DOE Requires Expert Evidence / NDA Still Good After Expiry

Motionless Keyboard v. Microsoft (Fed. Cir. 2007).

Patent.Law002Tom 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.”


8 thoughts on “DOE Requires Expert Evidence / NDA Still Good After Expiry

  1. 8

    I second MaxDrei’s comment. The single best solution to junk patents and frivolous litigation is to remove the presumption of validity of an issued patent.

    That standard MAY have been justified in the past when the patent office had the resources and did a better job at examining patents but that no longer is the case.

  2. 7

    We don’t see from the above report whether a “concavity” played a role in getting the claim to issue. I suspect that, without it, the claim would have been found old or obvious. England tries infringement and validity together, both on a preponderance of evidence. The “squeeze” on the owner of the patent, to navigate his claim between “too narrow to catch the infringer” and “too wide to survive the prior art” gets rid of all the mischievous infringement actions. There is no DOE in UK. Purposive construction of the claim under Art 69 EPC gives the patent owner a “fair” scope of protection. Can’t you guys do it the same way? It would however severely reduce the number of lawyer hours that get billed out, both before and during litigation.

  3. 6

    “That is why I would suck as a litigator. The guy comes into my office and I tell him he has no case within 30 minutes. I write it off as a free consultation.”

    Hey, this battle ain’t over yet!!!!! I bet at least one of the Supremes knows how to handle a remote. Have we heard from them yet????? Have some faith in the legal system!!!!!!

    In all seriousness, Red Berry, the conflict of interest you allude to casts a shadow over the entire life of a patent, beginning with its filing. Any client who regularly interacts with “professionals” will quickly learn the ropes or go broke in a hurry.

  4. 5

    “Dude, do you really think that a typical independent inventor is this stupid ?”

    Yes. I meet many independent inventors and I read many patent applications and patents drafted by independent inventors. It is rare for an independent inventor to understand the art of claim drafting. I would never buy a sharp knife and give myself an appendectomy. I realize that there are professionals who spend time practicing and learning their skills, and it would be foolish of me to think that I can do as well as such a professional. But, many independent inventors believe that they can do as good a job with their one (maybe 2) patent application as someone who has drafted hundreds and spent countless hours studying their profession.

    As an example, many inventors believe a good claim is one that describes every feature of their invention. Practitioners recognize that as a picture claim and avoid it as being too narrow to offer any meaningful protection.

  5. 4

    “I figured that out in about five minutes of looking at the patent…
    …Years later and $$$,$$$ later, the inventor receives the news from the court that he has no case (no infringement).”

    Dude, do you really think that a typical independent inventor is this stupid ?

    I can assure you that any real inventor out there can figure out claim construction for himself better than a typical patent attorney, after spending all the time and money on the process…
    Mind you, inventors are normal people for the most part, engineers and scientists.
    Most of them don’t have day jobs as “graphic artist and dishwasher” and don’t live “in a friend’s attic.”

  6. 3

    Mooney wrote:
    “Small inventors, NOW IS THE TIME TO ASSERT YOURSELVES!!!!!”

    Yeah.. we hear…

    The only problem is that we need a little money to buy us a piece of american justice..
    Mooney, how about contributing 2-3 mil to my litigation fund ?
    I can promise you a colorful court showdown lasting for a few years, not to mention potential returns…

  7. 2

    With one stroke of the keyboard, the CAFC has clearly obliterated the public use defense for invalidating patents!!!!!!!!!!!!!!!!!!!!! This case can be seen as a giant middle finger in the face of the Supreme Court, showing that the CAFC’s apparent anti-patent stance was nothing but a ruse designed to lull habitual corporate infringers into complacency.

    Small inventors, NOW IS THE TIME TO ASSERT YOURSELVES!!!!! Who is with me???????

  8. 1

    I think the court was more focused on the lack of “use” than the fact the use wasn’t “public.” The operative quote appears to be:

    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.

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