Hilgraeve Corp. v. Symantec Corp.

• Decision Date: 28 March 2000
• Docket Number: No. Civ 97-40370.,Civ 97-40370.
• Citation: 90 F.Supp.2d 850
• Parties: HILGRAEVE CORPORATION, Plaintiff, v. SYMANTEC CORPORATION, Defendant.
• Court: U.S. District Court — Eastern District of Michigan

90 F.Supp.2d 850

HILGRAEVE CORPORATION, Plaintiff, v. SYMANTEC CORPORATION, Defendant.

No. Civ 97-40370.

United States District Court, E.D. Michigan, Southern Division.

March 28, 2000.

COPYRIGHT MATERIAL OMITTED

Ernie L. Brooks, Thomas A. Lewry, John E. Nemazi, Robert C. Tuttle, Brooks & Kushman, Southfield, MI, for Plaintiff.

Dennis J. Levasseur, Bodman, Longley, Detroit, MI, for Defendant.

MEMORANDUM OPINION AND ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

GADOLA, District Judge.

Among the many motions before this Court is Defendant Symantec Corporation's Motion for Summary Judgment of Non-Infringement filed September 14, 1999. For reasons stated below, this Court grants Defendant's motion, dismisses this civil action, and denies all other pending motions without prejudice as moot.

In support its Motion for Summary Judgment of Non-Infringement, Defendant submitted an opinion by Judge Nancy G. Edmunds in Hilgraeve Corp. v. McAfee Associates, Inc., 70 F.Supp.2d 738 (E.D.Mich.1999), issued on June 10, 1999. Judge Edmunds' opinion concerns the same patent, same patent claims, and same Plaintiff patentee alleging infringement by a party whose accused product is very similar to Defendant's in the instant case. The Complaints in her case and the instant case were filed on the same day, September 15, 1997. Plaintiff did not identify any companion case on the Civil Cover Sheets accompanying the Complaints, which helps explain why the relatedness of the cases was not discovered sooner. The two cases are, in effect, companion cases. See E.D.Mich. LR 83.11(b)(7)(A). The Memorandum Opinion and Order in McAfee Associates is on appeal to the United States Court of Appeals for the Federal Circuit; it also has some collateral estoppel effect on the instant case and, to the extent that it does not, this Court grants Defendant's Motion for Summary Judgment of Non-Infringement for the reasons similar to those stated in Judge Edmunds' opinion.

Factual and Procedural Background

Plaintiff is Hilgraeve Corporation, a Michigan corporation that owns U.S.Patent No. 5,319,776 (the "'776 Patent"), the patent at issue in this civil action. The '776 Patent, entitled "In Transit Detection of Computer Virus With Safeguard," issued on June 7, 1994 to inventors John K. Hile, Matthew H. Gray, and Donald L. Wakelin and was thereafter assigned to Plaintiff. Defendant is Symantec Corporation, a Delaware corporation with its principal place of business in California.

On September 15, 1997, Plaintiff filed the instant action, alleging in a single Count that Defendants products infringe the '776 Patent pursuant to Title 28, United States Code, Section 271. In the course of litigation, Plaintiff has alleged that nine of Defendant's products infringe the '776 Patent: (1) pcANYWHERE, (2) Norton AntiVirus for Windows 95/98, (3) Norton AntiVirus for Windows NT, (4) Norton AntiVirus for Windows 3.X, (5) Norton AntiVirus for DOS, (6) Norton AntiVirus for Lotus Notes, (7) Norton AntiVirus for Netware, (8) Norton AntiVirus for E-Mail Gateways, and (9) Norton AntiVirus for Firewalls.

Defendant filed a counter-claim on December 30, 1997, alleging that the '776 Patent is invalid (Count I) and that Defendant did not infringe the '776 Patent (Count II). Non-expert discovery closed on May 7, 1999, and expert discovery closed on August 6, 1999. Defendant now moves for summary judgment on Count II of its counter-claim.

Discussion

1. Standard for summary judgment

Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(c). Summary judgment is appropriate where the moving party demonstrates that there is no genuine issue of material fact as to the existence of an essential element of the nonmoving party's case on which the nonmoving party would bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Martin v. Ohio Turnpike Commission, 968 F.2d 606, 608 (6th Cir.1992).

