Federal Circuit finds disclosure not public use because invention not actually “used”May 29, 2007

In a decision today, the Federal Circuit reversed a district court's finding of invalidity of two patents based on the public use bar of 35 U.S.C. § 102(b). A product capable of embodying the claimed inventions was disclosed to several individuals, including potential investors, before the critical date of the patents. The court nevertheless found no public use because the product, an ergonomic keyboard entry device, was never actually used to enter data into a computer other than for testing.

The court, however, affirmed the district court's claim construction and its summary judgment of noninfringement, so the patentee's victory was somewhat hollow.

More details of Motionless Keyboard Co. v. Microsoft Corp. after the jump.

Motionless Keyboard Co. asserted two related patents (the '477 and '322 patents) against Microsoft, Nokia, and Saitek. The patents relate to ergonomic keyboard input devices. After discovery, the district court granted summary judgment of both noninfringement and invalidity to the defendants, and Motionless appealed.

The two patents were invented by an independent inventor, Thomas Gambaro. Because of this, during the development process, he attempted to seek capital to develop a business around his inventions. Below is the relevant timeline of the development process:

• 1986-1987: Gambaro works on prototypes of his inventions.
• February 22, 1987: Gambaro develops the "Cherry Model 5," an embodiment he would later allegedly admit is capable of practicing the claimed inventions.
• Later in 1987: Gambaro and his business partner, Keith Coulter, show the Cherry Model 5 to potential investors, who sign a two-year nondisclosure agreement. Gambaro also shows it to a friend, Kathie Roberts.
• 1989: The nondisclosure agreements with the 1987 potential investors expire
• June 25, 1990: Gambaro discloses the Cherry Model 5 to Sheila Lanier to conduct typing tests. She connects the prototype to a computer and performs the tests, and signs a nondisclosure agreement that day.
• June 6, 1991: the application that became the '477 patent is filed, making its critical date June 6, 1990.
• January 11, 1993: the application that became the '322 patent is filed, making its critical date January 11, 1992.

The Federal Circuit found that none of the pre-critical date activities constituted "public use" of the invention as the term is used in 35 U.S.C. § 102(b). The court referenced the famous seminal Supreme Court case on public use, Egbert v. Lippmann, where unrestricted use of a corset spring for ten years, although totally hidden from view, was a barring public use. Here, the reverse facts were present: the invention, although visible, was never actually "used" publicly. Of all the pre-critical date disclosures made by Gambaro, the only time the Cherry Model 5 was actually hooked up to a computer for use was the typing tests in 1990. Those tests were both arguably experimental, and Ms. Lanier signed a nondisclosure agreement. The court held that all the other pre-critical date disclosures, such as those to the investors, were not "uses" of the invention, and therefore could not be a barring public use.

The court also considered the district court's claim construction of one key claim limitation dealing with a "concavity" in the keyboard housing. Claim 1 of the '322 patent is representative:

1. A hand-held device for entering information into an electronic system via a keyboard, the device comprising: a housing having a grippable portion which permits the device to be held in one hand with the thumb free to move at least temporarily to a predetermined key-actuation position while the device is held,

a concavity in said housing at said key-actuation position, and

a thumb-associable cluster of keys forming a keyboard within said concavity, each of the plurality of keys in said cluster being selectively actuable via mixed lateral, and slight endo, translation of a thumb within said concavity, whereby information is entered into an electronic system.

The court construed "a concavity in said housing at said key-actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity" to require:

that the concavity must be formed by a depression in the housing of the device, and that all keys comprising the keyboard must be contained entirely within the concave area and sunk below the surface of the housing, so that the thumb movement occurs within the concave area.

None of the accused devices had keys that were entirely within the concave area, so the district court found no literal infringement.

The Federal Circuit affirmed, finding that the plain language of the claim supported the district court's construction. Motionless argued that the keys themselves could form the concavity, but the court found this construction unsupported by the claim language. Particularly, if the keys could themselves form the concavity, the keyboard could not be within the concavity. This construction was confirmed by the specification, such as in Figure 4, where the keys are shown wholly in the concavity:

As a result, the district court's claim construction, and its corresponding finding of no literal infringement was affirmed. In an interesting addition, the court refused to consider Motionless's claim of infringement under the doctrine of equivalents because Motionless failed to provide any "particularized evidence and linking argument as to the 'insubstantiality of the differences' between the claimed invention and the accused device, or with respect to the 'function, way, result' test." So, the court did not even consider whether infringement under the doctrine of equivalents was possible.

To read the full decision in Motionless Keyboard Co. v. Microsoft Corp., click here.