the Moore School to be for the private benefit or on the behalf of Eckert and Mauchly, they were in fact later relied upon by them for that financial purpose. In no event were the calculations performed in order to enable Eckert and Mauchly to complete or perfect the making of "the invention" embodied in the ENIAC machine.
      16. The use of the ENIAC machine in public during the press demonstration was not an experimental use, but was a publicity exercise in joint behalf of the Moore School and Army Ordnance, and was intended to impress the scientific community and the general public with the capabilities of the machine and the fact of its completion.
      17. The use of the ENIAC machine to perform calculations during the February 1, 1946, press demonstration was a non-experimental public use of the claimed invention disclosed in the ENIAC patent, prior to the critical date and an absolute statutory bar to the valid issuance of the ENIAC patent.
      18. The ENIAC machine was filmed in staged operation in February, 1946, for the benefit of newsreel photographers, for publicity purposes, and in a manner calculated to provide a motion picture demonstration to be shown nationally to the general public.
      19. The use of the ENIAC machine for the newsreel photographers was not an experimental use, but was part of the large-scale international publicity program calculated to impress the public with the capabilities of the machine and the fact of its completion.
      20. The ENIAC machine was formally dedicated on February 15, 1946, for publicity purposed, at a ceremony involving pre-eminent representatives of government, military, university, industrial and scientific establishments, and in a manner calculated to achieve maximum recognition of and to stimulate interest in the completed and operating ENIAC machine.
      21. As of the date of the dedication and demonstration of the ENIAC machine at the Moore School on February 15, 1946, the ENIAC machine was represented to be, and was in fact, completed and successful.
      22. During the dedication demonstration of the ENIAC machine, a ballistic trajectory problem was run as a simple means for impressing observers with what the machine could do. Although the trajectory data was simplified for the demonstration, the basic arithmetical operations of adding, subtracting, multiplying and dividing which would be done in a complete trajectory problem were performed. Any variance between the trajectory calculations performed during the dedication and an actual trajectory occurred as a result of programming simplifications rather than as a result of any operating defects in the ENIAC machine.
      23. Although complete ballistic firing tables were not prepared during the dedication, the demonstration was intended to and did show that such tables could be prepared by repeating the trajectory calculations as performed with different input conditions. The data used was real and had been verified beforehand. The ENIAC machine did not err.
      24. None of the calculations performed on the ENIAC machine at the dedication were performed for the private benefit or on the behalf or under the control of Eckert and Mauchly to enable them to complete or perfect the making of "the invention" embodied in the ENIAC machine. Instead, their private interest was one of commercial exploitation (see 1.1.5.6 and .13 above).
      25. The use of the ENIAC machine in public at the formal dedication was not an experimental use, but was part of the large-scale publicity program calculated to impress the public with the capabilities of the machine and the fact of its completion.
      26. The use of the ENIAC machine to perform calculations during the dedication was a non-experimental public use of the claimed invention disclosed in the ENIAC patent, prior to the critical date, and an absolute statutory bar to the valid issuance of the ENIAC patent.
      27. The ENIAC machine was publicly exhibited and demonstrated in operation on February 16, 1946, at an "open house" for the invited entirety of the Moore School staff and student body. At the open house, the same ballistic trajectory calculations that were performed at the dedication were again performed. The ENIAC machine operated satisfactorily at the open house.
      28. The use of the ENIAC machine in public at the open house was a non-experimental public use of the claimed invention of the ENIAC patent, prior to the critical date, and an absolute statutory bar to the valid issuance of the ENIAC patent.
      29. The Court has heard from numerous live witnesses regarding the international publicity regarding the completion and successful operation of the ENIAC machine and saw the ENIAC newsreel exhibited during the testimony of Dr. Goldstine. The Court credits this testimony.
    7. Dr. Douglas R. Hartree, a highly regarded British scientist, used the completed ENIAC machine in 1946 prior to the critical date to perform complex and fundamental calculations relating to the performance of airfoils at supersonic speeds in air.
      1. As early as 1939 Hartree had begun his study of methods for the solution of equations involved in laminar boundary layers in compressible flow. The equations are applicable to the field of supersonic aircraft design, as well as to the design of various projectiles.
