Lexplug logoLexplug

Motionless Keyboard Company v. Microsoft Corporation

Court of Appeals for the Federal Circuit
82 U.S.P.Q. 2d (BNA) 1801, 486 F.3d 1376, 2007 U.S. App. LEXIS 12351 (2007)
ELI5:

Rule of Law:

An invention is not in 'public use' under 35 U.S.C. § 102(b) if it is demonstrated to a limited number of individuals for investment or testing purposes under an expectation of confidentiality, and is not used for its intended purpose in the normal course of business.


Facts:

  • Thomas L. Gambaro invented an ergonomic keyboard technology on a part-time basis.
  • In 1987, Gambaro developed a prototype of his keyboard, the Cherry Model 5.
  • Gambaro entered into a business partnership with Keith Coulter to seek financial support for the invention.
  • Gambaro demonstrated the Cherry Model 5 to his business partner, a friend (Ms. Kathie Roberts), and several potential investors.
  • The potential investors signed two-year non-disclosure agreements (NDAs), though some of these agreements expired before the patent's critical date.
  • Ms. Roberts, the friend, did not sign an NDA.
  • On June 25, 1990, Gambaro had Ms. Sheila Lanier conduct a typing test on the device; Ms. Lanier signed an NDA on the same day.
  • Except for the single typing test by Ms. Lanier, the Cherry Model 5 was only visually displayed and was not connected to a computer to transmit data.

Procedural Posture:

  • Motionless Keyboard Company (MKC) sued Microsoft, Nokia, and Saitek in the U.S. District Court for the District of Oregon, alleging infringement of two of its patents.
  • The defendants moved for summary judgment, arguing the patents were invalid due to 'public use' more than one year before the patent application was filed.
  • The district court (trial court) granted summary judgment in favor of the defendants (Microsoft, et al.).
  • The district court ruled that the patents were invalid because the inventor's pre-filing demonstrations constituted a public use.
  • MKC, as the appellant, appealed the district court's invalidity ruling to the U.S. Court of Appeals for the Federal Circuit.

Locked

Premium Content

Subscribe to Lexplug to view the complete brief

You're viewing a preview with Rule of Law, Facts, and Procedural Posture

Issue:

Does demonstrating an invention prototype to a business partner, potential investors, a friend, and a tester under a non-disclosure agreement, without using the invention for its intended commercial purpose, constitute a 'public use' sufficient to invalidate a patent under 35 U.S.C. § 102(b)?


Opinions:

Majority - Rader, Circuit Judge

No. Demonstrating an invention for investment or testing purposes to a limited audience, with an expectation of confidentiality, does not constitute a 'public use' that would invalidate a patent. Public use requires that the invention be used for its intended purpose in the normal course of business. Here, the inventor, Mr. Gambaro, only visually displayed the Cherry Model 5 prototype to his partner, a friend, and potential investors. The single instance of the device being used for its intended purpose—a typing test—was conducted by a person who had signed a non-disclosure agreement (NDA). The court distinguished this case from precedents like Egbert v. Lippmann, where the invention (a corset spring) was used by another person for its intended purpose for years without restriction. Because the Cherry Model 5 was never used to transmit data in the normal course of business or otherwise placed in the public domain, the demonstrations did not rise to the level of a statutory public use bar.



Analysis:

This case clarifies the 'public use' bar under patent law, offering significant protection to independent inventors and startups. The court's decision distinguishes between demonstrating an invention to solicit investment and actually putting the invention into public use. It establishes that limited, controlled disclosures for business development purposes, especially when confidentiality is expected, do not trigger the one-year clock for filing a patent. This precedent allows inventors to seek necessary funding without jeopardizing their future patent rights, recognizing the practical realities of developing and commercializing an invention.

🤖 Gunnerbot:
Query Motionless Keyboard Company v. Microsoft Corporation (2007) directly. You can ask questions about any aspect of the case. If it's in the case, Gunnerbot will know.
Locked
Subscribe to Lexplug to chat with the Gunnerbot about this case.

Unlock the full brief for Motionless Keyboard Company v. Microsoft Corporation