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Public use within the meaning of 35 U.S.C.S. § 102(b) includes any public use of a claimed invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor.
Motionless Keyboard Company (MKC) owns the '477 and '322 patents. The '477 patent, entitled "Ergonomic Keyboard Input Device," claims an ergonomic keyboard designed to accommodate the architecture of the human hand. According to the invention, the keyboard requires only slight finger gestures to actuate the keys. The '322 patent, entitled "Ergonomic Thumb-Actuable Keyboard for Hand-Grippable Device," issued as a continuation-in-part of the '477 patent. This patent claims a hand-held device that frees the thumb to actuate the keys in multiple and differentiated ways. Thomas L. Gambaro is the sole inventor of both the '477 and the '322 patents. Mr. Gambaro invented the novel ergonomic keyboard technology on a part-time basis while also working in other jobs such as graphic artist and dishwasher. As an independent inventor, Mr. Gambaro developed his technology advances without the benefit of a well-funded laboratory and then traversed the patent system on a limited budget. During his inventive work, Mr. Gambaro developed different prototype models of his keyboard technology. Eventually, on February 22, 1987, Mr. Gambaro developed the Cherry Model 5. Shortly after developing the Cherry Model 5, Mr. Gambaro entered into a business partnership with Mr. Keith Coulter. Thereafter, Mr. Gambaro and Mr. Coulter set out to gain financial support to further develop and patent the keyboard technology. Thus, Mr. Gambaro began to demonstrate the Cherry Model 5 to potential investors. He also demonstrated the device to a friend, Ms. Kathie Roberts. While the potential investors signed two-year non-disclosure agreements (NDAs), Ms. Roberts did not. Mr. Gambaro entered into some of the NDAs with potential investors in 1987, meaning those agreements expired in 1989. Additionally, Mr. Gambaro disclosed the Cherry Model 5 to Ms. Sheila Lanier on June 25, 1990 to conduct typing tests. While Mr. Gambaro showed the Cherry Model 5 to his business partner, numerous potential investors, a friend and a typing tester, according to the record, only Ms. Lanier used the device to transmit data to a computer. In due course, Mr. Gambaro assigned both patents to MKC.
MKC sued Microsoft, Nokia, and Saitek for infringement of the '477 and '322 patents in the U.S. District Court for the District of Oregon. Specifically, MKC alleged that Microsoft's "Strategic Commander" game controller infringed claims 1, 2, 5, 6, and 8 of the '477 patent. MKC also alleged that Microsoft's "Sidewinder Precision 2," "Sidewinder Force Feedback 2," and various Saitek game joysticks infringed claims 1, 2, 3 and 5 of the '322 patent. MKC alleged that Nokia phone models 3560, 3595, 6200, and 6820 infringed claims 1, 2, 3, and 4 of the '322 patent. The District Court entered summary judgment construing the claims of the '477 and '322 patents. Based on its reading of the patents, the trial court found no infringement as a matter of law. In addition, the District Court invalidated the '477 and '322 patents based on public use under 35 U.S.C. § 102(b). The trial court also declared the '322 patent invalid for obviousness in light of a terminal disclaimer.
Did the trial court err in declaring the subject patents invalid based on public use under 35 U.S.C. § 102(b)?
The district court found that MKC admitted that the Cherry Model 5 embodied the '477 patent and the '322 patent as of February 22, 1987. Even assuming that MKC admitted that the Cherry Model 5 embodied each claim of the '477 and '322 patents--a question this court need not decide-- there was no "public use" under 35 U.S.C. § 102(b). The record showed that the inventor disclosed the Cherry Model 5 to his business partner, potential investors, a friend, and a typing tester before the critical date. While the potential investors signed NDAs, some of the NDAs expired in 1989--again prior to the critical dates for each patent. Thus, this court must examine, in the context of the district court's summary judgment ruling of invalidity, whether these disclosures and demonstrations were public uses within the meaning of the statutory bar. In this case, Mr. Gambaro disclosed his Cherry Model 5 to his business partner, a friend, potential investors, and a typing tester (Ms. Lanier). In all these disclosures, except in the case of Ms. Lanier, however, the Cherry Model 5 was not connected to a computer or any other device. In the case of Ms. Lanier, the Cherry Model 5 was used to conduct typing tests on July 25, 1990, and thereby connected to a computer for its intended purpose. With respect to the '477 patent, the typing test occurred after the critical date of June 6, 1990. With respect to the '322 patent, Ms. Lanier appears to have performed a one-time typing test to assess typing speed. The typing test by Ms. Lanier was allegedly performed on July 25, 1990 and, according to a synopsis of NDAs in the record, Ms. Lanier signed an NDA on the same day. The critical date for the '322 patent is January 11, 1992. In this case, the one time typing test coupled with a signed NDA and no record of continued use of the Cherry Model 5 by Ms. Lanier after July 25, 1990 did not elevate to the level of public use. Thus, the Cherry Model 5 was never in public use. All disclosures, except for the one-time typing test, only provided a visual view of the new keyboard design without any disclosure of the Cherry Model 5'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. In short, the Cherry Model 5 was not in public use as the term is used in section 102(b) because the device, although visually disclosed and only tested one time with a NDA signed by the typing tester, was never connected to be used in the normal course of business to enter data into a system. Unlike the situations in Egbert and Electric Storage Battery, where the inventions were used for their intended purpose, neither the inventor nor anyone else ever used the Cherry Model 5 to transmit data in the normal course of business. The entry of data did not ever occur outside of testing and the tester signed an NDA. The Cherry Model 5 was not used in public, for its intended purpose, nor was the Cherry Model 5 ever given to anyone for such public use. Thus, the disclosures in this record did not rise to the level of public use.