                       NOTE: This disposition is nonprecedential.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 Crystal Decisions, Inc.),

                                                      Defendant-Appellee.

      William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston,
Massachusetts, argued for plaintiff-appellant. 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 Crew 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 & Taylor LLP, of Wilmington,
Delaware.

Appealed from: United States District Court for the District of Delaware

Judge Kent A. Jordan
                         NOTE: This disposition is nonprecedential.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 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”) appeals a decision by the United States

District   Court   for   the   District   of    Delaware   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 (“Business Objects”), and summary judgment of

invalidity of claims 1, 2, 4-6, 9, 10, and 13 of U.S. Patent No. 6,658,432 (“the ’432

patent”) and claims 1, 4, 7, 8, 11, and 18 of U.S. Patent No. 6,567,796 (“the ’796
patent”). 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 sued Crystal Decisions, Inc., which was

acquired by Business Objects one day later, for infringement of the ’033, ’432, and ’796

patents.     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. ’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, telephones, and electronic mail. ’796 patent,

col. 5, ll. 54-63. “One type of decision support system is known 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 operation 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 district 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 district court granted summary judgment that claims 1, 2, 4, and




2006-1320                                    2
5 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 summary judgment of noninfringement of

claim 7 of the ’033 patent, and the 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 court’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 Claims 7 and 8 of the ’033 Patent

      On appeal, MicroStrategy argues that the district court misconstrued claim 7 of

the ’033 patent, and that, therefore, the district court’s infringement analysis of claim 7

was incorrect.

      Claim 7 recites:

            A network-based system for enabling users connected via a
      network user interface over the 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                                   3
             report receiving means for receiving a request from an instance of
      the network user interface for the OLAP system to process a report;
             storage means for storing a report entry for reports that have been
      requested, including reports requested by other users and reports that are
      being processed;
             report control means for adding a request by that user to the report
      entry of a particular report 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 processed 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 control means” to operate

in response to asynchronously submitted requests.         MicroStrategy argues that the

preamble of claim 7 only requires that the system enable users to asynchronously

submit requests, and that this does not foreclose 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. Instead, MicroStrategy contends that the requests

referred to in the body could be synchronously 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 requests for reports to processed by an OLAP



2006-1320                                   4
system.” 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 provide a system and method enabling users to asynchronously

request reports in a multi-user networked OLAP system that compares each request

with all requests already processed or being processed by the system to avoid

duplicative processing of requests.” ’033 patent, col. 4, ll. 16-21 (emphasis added).

Similarly, figures 1 and 2 of the ’033 patent llustrate the comparison of the newly

submitted request to previously submitted requests as part of the asynchronous

operation of the OLAP. Lastly, during reexamination of the ’033 patent, MicroStrategy

stated that “[e]ach independent claim [including claim 7] recites a feature that specifies

asynchronous operation,” not merely asynchronous capability.

       In light of these statements and disclosures, which inextricably link the

comparison of new requests against previously submitted requests with the

asynchronous submission of requests to the OLAP, the district court did not err when it

construed the requests handled by the report control means to be the asynchronously

submitted requests mentioned in the preamble of the claim. The 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 the district court’s grant of summary judgment that

claims 6, 9, 10, and 13 of the ’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                                   5
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.

       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 have held the claim sufficiently clear
       to avoid invalidity on indefiniteness grounds.” . . . “[C]lose questions of




2006-1320                                      6
       indefiniteness 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 retrieved information” to be the object of

“using,” is the same as one of the corrections considered and correctly rejected by the

district court. MicroStrategy’s argument does no more than identify a second way to

cope with an otherwise indefinite 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 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



2006-1320                                    7
the 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 the district court’s grant of summary judgment that

claims 1, 2, 4, and 5 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. According to MicroStrategy, the prior art

“references” relied upon by the district court were not single prior art references and,

therefore, cannot be anticipatory under 35 U.S.C. § 102. MicroStrategy, however, did

not raise this issue before the district court. Instead, trial counsel for MicroStrategy

merely included the perfunctory statement 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 elements 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.” Accordingly, 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                                    8
We, however, reject each of these contentions. Simply put, MicroStrategy failed to raise

any issues of material fact regarding claims 4 and 5 of the ’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 granted 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
