DATAMIZE, LLC v. Plumtree Software, Inc.

• Decision Date: 05 August 2005
• Docket Number: No. 04-1564.,04-1564.
• Citation: 417 F.3d 1342
• Parties: DATAMIZE, LLC, Plaintiff-Appellant, v. PLUMTREE SOFTWARE, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

417 F.3d 1342

DATAMIZE, LLC, Plaintiff-Appellant, v. PLUMTREE SOFTWARE, INC., Defendant-Appellee.

No. 04-1564.

United States Court of Appeals, Federal Circuit.

August 5, 2005.

COPYRIGHT MATERIAL OMITTED

Theodore Stevenson, III, McKool Smith, P.C., of Dallas, Texas, argued for plaintiff-appellant. With him on the brief was Amber Hatfield Rovner, of Austin, Texas. Of counsel was Douglas A. Cawley, of Dallas, Texas.

Michael B. Levin, Wilson Sonsini Goodrich & Rosati, of Palo Alto, California, argued for defendant-appellee. With him on the brief were Michael A. Ladra, David H. Kramer, Christopher R. Parry, and Bart E. Volkmer.

Before CLEVENGER, BRYSON, and PROST, Circuit Judges.

PROST, Circuit Judge.

Datamize, L.L.C. ("Datamize") appeals from a decision of the United States District Court for the Northern District of California holding each claim of United States Patent No. 6,014,137 ("the '137 patent") invalid as indefinite under 35 U.S.C. § 112, ¶ 2. See Datamize, L.L.C. v. Plumtree Software, Inc., No. 3:02-CV-05693 VRW (N.D.Cal. July 9, 2004). We affirm.

BACKGROUND

A. The '137 Patent and Related Prosecution History

The '137 patent, entitled "Electronic Kiosk Authoring System," discloses a software program that allows a person to author user interfaces for electronic kiosks. "The authoring system enables the user interface for each individual kiosk to be customized quickly and easily within wide limits of variation, yet subject to constraints adhering the resulting interface to good standards of aesthetics and user friendliness." '137 patent, Abstract; see also id. at col. 3, ll. 28-32.

The authoring system gives the system author a limited range of pre-defined design choices for stylistic and functional elements appearing on the screens. Id. at col. 3, ll. 52-57. "Major aesthetic or functional design choices ... as well as hierarchical methods of retrieving information may be built into the system while taking into account the considered opinions of aesthetic design specialists, database specialists, and academic studies on public access kiosk systems and user preferences and problems." Id. at col. 3, ll. 57-64.

Claim 1, the '137 patent's only independent claim, recites:

1. In an electronic kiosk system having a plurality of interactive electronic kiosks for displaying information provided by a plurality of information providers, a method for defining custom interface screens customized for individual kiosks of said plurality and operable to make different assortments of said information available for display at different kiosks of said plurality, said method comprising the steps of:

providing a master database of information from said plurality of information providers, said master database referencing substantially all information content from said providers to be displayed on any of said plurality of kiosks providing a plurality of pre-defined interface screen element types, each element type defining a form of element available for presentation on said custom interface screens, wherein each said element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system,

each element type having a plurality of attributes associated therewith, wherein each said element type and its associated attributes are subject to pre-defined constraints providing element characteristics in conformance with said uniform and aesthetically pleasing look and feel for said interface screens, and

wherein said plurality of pre-defined element types includes at least one pre-defined window type, at least one pre-defined button type, and at least one pre-defined multimedia type;

selecting a plurality of elements to be included in a custom interface screen under construction, said plurality of elements being selected from said plurality of pre-defined elements types, said plurality of selected elements including at least one button type;

assigning values to the attributes associated with each of said selected elements consistent with said pre-defined constraints, whereby the aggregate layout of said plurality of selected elements on said interface screen under construction will be aesthetically pleasing and functionally operable for effective delivery of information to a kiosk user;

selecting from said master database an assortment of information content deriving from selected ones of said information providers to define kiosk information content for an individual kiosk of said kiosk system;

associating said kiosk information content with at least a portion of said selected elements for said interface screen under construction; and

linking said at least one selected button type element to an action facilitating the viewing of at least portions of said kiosk information content by a kiosk user.