      2. Hartree's study of the laminar boundary layer in compressible flow was not a single problem for which a single answer was to be calculated, but was instead a broad investigation involving numerous computations using the ENIAC machine, each of which resulted in large groups or families of calculations or solutions which were to be compiled in the form of tables. The ENIAC patent states that the primary intended use of the ENIAC machine is to compute such large families of solutions.
      3. Hartree visited the United States in 1945, saw the nearly completed ENIAC machine, and was furnished copied of the ENIAC reports. He commented on the ENIAC machine in an article published in Nature magazine in England on April 20, 1946.
      4. Because of his knowledge of the ENIAC project gained from viewing the ENIAC machine in 1945 and the material in the progress reports, Hartree, when he arrived in the United States in April, 1946, had already reduced laminar boundary layer equations to a form suitable for solution by using the ENIAC machine. Hartree also brought working charts to the United States which described how the ENIAC machine was to be programmed by plug wiring and set up to perform the calculations required.
      5. Prior to his visit to the United States in the spring of 1946, Hartree had already studied some special cases of the boundary layer equations which are described as null (or zero) order functions and had hand-calculated five-figure solutions to some of the families of calculations. The other cases of the study of the laminar boundary layer in compressible flow are described as the higher order functions. At the time that Hartree arrived in the United States, he brought with hi the hand calculations of the null-order functions of the boundary layer equations.
      6. Mauchly's present wife, then Kathleen McNulty, was assigned by Army Ordnance to plug in wires on the ENIAC machine according to the programming charts which Hartree had brought with him to the United States.
      7. Hartree began his work on the ENIAC machine by evaluating the null-order equations. Calculations of the null-order equations using the ENIAC involved the basic operations of adding, multiplying and dividing. The calculation of the null-order functions on the ENIAC machine required a number of production runs, each of which produced results in the form of a stack of punched cards.
      8. Hartree's calculations using the ENIAC machine were complex and carefully planned, and required the operating capacity of the entire machine.
      9. Hartree's use of the ENIAC machine began in April, 1946, and he successfully used the machine to perform useful calculations and produce large families of solutions of the null-order functions. Hartree checked the results by comparing solutions obtained from the ENIAC machine with corresponding five-figure solutions which had been hand calculated by him prior to his arrival in the United States. Hartree completed his evaluation of the null-order functions prior to the critical date for the ENIAC patent application. Completion of these null-order functions was a substantial independent portion of Hartree's intended complete study of the laminar boundary layer in compressible flow. Also prior to the critical date for the ENIAC patent application, Hartree had successfully used the ENIAC machine to provide useful answers to practical study of the laminar boundary layer in compressible flow.
      10. Hartree's use of the ENIAC machine in 1946 on his own boundary layer problem was as a consultant employed and paid by Army Ordnance. Hartree was neither an agent nor employee or either Eckert, Mauchly or the Moore School, nor under any obligation of secrecy or otherwise to any thereof.
      11. Prior to the critical date, Hartree described to Mauchly in detail the nature of the calculations that he had performed using the ENIAC machine, and Mauchly made notes of the discussion. Mauchly testified that he knew at the time of Hartree's visit that Hartree was working at the time on a problem in fluid dynamics which had to do with boundary layers and that this made sense because Mauchly had dealt with similar problems in the wind tunnel at the Bureau of Standards in the 1930's. Mauchly testified that he attended a lecture at the Moore School given by Hartree in which the boundary layer calculations were described.
      12. Mauchly and Eckert, who had by then resigned from the Moore School, did not evaluate the results of the calculations run by Hartree to learn or decide if any design changes to the ENIAC machine were necessary. They were not authorized to make any changes and did not make any. Although Eckert and Mauchly were aware of the fact of Hartree's use of the ENIAC machine, they neither allowed, participated in nor exercised any control over that use or over any of its consequences.
      13. Hartree's calculations were of scientific importance and the subject of significant published papers, upon which Eckert and Mauchly later relied for their private business advantage. Hartree left the United States to return to England on July, 20, 1946. In October, 1946, Nature magazine published a further article by Hartree on the ENIAC machine and his calculations on the laminar boundary problem. The Hartree October Nature article briefly described the method used for solving the three simultaneous, linear, ordinary, differential equations which were said by Hartree to arise from the theory of the laminar boundary layer in compressible fluid. Eckert and Mauchly's partnership, Electronic Control Company, later reprinted the article in an advertising brochure in which it was stated that "the article represented here is based on his [Hartree's] first hand experience in using the ENIAC."
