Technitrol, Inc. v. Control Data Corporation, Civ. A. No. 17653.

• Decision Date: 13 May 1975
• Docket Number: Civ. A. No. 17653.
• Parties: TECHNITROL, INC., Plaintiff, v. CONTROL DATA CORPORATION and Honeywell, Inc., Defendants.
• Court: U.S. District Court — District of Maryland

394 F. Supp. 511

TECHNITROL, INC., Plaintiff, v. CONTROL DATA CORPORATION and Honeywell, Inc., Defendants.

Civ. A. No. 17653.

United States District Court, D. Maryland.

May 13, 1975.

S. C. Yuter, New York City, John W. Avirett, 2d and Piper & Marbury, Baltimore Md., for plaintiff.

Allen Kirkpatrick, Kevin E. Joyce, Larry S. Nixon, Cushman, Darby & Cushman, Washington, D. C., Joseph A. Genovese, Control Data Corp., Rockville, Md., Donald N. Rothman and Gordon, Feinblatt & Rothman, Baltimore, Md., for Control Data Corp.

D. D. Allegretti, James V. Callahan, Molinare, Allegretti, Newitt & Witcoff, Chicago, Ill., and Arnold Fleischmann, Towson, Md., for Honeywell, Inc.

WATKINS, Senior District Judge.

On September 23, 1952, U.S. Patent No. 2,611,813 (the '813 patent) for "Magnetic Data Storage System" issued to T. K. Sharpless and E. S. Eichert, Jr. on application filed May 26, 1948. By mesne assignments Technitrol, Inc. is, and at all pertinent times has been, the owner of the patent.

In addition to the specification and drawings, the general nature of the alleged invention¹ is set forth in litigation in the Court of Claims in which Technitrol sued the United States for "reasonable and entire compensation" for alleged unauthorized use of inventions assertedly described and claimed in the '813 patent. See Technitrol, Inc. v. United States, Court of Claims (before a Commissioner), 164 USPQ 51, 52-53 (1969) and Technitrol, Inc. v. United States, 440 F.2d 1362, 1364-1366, 194 Ct.Cl. 596 (1971).

At the risk of over-simplification, the primary object of the invention was to provide means by which various offices or agencies ("positions") could quickly ascertain the availability (or non-availability) of airline seat reservations for a particular flight. The total number of seats available is stored in a register (a length of magnetic tape or a sector of a magnetic disc) and the number of confirmed reservations is also recorded. If an outside station desires to make reservations, data as to the number and flight are communicated to the centrally located storage unit. The appropriate storage register is selected, and the number of additional reservations desired is added to the previous total. If the sum of these is less than the number of available reservations, the two are added to provide a new total which is then stored back in the corresponding storage register where the new total is then available for similar access in the future; and the inquiring station is so notified. If the requested additional reservation, added to the reservations already made, would exceed the total of reservations available, the application is rejected, the inquirer is so notified, and the old number remains unchanged.²

All this involves a process of register selection; that is, it is necessary to locate a particular register later, and perhaps several times, in order that the previously stored information content may be accessed for a desired use. Until January 7-9, 1948 the proposed system, once it had started operation, permitted such accurate location of register(s) as long as it continued operation without interruption. However, if there were an interruption, such as by a power failure, "position volatility" may occur.

As Commissioner Davis very clearly explained (164 USPQ at 52-53):

A particular aspect of the invention, significant to the license dispute here in issue, relates to the so-called memory reset feature by which position volatility of the system is avoided. To explain, on the common shaft with the information disks is a master or clock disk which has recorded around its face two channels of magnetic pulses — one channel has 160 evently-spaced pulses, the other 1 pulse. The purpose of the clock disk, as its name implies, is to serve as a timing device to coordinate the timed-position of the information disks with other elements and circuits of the computer system. A pickup head is located over each channel. Thus, one head produces 160 evenly-timed pulses per revolution of the clock disk, the other one pulse per revolution. The 160-pulsehead is connected to a scale-of-ten electronic counter which produces one output signal for each 10 input pulses. Thus, the counter generates 16 pulses (160/10) for each revolution of the clock disk, and it thereby divides the information disks (on a common shaft with the clock disk) into 16 10-pulse registers, or information segments. Pulses from the scale-of-ten counter are applied through electronic circuitry to a digital counter which in turn produces 16 unique voltage combinations, each thus representative of one register on an information disk. When one of the voltage combinations matches up with, or coincides with, a similar combination from a remote station (generated by an operator seeking information about a particular flight, or register), circuitry is activated by which the register is used.

