In Microstrategy, a panel affirmed a summary judgment of invalidity under 35 USC § 112, ¶ 1, keyed to poor English usage. The Court’s conclusion rendered fatal the patentee’s grammatical mistake. He should have claimed ““the client system transmitting the retrieved information to the at least one web server”, but he instead claimed “the client system using and transmitting the retrieved information to the at least one web server[.]” As a matter of English grammar, the clause rendered the claim indefinite because it “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’). [The patentee] contend[ed] this was error, and that the district court should have instead construed ‘the retrieved information’ to be the object of both ‘using’ and ‘transmitting.’”

The trial court, “[i]n determining that the claims were indefinite, [had] 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.’”

In affirming the trial court, the panel stated that “[t]o credit [the patentee]’s argument would eviscerate our holding in Novo Industries. We decline to do so. Simply put, [the patentee] cannot make an end run around Novo Industries.”

“Using” = “Transmitting”, but not under the Case Law: The muddled use of “using” and “transmitting” basically boiled down to the patentee using synonyms instead of choosing one word and using just that one word. But, the court presumed a different meaning: “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.”