599 F. App'x 948
Fed. Cir.2014Background
- DataTern sued MicroStrategy for infringing U.S. Patent No. 6,101,502, which claims a method for interfacing object-oriented applications with relational databases using “interface objects.”
- A different district court (S.D.N.Y.) construed the term “to create at least one interface object” to require (1) generating code for a class and (2) instantiating an object from that class; DataTern conceded noninfringement under that construction.
- The district court in this case adopted the New York construction and granted summary judgment of noninfringement based solely on DataTern’s concession.
- The Federal Circuit reviews claim construction de novo and examines the claim language, specification, and prosecution history to determine ordinary meaning to a person of skill in the art.
- The patent specification and figures (particularly Figure 7) show creating an interface object by instantiating it from a class and distinguish between class-generation and object-instantiation as separate steps.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction of “to create at least one interface object” | Means simply to instantiate an interface object from a class; does not require generating code for the class as part of the claimed step | Requires generating code for a class and instantiating an object from that class (based on S.D.N.Y. Markman and Fig.1) | The phrase means “to instantiate at least one interface object from a class”; claim does not require code generation as part of that step |
| Effect of phrase “employing the map” | Map may be used by runtime engine to instantiate objects (Figure 7 supports this) | In Figure 1, only the code generator uses the map to generate interface objects, so map use implies code generation | “Employing the map” does not compel code generation; Figure 7 shows runtime engine employing the map to instantiate objects |
| Importing limitations from preferred embodiments | Should not read code-generation limitation into claim 1 absent clear intent | S.D.N.Y. interpretation relied on embodiment and expert statements to import limitation | Court rejects importing the code-generation limitation into claim 1 without clear intrinsic support |
| Impact of claim differentiation (claim 10) | Claim 10 explicitly recites a code generator, showing drafters knew how to claim code generation when desired | N/A | Claim 1’s silence on code generation means it should not be limited by claim 10’s explicit language |
Key Cases Cited
- Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272 (Fed. Cir.) (en banc) (claim construction reviewed de novo)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (en banc) (claim terms given ordinary meaning to a person of skill in the art; intrinsic evidence primary)
- Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir.) (cannot import limitations from preferred embodiment absent clear intent)