Technitrol, Inc. v. United States

• Decision Date: 16 April 1971
• Docket Number: No. 99-64.,99-64.
• Citation: 440 F.2d 1362
• Parties: TECHNITROL, INC. v. The UNITED STATES.
• Court: U.S. Claims Court

440 F.2d 1362 (1971)

TECHNITROL, INC. v. The UNITED STATES.

No. 99-64.

United States Court of Claims.

April 16, 1971.

S. C. Yuter, New York City, attorney of record, for plaintiff. Laurence B. Dodds, Great Neck, N. Y., Paul Fields and James David Jacobs, New York City, of counsel.

James D. Stokes, Jr., Washington, D. C., with whom was Asst. Atty. Gen. William D. Ruckelshaus, for defendant.

Before COWEN, Chief Judge, and LARAMORE, DURFEE, DAVIS, COLLINS, SKELTON, and NICHOLS, Judges.

OPINION

DAVIS, Judge.

This is a patent suit under 28 U.S.C. § 1498 in which plaintiff seeks "reasonable and entire compensation" for alleged unauthorized manufacture for and use by the Federal Government of inventions described and claimed in U. S. Patent No. 2,611,813, entitled "Magnetic Data Storage System", issued to joint inventors T. K. Sharpless and E. S. Eickert, Jr. in 1952. Plaintiff Technitrol, Inc. is the record owner of this patent — the Sharpless patent. Plaintiff's petition charges infringement of claims 1-4, 6-14, and 16-24.¹

Believing that it is free to use the patented invention, defendant moved to dismiss or, in the alternative for partial summary judgment, on the ground that the United States is licensed under the Sharpless patent. Plaintiff then countermoved for partial summary judgment that the United States is not so licensed, or for an order specifying the facts not in controversy on that issue. Without resolving the question, the court remanded the case to the trial commissioner with instructions to find the facts relevant to this license issue. The case is now before us on the commissioner's report on that question.²

For the reasons which follow we hold that the defendant is fully licensed under claim 16, and is also licensed under all other claims of the Sharpless patent except to the extent that those other claims may be limited to the system's automatic reset feature, explained below. We leave to later proceedings the determination of whether the three representative claims other than 16 (5, 19, 23) embrace the automatic reset feature, and if so whether those claims (and the patent) as so construed are valid. If both questions are answered affirmatively, then the issue of infringement will have to be reached as to those and the remaining claims.

The Sharpless patent

The Sharpless patent, relating to electronic computers,³ discloses a magnetic data storage system, and has particular application "to systems for storing information, especially where it is desired to transmit, receive, and record information". The specification notes that a particular use of the system is "to store information concerning reservations on public carriers such as airplane lines, railway lines, etc." Generally, the system described in the patent comprises (1) a central storage unit which stores on magnetic disks information such as the number of seats available and reserved on various flights of a commercial airline; (2) remote operating stations, such as airline reservation desks at airports or hotels, where an operator through a suitable keyboard can request information of and send information to the central unit; (3) an arithmetic adding unit, for calculating information to be placed into the central storage unit; and (4) a control unit for sequencing various operations performed by the system. The system is designed to permit an operator at a remote station to find out from the central storage unit whether seats are available on a certain flight, and, if so, to record additional reservations up to the limit of the flight's capacity.

A detailed description of the system is contained in the findings of fact, but the salient technical characteristics may be summarized as follows: The central storage unit consists of a number of magnetic disks (information disks) mounted on a common shaft for rotation by an electric motor. Information, such as the number of seats already reserved and the number of seats available, is stored on the disks in the form of discrete areas of magnetization, called magnetic pulses. The pulses are arranged circumferentially in groups, called registers, around the faces of the disks. Each register contains information about a particular airline flight. Magnetic pickup heads are mounted adjacent to the disks so that, as the disks rotate, the heads, through appropriate circuitry, can "read" pulses on the disks, "write" new pulses on the disks, or "erase" existing pulses.

The remote stations are connected to the central storage unit through electrical transmission lines, akin to ordinary telephone lines. Each remote station has three keyboards, presumably one for each of three airline reservation clerks. By setting appropriate punch keys, an operator can designate (a) a particular flight on a particular day about which he desires information and (b) the number of seat reservations needed. In essence, the punched keys, through the necessary circuitry and coding, set off electrical pulse signals which are transmitted to the central station. There, the signal is decoded and split. The portion of the signal representing the number of desired seat reservations is sent to an electronic adder. The portion of the signal representing the particular flight actuates circuitry for locating the proper register on the information disks. When that register is located, the information on it, i. e., the number of seats already reserved, is sent to the adder. The adder then sums the "seats desired" and the "seats already reserved". If the total exceeds the number of seats available, an alarm circuit lights up a lamp at the remote station, so indicating. If the sum does not exceed the number of seats available, then the register is erased, the new sum is recorded, and the remote station is so advised, indicating that the reservation has been accepted. The system is then ready for another sequence of operations on demand from a remote station. The entire process takes about 0.14 seconds.

The system is designed so that, through its scanning and selector equipment, only one keyboard of any remote station can communicate with the central station at a time. This feature avoids the possibility of simultaneous duplicate requests being made to a register from more than one keyboard, and thus prevents a particular flight from oversubscription.

A particular aspect of the Sharpless system, as alleged by plaintiff,⁴ is the automatic or memory reset feature by which position volatility is avoided. On the common shaft with the information disks is a master or clock disk which has recorded circumferentially about its face two channels of magnetic pulses, one channel has 160 evenly-spaced pulses, the other has one 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. One head produces 160 evenly-timed pulses per revolution of the clock disk, the other one pulse per revolution. The 160-pulse head is connected to a scale-of-ten electronic counter which produces one output signal for each 10 input pulses. The counter therefore generates 16 pulses (160/10) for each revolution of the clock disk, and it thereby divides the information disks 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, 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 "read".

It is essential that the clock disk and the scale-of-ten counter stay in synchronization. Otherwise, the counter will not produce signals representative of each register, or, to put it another and more technical 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 start-up, either initially or after a power failure, the clock disk and counter may lose synchronization. For example, the clock disk may continue to rotate momentarily, through inertia, after electric power to the counter and the motor have ceased. Also, when power is cut off, the counter, a purely electronic device, loses count; and on re-start, 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. Plaintiff asserts that this problem of potential loss of synchronization, or position volatility, is solved by the one pulse per revolution channel of the clock disk, which, it contends, is disclosed in the patent as 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.

The 24 patent claims are combination claims which define the invention in terms of the elements making up the system. In general, they describe the magnetic memory central storage device, the remote stations, and associated circuitry by which the system is made operable. Claim 16 differs from the other claims in that it does not recite the remote stations and is directed primarily to details of the central station.

The Government's computer contracts with the University of Pennsylvania (ENIAC and EDVAC)

Defendant contends that it is licensed under the Sharpless patent because the invention claimed was developed in the course of government-sponsored research at the Moore School of Electrical Engineering of the University of Pennsylvania.

Mr. T. K. Sharpless graduated from the Moore...