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.
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