IP Law Daily, PATENT—W.D. Wash.: Datanet patents asserted against Microsoft survive early Alice challenge, (Jun 13, 2023)

By Kevin M. Finson, J.D.

The patents recited a specific method that improved prior art by allowing real-time data capture and versioning of prior files.

Microsoft Corporation failed to show that three Datanet patents related to automatic computer backup systems were directed to the patent-ineligible abstract idea of data management, at least at the pleading stage, the federal district court in Los Angeles has decided. The asserted patents purported to claim a specific method of improving file archiving through automatic real-time file capture and management, thereby allowing for versioning of backed up files and the preview of such versions (Datanet LLC v. Microsoft Corp., June 12, 2023, Whitehead, J.).

Datanet LLC (Datanet) was the owner of U.S. Patents Nos. 8,473,478 (the ’478 patent), 9,218,348 (the ’348 patent), and 10,585,850 (the ’850 patent), all of which shared a specification and were entitled “Automatic Real-Time File Management Method and Apparatus.” The patents claimed improvements to computer backup systems such as the ability to trigger a backup when changes were made to a file or to queue changes to be backed up once a backup location became available, and the specification devoted some time to explaining how these were improvements over the prior art of manual or scheduled backup processes. Datanet brought suit against Microsoft Corporation alleging that Microsoft’s OneDrive product infringed all three patents. Microsoft moved for judgment on the pleadings, arguing that the asserted patents were invalid for being directed to an abstract idea. The court applied the two-step Alice test.

Abstract idea. Datanet contended the patents are directed towards improving backup technology by introducing: (1) realtime file capture with (2) little impact on system performance, and (3) an offline backup solution. The claimed method solved “problems unique to computers—allowing for versioning of backed up files and the preview of such versions.”

Microsoft argued that the asserted patents were directed to the abstract idea of information management and implemented on computers the same processes which had been managed by individuals with pen and paper and filing cabinets for hundreds of years. The court said that this was an over-simplification of the asserted patents, noting that the real-time and automatic backup functions, as well as the restoration of multiple versions of a document, described in the claims were not something that could have been accomplished by hand. In addition, the patents were plausibly directed at fixing a specified problem in the existing art, which was the loss of data between scheduled or manually run backups. The court held that Microsoft had not shown the patents were directed at an abstract idea.

Inventive concept. Noting that it did not need to reach the inventive concept step because of its ruling on the abstract idea step, the court considered inventive concept for the sake of argument. The question of whether the asserted claims involved more than well-understood, routine, and conventional activities was a question of fact which would depend on expert testimony about the state of the art. This fact question precluded judgment on the pleadings, so the motion would have to be denied on this basis as well.

The court denied Microsoft’s motion for judgment on the pleadings.

The Case is No. 2:22-cv-01545-JNW.

Attorneys: Gregory P. Sitrick (Messner Reeves LLP) for Datanet LLC. Andrew V. Devkar (Morgan Lewis & Bockius LLP) for Microsoft Corp.

Companies: Datanet LLC; Microsoft Corp.

Cases: TechnologyInternet Patent WashingtonNews