DataTern, Inc. v. Blazent, Inc.
Judge F. Dennis Saylor, IV: ORDER entered. MEMORANDUM AND ORDER on Motion to Strike. (Zaleski, Christine)
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
Civil Action No.
MICROSTRATEGY, INC., et al.,
MEMORANDUM AND ORDER
ON PLAINTIFF’S MOTION TO STRIKE
This is a patent dispute. Plaintiff DataTern, Inc. brought this action against defendant
MicroStrategy, Inc. and a number of its customers, asserting a claim of patent infringement. In
August 2016—almost five years after this action commenced, and 31 days prior to the Markman
hearing—MicroStrategy amended its preliminary invalidity and non-infringement contentions.
DataTern has moved to strike the amended contentions on the ground that the filing was
untimely. It has also moved to strike certain preliminary indefiniteness contentions on the
ground that MicroStrategy has waived its rights to assert those arguments by failing to raise them
prior to briefing on claim construction. For the following reasons, the motion to strike will be
DataTern is the owner of U.S. Patent No. 6,101,502 (“’502 patent”). The ’502 patent
recites “[a] method for interfacing an object oriented software application with a relational
database.” (’502 patent claim 1).
On November 7, 2011, DataTern filed a complaint against Blazent, Inc., a customer of
MicroStrategy, alleging infringement of the ’502 patent. Shortly thereafter, it filed similar
complaints against eight other MicroStrategy customers and MicroStrategy itself. On February
24, 2012, this Court (Stearns, J.) entered an order consolidating the latter nine cases and
designating case No. 11-cv-12220, that against MicroStrategy, as the lead case. At that time, the
case with Blazent as the defendant was not yet consolidated.
In March 2012, DataTern and MicroStrategy filed a Joint Statement proposing a
scheduling timetable in preparation for an upcoming scheduling conference (the “2012 Joint
Statement”). (No. 11-cv-12220, Docket No. 27 at 8–9). In the 2012 Joint Statement, the parties
proposed that preliminary infringement, invalidity, and non-infringement contentions “may be
amended and supplemented up to 30 days before the date of the Markman hearing.” (Id.). On
March 21, 2012, the Court (Stearns, J.) entered a scheduling order that set a deadline for filing
initial preliminary infringement, invalidity, and non-infringement contentions and adopting the
2012 Joint Statement proposed deadlines occurring after the Markman hearing. (Order, No. 11cv-12220-FDS (Mar. 21, 2012)). Judge Stearns did not, however, did not set a deadline for
amending preliminary infringement, invalidity, and non-infringement contentions. (Id.).
On April 26, 2012, DataTern filed its initial preliminary infringement contentions. (No.
11-cv-12220, Docket No. 41). On July 31, 2012, the case was reassigned to the undersigned
After the Court granted multiple requests to extend the time for filing, MicroStrategy
filed its initial preliminary invalidity and non-infringement contentions on August 10, 2012.
(No. 11-cv-12220-FDS, Docket No. 81).
In October 2012, the Court stayed the case pending rulings in two cases involving the
’502 patent in the District Court for the Southern District of New York.
In January 2013, the Court granted a motion to consolidate the cases before it, including
the case against Blazent. At that point, case number 11-cv-11970 became the lead case.
In February 2013, following a ruling by the New York court, the Court entered summary
judgment of non-infringement. (Docket No. 38). In December 2014, the Federal Circuit
reversed that judgment and remanded the matter to this Court. (DataTern, Inc. v. Epicor
Software Corp., 599 F. App'x 948, 954–55 (Fed. Cir. 2014)). Upon remand, MicroStrategy filed
two motions for summary judgment. (Docket No. 49; 53). The Court denied both motions.
(Docket No. 101).
To address the changed posture of the case, the parties filed a Joint Proposed Case
Management Schedule on April 7, 2016 (the “2016 Joint Statement”) (Docket No. 114). The
2016 Joint Statement proposed that the “[d]eadline for amending infringement and invalidity
Contentions” would be “30 days after the Court issues claim construction decision.” (Id. at 2).
On April 8, 2016, a scheduling conference was held at which the Court ordered new
scheduling deadlines (“2016 Scheduling Order”), which superseded the 2012 Scheduling Order.
(Docket No. 115). At that conference, the Court adopted the 2016 Joint Statement up to the
Markman hearing “and not beyond.” (Tr. of Scheduling Conference at 4-1, Docket No. 173).
The Court set the case for a Markman hearing on September 26, 2016.
The 2016 Scheduling Order thus did not provide a deadline for amending preliminary
contentions. It was the Court’s intention, as stated at the conference, to set new deadlines once
the case had progressed.
The clerk note that was entered on the docket following the scheduling conference
contained an error: it stated, without qualification, that the “Court ADOPTED [the] proposed
schedule.” (Docket No. 115). Although counsel for both parties were present at the scheduling
conference, neither counsel called the error to the attention of the Court.
The parties filed their opening claim-construction briefs on July 27, 2016, and responsive
briefs on August 15. On August 26, after the pre-hearing claim-construction briefing was
completed, MicroStrategy filed amended preliminary invalidity and non-infringement
contentions. (Docket No. 164). The amended contentions identified additional prior-art
references and made new claims concerning the indefiniteness of certain terms.
