Brief by: Wayne Xu
Case Name: Motionless Keyboard Co. v. Microsoft Corp.
Case Cite: 486 F.3d 1376 (2007)
Facts: Thomas L. Gambaro is the sole inventor of both the 477 and 322 patents. He invented the novel ergonomic keyboard technology on a part time basis while he lived in a friend’s attic. 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.
On February 22, 1987, Mr. Gambaro developed the Cherry Model 5 Motionless Keyboard. Shortly after, he entered into a business partnership with Mr. Keith Coulter to gain financial support. He began to demonstrate the Cherry Model 5 to potential investors and demonstrated the device to a friend, Ms. Kathie Roberts? While the investors signed 2 year non-disclosure agreements, Ms. Roberts did not. (Does Egbert come to mind?) Mr. Gambaro assigned both patents to MKC.
Claim 1 of the 322 patent shows the pertinent limitation in the context of the entire claim:
1. A hand-held device for entering information into an electronic system via a keyboard, the device comprising: a housing having a grippable portion which permits the device to be held in one hand with the thumb free to move at least temporarily ot a predetermined key-actuation position while the device is held, a concavity in said housing at said key-actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity, each of the plurality of keys in said cluster being selectively actuable via mixed lateral and slight endo, translation of a thumb within said concavity, whereby information is entered into an electronic system.
Procedural Posture: MKC sued Microsoft, Nokia, and Saitek for infringement of the 477 and 322 patents. It alleged that Microsoft’s Strategic Commander and Sidewinder Force Feedback 2 and Saitek game joysticks infringed various claims of the patents. Furthermore, it alleged that Nokia phone models infringed.
Issue: Was there literal infringement? If not, was there a DOE infringement? Also, was the patent public domain because it was shown to Ms. Roberts?
Holding: There is no literal infringement. There is also no DOE infringement. The claim was also not public domain.
Reasoning / Analysis: There is no literal infringement because the accused gaming joysticks and cellular phones lacked a concavity in the housing and a keyboard within the cavity. Therefore, it did not literally infringe the patent. The accused devices did not infringe under the DOE because MKC presented no evidence that the differences between the joysticks and the claimed elements are insubstantial. Because MKC did not provide any particularized testimony to show infringement under the DOE, this Court did not need to determine the applicability of the limitations on the DOE. Furthermore, the keys on the Nokia phones did not permit thumb movement to actuate the keys within the concavity. The Nokia phone keys were actuated in a manner different from the MKC device.
In regards to the public domain issue, this Court cited the Egbert case. However, unlike the Egbert case, the Cherry Model 5 was tested only one time and was never connected to be used in the normal course of business to enter data into a system. Unlike the Egbert case, the invention was never used for its intended purpose.
Notes:
This seems to be a case of the yet another home inventor losing out on patent protections because of the wording of a patent. If he only had the foresight to not limit the keys inside the cavity, this case may have gone the other way. However, he may have had to limit it in such a manner in order to avoid a prior art.
Future Importance: Lawyers claiming DOE will be sure to provide testimony showing infringement under DOE.
Case Name: Motionless Keyboard Co. v. Microsoft Corp.
Case Cite: 486 F.3d 1376 (2007)
Facts: Thomas L. Gambaro is the sole inventor of both the 477 and 322 patents. He invented the novel ergonomic keyboard technology on a part time basis while he lived in a friend’s attic. 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.
On February 22, 1987, Mr. Gambaro developed the Cherry Model 5 Motionless Keyboard. Shortly after, he entered into a business partnership with Mr. Keith Coulter to gain financial support. He began to demonstrate the Cherry Model 5 to potential investors and demonstrated the device to a friend, Ms. Kathie Roberts? While the investors signed 2 year non-disclosure agreements, Ms. Roberts did not. (Does Egbert come to mind?) Mr. Gambaro assigned both patents to MKC.
Claim 1 of the 322 patent shows the pertinent limitation in the context of the entire claim:
1. A hand-held device for entering information into an electronic system via a keyboard, the device comprising: a housing having a grippable portion which permits the device to be held in one hand with the thumb free to move at least temporarily ot a predetermined key-actuation position while the device is held, a concavity in said housing at said key-actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity, each of the plurality of keys in said cluster being selectively actuable via mixed lateral and slight endo, translation of a thumb within said concavity, whereby information is entered into an electronic system.
Procedural Posture: MKC sued Microsoft, Nokia, and Saitek for infringement of the 477 and 322 patents. It alleged that Microsoft’s Strategic Commander and Sidewinder Force Feedback 2 and Saitek game joysticks infringed various claims of the patents. Furthermore, it alleged that Nokia phone models infringed.
Issue: Was there literal infringement? If not, was there a DOE infringement? Also, was the patent public domain because it was shown to Ms. Roberts?
Holding: There is no literal infringement. There is also no DOE infringement. The claim was also not public domain.
Reasoning / Analysis: There is no literal infringement because the accused gaming joysticks and cellular phones lacked a concavity in the housing and a keyboard within the cavity. Therefore, it did not literally infringe the patent. The accused devices did not infringe under the DOE because MKC presented no evidence that the differences between the joysticks and the claimed elements are insubstantial. Because MKC did not provide any particularized testimony to show infringement under the DOE, this Court did not need to determine the applicability of the limitations on the DOE. Furthermore, the keys on the Nokia phones did not permit thumb movement to actuate the keys within the concavity. The Nokia phone keys were actuated in a manner different from the MKC device.
In regards to the public domain issue, this Court cited the Egbert case. However, unlike the Egbert case, the Cherry Model 5 was tested only one time and was never connected to be used in the normal course of business to enter data into a system. Unlike the Egbert case, the invention was never used for its intended purpose.
Notes:
This seems to be a case of the yet another home inventor losing out on patent protections because of the wording of a patent. If he only had the foresight to not limit the keys inside the cavity, this case may have gone the other way. However, he may have had to limit it in such a manner in order to avoid a prior art.
Future Importance: Lawyers claiming DOE will be sure to provide testimony showing infringement under DOE.