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12. Validity

  1. A patent shall be presumed to be valid.
    1. This presumption is a statutory one which may be overcome so that a patent is rendered invalid or unenforceable or both.
    2. .1 The rebuttable presumption of validity which attaches to a patent because of 35 U.S.C. §282 is "a faint one" because Patent Office examination is not adversary and the public is not heard.

      .2 The presumption of validity is not accorded great weight in the more recent decisions of the Supreme Court, notwithstanding its positive assertion in the case of Radio Corporation of America v. Radio Engineering Laboratories, Inc.

      .3 The presumption may not be used to transmute the products of mechanical skill into patentable inventions, since it is as much the duty of the court to protect the public against having to pay tribute to a patentee who is not any true sense an inventor or discoverer, as to protect the patent rights of one who is a real inventor.

      .4 The presumption is greatly weakened, if not destroyed, where bars to patentability raised in litigation are based on prior art or use which were not before the Patent Office Examiner.

      .5 One practical reason for the requirement of absolute honesty and good faith disclosure by an applicant in ex parte Patent Office examination is that even an innocent misrepresentation of facts destroys the presumption of validity.

      .6 How strong this presumption may be is debatable in view of the multiplicity of patents issued (over three million by 1964), and the high proportion held invalid when litigated (only one held valid in the 8th Circuit since the Supreme Court's decision in Graham v. John Deere, 1966).

      .7 While the patent grant still gives rise to a presumption of validity, the effective force of that presumption has been substantially weakened by the plethora of decisions recognizing "the notorious difference" between the loose standards applied by patent examiners in approving patented unpatentables, and the standards applied by the courts in dispatching patents issued thereunder.

  2. Plaintiff has overcome the presumption of validity by substantial evidence which is clear and convincing.
    1. SR and ISD assert a broad scope for the ENIAC patent:
    2. .1 "No data processing machine of any consequence...in the United States today is being made that does not make use of inventions covered by this patent."

      .2 The subject matter of the ENIAC patent is "the invention of the Automatic Electronic Digital Computer."

    3. The substantial, clear and convincing evidence in this case establishes that the entirety of this broad subject matter of the ENIAC patent is not validly patentable. Patentability has not been created, and the absolute bars to patentability have not been overcome by the ingenuity of expression and the variety of technical language found among the 148 different claims of the ENIAC patent.
    4. The machine disclosed and claimed in the ENIAC patent, and embodying the invention of the patent, was in public use in this country more than one year prior to the filing of the ENIAC patent application, and the ENIAC patent is thereby invalid.
    5. .1 A patent is statutorily barred and, hence invalid, of the invention was in public use in the United States more than one year prior to the date of the application.

      .2 The public use bar is based on a fiat of Congress that it is part of the consideration for a patent that the public shall begin to enjoy the disclosure as soon as possible.

      .3 The use of an invention by a person other than the inventor, not essential to the completion of the making of the invention by the inventor, is a public use, and the fact that the invention is buried within a machine is irrelevant.

      .4 Under limited conditions, where the invention involves the need for public use as the only practical way to test the value of the invention and thereby permit the making of the invention to be completed, the inventor may experiment in public as a special exception to the public use bar.

      .5 The experimental exception to public use is a narrow one, and it does not apply in a situation where it is possible to conduct the experiment in private, without the need for public use.

      .6 The narrow experimental use exception to the public use bar only lifts the one year statutory rule where the use is by the inventor or persons under his control for the purpose of perfecting the invention.

      .7 A patentee's Patent Office Rule 131 affidavit which asserts a completion of the invention in the United States before the filing date of the application fixes the last possible date for "experimental" use.

      .8 Where there is no question involved of the inventor's determination of whether the invention worked or how it could be improved, and, as well, where the sole purpose of a demonstration is to show new developments in equipment, which have been proven operational, to the public, such use is public, is in bar of a patent and cannot be forgiven as an experiment.

      .9 Where the idea of a machine has been conceived and the conception carried into effect by its construction, which machine is then used or capable of being used for the purpose for which it was designed, such use is no longer an experiment.

