Addressing whether a "public use" resulted when an ergonomic keyboard not connected to any device (e.g., a computer) was publicly displayed more than one year prior to the application filing date, the U.S. Court of Appeals for the Federal Circuit overturned a summary judgment that the patents in suit were invalid under § 35 U.S.C. § 102(b) because the keyboard was not used in public to enter data into a computer. Motionless Keyboard Co. v. Microsoft Corp., Case No. 2005-1497 (Fed. Cir., May 29, 2007)(Rader, J.).
Motionless Keyboard Company (MKC) is the owner of the U. S. patents directed respectively to an ergonomic keyboard designed to accommodate the architecture of the human hand, where only slight finger gestures are needed to actuate the keys and to a hand-held device that frees the thumb to actuate the keys within a keyboard disposed entirely within a cavity. The inventor developed a prototype keyboard that allegedly embodied both patents; the prototype was designated the Cherry Model 5. MKC sued Microsoft and others for infringement of the two patents.
The inventor, Gambaro, disclosed the prototype to various people, including his business partner, a friend, potential investors and a typing tester. In all these disclosures, except for the typing tester, the prototype was not connected to a computer or any other device. The district court reasoned that these disclosures evidenced that the invention entered the public domain prior to the critical date because the inventor’s business partner was under no secrecy obligation and that, notwithstanding a non-disclosure agreement (NDA), the demonstrations to potential investors were public uses. MKC appealed.
The Federal Circuit reversed, citing In re Smith and noting that under § 102(b), a "public use" means any use of the claimed invention by a person other than the inventor who is under no limitations, restrictions or obligation of secrecy to the inventor. Because the prototype was not connected to any device, the Court ruled that the disclosures did not amount to "public use" because these disclosures only visually displayed the keyboard design without putting it into use, i.e., without disclosure of the prototype’s ability to translate finger movements into actuation of keys to transmit data.
With respect to the typing tester, testing was performed after the critical date of one patent but prior to the critical date of the other. The typing tester signed a NDA on the same day that the typing test was performed, and the testing was only done once. The Court ruled that the typing test did not amount to a "public use" because it was merely a one-time typing test coupled with a signed NDA.
Practice Tip: If the claimed invention is publicly disclosed before the critical date, then determine if the invention was used for its intended purpose (the purpose can be found, e.g., in the specification or the preamble of the claim); if it was displayed but not used for its intended purpose, then the display will not be a "public use." Even where a claimed invention is used for its intended purpose prior to the critical date, the issue of whether a § 102(b) "public use" arose must be analyzed based on factors such as the number of uses, whether the uses were for testing purposes (i.e., experimental use) and whether the use occurred under some restriction such as a NDA.
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