It's in the way that you use it

Court allows some "use" prior to patent application

Say you've invented a new device and want to test it with an actual user - will you forfeit patentability under the public use bar? What if you show the device to potential investors? In Motionless Keyboard Co. v. Microsoft Corp., the Federal Circuit Court of Appeals ruled that neither action blocked the patentability of an ergonomic keyboard.

Keying in

Motionless Keyboard Co. (MKC) owns two related patents. The '477 patent claims a keyboard designed to accommodate the human hand's architecture by requiring only slight finger gestures to activate the keys. Patent '322, issued as a continuation-in-part of '477, claims a hand-held device that frees the thumb to activate the keys in different ways.

Thomas Gambaro invented both devices. He developed several prototypes, one of which was developed on Feb. 22, 1987. Shortly thereafter, he entered a business partnership to find financial support for further development and patenting of the technology. Gambaro demonstrated the model to his partner, potential investors and a friend. The investors signed nondisclosure agreements, but the friend didn't. Gambaro also disclosed the model to a typing tester - the only individual to use the device to transmit data to a computer.

Eventually, Gambaro assigned both patents to MKC. After MKC obtained the patents from Gambaro, it sued Microsoft, Nokia and Saitek for infringement.

The letter of the law

Section 102(b) of the Patent Act denies patents where "the invention was ... in public use or on sale in this country, more than one year prior" to the date of the patent application. The '477 application was filed on June 6, 1991, making the critical date June 6, 1990; the critical date for the '322 patent is Jan. 11, 1992.

Public use includes any public use of the invention by a person (other than the inventor), who is under no limitation, restriction or obligation of secrecy to the inventor. The bar is based on a "reluctance to allow an investor to remove existing knowledge from public use."

The district court reasoned that Gambaro's disclosures to potential investors showed the invention entered the public domain before the critical date because his partner had no obligation of secrecy. It dismissed the relevancy of the nondisclosure agreements, stating that a confidentiality agreement won't preclude application of the public use doctrine if the invention was disclosed for commercial purposes, such as obtaining capital.

So the district court granted the defendants' motion for summary judgment, finding noninfringement because the patents were invalid under the public use doctrine. MKC appealed.

Court dictates on public use

The appellate court cited two long-standing U.S. Supreme Court decisions addressing public use. In Egbert v. Lippman, the inventor gave two samples of a corset spring to a female friend, who used them for two years before the patent application was filed. Although the inventor received no commercial advantage, the court found the invention had been used for its intended purpose without limitation or confidentiality restrictions. The use was not in public view, but it was public nonetheless. In Electric Storage Battery Co. v. Shimadzu, the Supreme Court held that "ordinary use of a machine or the practice of a process in a factory in the usual course of producing articles for commercial purposes is a public use."

The Federal Circuit observed that in all of Gambaro's disclosures - to his business partner, a friend, potential investors and the typing tester - the model was only once connected to a computer or other device for its intended purpose. The typing tests were conducted on July 25, 1990, after the critical date for '477.

As to the '322 patent, the typist appeared to have performed a one-time test to assess typing speed on the same date, and she signed a nondisclosure agreement that day. The court found that the one-time typing test along with a signed nondisclosure agreement and no record of continued use of the invention by the typist didn't constitute public use.

The appellate court further concluded that the other disclosures provided only a visual view of the keyboard design, without any disclosure of the model's ability to translate finger movements to transmit data. "In essence, these disclosures visually displayed the keyboard design without putting it into use."

The final word

The Federal Circuit emphasized that the device was never connected to enter data into a system in the normal course of business. It distinguished previous cases where inventions were used for their intended purpose. Would-be patent holders, then, should take care with the context in which they disclose their inventions prior to filing their applications.

Sidebar: Getting a grip on the infringement issue

Motionless Keyboard Co. (MKC) appealed the district court's finding that Microsoft and Saitek game joysticks and Nokia cellular phones didn't literally infringe its '322 patent for a hand-held device.

The relevant patent claim referenced "a concavity in said housing at said key-actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity." MKC sought a broad construction of the phrase, meaning the keys or portions of them - specifically, the tops of the keys - could themselves form a concavity within the housing.

The Federal Circuit found that the use of the terms "concavity in said housing" and "keyboard within said concavity" defined a depression within the housing of the device and set the keyboard entirely within that depression. It pointed out that all of the keyboard renderings in the application showed a concavity in the housing of the device, with the keyboard entirely within the concavity.

The accused joysticks and phones, therefore, didn't literally infringe the patent because they lacked a concavity in the housing and a keyboard within the cavity. Some of the phones contained keys with slight depressions, but the keys didn't constitute a concavity in the housing.