On September 4, a Massachusetts district court issued an interesting ruling that calls into question many of the recent preliminary stage Alice-based invalidations we’ve seen over the past year.  The decision, the latest round in ongoing litigation between DataTern and numerous defendants, is notable for the following reasons:

  • It expressly recognizes that the presumption of validity applies to subject matter eligibility, saying that notwithstanding some suggestions in the Federal Circuit to the contrary (see Judge Mayer in Ultramercial III, 772 F.3d at 720-721), the Supreme Court’s unanimous statement in Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011) was, without qualification, that 35 U.S.C. § 282 requires an invalidity defense to be proved by clear and convincing evidence.  The DataTern court refused to read the Supreme Court’s silence on the issue in its more recent § 101 decisions as creating any sort of exception to that rule.
  • The patent at issue (6,101,502) is remarkable in how little hardware it describes in the specification, and the claims are directed, for example, to, “A method of interfacing an object oriented software application with a relational database, comprising the steps of selecting an object model; generating a map …; employing the map …; and utilizing a runtime engine … to access data from the relational database.”  Thus, these are pretty software-centric claims, which have had a dismal track record in recent § 101 challenges.
  • After summarizing the post-Alice case law, the court found that “the ‘502 patent is directed at solving a problem that specifically arises in the realm of computing” so computer limitations in the claims are neither just post-solution limitations nor mere specific applications of an abstract idea.

Based on such reasoning, the court denied the motion for summary judgment of invalidity.  If this decision is appealed, it will be interesting to see the Federal Circuit’s reactions to the presumption of validity issue, the minimal recitation of hardware, and the “realm of computing” analysis.  Given the paucity of other cases upholding such software-related claims, we should expect to see this decision cited in numerous other pending cases in the coming months.

  • JTS

    Can you explain what you mean by “software-centric”? The terms mentioned are common technical terms with solid meaning. The eligibility outcome seems consistent with recent cases.
    Thank you for the point about the 101 presumption — good stuff.

  • Thanks, JTS. By software-centric, I just meant that there wasn’t much recitation of computer hardware in the claims. There were only two independent claims, the first of which I summarized in the post and the second of which is a computer-readable medium claim. No system claims, and little interaction with hardware was recited in any of the claims.

  • If you dive deeper into individual art units (3691,3692, 3693, etc) you will see dramatic differences in allowance rates. If you dive even deeper into individual examiners, you will continue to see dramatic differences in allowance rates.