Microsoft Corp. v. Datatern, Inc., No. 13-1184 (Fed. Cir. 2014)Annotate this Case
DataTern previously sued several Microsoft and SAP customers, alleging infringement of its 402 and 502 patents. DataTern sent the customers claim charts alleging infringement based on customers’ use of Microsoft’s ADO.NET and SAP’s BusinessObjects software. The claim charts refer to Microsoft and SAP functionality, but the 402 patent claim charts cite only to third-party-provided (not Microsoft-provided) ADO.NET documentation for several claim limitations. Some customers sought indemnification. Microsoft told DataTern that Microsoft had no obligation to defend or indemnify its customers. DataTern indicated that it was not interested in suing Microsoft. SAP and DataTern did not discuss the lawsuits or the patents before SAP and Microsoft sought declaratory judgments of noninfringement and invalidity. The district court denied DataTern’s motion to dismiss, finding that it has jurisdiction based on: the claim charts in the customer lawsuits; the indemnification demands; DataTern’s conditional counterclaims of infringement; DataTern’s reference to “infringement” in its proposed scheduling order; and DataTern’s refusal to grant a covenant not to sue. Following claim construction, DataTern conceded noninfringement and the court entered summary judgment. The Federal Circuit affirmed in part, holding that the district court had jurisdiction over some declaratory judgment challenges to the patents, but not over Microsoft’s challenge to 402 patent.
The court issued a subsequent related opinion or order on May 5, 2014.