Datamize, LLC v. Plumtree Software, Inc.
417 F.3d 1342 (2005)
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Rule of Law:
A patent claim is invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2 if it relies on a purely subjective term, such as "aesthetically pleasing," without providing an objective standard in the patent's specification or prosecution history for measuring the scope of that term.
Facts:
- Datamize, L.L.C. owned United States Patent No. 6,014,137 for a software system that allows a user to author custom user interfaces for electronic kiosks.
- The invention's purpose was to allow for customized kiosk screens while adhering to constraints for "good standards of aesthetics and user friendliness."
- The system provided a limited range of pre-defined design choices for elements like button styles, window borders, and color combinations.
- Claim 1, the patent's only independent claim, described a method requiring that the on-screen characteristics of interface elements conform to a "desired uniform and aesthetically pleasing look and feel."
- The claim further required that the "aggregate layout" of the elements on the interface screen be "aesthetically pleasing."
- The patent specification suggested that aesthetic choices should take into account the "considered opinions of aesthetic design specialists" and academic studies, but did not define any specific standards or guidelines.
- During the prosecution of a related patent application, the inventor removed the phrase "aesthetically pleasing" after an examiner's rejection for indefiniteness, stating the language was "superfluous and unnecessary."
Procedural Posture:
- Datamize, L.L.C. sued Plumtree Software, Inc. in the United States District Court for the Northern District of California, alleging infringement of U.S. Patent No. 6,014,137.
- Plumtree filed a motion for summary judgment, arguing the patent was invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2 because of the term 'aesthetically pleasing'.
- The district court granted Plumtree's motion, holding that all claims of the patent were invalid as 'hopelessly indefinite'.
- Datamize, as the appellant, appealed the district court's grant of summary judgment to the United States Court of Appeals for the Federal Circuit.
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Issue:
Does a patent claim that requires a resulting product to have an "aesthetically pleasing" look and feel fail the definiteness requirement of 35 U.S.C. § 112, ¶ 2, when the patent provides no objective standard for determining what is aesthetically pleasing?
Opinions:
Majority - Prost, Circuit Judge.
Yes, a patent claim requiring a result to be 'aesthetically pleasing' is indefinite under 35 U.S.C. § 112, ¶ 2 if the patent fails to provide an objective standard for measuring that quality. The purpose of the definiteness requirement is to ensure the public is notified of the scope of the patentee's rights. The term 'aesthetically pleasing' is purely subjective and dependent on individual opinion. The court found that neither the patent's specification, its prosecution history, nor extrinsic evidence provided any objective guidance, standard, or workable definition for the term. The specification's reference to the 'considered opinions of aesthetic design specialists' is insufficient, as it points to undefined views of unnamed people. The court rejected the patentee's argument that the term merely requires the subjective intent of the inventor, stating that the scope of a claim cannot depend solely on the 'unrestrained, subjective opinion of a particular individual.' Because the term lacks an 'objective anchor' to allow one skilled in the art to determine the boundaries of the claim, it is 'hopelessly indefinite' and renders the patent invalid.
Analysis:
This decision solidifies the principle that patent claims must be defined by objective, measurable boundaries, not by subjective qualities or matters of taste. It serves as a strong warning to patent drafters to avoid purely subjective language unless the patent's specification provides concrete, objective standards to define the scope of such terms. By requiring an 'objective anchor' for claim language, the court reinforces the public notice function of patents, ensuring that competitors can determine with reasonable certainty whether they are infringing. This case makes it significantly more difficult to patent inventions defined by aesthetic qualities without also providing a clear, technical framework for evaluating those qualities.
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