Trs. of Columbia Univ. in N.Y. v. Symantec Corp.

Citation811 F.3d 1359
Decision Date02 February 2016
Docket NumberNo. 2015–1146.,2015–1146.
Parties The TRUSTEES OF COLUMBIA UNIVERSITY IN the CITY OF NEW YORK, Plaintiff–Appellant v. SYMANTEC CORPORATION, Defendant–Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

David Isaac Gindler, Irell & Manella LLP, Los Angeles, CA, argued for plaintiff-appellant. Also represented by Richard Birnholz, Joseph M. Lipner, Jason Sheasby, Gavin Snyder ; Aaron Martin Panner, Law Office of Aaron M. Panner, PLLC, Washington, DC.

David A. Nelson, Quinn Emanuel Urquhart & Sullivan, LLP, Chicago, IL, argued for defendant-appellee. Also represented by Nathan Hamstra ; Richard Wolter Erwine, Alexander Rudis, New York, NY; Adam Conrad, King & Spalding LLP, Charlotte, NC; Daryl Joseffer, Washington, DC.

Before PROST, Chief Judge, DYK, and HUGHES, Circuit Judges.

DYK, Circuit Judge.

The Trustees of Columbia University ("Columbia") appeal from a claim construction order and subsequent partial final judgment of non-infringement and invalidity with respect to claims of six patents that it owns: U.S. Patent No. 7,487,544 ("the '544 patent"), U.S. Patent No. 7,979,907 ("the ' 907 patent"), U.S. Patent No. 7,448,084 ("the '084 patent"), U.S. Patent No. 7,913,306 ("the '306 patent"), U.S. Patent No. 8,074,115 ("the '115 patent"), and U.S. Patent No. 8,601,322 ("the '322 patent").

We find that the district court correctly construed the term "byte sequence feature" in connection with the '544 and '907 patents and the term "probabilistic model of normal computer system usage" in connection with the ' 084 and '306 patents. Accordingly, we affirm the district court's judgment of non-infringement with respect to the '544 patent, the '907 patent, the '084 patent, and the '306 patent. We also affirm the judgment of the district court finding claims 1 and 16 of the '544 patent indefinite.

However, we find that the district court incorrectly construed the term "anomalous" in the '115 and '322 patent claims by requiring the model of normal computer usage be built only with "typical, attack free data." Because we reverse the district court's claim construction with respect to the '115 and '322 patents, we remand for further proceedings with respect to the asserted claims of those patents.

BACKGROUND

All of the six patents at issue on this appeal involve applying data analytics techniques to computer security to detect and block malware. The patents can be grouped into three families. The '544 and '907 patents share the same specification and relate to detecting malicious email attachments. The '084 and '306 patents share the same specification, and relate to a method for detecting intrusions in the operation of a computer system. The '115 and the ' 322 patents also share a specification and relate to detecting anomalous program executions.

In December of 2013, Columbia sued Symantec, alleging infringement of claims of these six patents by various Symantec products. In January of 2014, Symantec answered the complaint, asserting, among other things, the affirmative defenses of non-infringement, invalidity, and unenforceability of the asserted patents. After briefing and a hearing, the district court issued a claim construction order on October 7, 2014, and later issued an order clarifying certain constructions.

Based on the district court's claim constructions, the parties filed a joint motion for entry of final judgment on all infringement claims. Specifically, the parties agreed to a judgment of non-infringement on all asserted claims and a finding of invalidity for indefiniteness of claims 1 and 16 of the '544 patent. Columbia reserved the right to appeal the district court's claim constructions. Pursuant to the stipulation, the court entered partial final judgment under Rule 54(b) of the Federal Rules of Civil Procedure, and Columbia now appeals.1 We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

Claim construction is ultimately a question of law that this court reviews de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., –––U.S. ––––, 135 S.Ct. 831, 839, ––– L.Ed.2d –––– (2015). The construction of claim terms based on the claim language, the specification, and the prosecution history are legal determinations. Id. However, claim construction may involve subsidiary issues of fact based on the extrinsic record, which this court reviews for clear error. See id. at 837–38.

Claim construction requires a determination as to how a person of ordinary skill in the art would understand a claim term "in the context of the entire patent, including the specification." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (en banc). We begin a claim construction analysis by considering the language of the claims themselves. Id. at 1314. However, "claims must be read in view of the specification, of which they are a part." Id. at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (1995) (en banc) (quotation marks omitted)). The specification is the "single best guide to the meaning of a disputed term," Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996), and "is, thus, the primary basis for construing the claims." Phillips, 415 F.3d at 1315 (citation and quotation marks omitted). A court should also consider the patent's prosecution history, Id. at 1317, and may rely on dictionary definitions, "so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Id. at 1321–22 (citation and internal quotation marks omitted).

Columbia argues that the district court here erred in departing from the plain meaning of "byte sequence feature" in the '544 and the '907 patents and "probabilistic model of normal computer system usage" in the '084 the '306 patents. It argues that "there is a heavy presumption that claim terms carry their accustomed meaning in the relevant community at the relevant time" which can only be "overcome in only two circumstances: the patentee has expressly defined a term or has expressly disavowed the full scope of the claim." Appellant's Br. 26 (emphasis added) (citation and quotation marks omitted). For this proposition, it cites to several recent cases including Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362 (Fed.Cir.2012), a case where we stated that "[i]t is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent to redefine the term" and that "the standard for disavowal of claim scope is similarly exacting." Id. at 1365.

Our case law does not require explicit redefinition or disavowal. See, e.g., Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed.Cir.2012) ( "This clear expression need not be in haec verba but may be inferred from clear limiting descriptions of the invention in the specification or prosecution history."). Indeed, our en banc Phillips opinion rejected this very approach. In Phillips, we rejected a line of cases following Texas Digital Systems, Inc. v. Telegenix, Inc., where we held that "terms used in the claims bear a ‘heavy presumption’ that they ... have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art [and,] unless compelled otherwise, a court will give a claim term the full range of its ordinary meaning." 308 F.3d 1193, 1202 (Fed.Cir.2002). Specifically, Phillips rejected an approach "in which the specification should be consulted only after a determination is made, whether based on a dictionary, treatise, or other source, as to the ordinary meaning or meanings of the claim term in dispute." 415 F.3d at 1320. As Phillips carefully explained, such an approach "improperly restricts the role of the specification in claim construction" to determining "whether the presumption in favor of the dictionary definition of the claim term has been overcome by an explicit definition of the term different from its ordinary meaning, or whether the inventor has disavowed or disclaimed scope of coverage." Id. (citations and quotation marks omitted). "[T]he specification is always highly relevant to the claim construction analysis" and is, in fact "the single best guide to the meaning of a disputed term." Id. (emphasis added) (citation and quotation marks omitted).

Phillips makes clear that "[t]he claims ... do not stand alone. Rather they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims." 415 F.3d at 1315 (internal quotation marks and citations omitted). The only meaning that matters in claim construction is the meaning in the context of the patent. See id. at 1316 (citing and quoting Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed.Cir.2001) ("The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose.")).

Thus, we reject Columbia's argument that the presumption of plain and ordinary meaning "can be overcome in only two circumstances: [when] the patentee has expressly defined a term or has expressly disavowed the full scope of the claim in the specification and the prosecution history." Appellant's Br. at 26 (emphasis added). As our en banc opinion in Phillips made clear, "a claim term may be clearly redefined without an explicit statement of redefinition" and "[e]ven when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents." 415 F.3d at 1320–21 (citing and quoting Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001), and Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed.Cir.2004) ).2

We have previously followed this approach, for example, holding that the claim term "electrochemical sensor" excluded...

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