Microsoft Corporation v. Datatern, Inc.
755 F.3d 899
| Fed. Cir. | 2014Background
- DataTern appeals district court summary judgments ruling noninfringement of the ’502 patent by Microsoft and SAP; SAP challenge to the ’402 patent upheld in part, SAP noninfringement granted for BusinessObjects, and Microsoft’s challenge to the ’402 patent dismissed for lack of jurisdiction; district court held jurisdiction over SAP and Microsoft declaratory judgments based on customer claim charts and indemnification demands; DataTern sued numerous customers alleging infringement based on use of Microsoft ADO.NET and SAP BusinessObjects; indemnification demands and post-complaint actions weighed into jurisdiction but not determinative; court treated claim charts as evidence of potential inducement and contributory infringement under governing standards; court remanded for narrowed scope and denied/denied-with-remand on several jurisdictional issues; the Court affirmed-in-part and reversed-in-part the district court’s rulings accordingly.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court had jurisdiction over the declaratory judgments | DataTern—no license dispute, no inducement, no ongoing obligation to indemnify | Appellees—claim charts and indemnification demands create substantial controversy under Arris | Jurisdiction over SAP ’402 and SAP ’502 and Microsoft ’502; not over Microsoft ’402. |
| Scope of summary judgment for SAP and related patents/products | DataTern argued broader scope beyond BusinessObjects for the ’402 patent | SAP asserted broader scope; claim charts tied to BusinessObjects only | Affirm-in-part and reverse-in-part; include only BusinessObjects for SAP’s ’402 noninfringement. |
| Object model construction in the ’502 patent | Object model could be broader, not necessarily requiring classes | Plain meaning requires classes; Figure 3 shows classes | Object model must include classes; DataTern’s broader view rejected; SAP’s construction adopted. |
Key Cases Cited
- Arris Group, Inc. v. British Telecommunications PLC, 639 F.3d 1368 (Fed. Cir. 2011) (declaratory judgment jurisdiction where supplier’s customers are accused of direct infringement)
- MicroStrategy, Inc. v. Business Objects SA, 429 F.3d 1344 (Fed. Cir. 2005) (summary judgment standards and related jurisprudence)
- Microchip Tech. Inc. v. Chamberlain Grp., Inc., 441 F.3d 936 (Fed. Cir. 2006) (no jurisdiction where no inducement or contributory infringement evidence)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (threshold for declaratory judgment jurisdiction in a dispute)
- Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed. Cir. 2010) (post-complaint facts cannot create jurisdiction where none existed)