Federal Circuit Finds No Public Use

In Motionless Keyboard Co. v. Microsoft et al., 486 F.3d 1376; 82 U.S.P.Q.2D 1801  (Fed. Cir. 2007), Motionless appealed a summary judgment finding that there was no infringement of Motionless’ two keyboard patents, U.S. Patent No. 5,332,322 (the ‘322 patent) and U.S. Patent No. 5,178,477 (the ‘477 patent), based on claim construction and finding that the patents were invalid based on public use and the later patent invalid for obviousness.  Motionless appealed the claim construction ofU.S. the ‘322 patent and the finding of invalidity of the ‘477 patent, and the 322 patent.

The Federal Circuit affirmed the narrow claim construction, construing “a concavity in said housing at said key actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity” to mean a depression within the housing within which the keys were placed.  This claim construction was supported by the specification and the renderings.  The Federal Circuit reversed the public use application in this case because the disclosures to potential inventors did not demonstrate the device in actual use, and merely showed the design and was never used “in the normal course of business.”  The Federal Circuit also reversed the finding of obviousness because a terminal disclaimer to make a patent coterminous is “simply not an admission of obviousness.”


The two patents at issue were developed by an independent inventor working in his spare time to create an ergonomic keyboard.  While the device was in development, it was disclosed to several potential investors under a two-year non-disclosure agreement (NDA) in 1987.  The device was also disclosed to a friend in 1987, who did not sign a NDA.  In none of these disclosures was the device connected to a computer or demonstrated the ability to input data to a computer.  On July 25, 1990, a typist was asked to test the device, which was connected to a computer.  The typist did not sign a NDA before testing the device, but did sign one later that day.

The patent application for the ‘477 patent was filed on June 6, 1991.  The application for the ‘322 patent was filed as a continuation-in-part on January 11, 1993.  In addition, a terminal disclaimer was filed for the ‘322 patent to make it coterminous with the ‘477 patent.

Subsequently, the inventor’s assignee, Motionless Keyboard Company (MKC), sued Microsoft Corp. and Saitek Industries Ltd. each for manufacturing an infringing joystick, and Nokia, Inc, for manufacturing an infringing cell phone.

The district court granted summary judgment finding that there was no infringement, either directly or through the doctrine of equivalents and that the patents were invalid due to public use and the ‘322 patent was additionally invalid due to obviousness.  Motionless appealed finding of no infringement for the ‘322 patent and the invalidity of both patents.

Claim Construction

The independent claim of patent ‘322 whose construction is at issue claims: 1. A hand-held device for entering information into an electronic system via a keyboard, the device comprising: … 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 district court construed the ‘322 claim to mean “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.”

On appeal, MKC argued that the concavity described means “that the tops of the keys themselves can form a concavity within the housing.”  The Federal Circuit, agreed with the district court’s narrower reading, finding the limitations in the phrases “a concavity in said housing” and “a keyboard within said concavity” to define a “depression within the housing of the device and set the keyboard entirely within that depression.”  The court also references the specification, which reads: “a keyboard is positioned in a concavity or depression in the housing” (emphasis in opinion), and the renderings, which all show a “concavity in the housing of the device with the keyboard totally within the concavity.”  As such, the Federal Circuit found that the district court property used the intrinsic evidence in the specification to define the claim term “concavity.”

Direct Infringement

In applying the claim construction the Federal Circuit affirmed the district court’s finding that there was no infringement.  Neither Microsoft’s nor Saitek’s joysticks contain a concavity, nor do the keys of any joysticks extend beyond the surface of the housing.   In the Nokia phone, the keys protrude through an opening in the housing.  Though some phones do “contain keys with slight depressions, these keys do not constitute a concavity in the housing according to the ‘322 patent.”

Doctrine of Equivalents

The Federal Circuit found that MKC failed to present particularized evidence that linked the accused products to the patent.  The Federal Circuit, citing PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364, which cites Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567, requires a patentee to “show 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.” 

As applied to the joysticks, the Federal Circuit found that MKC used only the claim charts to show substantial similarities of form, function, and result.  This does not constitute particularized evidence of insubstantial differences, or the same ‘function, way, result’ test.  Without particularized evidence, the court did not need to further address the doctrine of equivalents.

As applied to the Nokia phones, the Nokia phones were not activated in the same way as the MKC patent.  “While the patentee’s invention points to actuation of the keys by thumb movement within the concavity, a user would actuate the Nokia keys by pressing them downward.”  Without particularized testimony to specifically show the keys work in the same way, the Federal Circuit affirmed the district court’s ruling on equivalency.

Public Use

The district court held that because the invention was disclosed to investors prior to the critical dates (June 1991 and January 1992) and the inventor’s business partner was not under an obligation to keep the invention secret, the invention had entered public domain.  The district court found the NDAs inconsequential because “a confidentiality agreement will not preclude application of the public use doctrine, if the device was disclosed for commercial purposes,” citing Kinzenbaw v. Deere & Co., 741 F.2d 383, 390.  The Federal Circuit reversed the finding of public use with respect to both patents.  The Federal Circuit cites the policy considerations from Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379 (Fed. Cir. 2005) (quoting Plaff v. Wells Elecs., Inc., 525U.S. 55, 64 (1998)) that public use arises from the “reluctance to allow an inventor to remove existing knowledge from public use.”  However, such policy does not automatically render every use a public use.

The Federal Circuit determined that the disclosures to potential investors, a friend, and a business partner did not constitute public use.  This result was even though the applicable NDAs, in the case of the potential investors, had expired before the critical dates.  These disclosures “only provided a visual view of the new keyboard design without any disclosure of the [invention’s] ability to translate finger movements into actuation of keys to transmit data.  In essence, these disclosures visually displayed the keyboard design without putting it into use.”

The Federal Circuit distinguished the disclosure to the typing tester from the situations in Egbert, in which an inventor gave two samples of the invention to a friend who used them for two years, and Electric Storage Battery, in which the “ordinary use of a machine [. . .]  in a factory in the usual course of producing articles for commercial purposes.”  In both cases, in which public use was found, the invention was used for its intended purpose before the critical date.  Here, the invention was not used in public, for its intended purpose, nor given to anyone else for such purposes.  “In this case, the one time typing test coupled with a signed NDA and no record of continued use of the [invention] by [the typing tester] after [the day tests were performed] did not elevate to the level of public use.”

Obviousness Based Upon Filing of a Terminal Disclaimer

The district court determined the ‘322 patent was invalid for obviousness because a terminal disclaimer was filed to make the ‘322 patent coterminous with the ‘477 patent, reasoning that it was a concession of obviousness.  Citing Quad Envtl. Tech Corp. v. union Sanitary Dist., 946 F.2d 870, 874 (Fed. Cir. 1991), the Federal Circuit reversed, because “[a] terminal disclaimer simply is not an admission that a later-filed invention is obvious.”  As such, the mere filing of a terminal disclaimer does not represent an admission of obviousness.


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