      14. The use of the ENIAC machine by Hartree was a non-experimental public use in this country of the claimed invention disclosed in the ENIAC patent, prior to the critical date, and an absolute statutory bar to the valid issuance of the ENIAC patent.
      15. This Court has considered Hartree's article in the 1948 Philosophical Transactions of the Royal Society and the testimony of Dr. Goldstine and Dr. Clippinger (a former Army Ordnance employee with contemporaneous knowledge of the ENIAC machine, and a present Honeywell employee), as against the conflicting testimony by defendant's counsel Hall, and holds that the Hartree article is a description of the pre-critical-date work and includes a tabulation of some of the families of solutions which he obtained prior to the critical date. Clippinger also testified that a recheck of the results on a high speed modern computer had demonstrated the correctness of Hartree's result. The Court has considered and credits the testimony of Dr. Clippinger to the effect that the Hartree article indicates that the ENIAC machine gave Hartree correct results.
    8. The use of the ENIAC machine by Army Ordnance after December 1, 1945 and prior to the critical date, involved no question of whether the machine worked or how it could be improved by Eckert and Mauchly as claimant inventors for their own private advantage, but was instead a program of production operation under the sole control of Army Ordnance entirely for governmental uses, purposes and benefits.
      1. Beginning with the Los Alamos calculations in December, 1945, and extending to the ENIAC patent critical date, the ENIAC machine entered a period of constant practical use under the control of Army Ordnance.
      2. In addition to the public use of the ENIAC machine for the Los Alamos calculations and the Hartree problem, there are other uses which cumulatively confirm the public use of the ENIAC machine, prior to the critical date.
      3. None of the specified instances of ENIAC machine operation between December 10, 1945, and the critical date, comprising, in sum, a history of constant practical use of the ENIAC machine by Army Ordnance, were carried out under the control of, or in any way for the private benefit of, Eckert and Mauchly, or under any obligation of secrecy to Eckert and Mauchly.
      4. None of these other examples of the use of the ENIAC machine were carried out for the purpose of completing or perfecting the making of "the invention" of Eckert and Mauchly embodied in the ENIAC machine.
      5. After the Los Alamos calculations, the ENIAC was in more or less continuous use being set up for or in actual work in solving problems. All so-called testing, de-bugging and troubleshooting was normal operation and continued throughout the useful life of the ENIAC machine.
      6. When Eckert's connection with the ENIAC project was terminated in March of 1946, the machine had been completed and running for some time and was in use by Army Ordnance, and Eckert so testified in 1954. At least by January, 1946, the ENIAC machine was a complete and operable calculating instrument, and Mauchly so testified in 1954. Neither Eckert nor Mauchly testified to the contrary before this Court.
      7. There were no long periods of maintenance or repair shutdown, and the general practice was to operate in a continuous schedule and shut down only when a fault became apparent. The percentage of hours used for computing time was quite high, and Eckert and Mauchly so testified, so that Sperry Rand's attorney Wobesmith summarized Mauchly's testimony to that effect in 1954.
      8. Harry Huskey, of the Moore School staff, operated the ENIAC machine, from April 15 to April 19, 1946, to generate a table of sines and cosines and this use was called to the attention of Libman, the Army Ordnance attorney who prepared and filed the ENIAC patent application for Eckert and Mauchly, prior to that filing. Eckert and Mauchly did not evaluate the results of Huskey's calculations to determine whether or not any changes in the ENIAC design were necessary in the light of the results obtained, nor were any changes ever recommended or made by them or for them.
      9. The constant practical use of the ENIAC machine after December 1, 1945, was a non-experimental public use of the claimed invention disclosed on the ENIAC patent prior to the critical date, and an absolute statutory bar to the valid issuance of the ENIAC patent.
    9. Eckert and Mauchly took commercial advantage of the Army Ordnance's public uses of the ENIAC machine and also place the ENIAC machine in public use themselves by demonstrating it to potential customers as a part of their attempts to commercialize the ENIAC machine subject matter prior to the critical date.
