Motionless Keyboard v. Microsoft (Fed. Cir. 2007).
Tom Gambaro is two patents related to ergonomic game-controllers. Like many solo-inventors, Gambaro invented on his own [thin] dime — in particular, he held day jobs as a “graphic artist and dishwasher” and lived “in a friend’s attic.” After a long process of obtaining seed-money from investors, Gambaro filed for patent protection and assigned the patent to Motionless. Motionless then sued Microsoft and others for infringement. On summary judgment, however, the district court found the patents invalid for prior public use and not infringed.
Infringement: The Motionless patent claim language requires a “concavity” in the grip housing. Because none of the accused devices included this express limitation, summary judgment of non-infringement was affirmed. Infringement under the Doctrine of Equivalents failed because Motionless did not present “particularized testimony” showing that differences between the claim element and accused device were insubstantial. (I.e., a technical expert is necessary to win on DOE).
Public Use: The CAFC found the Motionless patent not invalid, reversing the lower court’s decision on that issue. Prior to the patent’s critical date, Gambaro disclosed his inventions several persons under a NDA that also expired prior to the critical date. These disclosures, according to the CAFC were not “public” as required by Section 102(b) because they originally occurred under a NDA. One additional disclosure to a tester was not under a signed NDA. That disclosure, however, was not considered a public use because the invention was not “connected to be used in the normal course of business to enter data into a system.” In addition, the tester later signed a NDA.
Terminal Disclaimer: The district court had also found one patent invalid based on a terminal disclaimer filed by Gambaro — holding that the disclaimer was an admission of obviousness. The CAFC quickly reversed that portion of the decision.
A terminal disclaimer simply is not an admission that a later-filed invention is obvious. Thus, the trial court erred on this point and the '322 patent is not invalid due to obviousness.
- Like Gambaro, for the next month, I’ll be living in a friend’s attic while teaching Patent Law at Franklin Pierce Law Center in Concord, NH. The friend is patent attorney Steve Finch of Finch & Nguyen.
- In an earlier decision, the CAFC held that Gambaro could not argue on behalf of Motionless “pro se.”