## United States Court of Appeals for the Federal Circuit

04-1564

DATAMIZE, LLC, Plaintiff-Appellant,

v.

PLUMTREE SOFTWARE, INC., Defendant-Appellee.

Theodore Stevenson, III , McKool Smith, P.C., of Dallas, Texas, argued for plaintiff-appellant. With him on t he 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

. Appealed from: United States District Cour t for the Northern District of California Chief Judge Vaughn R. Walker

## United States Court of Appeals for the Federal Circuit

04-1564 DATAMIZE, LLC, Plaintiff-Appellant,

v. PLUMTREE SOFTWARE, INC., Defendant-Appellee.

__________________________ DECIDED: August 5, 2005

__________________________ Before CLEVENGER, BRYSON, and PROST, Circuit Judges

. PROST, Circuit Judge

. Datamize, L.L.C. (“Datamize”) appeals fr om a decision of the United States District Court for the Northern District of Ca lifornia holding each claim of United States Patent No. 6,014,137 (“the ’137 pat ent”) invalid as indefinite under35 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 Ki osk Authoring System,” discloses a software program that allows a person to author user interfaces for electronic kiosks. “The authoring system enables the user inte rface for each individual kiosk to be customized quickly and easily within wide limits of variation, yet subject to constraintsadhering the resulting interface to good standards of aesthetics and us er 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. “[M]ajor aesthet ic 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 system s and user preferences and problems.” Id. at col. 3, ll. 57-64. Claim 1, the ’137 patent’s onl y independent claim, recites: 1. In an electronic kiosk system having a plurality of interactive electronic kiosks for displaying information provi ded by a plurality of information providers, a method for defining cust om interface screens customized for individual kiosks of said plura lity and operable to make different assortments of said information availabl e for display at different kiosks of said plurality, said method comprising the steps of: providing a master database of info rmation from said plurality of information providers, said masterdatabase referencing substantially all information content from said pr oviders to be displayed on any of said plurality of kiosks; providing a plurality of pre-defined interface scr een element types, each element type defining a form of elem ent available for presentation on said custom interface screens, wher ein each said element type permits limited variation in its on-screen char acteristics 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

04-1564 2wherein said plurality of pre-defi ned element types includes at least one pre-defined window type, at least one pre-defined butt on 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 plura lity 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 a ssociated 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 mast er 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 cont ent 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 i ssue in this appeal is the definiteness of “aesthetically pleas ing” as it is used in the c ontext of claim 1 of the ’137 patent. The “aesthetically pleasing” claim language was not discussed by the inventor or the patent examiner during pros ecution of the applic ation that led to the ’137 patent. The language was discussed, however, during pr osecution of a cont inuation application to the ’137 patent, which event ually issued as United States Patent No. 6,460,040 (“the ’040 patent”). The patent exam iner 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, t he inventor argued that the phrase is definite, but ultimately

04-1564 3deleted it, stating in part that it is “not intended to i dentify 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. (“P lumtree”) for infringing the ’137 patent, and Plumtree responded by moving for summary judgment on the gr ound that the ’137 patent is invalid for indefinit eness 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 “aesth etically pleasing” by referring to dictionary definitions of the words “aesthetic” and “pleasing.” The court determined that the ordinary and customary meaning of t he phrase is “having beauty that gives pleasure or enjoyment” or, in ot her 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 te rm that clarifies or differs from its ordinary dicti onary meaning.” After reciting parts of the specification, the court concluded that the specific ation does not limit the s ubjectivity of the phrase “aesthetically pleasing.” The district court then reviewed the pr osecution history of the ’137 and ’040 patents. The court concluded t hat the prosecution history of the ’040 patent “does not provide a more objective means of ascertaini ng the meaning of ‘aesthetically pleasing.’ In fact, the prosecution history suggests t hat 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 addr essing indefiniteness. It conc luded that three district

04-1564 4court cases deal with terms that ar e similar to “aesthetically pl easing” 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, 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 sa vings”). On the ot her hand, the court rejected a comparison with two of our cases, si nce 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 ent ire 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 pr otected investment credits”). The district court next rejected proposed cons tructions of “aesthetically pleasing” offered by Datamize, stating that “[t]he term ‘aesthetically pleasing’ must mean something different from predefined constr aints or limitations” since “predefined constraints” are separate limit ations in claim 1. Furthe rmore, the court stated that “aesthetically pleasing” must be given m eaning 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 view point 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 i ndividuals who will use the authoring tool.”

