1:11-cv-11970
D. Mass.Feb 7, 2017Background
- DataTern owns U.S. Patent No. 6,101,502 claiming a method to interface object‑oriented applications with relational databases via (1) selecting an object model, (2) generating a map, (3) using the map to create interface objects, and (4) using a runtime engine to access database data.
- DataTern sued MicroStrategy (and some customers) for infringement; multiple related suits were consolidated and were the subject of parallel litigation in the Southern District of New York and the Federal Circuit.
- Earlier proceedings (Microsoft I / II and this Court) produced conflicting constructions, including a stipulation by DataTern in Microsoft I as to the meaning of "class." The Federal Circuit later vacated this Court’s summary judgment and clarified some term constructions on appeal.
- The present dispute concerns claim construction for six terms: "class," "object," "object model," "interface object," "runtime engine," and the phrase "a map of at least some relationships between schema in the database and the selected object model."
- The Court applied intrinsic‑evidence principles (claims, specification, prosecution history) per Phillips and related Federal Circuit authority, and resolved contested constructions principally by reference to the patent text and prosecution statements distinguishing prior art.
Issues
| Issue | Plaintiff's Argument (DataTern) | Defendant's Argument (MicroStrategy) | Held |
|---|---|---|---|
| Proper construction of "class" | Class need only specify attributes; behaviors not required; prior stipulation limited to claim context | Class specifies attributes and behavior and is a template from which objects are instantiated (relies on prior stipulation) | Court: "class" = a definition that specifies attributes and behavior of objects, and from which objects can be instantiated. |
| Proper construction of "object" | Object need not include methods; attributes may suffice | Object comprises attributes and methods (methods operate on attributes) | Court: "object" = an entity comprising attribute values and methods that can act on those attributes. |
| Proper construction of "object model" | Object model need not relate specifically to an object‑oriented application or require inheritance relations | Object model should be tied to object‑oriented applications and include classes (MicroStrategy relied on prior constructions) | Court: "object model" = a template with a predetermined standardized structure relating to an object‑oriented software application and including object classes (does not require inheritance relationships). |
| Proper construction of "interface object" | Interface objects act as intermediaries between application and database (broader) | Interface objects are not part of the application, provide connection to runtime engine, and access data per the map | Court: "interface object" = an object, not part of or generated by the application, that provides a connection between the application and the runtime engine and that accesses data from the database. |
| Proper construction of "runtime engine" | No added limits beyond claim language (broader) | Runtime engine is standalone software that the application depends on to run, must be running to execute the application, uses the map, and is not part of the application (based on prosecution history) | Court: Adopted MicroStrategy’s construction listing the four limitations from prosecution history. |
| Proper construction of "a map of at least some relationships..." | No construction necessary; "map" can be broadly understood | Map is a declarative structure describing associations between object model objects/attributes and database tables/rows/columns (per prosecution history) | Court: "map" = a declarative structure that describes at least one association between objects and attributes of an object model and/or tables, rows, and/or columns in the database. |
Key Cases Cited
- Markman v. Westview Instruments, 517 U.S. 370 (claim construction is a question of law for the court)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. en banc) (use intrinsic evidence to construe claims; specification primary)
- Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir.) (Federal Circuit decision construing aspects of the '502 patent)
- DataTern, Inc. v. Epicor Software Corp., [citation="599 F. App'x 948"] (Fed. Cir.) (Federal Circuit vacating earlier summary judgment and construing "create... interface object")
- New Hampshire v. Maine, 532 U.S. 742 (judicial estoppel doctrine principles)
- RFF Family P'ship, LP v. Ross, 814 F.3d 520 (1st Cir.) (three‑part test for judicial estoppel)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.) (specification as primary guide for claim meaning)
- Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir.) (a party bound by prosecution statements distinguishing prior art)