It can be seen from the above that it is essential for the clock disk and the scale-of-ten counter to stay in synchronization. Otherwise, the counter will not produce signals representative of each register; or, to say it another way, the system would be position volatile. During normal operation, with power on and the equipment functioning properly, the clock disk and counter will stay synchronized. However, at startup initially, or after a power failure, the clock disk and counter may lose synchronization, e. g., if the clock disk continues rotation momentarily through inertia after electric power is cut off the counter and the motor. Also, when power is cut off, the counter, a purely electronic device, loses count; and on restart, its counts may not be synchronized with the start of a register on an information disk so that such counts would be arbitrary with respect to register positions. Thus, some means must be provided to synchronize the clock disk and counter on startup. The one pulse per revolution channel on the clock disk serves that purpose. It is connected through appropriate circuitry to reset the counters to zero after each revolution of the clock disk, thereby synchronizing the clock disk and counter if they are out of synchronization.

This automatic reset figure was Eichert's direct contribution to the system, developed by him January 7-9, 1948.³ It is briefly described in the specification (Col. 4, lines 33-40):

"The one pulse per revolution output supplied from the clock disk 1 through amplifier a1 is used to initially set the counters so that the registers on the disks will always maintain the same relation with the pulses on the clock disk as checked by counters b and c, even though the power be shut off and later turned on with the counters coming up containing arbitrary counts."

Frequent other references to "reset" occur in the specification, e. g., Column 4, lines 62 and 65; Column 5, line 41; Column 10, lines 5, 6, 14, 19, 22, 64 and Column 13, line 61. Nevertheless, the clock disk and assorted counters "are not expressly recited in any of the claims" (164 USPQ at 53) and Plaintiff so "concedes" (164 USPQ at 55); but Commissioner Davis held that they were included in claims 1-15 and 17-24 "in broad `means' clauses" (164 USPQ at 53).

The significance of the automatic reset feature was stressed by Commissioner Davis in that it was only with the reset feature that the invention claimed in claims 1-15 and 17-24 occurred. 164 USPQ at 56:

The record is clear that while Sharpless did considerable preliminary design work on the reservations system in mid-1947, it was not until early 1948, when working full time for Technitrol, that the problem of position volatility was recognized and solved by Eichert. Only then was there a complete system, as envisioned by the inventors and later disclosed in their patent application. Defendant makes much of the fact that a position volatile system is nevertheless operable in a legal sense because the problem of position volatility only arises at initial startup and startup after a power failure. Thus, defendant reasons, there was conception of the invention in suit before the position volatility problem was recognized and solved. In our view, however, while there may have been conception of an invention before Eichert came on the scene, it was not the invention disclosed and claimed in claims 1-15 and 17-24 of the patent in suit. The Sharpless and Eichert invention included the memory reset feature and it is that invention with which we are here concerned . . . ."

Plaintiff concurs in this conclusion. In its statement of "Postion" it says (page 9):

". . . The memory synchronization solution feature for register selection is claimed in claims 1-15 and 17-24 . . . ."

Further, in "Plaintiff's Brief Opposing Defendant's Brief in Support of its Exceptions to the Commissioner's Report," filed July 2, 1970, Plaintiff stated:

. . . Thus, the Commissioner's construction of the representative claims 23 and 5, directed to different aspects of the inventory control problem, substantially narrowed the scope of these two representative claims by incorporating into them the memory synchronization feature on the magnetic data storage invention defined by representative claim 19.

After studying the legal basis for the Commissioner's narrowing construction of the representative claims 23 and 5, plaintiff has acquiesced.*

The result is that there are two independent and distinct inventions involved; the claim 19 invention and the claim 16 invention . . . .

* As a practical matter, this means plaintiff's present position is that inventory control claims such as claim 23 and 5 cannot be infringed unless magnetic data storage invention claims such as claim 19 are also infringed. Emphasis added by Defendant.

This mandatory inclusion of the automatic reset feature was necessary, so that Plaintiff could avoid a free license to the United States, since apparently the reset feature⁴ is the only portion of the Sharpless-Eichert '813 patent...