In Motionless Keyboard Co. v. Microsoft Corp., No. 2005-1497 (May 29, 2007), the Federal Circuit recently reviewed whether certain disclosures of a prototype device constituted a “public use” under 35 U.S.C. § 102(b) of the United States patent laws. Under 35 U.S.C. § 102(b), a patent can be invalidated where “the invention was...in public use...in this country, more than one year prior to the date of the application for patent in the United States.” In reversing the trial court’s finding of invalidity of two patents, the Federal Circuit held that the prototype device was not in public use “because the device, although visually disclosed and only tested one time with a [non-disclosure agreement (NDA)], was never connected to be used in the normal course of business.”
The two patents at issue are both directed toward ergonomic keyboards. The first patent, U.S. Patent No. 5,178,477 (the ‘477 patent), was filed on June 6, 1991 and claimed an ergonomic keyboard device designed to accommodate the architecture of the human hand. The second patent, U.S. Patent No. 5,332,322 (the ‘322 patent), which was filed on January 11, 1993 as a continuation-in-part of the ‘477 patent, claimed a hand-held device that freed the thumb to actuate the keys in multiple and differentiated ways. Based upon these filing dates, the ‘477 patent and the ‘322 patent have critical dates of June 6, 1990 and January 11, 1992, respectively. Under 35 U.S.C. § 102(b), public uses of the invention prior to the critical date would render the corresponding patent invalid.
In examining whether any public uses occurred prior to the critical dates of the ‘477 and ‘322 patents, the Federal Circuit reviewed the trial court’s record of the events leading up to the filing of those patents, as provided in the timeline below. Of particular interest below are the 1987 and June 25, 1990 disclosures of the prototype device. With respect to the disclosure in 1987, the business partner, friend, and investors of the inventor were only allowed to visually inspect the prototype device. The investors, but not the business partner and friend, signed non-disclosure agreements (NDAs). The NDAs with the investors expired prior to the critical dates of the ‘477 and ‘322 patents. In addition, in conducting a one-time typing test on June 25, 1990, the inventor allowed a typing tester to use the prototype device to transmit data to a computer. The typing tester signed an NDA on June 25, 1990.
The following is a complete timeline of the material dates:
- February 22, 1987: Inventor develops prototype device that allegedly encompasses the ‘477 patent and the ‘322 patent.
- Later 1987: Inventor visually discloses prototype device to business partner, friend, and numerous potential investors. The prototype device was not connected to a computer or any other device. The potential investors sign two-year NDA.
- 1989: Two-year NDAs with potential investors expire.
- June 6, 1990: Critical date for ‘477 patent.
- June 25, 1990: Inventor disclosed prototype device to typing tester in order to conduct typing tests. In conducting the typing tests, the prototype device was connected to a computer with data being transmitted from the prototype device to the computer.
- June 6, 1991: The application for the ‘477 patent is filed.
- January 11, 1992: Critical date for ‘322 patent.
- January 11, 1993: The application for the ‘322 patent is filed.
In finding that there was no public use under 35 U.S.C. § 102(b), the Federal Circuit noted that “[a]ll disclosures, except for the one-time typing test, only provided a visual view of the new keyboard design without any disclosure of the [prototype device’s] ability to translate finger movements into actuation keys to transmit data.” In short, the Federal Circuit found that a visual disclosure is not a “use” that satisfies the “public use” of 35 U.S.C. § 102(b). Instead, the Federal Circuit noted that in this case, a “public use” in accordance with 35 U.S.C. § 102(b) involves actually using the invention for its intended purpose, as with connecting the prototype device to be used in the normal course of business to enter data into the system. With respect to the one-time typing test of June 25, 1990, the use of the prototype device to transmit data to the computer was not a public use under 35 U.S.C. § 102(b) since an NDA was in place with the typing tester. Accordingly, given that the visual disclosures did not constitute “public uses,” and further given that the NDA excused the one-time typing test, the Federal Circuit found that none of the disclosures in the trial court’s record rose to the level of public use under 35 U.S.C. § 102(b).
It remains to be seen whether this case will be distinguished on its facts or whether it will have broader applicability to other cases of alleged public use.