In considering a motion for summary judgment, the Court must view the facts and draw all reasonable inferences therefrom in a light most favorable to the nonmoving party. 60 Ivy Street Corp. v. Alexander, 822 F.2d 1432, 1435 (6th Cir.1987). The Court is not required or permitted, however, to judge the evidence or make findings of fact. Id. at 1435-36. The moving party has the burden of showing conclusively that no genuine issue of material fact exists. Id. at 1435.

A fact is "material" for purposes of summary judgment where proof of that fact would have the effect of establishing or refuting an essential element of the cause of action or a defense advanced by the parties. Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir.1984). A dispute over a material fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Accordingly, where a reasonable jury could not find that the nonmoving party is entitled to a verdict, there is no genuine issue for trial and summary judgment is appropriate. Id.; Feliciano v. City of Cleveland, 988 F.2d 649, 654 (6th Cir.1993).

Once the moving party carries its initial burden of demonstrating that no genuine issues of material fact is in dispute, the burden shifts to the nonmoving party to present specific facts to prove that there is a genuine issue for trial. To create a genuine issue of material fact, the nonmoving party must present more than just some evidence of a disputed issue. As the United States Supreme Court has stated:

[T]here is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the [nonmoving party's] evidence is merely colorable, or is not significantly probative, summary judgment may be granted.

Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505 (citations omitted); see Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548; Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Consequently, the nonmoving party must do more than raise some doubt as to the existence of a fact; the nonmoving party must produce evidence that would be sufficient to require submission of the issue to the jury. Lucas v. Leaseway Multi Transportation Service, Inc., 738 F.Supp. 214, 217 (E.D.Mich.1990), aff'd, 929 F.2d 701 (6th Cir.1991). "The mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which the jury could reasonably find for the plaintiff." Anderson, 477 U.S. at 252, 106 S.Ct. 2505; see Cox v. Kentucky Department of Transportation, 53 F.3d 146, 150 (6th Cir.1995).

2. Collateral estoppel

In general, the doctrine of collateral estoppel provides that when an issue of ultimate fact has been determined by a valid and final judgment, that issue cannot be litigated again in any future lawsuit involving the same parties. In some cases, a party that was not before the court for a prior judgment may benefit from that judgment in a future proceeding. According to the United States Court of Appeals for the Federal Circuit,

A second defendant is entitled to the benefit of a judgment issued against the plaintiff in favor of a first defendant in prior litigation on the same issues.... [W]here a determination of the scope of patent claims was made in a prior case, and the determination was essential to the judgment there on the issue of infringement, there is collateral estoppel in a later case on the scope of such claims, i.e., the determined scope cannot be changed.

Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 655 (Fed.Cir.1984) (citing A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700 (Fed.Cir.1983)); see Pfaff v. Wells Electronics, Inc., 5 F.3d 514, 518 (Fed.Cir. 1993) ("The prior claim interpretation has issue preclusive effect in the present case insofar as it was necessary to the judgment of non-infringement in the previous case.").

The defendant's motion for summary judgment in A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700 (Fed.Cir.1983), was grounded on the collateral estoppel effect of another court's holding that another defendant did not infringe the same patent. The Federal Circuit held that, "judicial statements regarding the scope of patent claims are entitled to collateral estoppel effect in a subsequent infringement suit only to the extent that determination of scope was essential to a final judgment on the question of validity or infringement; further, that such statements should be narrowly construed." A.B. Dick, 713 F.2d at 704.

Some issues in the instant case are identical to those adjudicated by Judge Edmunds in McAfee Associates, such as the proper construction of claims 1 and 18 of the '776 Patent and the application of prosecution history estoppel to the doctrine of equivalents analysis. These issues can be resolved regardless of who the defendant may be since they concern the intrinsic evidence surrounding the patent. Here, as in Molinaro and A.B. Dick, the identical issues were decided previously, those issues were fully litigated in a previous case, the resolution of those issues was essential to a final judgment there, and the patent owner had a full and fair opportunity to litigate those issues. Therefore, the proper construction of claims 1 and 18 of the '776 Patent and application of prosecution history estoppel to the doctrine of equivalents analysis in McAfee Associates has preclusive effect here.

3. Analysis

Determining patent infringement is a two-step process of (...