      1. Eckert and Mauchly intended that the widespread publicity to be gained for them personally from the ENIAC press demonstration, dedication and open house in February, 1946, would advance their private commercial business interests.
      2. More than one year prior to the June 26, 1947 filing date of the ENIAC patent, beginning at least as early as the fall of 1944, Eckert and Mauchly placed the claimed invention disclosed in the ENIAC patent in public use and on sale by describing and demonstrating the ENIAC machine to their intended customers for their own commercial gain.
      3. Eckert and Mauchly took full private advantage of the publicity and dedication activities as a convenient forum for their solicitation of future computing machine contracts from governmental agencies.
      4. During the fall of 1944, Mauchly called on various potential customers to determine the business prospects for selling high-speed computing or data processing machines. Prior to October, 1944, the ENIAC two accumulator system had been successfully built and operated. The completion of the ENIAC two-accumulator system gave Eckert and Mauchly a tool by which they could convince potential customers that a high-speed computing or data processing machine could in fact be successfully built.
      5. Army Ordnance's contract (W-670-ORD-4926) for the ENIAC project work required the University of Pennsylvania to grant the U.S. Government a royalty-free license under all patents arising from the work done under the contract. However, since the employment agreements of the engineers working on the ENIAC project did not clearly require any assignment of their invention rights to the University of Pennsylvania, the University was not in a position to grant the government such a license.
      6. Prior to March, 1945, Eckert and Mauchly sought advice from George A. Smith, a patent attorney, on methods of securing for themselves the commercial invention rights arising form the work under the Army Ordnance contract. Pursuant to his advice, Eckert and Mauchly asked the University of Pennsylvania for the right to have their own patent attorney file patent applications in their names on ideas arising out of the work on the project. During March, 1945, Eckert and Mauchly pressed for recognition of their commercial interests by the University of Pennsylvania in return for assurances that they would help the University fulfill its obligations under the contract. Facing the fat that it would require the cooperation of Eckert and Mauchly to fulfill its contractual obligations to the U.S. Government, the University yielded the commercial rights to any patents they might obtain based on the work on the contract.
      7. Mauchly was in personal contact with personnel of the U.S. Weather Bureau as early as April, 1945, to learn their computing needs and to discuss the ENIAC and future work with them. Eckert and Mauchly also followed up their business prospects at the U.S. Census Bureau throughout the summer of 1945.
      8. On other occasions during 1945, Eckert and Mauchly called on about a dozen Census Bureau officials including Everett, Kimball, Jr., Dr. Madow, Morris H. Hansen, and James L. McPherson, in order to interest them in high-speed computing or data processing machines. Hansen assigned McPherson the task of evaluating Eckert and Mauchly's proposals regarding such a high-speed computing or data processing machine. As a result of this assignment, McPherson held meetings from time to time with Eckert and Mauchly at the Census Bureau. During the meetings with McPherson and other census officials, Eckert and Mauchly described the ENIAC and sought a contract to develop a similar but more advanced machine for the Census Bureau.
      9. In order to interest potential financial backers Earnest Cuneo and Lazar Teper in the financial backing of an Eckert-Mauchly computer company, Eckert and Mauchly displayed the ENIAC machine to them in January, 1946.
      10. Eckert and Mauchly early sought private business advantage from the fact of the ENIAC machine's completion by the Moore School in 1945 and its constant practical use thereafter by Army Ordnance. For example, on February 15, 1946, Commander Reichelderfer of the U.S. Weather Bureau attended the ENIAC dedication and dinner on behalf of the U.S. Weather Bureau, being seated at Mauchly's table at Mauchly's request. Mauchly's purpose in having Reichelderfer present was one of private self-interest to advance his business enterprise plans, held jointly by Eckert, by using the occasion of the ENIAC dedication as a business promotion effort. During the dedication, Reichelderfer and the other guests witnessed a demonstration of the ENIAC machine. Thereafter, on February 21, 1946, Eckert and Mauchly again demonstrated the ENIAC machine for Reichelderfer's associates Dr. Harry Wexler and Jerome Namias of the U.S. Weather Bureau, and discussed with them the possible constructions of a similar computer for weather purposes. The contacts with and demonstrations for Reichelderfer, Namias and Wexler were attempt to commercialize the invention embodied in the ENIAC machine prior to the critical date, and resulted in non-experimental public uses of the claimed invention disclosed in the ENIAC patent prior to the critical date, constituting an absolute bar to the issuance of the ENIAC patent.