04-1564 5Finally, the district court rejected exper t testimony offered by Datamize for various reasons: expert testimony is disf avored and cannot vary orcontradict claim language; the expert admitted that no objective measure of aesthetics is disclosed in the specification or any of various refer ences; the expert relied upon an article published after the application for the ’137 patent wa s filed; and the arti cle relied upon admitted that no one knows how to meas ure aesthetic value and that some people doubt that it can be measured. Concluding that the phrase “ aesthetically pleasing” in claim 1 is “hopelessly indefinite,” the district court granted Plumtree’s moti on for summary judgment of invalidity. Since claim 1 is the ’137 patent’s sole independent claim, the court’s grant of summary judgment of indefiniteness as to claim 1 invalidated each claim in the ’137 patent. Datamize appeals the grant of summary judgm ent of invalidity for indefiniteness. We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION A. Standard of Review We review a district court’ s grant of summary judgment de novo . High Concrete Structures, Inc. v. New Enter. Stone & Lime Co. , 377 F.3d 1379, 1382 (Fed. Cir. 2004). “A determination of claim indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the constr uer of patent claims.” Personalized Media Communications., L.L.C. v. Int’l Trade Comm’n , 161 F.3d 696, 705 (Fed. Cir. 1998). Thus, as with claim construction, we exercise de novo review over the conclusion that a claim is indefinite under 35 U.S.C. § 112, ¶ 2. Id.

04-1564 6B. The Law of Indefiniteness Every patent’s specification must “concl ude with one or more claims particularly pointing out and distinctly clai ming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2 (2000). Because the claims perform the fundamental function of delineating the scope of the invention, Chimie v. PPG Indus., Inc. , 402 F.3d 1371, 1379 (Fed. Cir. 2005), the purpose of the definiteness requirement is to ensure that the claims delineate the scope of t he invention using language that adequately notifies the public of the patent ee’s right to exclude, Honeywell Int’l, Inc. v. Int’l Trade Comm’n , 341 F.3d 1332, 1338 (Fed. Cir. 2003). According to the Supreme Court, “[t]he stat utory requirement of particularity and distinctness in claims is met only when [the cl aims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.” United Carbon Co. v. Binney & Smith Co. , 317 U.S. 228, 236 (1942). The definiteness requirement, however, does not compel absolute clarity. Only claims “not amenable to construction” or “insol ubly ambiguous” are indefinite. See Novo Indus., L.P. v. Micro Molds Corp. , 350 F.3d 1348, 1353 (Fed. Cir. 2003); Honeywell Int’l , 341 F.3d at 1338; Exxon Research & Eng’g Co. v. United States , 265 F.3d 1371, 1375 (Fed. Cir. 2001). Thus, the definiteness of clai m terms depends on whether those terms can be given any reasonable meaning. Furthermore, a difficult issue of claim construction does not ipso facto result in a holding of indefiniteness. Exxon Research & Eng’g , 265 F.3d at 1375. “If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one overwhich reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.”

04-1564 7Id. In this regard it is important to note t hat an issued patent is ent itled to a statutory presumption of validity. See 35 U.S.C. § 282 (2000). “By finding claims indefinite only if reasonable efforts at claim construction prove fu tile, we accord respect to the statutory presumption of validity and we protect the inventive cont ribution of patentees, even when the drafting of their patents has been le ss than ideal.” Exxon Research & Eng’g , 265 F.3d at 1375 (citation omitted). In this way we also follow the requirement that clear and convincing evidence be shown to invalidate a patent. See Budde v. HarleyDavidson, Inc. , 250 F.3d 1369, 1376 (Fed. Cir. 2001). In the face of an allegation of indef initeness, general principles of claim construction apply. See Oakley, Inc. v. Sunglass Hut Int’l , 316 F.3d 1331, 1340-41 (Fed. Cir. 2003) (noting that a determination of definitene ss “requires a construction of the claims according to the familiar canons of claim construction”). Intrinsic evidence in the form of the patent specif ication and file history should guide a court toward an acceptable claim constructi on. Phillips v. AWH Corp. , No. 03-1269, -1286, slip op. at 10 (Fed. Cir. July 12, 2005) (en banc). And wh ile “we have emphasized the importance of intrinsic evidence in claim construction, we hav e also authorized district courts to rely on extrinsic evidence,” such as expert testimony. Id. at 18. In construing claims, “what matters is for the court to attach the appropr iate weight to be assigned to those sources in light of the statutes and polic ies that inform patent law.” Id. at 31. C. Analysis With these principles in mind, we proc eed to the question at hand: whether the ’137 patent’s use of “aes thetically pleasing” meets the st andards articulated in our case law concerning definiteness. We begin our analysis by noting ouragreement with the

