Thought, Inc. v. Oracle Corporation

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

THOUGHT, INC., A CALIFORNIA CORPORATION,

Plaintiff-Appellant

v.

ORACLE CORPORATION, A DELAWARE

CORPORATION, ORACLE AMERICA, INC., A

DELAWARE CORPORATION, ORACLE

INTERNATIONAL CORPORATION, A CALIFORNIA

CORPORATION,

Defendants-Appellees

______________________

2016-2369

______________________

Appeal from the United States District Court for the

Northern District of California in No. 3:12-cv-05601-

WHO, Judge William H. Orrick, III.

______________________

Decided: August 21, 2017

______________________

MARK CARLSON, Hagens, Berman, Sobol, Shapiro

LLP, Seattle, WA, argued for plaintiff-appellant. Also

represented by STEVE BERMAN; JEFF D. FRIEDMAN, Berke-

ley, CA; KELLY G. HYNDMAN, CHANDRAN B. IYER, Sughrue

Mion, PLLC, Washington, DC.

2 THOUGHT, INC. v. ORACLE CORPORATION

STEVEN MOORE, Kilpatrick Townsend & Stockton

LLP, San Francisco, CA, argued for defendants-appellees.

Also represented by GIA L. CINCONE, GREGORY PHILIP

FARNHAM, BENJAMIN M. KLEINMAN-GREEN.

______________________

Before MOORE, SCHALL, and O’MALLEY, Circuit Judges.

MOORE, Circuit Judge.

Thought, Inc. (“Thought”) appeals from the Northern

District of California’s summary judgment of nonin-

fringement of claims 1, 3, 5, 7, and 8 of U.S. Patent

No. 5,857,197 (“the ’197 patent”). For the reasons dis-

cussed below, we affirm.

BACKGROUND

The ’197 patent, titled “System and Method for Ac-

cessing Data Stores as Objects,” discloses a system and

method for object-oriented programs to access data in a

relational database. The type of system disclosed is

commonly known as “middleware.” Prior art techniques

utilized customized code for each relational table, which

was costly and time-consuming to create and maintain.

The ’197 patent utilizes an abstraction layer with a set of

interchangeable runtime adapters using the same appli-

cation programming interface, “effecting a consistent

interface to the data store regardless of its underlying

structure.” ’197 patent at abstract. Claim 3 is repre-

sentative:

A system for accessing at least one data store hav-

ing a data store content and a data store schema

as at least one object from at least one object ap-

plication comprising:

at least one object schema including meta

data corresponding to the data store

schema;

THOUGHT, INC. v. ORACLE CORPORATION 3

a first adapter responsive to the object ap-

plication including an application bridge

receiving an object comprising object at-

tributes and an object name from the ob-

ject application, said first adapter

extracting the object attributes and the ob-

ject name from the object to effect packing

of the object attributes and the object

name as data, said first adapter unpack-

ing the data to effect instantiating the ob-

ject attributes and the object name into a

new object; and

a second adapter in communication with

said first adapter and in communication

with at least one data store, said second

adapter having a meta data map compris-

ing at least one object name and providing

the data store content from at least one

data store corresponding to the object at-

tributes and the meta data.

Id. at 35:26–39 (emphasis added).

Thought sued Oracle Corp. (“Oracle”) in the Northern

District of California, alleging that Oracle’s TopLink

program and related applications infringe claims 1, 3, 5,

7, and 8 of the ’197 patent. Oracle denied infringement

and asserted a counterclaim of invalidity. The district

court issued a claim construction order in which it con-

strued “object” as an “instance of a class.” J.A. 116. It did

not construe the term “extracting.”

