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Plumtree Software, Inc. v. Datamize, LLC

United States Court of Appeals for the Federal Circuit

December 18, 2006, Decided



 [***1252]   [*1155]  DYK, Circuit Judge.

Plumtree Software, Inc. ("Plumtree") filed this declaratory judgment action against Datamize, LLC ("Datamize") in the United States District Court for the Northern District of California. 1 The district court denied Datamize's motion to dismiss for lack of subject matter jurisdiction and granted summary judgment in favor of Plumtree on the ground that Datamize's patents were invalid under the on sale bar doctrine, 35 U.S.C. § 102(b). Datamize now appeals. We sustain the district court's jurisdictional ruling, but vacate and [**2]  remand for further proceedings on the merits.


This case involves two Datamize patents, U.S. Patent Nos. 6,460,040 ("'040 patent") and 6,658,418 ("'418 patent"). Datamize principal Kevin Burns is the named inventor of the patents, which were continuations of his U.S. Patent No. 6,014,137 ("'137 patent"). The patents are entitled "Authoring System for Computer-based Information Delivery System" and share a common specification. [***1253]  

The patented invention is a computer program that is used to create other computer programs (an "authoring tool"). The invention encompasses both the method of creating the computer program and the software for creating the computer program. The '040 patent contains method claims, and the '418 patent is asserted to contain both method and apparatus claims. The authoring tool may be used to create customized kiosks. As an example, the patents explain the authoring tool might be used to create electronic kiosks used at ski resorts to provide information to customers about ski conditions, local hotels, and restaurants through a touch screen or key pad. The patented invention is not the kiosk [**3]  itself, but is the software for, and the method of, creating the kiosk. 2 

 [*1156]  Plumtree is [**4]  a computer software company that produces "corporate portal" software. The corporate portal is web-based software that brings together various applications and information into a customized desktop screen that employees of an organization can separately access. Plumtree primarily markets its corporate portal software to companies that want to organize their corporate intranet sites.

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473 F.3d 1152 *; 2006 U.S. App. LEXIS 31066 **; 81 U.S.P.Q.2D (BNA) 1251 ***

PLUMTREE SOFTWARE, INC., Plaintiff-Appellee, v. DATAMIZE, LLC, Defendant-Appellant.

Subsequent History: On remand at, Patent interpreted by, Summary judgment denied by, Motion denied by, As moot Datamize, LLC v. Plumtree Software, Inc., 2007 U.S. Dist. LEXIS 97965 (N.D. Cal., Aug. 7, 2007)

Writ dismissed by In re Datamize, L.L.C., 313 Fed. Appx. 306, 2008 U.S. App. LEXIS 14156 (Fed. Cir., 2008)

Related proceeding at Portal Techs. LLC v. Yahoo! Inc., 2012 U.S. Dist. LEXIS 110495 (E.D. Tex., Aug. 7, 2012)

Prior History:  [**1]  Appealed from: United States District Court for the Northern District of California. Chief Judge Vaughn R. Walker.

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 2005 U.S. App. LEXIS 16176 (Fed. Cir., 2005)Plumtree Software, Inc. v. Datamize, LLC, 2005 U.S. Dist. LEXIS 34302 (N.D. Cal., Sept. 12, 2005)


patent, kiosk, critical date, infringement, district court, authoring, invention, reasonable apprehension, trade show, software, summary judgment, technology, declaratory judgment action, embodied, space, information center, interactive, invalid, patented process, offer for sale, presentation, proceedings, customized, electronic, parties, portal, prong, steps, ski

Civil Procedure, Appeals, Standards of Review, Clearly Erroneous Review, Constitutional Law, The Judiciary, Case or Controversy, General Overview, Justiciability, Case & Controversy Requirements, Actual Controversy, Patent Law, Remedies, Declaratory Judgments, Judgments, Declaratory Judgments, Statutory Bars, On Sale Bar, Fact & Law Issues, Jurisdiction & Review, Elements, Federal & State Interrelationships, Federal Common Law, Applicability