04-1564 8district court’s understanding t hat the ordinary meaning of “aesthetically pleasing” includes “having beauty that give s pleasure or enjoyment” or, in other words, “beautiful.” We also recognize that the district c ourt’s opinion presents a reasoned and detailed analysis of both the intrinsic evidence, includi ng the specification of the ’137 patent and the prosecution history of the ’040 patent, and the extrinsi c evidence in the form of Datamize’s expert testimony. Datamize, however, argues that the district court erred by considering the phrase “aesthet ically pleasing” divorced from the context of claim 1. Datamize is right to point out that the phrase “aesthetically pleasing” should be considered in the context of cl aim 1. Claim construction invo lves reviewing the intrinsic evidence of record, including the claim language itself. See Chimie , 402 F.3d at 1377; Abbott Labs. v. Syntron Bioresearch, Inc. , 334 F.3d 1343, 1351 (Fed. Cir. 2003) (explaining that usage of disputed claim terms in the context of the claims as a whole informs the proper construction of the terms). “Aesthetically pleasing” is used three times in claim 1. The first use of “aesthetically pleasing” relates to the l ook and feel of custom interface screens on kiosks:providing a plurality of pre-defined interface scr een element types, each element type defining a form of elem ent available for presentation on said custom interface screens, wher ein each said element type permits limited variation in its on-screen char acteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system, ’137 patent, col. 20, ll. 50-57 (emphasis added) . The second use relies on the first use for antecedent basis and similarly relates to the look and feel of interface screens: 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 pr oviding element characteristics in

04-1564 9conformance with said uniform and aesthetically pleasing look and feel for said interface screens, Id. at col. 20, ll. 58-63 (emphas is added). The third use prov ides a slightly different context, relating to the aggregate layout of elements on the interface screen: assigning values to the attributes a ssociated 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; Id. at col. 21, ll. 6-12 (emphasis added). Thus, in the context of clai m 1, “aesthetically pleasing” relates to the look and feel of custom interface screens on kiosks, and the aggregate layout of elements on an interf ace screen is apparently one example or aspect of the interface screens that may be “aesthetically pleasing.” This context, while helpful in terms of identifying the components of the claimed invention that must be “aesthetically pleasing,” does not suggest or provide any meaningful definition for the phr ase “aesthetically pleasing” itself. Merely understanding that “aesthetically pleasing” relates to the look and feel of interf ace screens, or more specifically to the aggregate layout of elements on interface screens, fails to provide one of ordinary skill in the ar t with any way to determine w hether an interface screen is “aesthetically pleasing.” Datamize, however, contends that when cons trued in the context of claim 1, the phrase “aesthetically pleasing” applies to t he process of defining a “desired” result and not the actual result itself. Datami ze believes a reasonable construction of “aesthetically pleasing” in the context of the claims invo lves the intent, purpose, wish, or goal of a person practicing the invention: that person simp ly must intend to create an “aesthetically pleasing” interface screen; whether that person actually succeeds is