      .10 An inventor may not enjoy the best of the two possible worlds of secrecy and legal monopoly: he may not be permitted to use a period of alleged "experimentation" as a competitive tool.

      .11 That a device, in public use, is capable of improvement can be said in every case; there are few, if any, machines which are not susceptible of further development and improvement; the fact that a machine has not been ultimately perfected at the time it was first in use does not avoid a public use bar.

      .12 The policy consideration behind the "public use" doctrine is to stimulate seasonable disclosure of inventions. A single public use of a patented machine more than a year before application for patent is filed, even without any profit to the inventor, is sufficient to establish a public use bar.

      .13 Where a device is publicly demonstrated to members of the public including the press, a compelling inference arises that the demonstration was a public use, was not within the experimental use exception and is a statutory bar to a patent if the demonstration occurred more than one year before an application on the device was filed.

      .14 Complete identity of the device in public use with the device as claimed in a patent is not necessary to establish a public use bar. The difference between the device used and that patented must by a patentable one to avoid the bar and an inventor cannot relieve himself from the barring consequences of a public use merely by establishing that the device, installed and use, was imperfect.

    6. The machine disclosed and claimed in the ENIAC patent, and embodying the invention of the patent, was on sale in this country more than one year prior to the filing of the ENIAC patent application, and the ENIAC patent is thereby invalid.
    7. .1 A patent shall be barred if the invention was on sale in the United States more than one year prior to the date of the application for patent in the United States.

      .2 "On sale" does not mean an actual accomplished sale but merely activity by the inventor in a commercial exploitation of what he later asserts the power to monopolize.

      .3 An express contract for the construction of equipment embodying the principles of the invention covered by a patent may constitute "on sale" despite the fact that no structure has yet been constructed.

      .4 For a specific device to be "on sale", it is not necessary that an actual delivery of that device by made by only that the device be ready for delivery.

      .5 The placing "on sale" of an invention bars all claims to that invention even though the invention may have been imperfect in a mechanical sense at the time.

      .6 The "on sale" provision is not limited to a sale free from secrecy, and security classification imposed by the purchaser or offerer does not toll the operation of the bar.

      .7 A prima facie showing that an invention was "on sale" can be overcome only by unequivocal and convincing evidence to the contrary.

    8. Eckert and Mauchly did not themselves first invent "the automatic electronic digital computer," which SR and ISD contend to be the subject matter of the ENIAC patent, but instead derived that broad subject matter from Dr. John V. Atanasoff, and the ENIAC patent is thereby invalid.
    9. .1 An application for patent shall be made by the inventor, and shall include an oath in support of the claim of inventorship.

      .2 A patent which is applied for by one who is not the inventor, is unauthorized by law and void, and whether taken out in the name of the applicant or of an assignee of his, confers no rights as against the public.

      .3 The public grants the patent to the first inventor only; and a patent which credits anyone else with the invention confers no rights against the public and does not authorize the purported patentee to tax the industry for that which was actually contributed to the advancement of the arts by the conception of another.

      .4 The utilization of ideas in a device prior to the time of the alleged invention, whether or not the device was subsequently abandoned, is evidence that when those ideas are incorporated in a later development along the same line, they do not amount to invention.

    10. The inventive subject matter of "the automatic electronic digital computer," which SR and ISD contend to be the subject matter of the ENIAC patent, is either anticipated by or obvious in view of the printed publication in this country more than one year prior to the filling of the ENIAC patent application of the von Neumann First Draft of a Report on the EDVAC, and the ENIAC patent is thereby invalid.
    11. .1 A patent shall be barred if the invention was described in a printed publication in this or a foreign country, either before the invention thereof by the applicant or more than one year prior to the date of the application for patent in the United States.

      .2 The reproduction of a description of an invention by any copy-making technique capable of enabling wide dissemination of multiple copies evidences sufficient accessibility by the public so as to constitute a "printed publication" within the meaning of the statute.

      .3 The statute is based upon the public policy that once an invention has been made accessible to the public through printed publication, it cannot thereafter be withdrawn into a legally sanctioned patent monopoly.

