In a case pending in the United States District Court for the Eastern District of Texas, the district court entered an order that leave of court must be obtained before a summary judgment motion may be filed. Defendant filed a letter brief with the district court seeking leave to file a motion for summary judgment of invalidity based on indefiniteness.
The letter brief asserted that the claims in the patent-in-suit were indefinite based on the Federal Circuit's decision in Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005). In Datamize, the Federal Circuit affirmed a summary judgment in favor of a competitor on the basis that the claims that disclosed a software program which allowed people to author user interfaces for electronic kiosks were indefinite. The Federal Circuit focused on the patent's use of the term "aesthetically pleasing" and whether that term met the standard for definiteness. The Federal Circuit found that definition of "aesthetically pleasing" could not depend on an undefined standard and that the definition could not be based on subjective opinion.
The Federal Circuit stated that "the scope of claim language cannot depend solely on the unrestrained subject opinion of a particular individual purportedly practicing the invention." Id. at 1350. "Reference to undefined standards, regardless of whose view 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 short, the definition of 'aesthetically pleasing' cannot depend on the undefined views of unnamed person, even if they are experts, specialists or academics. Thus, the written description does not provide any reasonable, definite construction of 'aesthetically pleasing.'" Id. at 1352-53.
Relying on the first sentence from the paragraph above from the Federal Circuit's decision in Datamize, the district court declined to allow the filing of the summary judgment motion. "The claim language here at issue is the 'look and feel' of a website. On balance, Datamize is distinguishable. Defendant's request . . . for leave to file a motion for summary judgment of invalidity based on indefiniteness is hereby denied."
DDR Holdings, LLC v. Hotels.com, LP, Case No. 2:06-CV-42-DF (E.D. Tex. Nov. 17, 2011)
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