04-1564 10irrelevant. In other words, Datamize sugges ts we adopt a constructi on of “aesthetically pleasing” that only depends on t he subjective opinion of a per son selecting features to be included on an interface screen. Indeed, Datamize argues that the district court erred by requiring an objective definition for the phrase “aesthetica lly pleasing.” Citing our decision in Orthokinetics, Inc. v. Safety Travel Chairs, Inc. , 806 F.2d 1565, 1575-76 (Fed. Cir. 1986), Datamize maintains that a claim term need not be subject to a single, objective definition to be definite but ra ther may include a subjective element. According to Datamize, subjective terms ar e permissible so long as one of ordinary skill in the art would understand their scope. In th is regard, Datamize, citing Seattle Box Co. v. Industrial Crate & Packing, Inc. , 731 F.2d 818, 826 (Fed. Cir . 1984), implies that “aesthetically pleasing” incl udes “words of degree” that ar e not fatally imprecise. Datamize also contends that the existence of aesthetic constraints in a computer program, as opposed to purely functional constr aints, would be circumstantial evidence of a person’s subjective “desire” to achieve an “aesthetically pleasin g” look and feel for an interface screen. Related to these arguments, Datamize believes that the person practicing the invention is t he “system creator,” defined by Datamize as the person who creates the authoring software. According to Datamize, the appropriate inquiry would focus on whether a system creator makes aest hetic choices to limit or constrain the possible on-screen characteristics of screen el ements since these choices would reflect a subjective intent to create an “aesthetically pleasing” look and feel for an interface

screen. Datamize’s proposed construction of “aest hetically pleasing” in the context of claim 1 is not reasonable for several reasons . First and foremost, the plain meaning of

04-1564 11the claim language requires that the look and feel of interface screens actually be “aesthetically pleasing.” The first use of “aes thetically pleasing” in claim 1 clearly sets forth two requirements for the l ook and feel of interface screens: the look and feel must be (1) uniform and (2) “aesthetically pleasi ng.” That the uniform and “aesthetically pleasing” look and feel must also be “desired” does not alter that fact. Furthermore, in Orthokinetics we did not conclude, as Datamize suggests, that the absence of an objective definition for a claim term does not render the phrase indefinite. In that case we concluded that the phrase “so dimens ioned” in the following limitation is not indefinite: “wherein said front l eg portion is so dimensioned as to be insertable through the space between the doorframe of an autom obile and one of the seats thereof.” Orthokinetics , 806 F.2d at 1575. We noted that based on expert testimony it was undisputed that one of ordinary skill in the art would easily have been able to determine the appropriate dimensions that the claim language required. Id. at 1576. One desiring to build and use the invent ion, a travel chair, “must measure the space between the selected automobile’s doorframe and it s seat and then dimension the front legs of the travel c hair so they will fit in that particular space in that particular automobile.” Id. The fact that the claims were intended to cover the use of the invention with various types of automobiles made no difference; we concluded that the phrase “so dimensioned” is as accurate as the subject matter permits since automobiles are of various sizes. Id. Thus, in Orthokinetics we recognized that an objective definition encompassed by the claim te rm “so dimensioned” could be applied to innumerable specific automobiles.

04-1564 12In stark contrast to Orthokinetics , here Datamize has offered no objective definition identifying a standard for det ermining when an interface screen is “aesthetically pleasing.” In the absence of a workable objective stan dard, “aesthetically pleasing” does not just include a subjecti ve element, it is completely dependent on a person’s subjective opinion. To the extent Datamize argues t hat such a construction of “aesthetically pleasing” does not render the phrase indefinit e, we disagree. The scope of claim language cannot depend solely on the unr estrained, subjective opinion of a particular individual purportedly pr acticing the invention. See Application of Musgrave , 431 F.2d 882, 893 (C.C.P.A. 1970) (noting that “[a] step requiring the exercise of subjective judgment without restriction mi ght be objectionable as rendering a claim indefinite”). Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention. Even if the relev ant perspective is that of the system creator, the identit y of who makes aesthetic choices fails to provide any direction regarding the rele vant question of how to det ermine whether that person succeeded in creating an “aesthetic ally pleasing” look and feel for interface screens. A purely subjective construction of “aesthetically pleasing” w ould not notify the public of the patentee’s right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one person’s opinion of t he aesthetics of interface screens. While beauty is in the eye of t he beholder, a claim term, to be definite, requires an objective anchor. Thus, even if we adopted a completely subjective construction of “aesthetically pleasing,” th is would still render the ’137 patent invalid. Furthermore, “aesthetically pleasing” does not exactly compare to words of degree such as “substantially equal to,” see Seattle Box Co. , 731 F.2d at 826, “about,”