'137 patent, col. 20, l. 37-col. 21, l. 23 (emphases added). At issue in this appeal is the definiteness of "aesthetically pleasing" as it is used in the context of claim 1 of the '137 patent.

The "aesthetically pleasing" claim language was not discussed by the inventor or the patent examiner during prosecution of the application that led to the '137 patent. The language was discussed, however, during prosecution of a continuation application to the '137 patent, which eventually issued as United States Patent No. 6,460,040 ("the '040 patent"). The patent examiner reviewing the application leading to the '040 patent rejected a claim as being indefinite for using the phrase "aesthetically pleasing." In response to this rejection, the inventor argued that the phrase is definite, but ultimately deleted it, stating in part that it is "not intended to identify qualities separate and apart from the remainder of this claim element" and is "superfluous and unnecessary."

B. The District Court Proceedings

Datamize sued Plumtree Software, Inc. ("Plumtree") for infringing the '137 patent, and Plumtree responded by moving for summary judgment on the ground that the '137 patent is invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2. The district court granted Plumtree's motion, concluding that the '137 patent's only independent claim is indefinite due to use of the phrase "aesthetically pleasing."

The district court began its analysis of the definiteness of "aesthetically pleasing" by referring to dictionary definitions of the words "aesthetic" and "pleasing." The court determined that the ordinary and customary meaning of the phrase is "having beauty that gives pleasure or enjoyment" or, in other words, "beautiful," a meaning the court believed to be "quite subjective." Next, the court turned "to determine whether the patent's specification provides an explicit definition of the term that clarifies or differs from its ordinary dictionary meaning." After reciting parts of the specification, the court concluded that the specification does not limit the subjectivity of the phrase "aesthetically pleasing."

The district court then reviewed the prosecution history of the '137 and '040 patents. The court concluded that the prosecution history of the '040 patent "does not provide a more objective means of ascertaining the meaning of `aesthetically pleasing.' In fact, the prosecution history suggests that the language has little meaning at all."

The district court went on to compare the current case with several district court and Federal Circuit opinions addressing indefiniteness. It concluded that three district court cases deal with terms that are similar to "aesthetically pleasing" in that they are all terms "with very subjective ordinary meanings that are not sufficiently narrowed by the patents in question." See Mossman v. Broderbund Software, Inc., No. 98-71244-DT, 51 U.S.P.Q.2d 1752, 1999 WL 696007 (E.D.Mich. May 18, 1999) ("readily follow"); STX, Inc. v. Brine, Inc., 37 F.Supp.2d 740 (D.Md.1999), aff'd, 211 F.3d 588 (Fed.Cir.2000) ("improved handling and playing characteristics"); Semmler v. Am. Honda Motor Co., 990 F.Supp. 967 (S.D.Ohio 1997) ("considerable fuel savings"). On the other hand, the court rejected a comparison with two of our cases, since in those cases the terms were either "not controlled by individual subjective impressions" or "sufficiently well-defined by the patent to make the meaning of the entire term readily discernable." See All Dental Prodx, L.L.C. v. Advantage Dental Prods., Inc., 309 F.3d 774 (Fed.Cir.2002) ("original unidentified mass"); Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed.Cir.2004) ("surrender value protected investment credits").

The district court next rejected proposed constructions of "aesthetically pleasing" offered by Datamize, stating that "the term `aesthetically pleasing' must mean something different from predefined constraints or limitations" since "predefined constraints" are separate limitations in claim 1. Furthermore, the court stated that "aesthetically pleasing" must be given meaning and cannot be read out of the claim. The court also rejected the argument that "aesthetically pleasing" should be evaluated from the system author's viewpoint and that anyone else's perception is irrelevant, stating that "the court would be hard-pressed to construe a patent term so that it would turn on the subjective beliefs of those individuals who will use the authoring tool."

Finally, the district court rejected expert testimony offered by Datamize for various reasons: expert testimony is disfavored and cannot vary or contradict claim language; the expert admitted that no objective measure of aesthetics is disclosed in the specification or any of various references; the expert relied upon an article published after the application for the '137 patent was filed; and the article relied upon admitted that no one knows how to measure aesthetic value and that some people doubt that it can be measured.

Concluding that the phrase ...