Oracle moved for summary judgement of nonin-

fringement and invalidity. The district court granted

summary judgment of noninfringement. It held, inter

alia, that Thought failed to raise a material issue of fact

that the accused software performed the claim limitation

“extracting the object attributes and the object name from

the object” for two independent reasons. First, it held

4 THOUGHT, INC. v. ORACLE CORPORATION

that the claim language and specification make clear that

the term “extracting” refers to “extracting a subset of

information from an object.” Thought, Inc. v. Oracle

Corp., No. 12-CV-05601-WHO, 2016 WL 3230696, at *13

(N.D. Cal. June 13, 2016) (emphasis in original). Second,

in light of the construction of “object” as an instance of a

class, it held that Thought did not demonstrate that the

accused software extracts the object name and object

attributes “from a singular ‘instance of a class.’” Id. The

district court dismissed Oracle’s counterclaim without

prejudice. Thought timely appealed. We have jurisdic-

tion pursuant to 28 U.S.C. § 1295(a)(1). 1

DISCUSSION

We review the district court’s ultimate claim construc-

tion de novo, and we review any subsidiary fact findings

for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc.,

135 S. Ct. 831, 841–42 (2015). Although we apply our

own law with respect to issues of substantive patent law,

we review the grant or denial of summary judgment using

the law of the relevant regional circuit. Accenture Glob.

Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,

1340–41 (Fed. Cir. 2013). The Ninth Circuit reviews the

district court’s grant or denial of summary judgment de

novo. JL Beverage Co., LLC v. Jim Beam Brands Co., 828

F.3d 1098, 1104 (9th Cir. 2016).

Thought’s only infringement theory on appeal is that

the TopLink program’s find() method meets the “ex-

tracting the object attributes and the object name from

the object” claim limitation. The find() method receives

two separate parameters: Class<T> entityClass and

1 Oracle did not cross-appeal or otherwise object to the

district court order dismissing its invalidity counterclaim.

We therefore do not review the propriety of the district

court’s sua sponte dismissal of that counterclaim.

THOUGHT, INC. v. ORACLE CORPORATION 5

Object primaryKey. The find() method does not pull

information from the primaryKey object. Rather, it

merely passes along primaryKey to another method

wholesale. J.A. 876–78. Thought alleges that the “‘object

name’ in the form of Class<T> entityClass is extracted

from the object that is the set of parameters passed into

the find() method” and the “‘object attributes’ in the form

of Object primaryKey are extracted from the object that is

the set of parameters passed into the find() method.”

J.A. 876–77.

Oracle argues the find() method cannot meet the

“extracting” limitation because wholesale copying or

passing along of a reference to an object is not part of the

plain and ordinary meaning of “extracting the [data] from

the object.” It argues the claims require the first adapter

to extract something less than the entire object. Thought

argues that nothing in the patent requires limiting “ex-

tracting” to a subset of information and that a person of

ordinary skill in data processing would have understood

“extracting” to mean “obtaining.”

We agree with the district court and Oracle that the

plain and ordinary meaning of “extracting . . . from the

object” cannot mean merely passing along or copying the

entire object, including the container of the thing extract-

ed. The full “extracting” clause of claim 3 claims “said

first adapter extracting the object attributes and the

object name from the object to effect packing of the object

attributes and the object name as data.” ’197 patent at

35:33–36. The plain language and context of this clause

demonstrates that the word “from” indicates the source

from which the extracted thing is taken. See Phillips v.

AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en

banc), cert. denied, 546 U.S. 1170 (2006) (“[T]he context in

which a term is used in the asserted claim can be highly

instructive.”). Just as a child might “extract” all of the

cookies from the cookie jar and leave the cookie jar itself

behind, the first adapter may extract all of the data

6 THOUGHT, INC. v. ORACLE CORPORATION

contained within the object but must leave behind the

data container of the object itself. Taking, or making an

exact copy of, the container and all of the contents held

within the container is not extracting the contents from

the container.