04-1564 13see BJ Servs. Co. v. Halliburton Energy Servs., Inc. , 338 F.3d 1368, 1372-73 (Fed. Cir. 2003), or “substantial absence,” see Exxon Research & Eng’g , 265 F.3d at 1380-81. The language, however, invokes a similar analysi s. “When a word of degree is used the district court must determine whether the patent’s specific ation provides some standard for measuring that degr ee.” Seattle Box Co. , 731 F.2d at 826. Similarly, when faced with a purely subjective phras e like “aesthetically pleasing,” a court must determine whether the patent’s specific ation supplies some standard for measuring the scope of the phrase. Thus, we next consul t the written description. See id. ; see also Chimie , 402 F.3d at 1377 (“‘When the claim language itself lacks sufficient clarity to ascertain the scope of the claims,’ we look to t he written description for guidance.” (quoting Deering Precision Instruments, L.L.C. v. Vector Distribution Sys., Inc. , 347 F.3d 1314, 1324 (Fed. Cir. 2003))). The inventor describes various advantages of his invention in the “Summary of the Invention” section of the ’137 patent. Most relevant to the construction of “aesthetically pleasing, ” the inventor states: The authoring system enables the user interface for each individual kiosk to be customized quickly and easily withi n wide limits of variation, yet subject to constraints adhering the resting [sic, resulting, see ’137 patent, Abstract] interface to good st andards of aesthetics and user friendliness.

. . . It is a further advantage of the pres ent authoring system that an individual using the authoring software to devise a kiosk interface screen (that individual is referred to herein as a “system author”) is only given a limited range of choices for stylistic and functional elements appearing in the screen displays. In this way major aesthetic or functional design choices such as button syles [sic] and sizes, window borders, color combinations, and type fonts as well as hierarchical methods of retrieving information may be built into the system taking into account the considered opinions of aesthetic des ign specialists, database specialists, and academic studies on public access kiosk systems and user preferences and problems.

04-1564 14’137 patent, col. 3, ll. 28-32; 52-64. Furthermore, in the “Detailed Description of Illustrative Embodiments” sect ion of the ’137 patent, the in ventor, discussing a particular embodiment of the invention, states: A closer look at the stru cture of the screen layout of FIG. 2A is in order. The buttons 21 have a fixed predefined size, which is chosen not only to make them aesthetically pleasing in appearance, but also easy to use on a touch screen by persons generally unpracticed with touch screen operation. The button plac ement in FIG. 2A is generally fix ed along two adjacent edges. This is an aesthetic choice, but it is a choice that is forced by the authoring software to assure that once an aesthetically and functionally acceptable button size and layout has been chosen, it will be maintained throughout all further scr een layouts for all kiosks without having to expend time and effort re-creating an acceptable button layout anew for each kiosk. Other aesthetic button layouts may also be used, but once a general button layout is devised, the software makes it available for use in all kiosk interface screens. Considering that many many [sic] screen layouts will generally have to be se t up and then regularly revised, limiting the system author ’s freedom to devise new button patterns and button styles greatly enhances the ease with which new kiosks may be brought in operation and ensures that the button pattern will be aesthetically and operationally accept able. . . . The authoring system of the present invention then allows eac h kiosk to be customized quickly and easily while maintaining a high degree of variability in the screen layouts without sacrificing aesthetic appearance. ’137 patent, col. 5, ll. 35-56. In general, neither these st atements nor any others in the written description set forth an objective way to determine whetheran interface screen is “aesthetically pleasing.” The description of the advantages of the invention indica tes that there are “good standards of aesthet ics,” which of course implies t hat there are also standards of aesthetics that are “not good.” The inv entor does not attempt to explain what distinguishes the two, except to say that experts, specialists, and academics may have views that are influential in determining w hat aesthetic standards are good. Some statements indicate particular aspects of t he screen that might affect whether the screen

