In MicroStrategy, Inc. v. Business Objects, S.A., 429 F.3d 1344, 77 U.S.P.Q.2D 1001 (Fed. Cir 2005), the Federal Circuit affirmed the District Court’s granting of summary judgment of non-infringement in favor of Business Objects. The District Court had reached its result after interpreting the claims to require an association of output devices with “device-specific style” on a device-by-device basis. The parties dispute whether, as claimed, the system and method must associate various output devices with the “device-specific style” on a device-by-device basis.
Claim 8 is representative of the disputed language and reads:
8. A method for generating output from an on-line analytical processing system to user output devices comprising the steps of:
processing at least one scheduled service in an on-line analytical processing system according to a schedule established for the service and generating a service output, each service comprising at least one query to be performed by the on-line analytical processing system and at least one user device subscribed to that service;
enabling a plurality of subscribers to subscribe to the scheduled service and enabling the subscriber to specify at least one user output device at which to receive service outputs from the service;
wherein each user device subscribed to that service is associated with a device-specific style that designates the format in which that particular type of user device is to output to the service outputs to a user to maintain the integrity of the service outputs;
determining whether to forward the generated output to one or more user devices based on output conditions specified for each user device subscribed to the service;
creating a device-specific formatted output for each user device subscribed to the service selected to receive the output according to a selection of predefined values specified for each of a plurality of predefined parameters provided by the style specified for the user output device, and
automatically forwarding a device-specific formatted service output to each of the user output devices selected to receive the output for that service;
wherein the determining step comprises determining whether each user device subscribed to the service is an alert subscription or a periodic subscription and selecting the user device if it is a periodic subscription or if an alert condition specified in the alert subscription has been satisfied.
The District Court first construed the term “device-specific style” during a Markman proceeding. During that proceeding, MicroStrategy argued that the term meant “[o]ne or more parameters that designate the format in which a particular type of output device receives service outputs.” After a careful review of the claim language and relevant statements in the specification and file wrapper, the District Court largely adopted MicroStrategy’s proposed definition. Thus, the District Court construed “device-specific style” to mean “[t]he format in which a particular type of output device receives and displays service output, consisting of values of a plurality of parameters”. MicroStrategy, Inc. v. Business Objects, S.A., Civil Action No. 2:01cv826, slip op. at 27 (E.D.Va. Mar. 18, 2004) (Claim Construction Order).
The District Court construed the remaining claim language on summary judgment. Based on the claim language, the District Court “conclude[d] … that the system or method [must] function on a device-by-device basis.” The District Court’s interpretation focused on two aspects common to the three independent claims: “(1) each user device is associated with a device-specific style, and (2) output is created for each user device according to the style specified for the user output device.” Id. (emphasis in original). Thus, the District Court concluded that the claim language requires association of output devices with a device-specific style on an individual, device-by-device basis. Id. In other words, the invention requires a particular format and presentation for one device, e.g. mobile phone data, that could differ from the format for a second device, e.g., electronic mail data. The District Court summarized its conclusion as follows:
[T]he patent covers methods and systems that retain associations between individual devices and device styles … because only in that manner does the patent cover systems that handle multiple device types or customization of subscription features on a subscriber-by-subscriber or device-by-device basis… While it is not necessary that the devices always be different, the system or method described in the claims is structured to facilitate the transmission of the same output to multiple device types.
Microstrategy argues this Markman construction and the context of the invention do not require support from more than one type of output device. In particular, Microstrategy notes that this specification contemplates a system with “one or more” output devices. Thus, Microstrategy reads the claim in the District Court’s Markman construction to permit a system with support for just one type of user device.
The Federal Circuit determined, to the contrary, that all three independent claims require that each user output device subscribe to a service associated with a device–specific style. The term “associate” implies that the system creates a link between user output devices and corresponding “styles.” In other words, the system must identify and track in some manner the “style” in which a particular user output device receives and displays output. This claim language further requires a direct link between each user output device, individually and a corresponding “device-specific style”.
In addition, the Federal Circuit felt that the claims require a device-specific formatted output according to a style specified for each device. The Federal Circuit agreed with the District Court that the words “specified” and “each” reaffirm that these claims require individual, device-by-device association. Moreover, the ultimate creation of a “device-specific” format requires at least two different device-specific styles. Otherwise, the references in the claims to individualized, device-by-device association with styles with user output devices and corresponding creation of another device-specific formatted output would be meaningless.
The specification of the Microstrategy Patent ensures the system automatically forwards output from the services to one or more subscriber output devices specified for that service. The Federal Circuit indicated that while this paragraph does state this system may ultimately forward output to only “one” output device, it does not address at all a minimum capacity to support a number of output formats (e.g. only one). Instead, this paragraph is open to an interpretation requiring support from multiple types of subscriber output devices, even though, in practice, all the subscribers may receive the subscription via only one format (e.g. e-mail or in another suitable format). Therefore, this paragraph does not conflict with the claim construction applying support for multiple device types or an association of styles with devices on an individual, device-by-device basis. The Federal Circuit noted that the District Court read the specification correctly in its well-reasoned decision.
The product of Business Object, the Broadcast Agent Publisher (Publisher) Software is only designed to be run with email. In other words, the recipient output device is simply an email address. It was noted by the District Court, and agreed to by the Federal Circuit, the Publisher “does not make any association between the [output devices] and the format. The system does not know what the devices are or the styles that the device needs to properly receive and display output.” Rather, “[i]t only supports one style per publication.” Thus, Publisher does not provide an association between devices and device-specific styles on a device-by-device basis as required by the Court’s claim construction. For at least this reason, the Federal Circuit held that the District Court properly concluded that business objects does not literally infringe the ‘050 patent.
A copy of the case can be found at MicroStrategy, Inc. v. Business Objects, 429 F.3d 1344; 77 U.S.P.Q.2D 1001 (Fed. Cir 2005) reh’g denied 2006 U.S. App. LEXIS 2929 (Fed. Cir. 2006).
Significance of Case For Application Drafting
This case highlights a problem commonly faced by the applicant who is attempting to claim an invention which can interact with a single device or multiple devices. In such cases, applicants often use language which attempts to correspond each device individually without reciting explicitly a plurality of the devices by reciting terms such as “corresponding,” “associated” and “each”. However, as found in this case, such language can be used to more narrowly interpret the claim to require a unique correspondence unless the depending claims and specification force a broader interpretation.