      11. By mid-March, 1946, Eckert and Mauchly had put out a number of commercial feelers, and were actively pursuing them. For example, on March 20, 1946, in order to promote their sale of a high-speed computing or data processing machine, Eckert and Mauchly made a presentation to the Committee on Tabulation Methods and Mechanical Equipment of the U.S. Census Bureau.
      12. On March 22, 1946, Dean Pender of the University of Pennsylvania demanded that Eckert and Mauchly either subjugate their personal commercial interests to the interests of the University or have their employment by the University terminated. On or about March 22, 1946, Eckert and Mauchly submitted their resignations from the University of Pennsylvania to take effect March 31, 1946.
      13. On April 2, 1946, two days after their resignations from the University of Pennsylvania became effective, Eckert and Mauchly met with representatives of the Weather Bureau, Census Bureau, and Bureau of Standards. During that meeting, Eckert again described the ENIAC machine.
      14. In order to promote their proposed sale of a computing machine, Eckert and Mauchly invited representatives of the Census Bureau and National Bureau of Standards to witness a demonstration of the ENIAC machine. The demonstration, held April 11, 1946, was attended by Eckert and Mauchly, Dr. John H. Curtiss representing the National Bureau of Standards, and Messrs. A.A. Berlinsky, J.F. Bosen, Morris H. Hansen, and James L. McPherson, representing the Census Bureau. During the April 11, 1946, demonstration, the ENIAC machine was set up and running while its operation was explained. The April 11, 1946, ENIAC demonstration was an essential part of Eckert and Mauchly's implementation of the plan to exploit electronic computing or data processing machines commercially.
      15. Following the April 11, 1946, ENIAC machine demonstration, Eckert and Mauchly agreed to submit to the Census Bureau a set of specifications which could be included in any contract which the Bureau would award them. The April 11, 1946, ENIAC demonstration and Eckert and Mauchly's descriptions of the ENIAC machine were Curtiss' principal sources of information about electronic computing and Eckert and Mauchly's principal credentials for competence and credibility. On or about April 30, 1946, Eckert and Mauchly submitted some tentative specifications of a proposed computing machine to the Census Bureau, as requested during the April 11 demonstration.
      16. Based on Curtiss' recommendation, Eckert and Mauchly were awarded contract CST-7964 in the fall of 1946 to conduct a design study, including the construction of components, and prepare a report based thereon proposing a computer to be built for the Census Bureau. Contract CST-7964 directly followed from the ENIAC machine demonstration and the sequence of visits and evaluations of the technical competence of Eckert and Mauchly by the Bureau of Standards.
      17. Eckert and Mauchly's demonstration of the ENIAC machine on April 11, 1946, was a commercialization by Eckert and Mauchly of the claimed invention disclosed in the ENIAC patent and embodied in the ENIAC machine prior to the critical date, and resulted in a non-experimental public use of "the invention" of the ENIAC patent prior to the critical date, constituting an absolute bar to the valid issuance of the ENIAC patent.
      18. Eckert and Mauchly, in attempting to gain commercial and private business advantage from the pre-critical date early practical operation of the ENIAC machine, and the massive publicity thereof, advertised in their Eckert-Mauchly Computer Corporation literature in 1949 that the ENIAC machine had been put into operation in January, 1946.
      19. With regard to the issue of Eckert and Mauchly's commercialization of the ENIAC machine subject matter prior to the critical date, the Court has considered the conflict between, on the one hand, the disinterested testimony of Mr. James L. McPherson and related contemporaneous documentary evidence, and, on the other hand, the testimony of Eckert and Mauchly. The Court credits the testimony of McPherson and corroborating documentary evidence, and holds that Eckert and Mauchly knowingly sought to and did commercialize the ENIAC machine and any invention embodied therein prior to the critical date.