04-1564 15is “aesthetically pleasing”: button styles , sizes, and placements, window borders, color combinations, and type fonts. There is no indication, however, other than by referring to “the considered opinions of aesthetic des ign specialists, database specialists, and academic studies on public access kiosk syst ems and user preferenc es and problems,” how to determine what button styles, si zes, and placements, for example, are “aesthetically pleasing.” Moreover, what ever the considered opinions of unnamed people and studies say is altogether unclear. And while the description of an embodiment provides examples of aesthetic features of screen displays that can be cont rolled by the authoring system, it does not explain what selection of t hese features would be “aest hetically pleasing.” Major aesthetic choices apparently may include some aspect of button styles and sizes, window borders, color combinations, and type f onts. The written description, however, provides no guidance to a person making aesthet ic choices such that their choices will result in an “aesthetically pleasing” look and feel of an interface screen. For example, the specification does not explain what fact ors a person should cons ider when selecting a feature to include in the authoring system. Left unanswered are quest ions like: which color combinations would be “aesthetically pleasing” and which would not? And more generally, how does one determine whether a co lor combination is “aesthetically pleasing”? Again, one skilled in the art reading the specificat ion is left with the unhelpful direction to consult the subjective opinions of aesthetic design specialists, database specialists, and academic studies. Simply put, the definition of “aesthet ically pleasing” cannot depend on an undefined standard. See Amgen , 314 F.3d at 1342 (finding i ndefinite claim requiring

04-1564 16comparison to moving target since the patent fa iled to direct those of ordinary skill in the art to a standard by which t he appropriate comparison could be made). Reference to undefined standards, regardless of whose view s might influence the formation of those standards, fails to provide any direction to one skilled in the art attempting to determine the scope of the claimed invention. In shor t, the definition of “aes thetically pleasing” cannot depend on the undefined view s of unnamed persons, even if they are experts, specialists, or academics. Thus, the wr itten description does not provide any reasonable, definite construction of “aesthetically pleasing.” We must also analyze the prosecution hi story to determine w hether it provides any reasonable construction of “aes thetically pleasing.” Vitronics , 90 F.3d at 1582. Since the ’040 patent is a continuation of the ’137 patent, the ’040 patent’s prosecution history is relevant material that we should consider. See Microsoft Corp. v. Multi-Tech Sys., Inc. , 357 F.3d 1340, 1349 (Fed. Cir. 2004) (rec ognizing that “the prosecution history of one patent is rele vant to an understanding of the scope of a common term in a second patent stemming from t he same parent application”). The attorney prosecuting the ’040 patent responded to a rejection for indefiniteness of the phrase “aes thetically pleasing” by making the following statements: In context “aesthetically pleasing look and feel” is that which is “desired,” “chosen,” or “predetermined” for uni form appearance. It does not call for the subjective application of some external standard of aesthetics. The “aesthetically pleasing” language is not itself intended to imply judgment on the relative artistic merits of the “look and feel.” [O]ne practicing the invent ion can create an “aesthetically pleasing look and feel” that is “desired” by that per son and that is maintained as desired on screens of the system.

04-1564 17Whether the system creator’s sense of aesthetics complies with some other standard of beauty or good taste is irrelevant to the claims. [T]he “aesthetically pleasing” language is not intended to identify qualities separate and apart from the remainder of this claim element. Accordingly, the deleted language is superfluous and unnecessary to the claims. These statements merely confirm the under standing derived from th e context of the claims and the specification: that the phrase “aesthetically pleasing” fails to delineate the scope of the invention using language t hat adequately notifies the public of the patentee’s right to exclude. By arguing that “aesthetically pleasing” does not depend on any standard of aesthetics otherthan a purely subjective st andard held by any person who steps into the role of the system creator, the prosecut ing attorney would eliminate any objective meaning for the phr ase “aesthetically pleasing.” As discussed, this would be improper. We next consult the extrinsic evidence in the record. See Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd. , 292 F.3d 1363, 1374 (Fed. Cir. 2002); Pall Corp. v. Micron Separations, Inc. , 66 F.3d 1211, 1216 (Fed. Cir. 1995) (“In construing the claims we look to the language of the clai ms, the specification, and the prosecution history. Extrinsic evidence may also be c onsidered, if needed to assist in determining the meaning or scope of technical terms in t he claims.” (internal citation omitted)). Datamize points to its ex pert, Jeremy Ro senblatt, who testified in a declaration that persons of ordinary skill in the relev ant art would recognize that “[t]he terms ‘aesthetic’ and ‘aesthetically pleasing’ in t he patent serve to make it clear that the motivation of limiting selection is to allo w the system creator to enforce his/her will regarding the ‘look and feel’ and aes thetic aspects rather than solely functionality.” The expert also provided a list of what he denominated “generally accepted” parameters of

