United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION TO
DENNIS SAYLOR IV UNITED STATES DISTRICT JUDGE.
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 denied.
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).
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.
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. 11-cv-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.).
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
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).
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.
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.
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).
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).
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 Scheduling Order thus did not provide a deadline for
amending preliminary contentions. It was the Court's
intention, as stated at the conference, ...