Honeywell V. Sperry Rand - The Decision

The Decision

More than seven months following the end of courtroom testimony, Judge Earl R. Larson's decision was published on October 19, 1973 in a document titled Findings of Fact, Conclusions of Law, and Order for Judgement. Over 248 pages long, its conclusions defy summarization, but key findings include:

• John W. Mauchly and J. Presper Eckert were the co-inventors of the ENIAC; other contributors to the computer's design, Arthur W. Burks, T. K. Sharpless, and Robert F. Shaw, who had petitioned to have their names added to the patent as inventors after it had already been issued, did not qualify for co-inventor status, nor did other contributors John H. Davis, Frank Mural, and Chuan Chu.

• Honeywell had infringed on the ENIAC patent (Finding 23). The judge awarded no monetary damages, as he invalidated the ENIAC patent on numerous grounds in the same decision (see below).

• Sperry Rand had tried to monopolize the electronic data processing industry in violation of the Sherman Antitrust Act, on the basis of a cross-licensing agreement between Sperry Rand and IBM signed on August 21, 1956, but that only IBM had in fact succeeded in creating such a monopoly (Finding 15). The judge awarded no monetary damages despite these findings of conspiracy.

• The ENIAC patent was unenforceable (not invalid) on the grounds of unnecessary and unreasonable delay before the U.S. Patent Office (Finding 11). The judge ruled that undue delay in the patent's filing, which would have rendered the patent invalid, had not been proven.

• The ENIAC patent was unenforceable (not invalid) on the grounds of certain derelictions—including suppressing documents, withholding information, securing misleading affidavits, reversing legal positions in response to new evidence, blocking efforts of competitors to secure documents from the government, and proceeding with patent applications despite warnings of infirmities—on the U.S. Patent Office (Finding 13). The judge ruled that willful and intentional fraud on the U.S. Patent Office in filing the patent, which would have rendered the patent invalid, had not been proven. While the patent was rendered invalid on other grounds (see below), no finding of fraud on the Patent Office was significant, as the converse would have been a criminal offense and might have meant criminal prosecution for the patent filers.

• The ENIAC patent was invalid on the basis of the amount of time the inventors had permitted to elapse before filing the patent following its disclosure in public use (Finding 1). Dedication ceremonies for the ENIAC had taken place on February 15, 1946, which was prior to the critical date of June 26, 1946 (one year before the patent's filing), and any public disclosure of the device prior to the critical date rendered the patent invalid. (Problems run on the computer by figures outside the invention team took place even earlier.) The judge found the date of December 1, 1945 as the date the ENIAC was handed over to Army Ordnance and beyond which no further modifications could be considered experimental.

• The ENIAC patent was invalid on the basis of the amount of time the inventors had permitted to elapse before filing the patent following its placement on sale (Finding 2). The judge noted that the construction contract for the ENIAC placed the intended delivery date at December 31, 1945. Moreover, the first working parts of the ENIAC, consisting of two accumulators, had been shown to be operational in July 1944, and the judge ruled that these components of the eventual ENIAC were themselves an "automatic electronic digital computer" thus pushing the date before which Eckert and Mauchly would have needed to apply for the patent to July 1945.

• The ENIAC patent was invalid on the basis of the amount of time the inventors had permitted to elapse before filing the patent following the publication of its key features (Finding 7). The judge ruled that Herman Goldstine's June 30, 1945 dissemination of John von Neumann's First Draft of a Report on the EDVAC, a set of incomplete notes describing the logical design of the ENIAC's successor machine the EDVAC, which was being built simultaneously to the ENIAC's completion at the Moore School of Electrical Engineering at the University of Pennsylvania, constituted a publication under the law and an enabling disclosure of the ENIAC. Moreover, Eckert and Mauchly had published their own official report, Automatic High Speed Computing, A Progress Report on the EDVAC on September 30, 1945, which was, again, prior to the critical date of June 26, 1946.

• Three of the 148 formal claims of the ENIAC patent were anticipated by a prior invention, the 1942 electronic multiplier by IBM's Byron E. Phelps (Finding 6), for which a patent was filed in late 1945. The judge ruled out derivation, as Mauchly and Eckert could not have been aware of this prior invention; nevertheless, its patent date preceded that of the ENIAC.

• 14 of the 148 formal claims of the ENIAC patent were invalid on the basis of an unreasonably delayed amendment to the patent application (Finding 10). In May 1963, attorneys for Sperry Rand tried to amend the ENIAC patent after discovering that the definition of the word "pulse", which carried over to 14 of the patent's claims (sometimes under the equivalent usage of "impulse" or "signal"), left a lower bound on the length of an electronic pulse of 2 microseconds. Thus, machines that operated at a speed of more than 1 MHz would not be covered by the ENIAC patent. The judge ruled that the patentholders' attempts to amend the patent at such a late date was "an exigent afterthought to capture the subsequent contributions of others already in the public domain."

• The 30A package of patents (the regenerative memory system and the serial binary adders) were unenforceable.

• The ENIAC patent was invalid on the basis of derivation (Finding 3).

The publication of the Honeywell v. Sperry Rand decision coincided with the event of the Saturday Night Massacre, one of many events in the ongoing Watergate scandal of Richard Nixon's presidency. As a result of the media's focus on Watergate, news of the decision did not attract public attention at the time.