The claim, read in the context of the specification,

strongly supports this conclusion because it indicates that

the extraction is performed in order to reorganize the

object attributes and object name as “data” separate from

the object. The “extracting” limitation closely tracks the

specification language used to describe the only disclosed

embodiment that “extracts” in any way: “The first adapter

400 then extracts the object attributes 103 and the object

name 104 from the object 102, and packs the object at-

tributes 103 and the object name 104 as data 105 to be

used in communication and transport layers.” ’197 patent

at 7:42–46. The claim language and the associated por-

tion of the specification indicate that the purpose of the

extraction is to pack the data extracted from the object as

data for improved communication. The specification also

explains that the disclosed “method of breaking down

objects 102 (112) into the corresponding primitive types

comprising data 105 (115) ensures successful transfers of

any kind of object irrespective of object application 101

views of the object(s)’ data elements.” Id. at 4:61–65. The

disclosed purpose of the extraction limitation, therefore, is

to separate the object attributes and object name from the

object itself to effect the ’197 patent’s aim of “a simple and

consistent interface to at least one data store(s) regardless

of its underlying structure.” Id. at 3:31–35.

The use of the terms “extracting” and “obtaining” in

other claims further supports the conclusion that “extract-

ing” does not include the container of the data. See Phil-

lips, 415 F.3d at 1314 (“[T]he usage of a term in one claim

can often illuminate the meaning of the same term in

other claims.”). Like claim 3, claim 7 claims “extracting

the object attributes and the object name from the object,”

THOUGHT, INC. v. ORACLE CORPORATION 7

but in another limitation it also claims “obtaining data

store content and/or an execution status.” ’197 patent at

36:15–16 (emphasis added). In the specification’s descrip-

tion of this claimed embodiment, the second adapter

executes a command with the accessed database “and

obtains the data store content 301 and an execution

status 306 based on executing at least one such command

303.” Id. at 8:1–5. The second adapter “then processes

the data store content 304 and the execution status 306

using meta data 201, and packs the obtained data store

content 304 and the execution status 306 as data 115.”

Id. at 8:6–9. Unlike the first adapter’s extraction of the

object attributes and object name, which are immediately

packed as data, the claimed second adapter processes the

data store content and/or execution status after they are

obtained and before they are packed. Id. This context

indicates that unlike extracted data, obtained data might

be encapsulated in a container that must be processed

before being packed into data suitable for communication

to the first adapter. See id. at 8:9–10 (“The second adapt-

er 500 communicates the data 115 to the first adapter

400.”).

Oracle also argues that because the find() method

allegedly draws the object name from one object (enti-

tyClass) and the object attributes from another object

(primaryKey), the alleged software cannot extract infor-

mation from a single object as required by the claims.

Thought argues that the set of parameters to the find()

method is itself an object that contains references to two

other objects from which the object name and object

attributes are extracted. Thought does not dispute that

the claim language requires the object name and object

attributes be extracted from a single object, or instance of

a class. Instead, it argues that there is a single “set of

parameters object” passed to the find() method that

contains references to two other objects—one for the

8 THOUGHT, INC. v. ORACLE CORPORATION

object name, the other for the object attributes. Thought

Reply Br. 14–18, see also J.A. 345–46, 774, 876–77.

We agree with the district court and Oracle that the

accused method cannot extract two pieces of data “from

the object” when each piece of data is derived from a

separate object. Thought and its expert admit that under

its theory of infringement, “the ‘object’ from the object

application is an object with references to two other

objects, not the two objects themselves.” J.A. 346 ¶ 62.

The claim language requires that object attributes and

object name be extracted “from the object.” The anteced-

ent basis for “the object” indicates that the object “com-

pris[es] object attributes and an object name.” ’197 patent

at 35:32–33. A set of parameters containing nothing more

than references to two separate objects, from which the

object name and object attributes are separately extract-

ed, cannot meet the express claim language. The singular

“object” required by the claim cannot be comprised of the

object attributes and object name if it is merely a set of

references to separate objects that comprise the object

attributes and object name.

The district court correctly granted summary judg-

ment of noninfringement based on both rationales regard-

ing the “extracting” limitation. We do not reach the other

alternative rationales on which the district court granted

summary judgment. See Thought, 2016 WL 3230696, at

*9–12.

CONCLUSION

For the foregoing reasons, we affirm the district

court’s summary judgment of noninfringement of claims

1, 3, 5, 7, and 8 of the ’197 patent.

AFFIRMED