      .4 A descriptive document qualifies as a printed publication even where only a single typewritten copy is put on file in the library of a college, because it is the expression of an intent that the fruits of research be available to those of the public who have an interest in the subject matter that is determinative of the fact of publication.

      .5 Distribution of a small number of copies of a descriptive document to a limited group of individuals skilled in the art, who are outside the distributor's organization, is publication within the meaning of the statute.

      .6 A patent may not be obtained though the invention is not identically disclosed or described in the prior art, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art to which the subject matter pertains.

    12. Each of the 17 ENIAC patent claims representatively asserted in this suit by the counterclaim of ISD is further and specifically invalid on a claim-by-claim basis:
    13. .1 The subject matter set forth in each of the 17 representative claims (8, 9, 36, 52, 55, 56, 57, 65, 69, 75, 78, 83, 86, 88, 109, 122 and 142) was in the public use in this country more than one year before the filing of the ENIAC application.

      .2 The subject matter set forth in each of the 17 representative claims was on sale in this country more than a year before the filing of the ENIAC application.

      .3 Eckert and Mauchly did not themselves invent the subject matter set forth in at least claims 88 and 90 but instead derived knowledge of that subject matter from John V. Atanasoff.

      .4 Claims 83, 86 and 88 are anticipated by U.S. patent No. 2, 624,507 issued to Byron Phelps.

      .5 Claims 8, 9, 52, 65, 83, 86, 88, 109 and 122 containing the word "pulse," and Claim 36 containing the fully equivalent word "impulse," were improperly broadened in September 1963 to cover a new and previously unexpressed invention for the purposed and with the effect of encompassing subject matter already in the public domain, and are invalid for late claiming.

      .6 Claims 8, 9, 52, 55, 56, 57, 65, 69, 75 and 78 are each anticipated by the printed publication in this country more than one year prior to the filing of the ENIAC patent application of the von Neumann First Draft Report of the EDVAC.

  3. I find and conclude that the ENIAC is invalid and unenforceable.
    1. See Findings 1, 2, 3, 7 and 10 above as establishing invalidity.
    2. Although not made a basis for a finding of undue delay such as to render the ENIAC patent invalid for deliberately extending the expiration of a monopoly, the inherent consequences of delay in issuance due to six years of inadequate preparation by SR and its counsel in the SR v. BTL case, and thereby the proceedings before the Patent Office as set out at Finding 11 above, render the ENIAC patent unenforceable.
    3. .1 Where many persons were at work in the same field and had made advances in the art, and where the applicant learns of such work and is aware that his original claims might not cover the real advance made by his competitors, and intentional delay in the prosecution of the patent to enable later changes in the specification and claims so that the work of the other inventors might be covered, renders the patent invalid.

      .2 The patent laws are founded on public policy to promote the progress of science and the useful arts. The public, therefore is a most material party to, and should be duly considered in, every application for a patent, securing to the individual a monopoly for a limited time, in consideration for the teaching of the results of the exercise of his genius and skill. But the arts and sciences will certainly not be prompted by giving encouragement to inventors to withhold and conceal their inventions to a time when they may use and apply them to their own exclusive advantage, irrespective of the public benefit, and certainly not if the inventor is allowed to conceal his invention to be brought forward in some later time to thwart and defeat other inventors who have placed the benefit of their inventions within the reach and knowledge of the public.

    4. Although not made a basis for a finding of willful and intentional fraud, the various derelictions of Eckert and Mauchly and their counsel before the Patent Office, as set out in Finding 13 below, render the ENIAC patent unenforceable.

        .1 Whether the applicant's misconduct was material in the procurement of the patent is of no consequence. If the conduct of the applicant is reprehensible, it matters not that it was really unnecessary, and the patent is unenforceable.

        .2 There is a line between willful and intentional fraud which will invalidate a patent and inequitable conduct which will render it unenforceable; inequitable conduct on the part of an applicant in obtaining a patent is sufficient to dissuade a court of equity from rendering aid in enforcing it.

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