NOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2006-1320

MICROSTRATEGY INCORPORATED, Plaintiff-Appellant,

v.

BUSINESS OBJECTS AMERICAS (Successor by merger to Cr ystal Decisions, Inc.), Defendant-Appellee. William F. Lee , Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, Massachusetts, argued for plaintiff-appe llant. With him on the brief were Joseph J. Mueller and Pratik A. Shah . Of counsel on the brief was William G. McElwain , of Washington, DC. Of counsel were Joseph P. Lavelle and Peter E. Moll , Howrey LLP, of Washington, DC. Daniel J. Furniss , Townsend and Townsend and Cr ew LLP, of Palo Alto, California, argued for defendant-appellee. With him on the brief were Joseph A. Greco , Gary H. Ritchey , and Thomas F. Fitzpatrick . Of counsel on the brief were Josy W. Ingersoll , and John W. Shaw , Young Conaway Stargatt & Ta ylor LLP, of Wilmington, Delaware. Appealed from: United States District Court for the District of Delaware Judge Kent A. JordanNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2006-1320

MICROSTRATEGY INCORPORATED, Plaintiff-Appellant,

v.

BUSINESS OBJECTS AMERICAS (Successor by merger to Crystal Decisions, Inc.), Defendant-Appellee.

__________________________ DECIDED: June 25, 2007

__________________________ Before MAYER, Circuit Judge , CLEVENGER, Senior Circuit Judge , and PROST, Circuit Judge

. PROST, Circuit Judge

. MicroStrategy Inc. (“MicroStrategy”) appeal s a decision by the United States District Court for the District of De laware granting summary judgment of noninfringement of claims 7, 8, and 21 of U. S. Patent No. 6,279,033 (“the ’033 patent”) by Business Objects Americas (“Busine ss Objects”), and summary judgment of invalidity of claims 1, 2, 4-6, 9, 10, and 13 of U.S. Pa tent No. 6,658,432 (“the ’432 patent”) and claims 1, 4, 7, 8, 11, and 18 of U.S. Pa tent No. 6,567,796 (“the ’796patent”). MicroStrategy Inc. v. Bus. Objects Ams. , 410 F. Supp. 2d 348, 351 (D. Del. 2006). Because the district court’s grants of summary judgment were correct, we affirm

. I. BACKGROUND On December 13, 2003, MicroStrategy s ued Crystal Decisions, Inc., which was acquired by Business Objects one day later, for infringement of t he ’033, ’432, and ’796 patents. These patents relate to busine ss intelligence software that retrieves, organizes, and analyzes data stored in large dat abases to assist users making business decisions. As such, this software is some times referred to as a “decision support system.” In particular embodiments, dec ision support systems may be implemented through network-based user interfaces that allow a user to submit a request for a particular report through a web br owser. ’033 patent, col. 3, ll. 30-31; ’432 patent, col. 1, ll. 61-64. The resulting report may then be directed to the web browser and/or other devices such as fax machines, pagers, te lephones, and electronic mail. ’796 patent, col. 5, ll. 54-63. “One type of decision support system is k nown as an on-line analytical processing system (‘OLAP’).” ’033 patent, col. 1, ll. 49-50; ’432 patent, col. 1, ll. 20-22; ’796 patent, col. 1, ll. 59-60. The three patents-in-suit are generally directed to systems and methods for improving the oper ation of such systems. After construing the disputed claim terms , the district court granted summary judgment that Business Objects did not infringe claims 7, 8, and 21 of the ’033 patent. MicroStrategy , 410 F. Supp. 2d at 361. The dist rict court also granted summary judgment that claims 6, 9, 10, and 13 of the ’432 patent were indefinite under 35 U.S.C. § 112, ¶ 2. Lastly, the distri ct court granted summary judgment that claims 1, 2, 4, and

2006-1320 25 of the ’432 patent and claims 1, 4, 7, 8, 11, and 18 of the ’796 patent were invalid under 35 U.S.C. § 102(b). Id. at 363-65. MicroStrategy appeals the grant of summa ry judgment of noninfringement of claim 7 of the ’033 patent, and t he grants of summary judgment of invalidity of claims 1, 2, 4-6, 9, 10, and 13 of the ’432 patent and claims 1, 4, 7, 8, 11, and 18 of the ’796 patent. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). II. DISCUSSION A. Standard of Review This court reviews a district cour t’s grant of summary judgment without deference, applying the same standard as the district court and drawing all reasonable inferences in favor of the nonmovant. Perricone v. Medicis Pharm. Corp. , 432 F.3d 1368, 1372 (Fed. Cir. 2005). Claim construction and indefiniteness are questions of law that we review de novo. Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc. , 336 F.3d 1308, 1318 (Fed. Cir. 2003). Anticipation, on the other hand, is a question of fact that we review for clear error. See Medichem, S.A. v. Rolabo, S.L. , 353 F.3d 928, 933 (Fed. Cir. 2003). B. Noninfringement of Claim s 7 and 8 of the ’033 Patent On appeal, MicroStrategy argues that the district court misconstrued claim 7 of the ’033 patent, and that, therefor e, the district court’s infr ingement analysis of claim 7 was incorrect. Claim 7 recites: A network-based system for enab ling users connected via a network user interface over t he network to an OLAP system to asynchronously submit requests for reports to be processed by an OLAP system, the network-based system comprising:

2006-1320 3report receiving means for receiv ing a request from an instance of the network user interface for the OLAP system to process a report; storage means for stori ng a report entry for reports that have been requested, including reports requested by other user s and reports that are being processed; report control means for adding a reques t by that user to the report entry of a particular repor t in the report list if the report requested by the user is substantially the same as that particular report contained in the report list so that a report is process ed once and a result from the report is provided to each user making a request for that report; and on-line analytical processing means for generating requested reports. In construing the claim, the district court held that the preamble, particularly the term “asynchronously,” was a limitation. MicroStrategy , 410 F.Supp.2d at 358. The district court then construed the asynchronously submitted requests referred to in the preamble to be the requests that the report control means checks against the list of previously submitted requests for substantial similarity. Id. On appeal, MicroStrategy does not disagree that the term “asynchronously” is a limitation of the claim; however, it contends that the district court erred in construing the “report c ontrol means” to operate in response to asynchronously submitted r equests. MicroStrategy argues that the preamble of claim 7 only requires that the system enable users to asynchronously submit requests, and that this does not forecl ose the system from also enabling users to synchronously submit requests. In other words, MicroStrategy contends that the requests referred to in the body of claim 7 need not be the asynchronously submitted requests referred to in the preamble. Inst ead, MicroStrategy cont ends that the requests referred to in the body could be synchr onously submitted and unrelated to the asynchronously submitted requests mentioned in the preamble. In support, MicroStrategy cites claims 17 and 21 of the ’033 patent, which recite “method[s] of asynchronously processing reques ts for reports to processed by an OLAP

2006-1320 4system.” According to MicroStrategy, the difference in claim language between claim 7 and claims 17 and 21 indicates the patentee did not intend to limit claim 7 to asynchronously submitted requests. This argument, however, is unpersuasive. The Summary of the Invention of the ’033 patent clearly states that one “object of the invention is to prov ide a system and method enabling users to asynchronously request reports in a multi-user net worked OLAP system that compares each request with all requests already processed or being processed by the system to avoid duplicative processing of requests.” ’033 pat ent, col. 4, ll. 16- 21 (emphasis added). Similarly, figures 1 and 2 of the ’033 patent llustrate t he comparison of the newly submitted request to previously submitted requests as part of the asynchronous operation of the OLAP. Lastl y, during reexamination of the ’033 patent, MicroStrategy stated that “[e]ach independent claim [including cl aim 7] recites a feature that specifies asynchronous operation,” not merely asynchronous capability. In light of these statements and discl osures, which inextricably link the comparison of new requests against prev iously submitted requests with the asynchronous submission of requests to the OLAP, the district cour t did not err when it construed the requests handled by the report c ontrol means to be the asynchronously submitted requests mentioned in t he preamble of the claim. T he district court’s grant of summary judgment of noninfringement was, therefore, not erroneous. C. Indefiniteness of Claims 6, 9, 10, and 13 of the ’432 Patent MicroStrategy also appeals t he district court’s grant of summary judgment that claims 6, 9, 10, and 13 of t he ’432 patent were indefinite and, therefore, invalid under 35 U.S.C. § 112, ¶ 2. According to the district court, the claims were indefinite since the