04-1564 18design that contribute to a display getting hi gh marks from users for being “aesthetically pleasing.” The list included symmetry, consist ency, predictability, si mplicity, cleanliness, and non-crowdedness. The expert concluded that in his opinion “one of ordinary skill in the art of software developm ent of kiosks and computer user interfaces would understand the claims and be able to determine w hether their own work was or was not covered by the claims in question.” The expert’s declaration attempts to identif y parameters that one skilled in the art might reference when attempting to det ermine whether an interface screen is “aesthetically pleasing.” But the identificat ion of parameters one migh t consider fails to explain how the parameters should be evaluat ed or weighed to reach the conclusion that an interface screen is “aesthetically pleasing.” And while indefiniteness does not depend on the difficulty experienced by a particular person in comparing the claims with the prior art or the claims with all egedly infringing products or acts, see SmithKline Beecham Corp. v. Apotex Corp. , 403 F.3d 1331, 1340-41 (Fed. Cir. 2005), even the expert could not determine whet her the look and feel of par ticular interface screens are “aesthetically pleasing” us ing the parameters he specifi ed, instead testifying that whether an interface screen is “aesthetically pleasing” is a “multidimensional question” that is “not amenable to a single-word answer. ” The inability of t he expert to use the parameters he himself identified to det ermine whether an interface screen is “aesthetically pleasing” m ilitates against the reasonablene ss of those parameters as delineating the metes and bounds of the invention. Datamize also argues that one of ordi nary skill in the ar t would understand the phrase “aesthetically pleasing” to distinguish aesthetic constr aints from purely functional

04-1564 19constraints. To support this argument, Datami ze first points to the Supreme Court’s use of the phrase “aesthetically pleasing”: “ [t]o qualify for [design patent] protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy t he other criteria of patentability.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc. , 489 U.S. 141, 148 (1989) (emphas is added). According to Datamize, “[i]f the term ‘aesthetically pleasing’ is sufficiently definite for courts to apply in determining whether something qualifies for design patent protection, then it is also sufficiently definite for a trier of fact to apply in determining infringement.” Datamize also points to Mr. Rosenblatt’ s declaration, which it believes shows that one of ordinary skill in the art would understand “ aesthetically pleasing” to di stinguish functionality from aesthetics. Datamize maintains that in fringement could be shown by looking to constraints imposed by the system creator: aest hetic constraints, such as limitations in terms of size and placement of on-screen elements, would be objective evidence of the infringer’s “desire” to achieve a “uniform and aesthetically pleasing look and feel.” We reject Datamize’s attempt to rely on an understanding of the phrase “aesthetically pleasing” derived from design patent law. Use of the phrase “aesthetically pleasing” in design patent law relates to t he threshold question of patentability. See Bonito Boats , 489 U.S. at 148. A design patent pr otects a particular ornamental, or “aesthetically pleasing” as oppos ed to functional, design. Id. (citing 35 U.S.C. § 171). In contrast, a utility patent pr otects “any new and useful process, machine, manufacture, or composition of matter, or any new and us eful improvement ther eof,” 35 U.S.C. § 101 (2000), the scope of which is defined by the patent’s written claims, see Johnson & Johnston Assocs. v. R.E. Serv. Co. , 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc)