  2. The usual standard in civil cases of proof by fair preponderance of evidence is easily and clearly satisfied.
  3. I do not believe that the standard to be applied is that of clear and satisfactory proof or clear and convincing proof or proof beyond a reasonable doubt.
  4. If necessary for a decision, I find that the more stringent standards have been satisfied.
    1. The Court has heard 22 live witnesses over many weeks of the trial relating to the history and facts surrounding the use of the ENIAC machine prior to the critical date. The Court has seen the newsreel film made in February, 1946, showing the ENIAC machine actually being used for its intended purpose in a clearly publicly intended setting.
    2. Thousands of the documents received by the Court bearing on the public use issue originated contemporaneously with the relevant events and were obtained from independent and disinterested sources.
    3. The Court credits this heavy weight of evidence, fully revealed for the first time upon this record, as compelling a finding that the plaintiff has shown by clear and satisfactory proof, or clear and convincing proof, or proof beyond reasonable doubt, that the claimed invention disclosed in the ENIAC patent was in public use in this country prior to the critical date.
  5. The use of ENIAC after December 1, 1945, was clearly not experimental in nature.
    1. Defendants contend that all uses of the ENIAC machine prior to the critical date are exempted from their otherwise clear barring effect because they constitute experimental uses under Eckert and Mauchly's control, or for their benefit, and were necessary and essential to the completion or perfection of the making of "the invention" claimed by them. The facts are clearly to the contrary.
      1. By December, 1945, Army Ordnance was using its ENIAC machine under an operating contract W-18-001-OR-1706 (separate from contract 4926 under which the ENIAC machine was built) which provided for the Moore School to furnish services for the initial operation of the ENIAC machine at the Moore School pending completion of the building at the Aberdeen Proving Ground where the machine was later to be housed.
      2. After the ENIAC machine was put into constant practical use by Army Ordnance in December, 1945, the ENIAC group or team, including Eckert and Mauchly, turned their attention to the commencement of work on the next generation of computer design, the EDVAC.
      3. Eckert and Mauchly resigned from the Moore School in March, 1946, and had no further official contact with any of the work with the ENIAC machine after April 1, 1946.
    2. The pre-critical date uses of the ENIAC machine were not made under the surveillance of Eckert and Mauchly, and for the purpose of enabling them to test the machine and ascertain whether it would answer the purpose intended and to make such alterations and improvements as experience demonstrates to be necessary, and therefore are not excused as experimental uses within the meaning of Elizabeth v. Pavement Co., 97 U.S. 126 (1877). The ENIAC machine demonstrated that it would answer its intended purpose in December, 1945 when it was used for production runs on the Los Alamos calculations.
    3. By December 1, 1945, the ENIAC machine was under the custody, dominion and control of the customer, Army Ordnance, and the relationship to the machine of Eckert, Mauchly and the other engineers at the Moore School involved in the ENIAC team effort was not one of continuing inventorship and experimentation.
    4. The uses of the ENIAC machine from December, 1945, to the critical date were for its intended purpose of performing automatic electronic digital computation, and were not for the experimental purposed of the completion of perfection of the making of "the invention."
      1. The uses of the ENIAC machine between December 1, 1945, and the critical date were not in the nature of testing, checking, or experimentation, but rather were uses of the ENIAC machine for its intended practical purpose.
      2. The Court has considered the ENIAC Service Log and the testimony concerning the various entries which were made in it. The evidence is clear and convincing that the Service Log is a record showing routine maintenance on the ENIAC machine. The fact that such maintenance was performed does not in any way detract from the non-experimental nature of various ENIAC public uses. The Court has considered that assertion of defendants that the ENIAC Service Log shows that changes to the machine were made. The evidence is clear and convincing that, without exception, the changes recorded in the Service Log were not design changes of any significance to "the invention," but were instead minor and routine refinements of adjustments of a non-inventive nature. This work on the ENIAC machine was done by Homer Spence, the maintenance engineer for ENIAC after December 1, 1945, and was routine maintenance unrelated to the completion or perfection of "the invention."
      3. The burden of proof of any exemption from the public use bar, such as by any reason of experimentation essential to the completion of the making of perfecting of "the invention" by or for Eckert and Mauchly, rests with SR & ISD, and has not been carried. Instead, Honeywell has proven such use to be non-experimental and clearly practical.

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