2006-1320 5word “using” in the phrase “the client system using and transmitting the retrieved information to the at least one web serve r” lacked an object, and there was more than one plausible way to correct the error (i.e ., by adding an object or deleting the phrase “using and”). MicroStrategy contends this wa s error, and that the district court should have instead construed “the retrieved information” to be the object of both “using” and “transmitting.” In determining that the claims were i ndefinite, the district court relied on Novo Industries, L.P. v. Micro Molds Corp. , 350 F.3d 1348, 1354 (Fed. Cir. 2003), in which we held that a court can only correct an error in a patent if “(1) the correction is not subject to reasonable debate based on the considerat ion of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” MicroStrategy does not disput e that the inclusion of t he phrase “using and” in the claims was erroneous, nor does MicroStrategy dispute that there is more than one plausible way to correct this error. Micr oStrategy does, however, dispute that this renders the claims indefinite. Accordi ng to MicroStrategy, even with the error uncorrected, the claims are not “insolubly ambiguous” and are, ther efore, subject to construction and not indefinite. In making this argument, MicroStrategy relies on Bancorp Services, L.L.C. v. Hartford Life Insurance Co. in which we stated: [I]f [a] claim is subject to construction, i.e., it is not insolubly ambiguous, it is not invalid for indefiniteness. That is, if the meaning of the claim is discernible, “even though . . . the conclusion may be one over which reasonable persons will disagree, we hav e held the claim sufficiently clear to avoid invalidity on indefiniteness gr ounds.” . . . “[C]lose questions of

2006-1320 6indefiniteness in litigation involving issued patents are properly resolved in favor of the patentee.” 359 F.3d 1367, 1371 (Fed. Cir. 2005) (citations omitted). However, the argument MicroStrategy advances, i.e., construing “the re trieved information” to be the object of “using,” is the same as one of the correcti ons considered and correctly rejected by the district court. MicroStrategy’s argument does no more than identify a second way to cope with an otherwise indef inite claim term. To credit MicroStrategy’s argument would eviscerate our holding in Novo Industries . We decline to do so. Simply put, MicroStrategy cannot make an end run around Novo Industries

. Moreover, even if we were to adopt Mi croStrategy’s proposed construction and construe “the retrieved information” as the obj ect of “using,” the claims would still be indefinite. Although MicroStrategy asserts that “using” and “transmitting” mean the same thing, our case law in structs that different claim terms are presumed to have different meanings. CAE Screenplates Inc. v. Hein rich Fiedler GmbH & Co. KG , 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“I n the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp. , 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings. . . .”). Here, there is no evidenc e that the terms have the same meaning. Therefore, “using the retrieved information” must be presumed to mean something other than “transmitting the retrieved information.” However, without some information in the patent or its prosecution hi story about the way in which the retrieved information is being used, or for what purpose it is being used, we are unable to discern what that meaning is. Accordingly, even if we were to construe “the retrieved information” to be

2006-1320 7the object of “using,” claims 6, 9, 10, and 13 of the ’432 patent would still be indefinite. As such, the district court’s grant of summary judgment of invalidity of these claims was not in error. D. Anticipation of Claims 1, 2, 4, and 5 of the ’432 Patent and Claims 1, 4, 7, 8, 11, and 18 of the ’796 Patent MicroStrategy also appeals t he district court’s grant of summary judgment that claims 1, 2, 4, and 5 of t he ’432 patent and claims 1, 4, 7, 8, 11, and 18 of the ’796 patent were invalid under 35 U. S.C. § 102. According to MicroStrategy, the prior art “references” relied upon by the district court were not single prior art references and, therefore, cannot be anticipat ory under 35 U.S.C. § 102. Mi croStrategy, however, did not raise this issue before t he district court. Instead, trial counsel for MicroStrategy merely included the perfunctory st atement that in order “[t]o prove that a patent claim is anticipated by the prior art, a single prior art reference must contain, either explicitly or inherently, all of the element s of the claim.” (citing EMI Group N. Am., Inc. v. Cypress Semiconductor Corp. , 268 F.3d 1342, 1350 (Fed. Cir. 2001)). The recitation of the applicable law, however, does not prevent the waiver of an argument unless that recitation is accompanied by an explanation of how the law applies to the facts of the particular case. Not only did MicroStrategy fail to provide such an explanation, but it also failed to challenge Business Objects’ statement that the manuals relied upon “constitute a single prior art disclosure.” A ccordingly, MicroStrategy ’s argument that the prior art manuals are not single references for the purposes of 35 U.S.C. § 102 was waived. Nonetheless, MicroStrategy contends that there are still genuine issues of fact regarding claims 4 and 5 of the ’432 patent and claims 4, 11, and 18 of the ’796 patent.

2006-1320 8We, however, reject each of these contentions. Simply put, MicroStrategy failed to raise any issues of material fact regarding claims 4 and 5 of t he ’432 patent and claims 4, 11, and 18 of the ’796 patent before the district court. As such, the district court’s grant of summary judgment of invalidity of those claims was not erroneous. III. CONCLUSION Because the district court correctly gr anted summary judgment that claims 7, 8, and 21 of the ’033 patent were not infringed by Business Objects and that claims 1, 2, 4-6, 9, 10, and 13 of the ’432 patent and claims 1, 4, 7, 8, 11, and 18 of the ’796 patent were invalid, we affirm.

2006-1320 9