On September 1, 2016, DataTern moved to strike newly-raised prior-art references and
the indefiniteness claims with respect to the terms “interface object,” “with the object oriented
application,” “detecting a need,” and “code generator” put forth by MicroStrategy in its initial
and amended preliminary invalidity contentions. (Docket No. 167). On September 26 and 27,
2016, the Court held the Markman hearing.
On February 7, 2017, the Court issued its memorandum and order on claim construction.
(Docket No. 204). The Court construed the term “interface object,” among others. It was not
asked to, and did not, construe the terms “with the object oriented application,” “detecting a
need,” or “code generator.” (Id.).
After the ruling, neither counsel asked the Court to set new deadlines for further
discovery and motion practice. On March 9, 2017, DataTern filed its own amended infringement
contentions. (Docket No. 206).
As noted, DataTern filed amended infringement contentions on March 9, 2017.
Nonetheless, it contends that MicroStrategy’s amended invalidity contentions, which were filed
on August 26, 2016, more than five months earlier, should be struck on the basis that they were
not timely filed.
MicroStrategy contends that the amendments are timely pursuant to the 2012 Joint
Statement, the model scheduling order, and the usual practice in this district. That argument is
entirely without merit. The Court never adopted the 2012 Joint Statement. Nor did it adopt the
model scheduling order, or issue an order based on the usual practice in the district. Proposals,
model orders, and usual practices do not have binding legal effect unless they are adopted in a
The Court did adopt part of the 2016 Joint Statement, but it did not adopt the proposed
deadline for amending infringement and invalidity contentions. Accordingly, there is presently
no order in effect that permits the parties to amend their preliminary infringement, invalidity, or
non-infringement contentions as of right. The clerk note entered after the conference
erroneously stated that the 2016 Joint Statement had been adopted, but counsel for both sides
were present at the conference and surely were aware that it was incorrect. And even if the
Court had adopted the entire 2016 Joint Statement, then the parties would have had until “30
days after [the] Court issues [the] claim construction decision” to file such amendments. The
Court issued a memorandum and order on claim construction on February 7, 2017. (Docket No.
204). Therefore, under the 2016 Joint Statement, the parties would have been permitted to
amend their preliminary infringement and invalidity contentions as of right until March 9, 2017.
Apparently in reliance on the 2016 Joint Statement—and notwithstanding their present
contention that MicroStrategy’s amended invalidity contentions were untimely—DataTern
submitted amended infringement contentions on March 9, 2017. (Docket No. 206). If
In the absence of a court order adopting a joint statement, that statement “shall be considered by the judge
as advisory only.” L.R. 16.1(d).
DataTern’s amended infringement contentions are timely, then MicroStrategy’s amended
invalidity contentions—filed 195 days earlier—are surely timely.
In any event, both parties were apparently under the mistaken impression that the Court
had adopted the 2016 Joint Statement in its entirety, as was reflected in the clerk note. See Pl.
Rep. at 1; Def. Opp. at 3. Under the circumstances, the Court will deem the deadline to have
been March 9, 2017, and therefore both parties’ amended contentions were timely filed.
Waiver of Certain Indefiniteness Contentions
DataTern further contends that MicroStrategy has waived any arguments concerning
indefiniteness by failing to raise them prior to claim construction. It has moved to strike
MicroStrategy’s amended contentions concerning the indefiniteness of four terms: (1) “with the
object oriented application;” (2) “detecting a need;” (3) “code generator;” and (4) “interface
“With the Object Oriented Application;” “Detecting a Need;” and
DataTern first contends that MicroStrategy’s indefiniteness claims should be struck with
respect to three terms: “with the object oriented application,” “detecting a need,” and “code
generator.” MicroStrategy identified the first two of those terms as indefinite in its original
preliminary invalidity and non-infringement contentions in 2012. It identified “code generator”
as indefinite in its amended contentions in 2016. DataTern contends that MicroStrategy has
waived the indefiniteness contentions with respect to all three terms by failing to nominate,
propose constructions for, or brief those terms as candidates for claim construction.
In support of its waiver argument, DataTern has pointed to decisions from other districts
preventing parties from amending indefiniteness claims when the timing of the filing prevented
the court from considering indefiniteness at a Markman hearing. However, unlike in the present
case, in the cases cited, the parties were required to show good cause for amending the
contentions. See Silver State Intellectual Techs., Inc. v. Garmin Int'l, Inc., 32 F. Supp. 3d 1155,
1160 (D. Nev. 2014); Momenta Pharms., Inc. v. Teva Pharms. USA, Inc., 956 F. Supp. 2d 295,
299 (D. Mass. 2013), aff’d in part, vacated in part on other grounds, 809 F.3d 610 (Fed. Cir.
2015); Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co., No. 4:14-CV-371 at 4
(E.D. Tex Mar. 28, 2016). Here, the Court has deemed MicroStrategy’s amendments to have
been filed in a timely manner, so it need not show good cause.
