Reversing a summary judgment of invalidity on the grounds of obviousness, the U.S. Court of Appeals for the Federal Circuit held that a genuine factual dispute existed where specific facts were presented that raised issues of credibility of the declarants relied on to establish the date of a prior art publication. Typeright Keyboard Corp. v. Microsoft Corp. Case No. 03-1197,1255 (Fed. Cir. July 6, 2004) (Dyk, J.).
Typeright sued Microsoft for infringing U.S. Pat. Nos. 5,372,411 (the `411 patent) and 5,503,484 (the `484 patent), which claim an ergonomic keyboard featuring a v-shaped design with separate right and left hand key clusters. Microsoft responded that all of the asserted claims were obvious, based on a one page undated document created by a German company, Marquardt. The district court granted summary judgment, holding the claims to be invalid for obviousness, relying on the testimony of two fact witnesses (both paid by Microsoft for their time testifying) who expressed their belief that the Marquardt document was made available at a trade show in 1986, four years before the priority date of the patents. Microsoft did not submit any evidence or testimony obtained directly from Marquardt on the timing of publication. Microsoft also offered a non-translated 1986 report prepared for Marquardt that it contended contained photos of wooden prototypes of the keyboards similar to those shown in the Marquardt document. The report’s author also testified the prototypes were displayed at the 1986 trade show. Typeright appealed.
The Federal Circuit concluded that in view of discrepancies and claims of bias raised by Typeright relating to the testimony of declarants relied on by Microsoft summary judgment was improper, particularly in light of the applicable clear and convincing evidentiary standard. The Court noted, as contested issues of fact, the following: the Marquardt document is undated and was discovered in a witness’ file dated 1990 – although the witness remembers receiving the document at the 1986 trade show; the testimony related to events occurring over 18 years ago which suggests possible faulty recollection; the testimony was tentative – one witness testified seeing photographs "similar" to the Marquardt document distributed at the 1986 tradeshow, while the other witness, when asked if the Marquardt document was handed out at the 1986 tradeshow, testified "I think so, yes"; an inquiry made to Marquardt regarding a number printed on the document that may have led to the date of release, yet Microsoft failed to provide this information; Marquardt filed two patent applications in 1991 for similar keyboards which would have been invalid if the Marquardt document was actually published in 1986; and finally, both of Microsoft’s witnesses received compensation for their time spent testifying.
While noting that the issue was a close one, and that summary judgment cannot be denied simply because an opponent argues the moving party’s witnesses are not to be believed, the Federal Circuit found the specific facts identified in opposition raised doubts as to whether the Marquardt document was published prior to the critical priority date of the patents in suit. The Federal Circuit stated that if the jury finds the testimony of Microsoft’s witnesses credible and sufficient to establish that the Marquardt document was published prior to the priority date of the patents in suit, the district court will still have to address whether the legal requirement of corroboration has been met.
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