04-1564 20(“[C]laims define the scope of patent protection.”); see also 35 U.S.C. § 112, ¶ 2. In light of this basic differenc e between design patent law and utilit y patent law, it is clear that the understanding of “aest hetically pleasing” used in design patent law bears no reasonable relationship to utility patent law generally. Furthermore, Datamize has not pointed to any discussion in t he ’137 patent indicating that “aesthetically pleasing” means “aesthetic rather t han functional” as opposed to its ordinary meaning of beautiful in the context of this patent in particular. Thus, while creative, Datamize’s argument fails. We also reject Datamize’s more general argument, based on its expert’s declaration, that one of or dinary skill in the art would understand the phrase “aesthetically pleasing” to distinguish aesthetic constr aints from purely functional constraints. Datamize’s ar gument, as well as its citation to its expert’s declaration, improperly ignores the plai n meaning of the claim language. Furthermore, its proposed construction would improperly eliminate t he word “pleasing” from the phrase “aesthetically pleasing.” See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp. , 93 F.3d 1572, 1582 (Fed. Cir. 1996); Allen Eng’g Corp. v. Bartell Indus., Inc. , 299 F.3d 1336, 1349 (Fed. Cir. 2002). We would subvert the definiteness requirement if we allowed a word to be eliminated from a phrase when the phrase c annot be given a reasonable meaning except in the absenc e of that word. Furthermore, because the phrase “aesthetically pleasing” does not simply distinguish aesthet ic constraints from purely functional constraints, Datamize’s argum ent, again based on its expert’s declaration, that infringement could be shown by dete rmining whether aesthet ic constraints are imposed by the system creator is irrelevant.

04-1564 21Finally, additional cases cited by Datamize at oral argument fail to persuade us that “aesthetically pleasing” can be given any reasonable mean ing. Datamize points us to Koito Manufacturing Co. v. Turn-Key-Tech, L.L.C. , 381 F.3d 1142 (Fed. Cir. 2004), and Combined Systems, Inc. v. Def ense Technology Corp. of America , 350 F.3d 1207 (Fed. Cir. 2003). According to Datamize, thes e cases confirm that intent may properly form part of a phrase’s claim construction. Datamize apparently references the se cond footnote of Koito Manufacturing , which states: The jury instruction stated that the “predetermined general direction” means the “prevalent direct ion of flow determined before injection of the liquid plastic into the mold.” (Em phasis added). The instruction thus connotes an element of forethought and planning, which we note is a logically essential part of the patent. The mold designer must be aware of the flow direction that will result upon an injection of plastic so that he can assure himself that the next flow di rection will be different. We have held that the construction of a patent term may require an actor to have knowledge of certain facts. See Combined Sys., Inc. v. Def. Tech. Corp. of Am. , 350 F.3d 1207, 1211-14 (Fed. Cir. 2003) (construing “forming folds” to require “the deliberate and system atic creation of folds”). In the present case, Turn-Key chose to limit its claims with a scienter requirement and thus was corre ctly required to demonstrate foreknowledge of flow directions to prove infringement. 381 F.3d at 1150 n.2. This footnote identifies the unrem arkable proposition that a patent applicant may use claim language that r equires a person to have foreknowledge of certain facts when practicing the invention. Consistent with this proposition, claim 1 is not indefinite for using the term “desired,” which requires foreknowledge and even intent on the part of the person practicing the inventi on. Neither would claim 1 be indefinite if an “aesthetica lly pleasing” look and feel for an interface screen was objectively verifiable. For example, t he “general direction” construed in Koito Manufacturing and the “folds” construed in Combined Systems can be objectively

04-1564 22verified and do not depend on a particular person’s unfettered, subjective opinion. The ’137 patent, however, fails to provide any obj ective way to determine whether the look and feel of an interface screen is “aesthetica lly pleasing.” As explained above, claim 1 is indefinite for this reason. ∗
CONCLUSION “Aesthetically pleasing,” as it is us ed in the only independent claim of the ’137 patent, fails to “particularly point[] out and dist inctly claim[] the subject matter which the patentee regards as hi s invention.” See 35 U.S.C. § 112, ¶ 2. We therefore affirm the district court’s grant of summary judgment of invalidity of all claims of the ’137 patent.
AFFIRMED

∗ In both its opening and reply briefs, Da tamize states that in SuperGuide Corp. v. DirecTV Enterprises, Inc. , 358 F.3d 870 (Fed. Cir. 2004), we affirmed the district court’s construction of “desired fo rmat” and that that construction supports its construction of “desired uniform and aesthetica lly pleasing look and feel” in the context of claim 1. We dis agree. In SuperGuide , the parties did not dispute the district court’s construction of “desired format” and so we di d not reinterpret the phrase, let alone affirm the district court’s claim construction. Id. at 883. We also did not address the definiteness of the district cour t’s claim construction. See id. Finally, unlike the present case, the phrase at issue in SuperGuide did not involve any modifiers between the word “desired” and the noun it modified, “format.”

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