DataTern further contends that the indefiniteness contentions were waived,
notwithstanding their timeliness, because a Markman hearing construing the disputed terms is a
necessary prerequisite to determining whether a claim is invalid for indefiniteness. It has pointed
to a number of cases suggesting that claim construction and indefiniteness analysis are
inextricably intertwined. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)
(“Whether a claim complies with the definiteness requirement of 35 U.S.C. § 112 . . . is a matter
of claim construction.”). It argues that if MicroStrategy were permitted to assert indefiniteness
claims with respect to terms that were not construed, the Court would have to re-open the
Markman hearing, at considerable cost and delay.
Many courts have considered the question of whether “a finding of indefiniteness should
occur during claim construction, or whether it should occur at a later step.” ASM Am., Inc. v.
Genus, Inc., 2002 WL 1892200, at *15 (N.D. Cal. Aug. 15, 2002), amended sub nom. ASM Am.,
LInc. v. Genus, Inc., 2003 WL 21033555 (N.D. Cal. Jan. 10, 2003), aff'd sub nom. ASM Am., Inc.
v. Genus, Inc., 401 F.3d 1340 (Fed. Cir. 2005) (finding that “there is some ambiguity in the case
law” concerning that issue but that “[m]ore recent cases . . . have held that a determination of
indefiniteness is intertwined with claim construction”). Some courts have held that while the
reasons for indefiniteness claims are “sometimes very closely intertwined” with claim
construction, at other times those reasons “may not be so intertwined,” and therefore courts
should determine on a claim-by-claim basis whether to analyze indefiniteness contentions as a
part of claim construction or at a later point. Cipher Pharmaceuticals Inc. v. Actavis
Laboratories FL, Inc., 99 F. Supp. 3d 508, 513 (2015).
In any event, the question posed by DataTern is slightly different than the one addressed
by those cases. Here, the issue is whether a party per se waives timely-filed indefiniteness
contentions with respect to terms that it did not nominate for claim construction. DataTern’s
argument relies on the premise that parties have only one bite at the claim-construction apple.
However, courts have recognized that “district courts may engage in ‘rolling claim construction,
in which the court revisits and alters its interpretation of the claim terms as its understanding of
the technology evolves.’” Conoco, Inc. v. Energy & Environmental Intern., L.C., 460 F.3d 1349,
1359 (Fed. Cir. 2006) (quoting Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361
(Fed. Cir. 2002)); see also Versata Software, Inc. v. Zoho Corporation, 2016 WL 5793778, at 3
(W.D. Tex Oct. 3, 2016) (“Nothing in the law confines a party's indefiniteness argument to the
claim construction stage of the litigation.”); Industrial Tech. Research Inst. v. LG Elecs. Inc.,
2014 WL 6907449, at *2 (S.D. Cal. Dec. 8, 2014) (“[T]he Federal Circuit's statements that
indefiniteness is intertwined with claim construction mean only that the Court must attempt to
determine what a claim means before it can determine whether the claim is invalid for
indefiniteness, and not that the Court must determine indefiniteness during the claim
construction proceedings.”) (quoting ASM Am., Inc. v. Genus, Inc., 2002 WL 1892200, at *15).
Furthermore, DataTern has not identified a single case that states such a per se rule. At
least one district court has plainly stated the opposite, holding that an indefiniteness claim “is not
waived” merely because the defendant “did not seek claim construction of the [disputed] term.”
Apple, Inc. v. Samsung Electronics Co., Ltd., 932 F. Supp. 2d 1076, 1079 (2013) (“[F]ailure to
seek construction of a term during claim construction does not constitute waiver of an
indefiniteness argument.”). The Apple court determined that because the court’s local rules only
permitted the parties to propose ten terms for construction at the Markman hearing, the court
could not reasonably find that the defendant had waived a timely-filed indefiniteness contention
for failure to propose that term for construction. Id.2
To be sure, the present state of affairs, in which the Court apparently will be required to
undertake, in substance, a new round of claim construction, does not appear to be efficient or
even entirely sensible. The Court might well be persuaded in future cases that it should issue a
scheduling order that prohibits more than one round of claim construction. However, the Court
has been shown no authority that would permit the finding that a party has per se waived its
indefiniteness contentions as to certain terms simply by failing to propose those terms for claim
Accordingly, the motion will be denied with respect to the indefiniteness contentions
concerning the terms “with the object oriented application,” “detecting a need,” and “code
DataTern next contends that MicroStrategy’s amended indefiniteness claim concerning
the term “interface object” has been waived. Unlike the terms analyzed above, the term
“interface object” was proposed for claim construction and was actually construed following the
The model scheduling order in this district, contained in Local Rule 16.1 Appendix E, permits parties to
amend preliminary invalidity contentions up to thirty days before a Markman hearing is held, without qualification
as to whether the amended contentions address terms that were not proposed for construction.
Markman hearing. Because the new indefiniteness contention concerning “interface object” has
been deemed timely filed and the term was construed in the Markman hearing, the motion to
strike will likewise be denied with respect to that term.
For the foregoing reasons, the motion to strike is DENIED.
/s/ F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge
Dated: March 27, 2017
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