The asserted patents were 6,279,033; 6,658,432; and 6,567,796.

These patents relate to business intelligence software that retrieves, organizes, and analyzes data stored in large databases to assist users making business decisions. As such, this software is sometimes referred to as a “decision support system.” In particular embodiments, decision 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 browser.

The interesting portion of this nonprecedential ruling was a finding of claim indefiniteness under 35 U.S.C. § 112, ¶ 2.

According to the district court, the claims were indefinite since the word “using” in the phrase “the client system using and transmitting the retrieved information to the at least one web server” 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 was 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 indefinite, 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 consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.”

MicroStrategy does not dispute that the inclusion of the phrase “using and” in the claims was erroneous, nor does MicroStrategy dispute that there is more than one plausible way to correct this error. MicroStrategy does, however, dispute that this renders the claims indefinite. According to MicroStrategy, even with the error uncorrected, the claims are not “insolubly ambiguous” and are, therefore, subject to construction and not indefinite.

[E]ven if we were to adopt MicroStrategy’s proposed construction and construe “the retrieved information” as the object of “using,” the claims would still be indefinite. Although MicroStrategy asserts that “using” and “transmitting” mean the same thing, our case law instructs that different claim terms are presumed to have different meanings. CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In 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 evidence 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 history 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 the object of “using,” claims 6, 9, 10, and 13 of the ’432 patent would still be indefinite.

The ruling borders the inscrutable. A "client system using and transmitting the retrieved information" is grammatically correct. The meaning is clear, even if "using and" was erroneous. To argue that "using" and "transmitting" mean the same thing was an argument ignorant of case law; and an offense to common sense. The nut of the problem was lack of disclosure as to what "using" might mean, though a computer using data is as natural as a fish swimming. While MicroStrategy might not be able to argue its way out of a paper bag, to invalidate a patent over such a triviality is grotesque.

That said, this commenter isn't convinced that "an unforgiving trend of finding against a patent owner’s sloppy use of the English language" is a bad thing, leaving this case aside as a severe example. More than few of my claims have left me wondering what the hell I was thinking when I drafted the claims; but I'll give myself no excuse. Patent claims ought to be precise. Why tolerate slop in something of such potential import?

Discussion issue - What may be facilely taken as redundancy may have a place in patent claims, if it serves to clarify what otherwise may be an opening for misconstruction. For example, "descriptors comprising at least in part a categorization and including attributes independent of categorization, wherein an attribute may apply to multiple categories," redundantly describes the relationship between categories and attributes, but "independent of categorization" is by itself a bit interpretively open-ended, which "wherein an attribute may apply to multiple categories" solidifies. One could contend that the "independent" phrase is unnecessary, but, read without it, the point of category-attribute independence is not as well made. [Incidentally, this claim construction example comes from 6,606,102.]

Yes, I know that "misdecision" is not a real word; sloppy English!