The Top Ten Patent Wars – Computers (#5)

A few weeks from now will be the 45th anniversary of the landmark patent decision, Honeywell, Inc. v. Sperry Rand Corp., et al., 180 U.S.P.Q.  673 (D. Minn. 1973).  In that decision, issued on October 19, 1973, Judge Larson of the District of Minnesota concluded a long-running patent war that lasted nearly 30 years over who had invented the first electronic digital computer, the precursor to today’s computers.  Specifically at issue was whether he team led by J. Presper Eckert and his student, John W. Mauchly, at the Moore School of Engineering at the University of Pennsylvania, were the true inventors of the first electronic computer, called Electronic Numerical Integrator and Computer (ENIAC), or whether John V. Atanasoff’s prototypes for a special-purpose computer, the Atanasoff Berry Computer (ABC) had predated it.  









At issue in the Honeywell case was whether the patent for the ENIAC, described in U.S. Pat. No. 3,120,606 (filed on June 26, 1947), was valid. The named inventors were J. Presper Eckert and John W. Mauchly, who were professors at the Moore School of Engineering at the University of Pennsylvania. Judge Larson found that the patent had been filed more than a year after it had been offered for sale (December 1, 1945) and publicly disclosed in an announcement of the ENIAC to the public (February 14, 1946), and that at least a portion of the subject matter of the patent had been derived from John V. Atanasoff, who had conceived of his own special-purpose computing device while a Professor at Iowa State College, and a prototype of which Mauchly had seen in June 1941 after discussing it with Atanasoff previously at a presentation given by Mauchly at the University of Pennsylvania a few months earlier. In addition, a number of prior publications were found as prior art, including technically-detailed papers describing earlier versions of the ENIAC.

J. Presper Eckert and John Mauchly

The case was actually not focused on the “inventor of the computer”, but was initiated because Sperry Rand Corporation had become the eventual owner of the original ‘606 patent through a series of corporate acquisitions that begin with Eckert and Mauchly forming a corporation to build computing designs and later sold it to Remington Rand, later Sperry Rand, and today part of Unisys. (Interesting sidenote that Eckert and Mauchly left the University in part because they wanted to commercialize the patent while the University claimed rights to do so, and the University later changed its policies to ensure it would own inventions like this in the future). 

At the time of the Honeywell case, Sperry Rand was seeking licensing fees from any company that was using computers to process large amounts of data, with Honeywell being one of the largest such companies by the late 1960s.  Upon being accused, Honeywell won the “race to the courthouse” in 1967 by claiming that Sperry Rand was in violating of antitrust law in a Minnesota court where it was headquartered, while Sperry Rand filed an infringement suit against Honeywell a few days later in Washington, DC, and the cases were later consolidated in Minnesota.

While the ENIAC did not have stored computer programs like computers do today, it was a large collection of mathematical machines that performed 20 hours’ worth of human mathematical calculations in 30 seconds. It was in operation until 1955, had tens of thousands of machine parts, and took up the entire floor of a building. It was a remarkable innovation, and properly celebrated in its time (perhaps a little too early given the later patent invalidation). Eckert and Mauchly vigorously contested that Atanasoff’s invention was similar to theirs or had inspired theirs, while Atanasoff’s supporters felt like he had finally received proper recognition after disclosing his invention to Mauchly more than 30 years before (although his contributions were not much known until this trial).

The trial took over a year in 1971-72, and involved significant testimony from all of the inventors. Judge Larson decided the inventorship of the computer that we recognize today as including not just Eckert and Mauchly, but also Atanasoff. In determining that the patent was invalid, Judge Larson rejected a potential monopoly on the emerging data processing industry by Sperry Rand, and mirrored an emerging consensus that computer-implemented inventions belonged to the public, which later led to the popularization of home computing a few years later and the World Wide Web (which famously was not patented by its inventor, Tim Berners-Lee).  While Judge Larson did find that Honeywell infringed, he awarded no damages, recognizing the invention of the ’606 patent was not only legally invalid, but even if it was not, it had effectively dedicated to the public and not enforced in this manner. None of the three ever really received proper recognition for this massive innovation that helped launched the computer age, and while this trial should have done so, this trial was obscured by the Watergate coverage at the time.  Nonetheless, this patent war resulted in a full accounting of the details of this invention, and giving each inventor a historical record of which to be proud.  

Jeremy T. Elman

Jeremy T. Elman

Jeremy T. Elman is a trial lawyer who has appeared in over 75 IP matters for Fortune 500 companies and other high-profile technology companies, nearly a third as lead counsel.  He regularly writes about cutting-edge legal issues in the industry, especially in the software space.  Jeremy has been named as one of the Top 20 Cyber / AI Lawyers by the Daily Journal and the Most Effective Lawyer in IP by the Daily Business Review.  Jeremy practices in the areas of patent litigation, trade secret litigation, trademark litigation, copyright litigation, and other technology disputes.

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