DataTern v. MicroStrategy – A Reasoned Application of Alice
On September 4, 2015, the U.S. District Court for Massachusetts decided Defendant’s summary judgment motion in DataTern, Inc. v. MicroStrategy, Inc., 2015 BL 288638, 6 (D. Mass. Sept. 04, 2015), holding that a U.S. Patent directed to “mapping out relationships between two databases” is not invalid under Alice and its progeny. Following the legal standard for software-based inventions set out by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), and the Federal Circuit’s precedential decision in DDR Holdings, LLC v. Hotels.com, L.P. et al. (773 F.3d 1248, 1255), District Court Judge Saylor denied MicroStrategy’s summary judgment motion of invalidity under 35 U.S.C §101.
In DataTern, a case remanded by the Federal Circuit on claim construction grounds, the patent–in-suit, U.S. Patent No. 6,101,502 (“the ‘502 patent”), is directed to a method and computer program for interfacing an object-oriented software application to access data stored in a relation database. DataTern, Inc., at *3. The patent claims function to create “interface objects” that act as “intermediaries between the object-oriented application and the relational database.” Id. MicroStrategy filed for summary judgment of invalidity under § 101 and for non-infringement (not discussed here).
The District Court applied the precedent of Alice and DDR Holdings. Alice set out a two-step framework for deciding whether a patent claim is directed to a patent-ineligible concept. The framework consists of determining: (a) whether the claims-at-issue are directed to a patent-ineligible concept, and (b) whether the claim elements both individually and in combination transform the nature of the claim into a patent-eligible application. Alice, 124 S. Ct at 2335. In DDR Holdings, 773 F.3d at 1259, the Federal Circuit upheld the eligibility of a patent that was “directed to systems and methods of generating a composite web page that combines certain visual elements of a ‘host’ website with content of a third-party merchant.” The DDR Court commented that, “the claimed solution [was] necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. at 1257. Indeed, on that basis, the DDR Court concluded the claims-at-issue were patent eligible. In DataTern, J. Saylor determined that the patent-at-issue was eligible because “it is directed at solving a problem that specifically arises in the realm of computing; indeed, object-oriented programs exist only in the realm of computers, and relational databases are utilized primarily, if not exclusively, on computers.” DataTern at *11. Contrary to the assertions of MicroStrategy that “selecting an object model” and “generating a map” are activities that may be performed by the mind, J. Saylor analogized DataTern’s claims to those in DDR Holdings because both are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. citing DDR Holdings at 1258; see also CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1302 (Fed. Cir. 2013) (“The key to this inquiry is whether the claims tie the otherwise abstract idea to a specific way of doing something with a computer, or a specific computer for doing something; if so, they likely will be patent eligible, unlike claims directed to nothing more than the idea of doing that thing on a computer.”) (emphasis in original), aff’d by Alice, 134 S. Ct. at 2360.
The Court also focused on the distinction between fundamental practices long prevalent in human experience (as found in such post-Alice cases as; Ultamercial, Inc. v Hulu, LLC, 722 F3.d 709,712 (Fed. Cir. 2014), buySAFE, Inc. v Google, Inc., 765 F3.d 1350, 1355 (Fed. Cir. 2014) and Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (2015)) and those that are directed to solving a specific computing problem (DDR Holdings, 773 F.3d at 1257). Id. The Court acknowledged that, like DDR Holdings, 773 F.3d at 157, this case provides a situation in which “identifying the precise nature of the abstract idea is not as straightforward as in Alice or some of [the] other recent abstract idea cases.” Id. However, because (a) the claims are directed at solving a problem arising in the realm of computer networks, and (b) the claims are sufficiently limited in scope as to encompass an “inventive concept,” the motion for summary judgment was denied.