The Invention Must Actually Be Used for A Public Use

Motionless Keyboard Company v. Microsoft Corporation, [05-1497](May 29, 2007)[RADER, Dyk andMoore] The Federal Circuit affirmed the determination of no infringement of U.S. Patent Nos. 5,178,477 and 5,332,322, but reversed the determination of invalidity for public use and obviousness due to a terminal disclaimer.
BRIEF: The Federal Circuit agreed with the district court's claim construction and affirmed summary judgment of non-infringement. With respect to infringement under the doctrine of equivalents, the Federal Circuit said that to avoid the grant of summary judgment of non-infringement by equivalents, the patentee must present particularized evidence and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device, or with respect to the function, way result test. Regarding the public use defense, the Federal Circuit said that public use includes any public use of the claimed invention by a person other than the inventor who is is under no obligation, restriction or obligation of secrecy to the inventor. The Federal Circuit found no public use of the invention. Regarding obviousness from filing a terminal disclaimer, the Federal Circuit said that "a terminal disclaimer simply is not an admission that a later-filed invention is obvious."