Patent Not Barred By The Public Use Doctrine Where The Only Use Occurred During A Test

Case: Motionless Keyboard Company v. Microsoft Corporation, Nokia Inc., and Saitek Industries Ltd., Case No. 2005-1497 (Fed. Cir. 5/29/2007)

The One Sentence Summary: Defendants did not infringe patent on thumb-actuated keyboard where their keypads were not in a concave depression, but the patent was not invalid under the "public use" bar where the only use of the keyboard to transmit data prior to the critical date was for a speed test and the tester signed a non-disclosure agreement.


What They Were Fighting About: Plaintiff Motionless Keyboard Company ("MKC") sued Microsoft, Nokia, and Saitek, alleging they infringed two patents it owned. Patent No. 5,178,477 claimed an ergonomic keyboard designed to accommodate the architecture of the human hand. Patent No. 5,332,322 - a continuation in part of the '477 patent - claimed a hand-held device that frees the thumb to actuate the keys in multiple and differentiated ways. The sole inventor of both the '477 and the '322 patents invented the novel ergonomic keyboard technology as an independent inventor without the benefit of a well-funded laboratory. He showed a prototype model of his keyboard technology to potential investors with whom he signed non-disclosure agreements, and to a friend who did not sign a non-disclosure agreement. He showed the model more than one year prior to filing his patent applications. However, he did not use the prototype model to transmit data to a computer. He also showed the model to a typing tester, who was the only one to use the device to transmit data, and then only on one occasion during a test of the model. The test occurred more than one year before the patent application filing date. The typing tester signed a non-disclosure agreement.

The District Court found, on cross motions for summary judgment, that none of the defendants infringed any of the patents. With respect to the '322 patent, the District Court held that the limitations of Claim 1 required that the keyboard must be within a concavity 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 thumb movement occurs within the concave area. The defendants' devices did not meet these limitations. The District Court also found both patents invalid as a matter of law under the "public use" bar of 35 U.S.C. Section 102(b), and held that the inventor had admitted that the '322 patent was invalid for obviousness by filing a terminal disclaimer to make the '322 patent coterminous with the '477 patent.

The inventor appealed the district court's invalidity determination, and its determination of no infringement of the '322 patent, but did not appeal the determination of no infringement of the '477 patent. The Federal Circuit affirmed the non-infringement determination, but reversed the invalidity determination.

Federal Circuit Holdings:

• The District Court's claim interpretation and summary judgment findings are reviewed de novo.


• The District Court's construction of Claim 1 as requiring a keyboard housed entirely within a concave area formed by a depression in the housing was correct given (1) the plain language of the claim which required "a concavity in said housing at said key-actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity;" (2) given that the specification stated that "a keyboard is positioned in a concavity or depression in the housing;" and (3) given that the patent drawings all showed renderings of the keyboard featuring a concavity in the housing of the device with a keyboard totally within the concavity.


• The plaintiff could not survive the grant of summary judgment of non-infringement by equivalents because it did not provide "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." The plaintiff had failed to present particularized evidence that links the accused products to the patent on a limitation by limitation basis, and thus could not avoid summary judgment on its claim of infringement by the doctrine of equivalents.


• Given that all of the disclosures, except the one-time typing test, visually displayed the keyboard design without putting it into use and given that the entry of data never occurred outside of testing and the tester signed the NDA, no one ever used the model to transmit data in the normal course of business. Therefore, the disclosures in the record did not rise to the level of public use.


• A terminal disclaimer is not an admission that a later-filed invention is obvious. Thus, the trial court erred in holding that the '322 patent was invalid due to obviousness.