## Facts

- Motionless Keyboard Company (MKC) owned U.S. Patent Nos. 5,178,477 and 5,332,322 covering handheld ergonomic keyboard devices actuated by small finger and thumb gestures.
- Inventor Thomas Gambaro developed prototypes, including the “Cherry Model 5,” and provided visual demonstrations to potential investors under non-disclosure agreements that expired in 1989.
- In June–July 1990, Gambaro provided the Cherry Model 5 to Sheila Lanier for a typing test; on July 25, 1990, it was connected to a computer and used to transmit typed data, and Lanier signed an NDA the same day.
- Gambaro filed the application leading to the ’477 patent on June 6, 1991, and the application leading to the ’322 patent on January 11, 1993; the ’322 patent issued as a continuation-in-part of the ’477 patent, and both were assigned to MKC.
- MKC sued Microsoft, Nokia, and Saitek in the District of Oregon, alleging that several input devices (including Microsoft’s “Strategic Commander”) infringed asserted claims of the ’477 and ’322 patents.
- The district court granted summary judgment of noninfringement (literal and doctrine of equivalents) and held both patents invalid under 35 U.S.C. § 102(b) (public use), and additionally held the ’322 patent invalid for “obviousness” based on a terminal disclaimer over the ’477 patent.

## Issues

1. Whether the district court correctly construed the ’477 claim requirement for “a concavity in said housing ... and a thumb-associable cluster of keys ... within said concavity,” and whether the accused devices infringed under literal infringement or the doctrine of equivalents.
2. Whether Gambaro’s pre-filing investor demonstrations and Lanier typing test constituted invalidating “public use” under 35 U.S.C. § 102(b).
3. Whether the ’322 patent could be held obvious based on the existence of a terminal disclaimer in view of the ’477 patent.

## Decision

- Affirmed summary judgment of noninfringement as to the asserted claims.
- Reversed summary judgment that the ’477 and ’322 patents were invalid under § 102(b) based on public use.
- Reversed summary judgment that the ’322 patent was invalid for obviousness based on a terminal disclaimer.
- Remanded for further proceedings consistent with the appellate rulings.

## Legal Principles

- Claim terms describing structure (e.g., a “concavity” and keys “within” it) are applied according to their ordinary structural meaning in light of the specification; devices that achieve similar ergonomic goals without the claimed structure do not infringe.
- Summary judgment of noninfringement is proper where, under the correct construction, no reasonable factfinder could conclude the accused devices meet the disputed limitation, including under the doctrine of equivalents when the structural differences are substantial.
- “Public use” under § 102(b) generally requires non-confidential, unrestricted use that places the invention in the public domain; confidential demonstrations and controlled testing do not necessarily trigger the bar.
- Experimental or evaluative use under the inventor’s control, subject to confidentiality, and without commercial exploitation generally does not constitute invalidating public use.
- A terminal disclaimer is a tool for addressing double patenting and common ownership; it is not, by itself, proof that a later patent’s claims are obvious over an earlier patent, which must be determined through a proper § 103 analysis.

## Conclusion

The Federal Circuit affirmed that the accused devices did not infringe because they lacked the claimed arrangement of a thumb-key cluster forming a keyboard within a housing concavity, but it reversed the invalidity findings because the pre-filing activities were not the type of non-confidential, enabling public use barred by § 102(b) and because a terminal disclaimer alone cannot establish obviousness.


Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007)