Hilgraeve, Inc. v. Symantec Corp.

• Decision Date: 09 July 2003
• Docket Number: No. CIV. 97-40370.,CIV. 97-40370.
• Citation: 271 F.Supp.2d 964
• Parties: HILGRAEVE, INC., Plaintiff, v. SYMANTEC CORPORATION, Defendant.
• Court: U.S. District Court — Eastern District of Michigan

271 F.Supp.2d 964

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

No. CIV. 97-40370.

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

July 9, 2003.

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

Dennis J. Levasseur, Detroit, MI, Martin C. Fliesler, Fliesler, Dubb, Burt Magen Fleisler, Dubb, San Francisco, CA, for defendant.

MEMORANDUM OPINION AND ORDER

GADOLA, District Judge.

Before the Court are the following motions: (1) Defendant's motion for summary judgment of invalidity; (2) Plaintiff's motion for summary judgment that the asserted claims of the '776 patent are not invalid; and (3) Plaintiff's motion for summary judgment of infringement. The Court heard oral argument on the first two motions at a hearing held on April 23, 2003. The Court heard oral argument on the third motion at a hearing held on May 12, 2003. For reasons set forth below, the Court shall deny Defendant's motion for summary judgment of invalidity, grant Plaintiff's motion for summary judgment that the asserted claims of the '776 patent are not invalid, and deny Plaintiff's motion for summary judgment of infringement.

I. BACKGROUND

Plaintiff Hilgraeve, Inc. ("Plaintiff") is a Michigan corporation with its principal place of business in Michigan. Plaintiff is the owner of U.S. Patent No. 5,319,776 ("'776 patent"), which issued on June 7, 1994 to inventors John K. Hile, Matthew H. Gray, and Donald L. Wakelin and was thereafter assigned to Plaintiff. Defendant Symantec Corporation ("Defendant") is a Delaware corporation with its principal place of business in California. The '776 patent is entitled "In Transit Detection of Computer Virus With Safeguard." Plaintiff filed the Complaint in this patent infringement action on September 15, 1997. Plaintiff filed an Amended Complaint on January 21, 2003, pursuant to an order of this Court. See Hilgraeve Corp. v. Symantec Corp., 212 F.R.D. 345, 350 (E.D.Mich.2003) (Gadola, J.). In the Amended Complaint, Plaintiff alleges a single count of patent infringement pursuant to 35 U.S.C. § 271. Plaintiff alleges that the use of Defendant's products directly infringes the '776 patent and that Defendant induces others to infringe the '776 patent. On February 6, 2003, Defendant filed a counterclaim in response to the Amended Complaint, alleging that the '776 patent is invalid and that its products are non-infringing.

On March 28, 2000, this Court granted Defendant's motion for summary judgment of non-infringement. See Hilgraeve Corp. v. Symantec Corp. 90 F.Supp.2d 850, 859, 861 (E.D.Mich.2000) ("Symantec I"). On appeal, the Federal Circuit vacated this Court's order granting Defendant's motion for summary judgment of non-infringement and remanded this case for further proceedings. See Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1346 (Fed.Cir. 2001) ("Symantec II").¹ On remand, Defendant moves for summary judgment of invalidity. Plaintiff moves for summary judgment that the asserted claims of the '776 patent are not invalid and for summary judgment of infringement.

A. THE '776 PATENT

The Federal Circuit has explained that [t]he '776 patent relates to computer virus detection software. The software scans a digital data file for viruses as the file is transferred to a storage medium. If the software detects a virus prior to storing the file, it automatically blocks storage of the file. The software may be used, for example, to scan a file for viruses as the file is transferred from a floppy disk to a hard disk of a computer system, or as the file is transferred over the Internet from one computer system to a storage medium of another computer system.

Symantec II, 265 F.3d at 1339.

The '776 patent contains twenty claims, yet only independent claims 1 and 18 were at issue in Symantec I and II. Claims 1 and 18 read as follows:

1. In a system for transferring digital data for storage in a computer storage medium, a method of screening the data as it is being transferred and automatically inhibiting the storage of screened data containing at least one predefined sequence, comprising the steps of:

causing a quantity of digital data resident on a source storage medium to be transferred to a computer system having a destination storage medium;

receiving and screening the transferred digital data prior to storage on the destination storage medium to determine if at least one of a plurality of predefined sequences are present in the digital data received;

and

in response to said screening step:

(a) automatically causing the screened digital data to be stored on said destination storage medium if none of the plurality of predefined sequences are present,

and

(b) automatically inhibiting the screened digital data from being stored on said destination storage medium if at least one predefined sequence is present.

18. A method of preventing the spread of computer viruses to a computer having a storage medium, comprising the steps of: simultaneously searching for a plurality of virus signatures, each of which comprising an identifiable digital sequence, while said computer is receiving a stream of digital data for storage on said storage medium;

providing an indication of the detection of a virus from said searching step; and automatically inhibiting the storage of said digital stream on said storage medium if any of said virus signatures have been detected.

'776 patent, col. 17, 11. 9-29 and col. 18, 11. 45-57.

B. PRIOR DECISIONS

1. Symantec I

In Symantec I, this Court focused its claim construction on the meaning of the word "storage" in claims 1 and 18 of the '776 patent. See Symantec I, 90 F.Supp.2d at 856-58. This Court held that "storage occurs when the incoming digital data is sufficiently present on the destination storage medium so that any viruses contained in the data can spread and infect the computer system." Symantec I, 90 F.Supp.2d at 857. After construing the term "storage," the Court compared the accused devises to claims 1 and 18 of the '776 patent. In so doing, the Court outlined the operation of Defendant's products as follows:

The transferred file is accessible to other programs prior to being examined by the accused products because the Norton AntiVirus Scan Engine is not invoked and does not access the transferred file until after the operating system closes the file. To invoke the Norton AntiVirus Scan Engine, the file to be scanned must be completely received and stored on the local disk drive, the file must be closed, and the file name of the closed file must be given to the Norton AntiVirus Scan Engine. In short, the accused products scan for viruses only after the entire file has been transferred and after the file has been stored on the destination storage medium.

Id. at 858 (internal citations omitted) (emphasis added).

The Court further concluded that "[t]here apparently is no dispute between the parties regarding the manner in which the accused products operate," id., explaining that

[t]he accused products first allow the incoming digital data to be stored as a whole on the destination storage medium before it is scanned. Virus screening is performed only after the incoming digital data has been fully transferred and stored. Therefore, the accused products cannot perform the "receiving and screening ... prior to storage" limitation of claim 1 or the "searching for ... virus signatures ... while said computer is receiving a stream of digital data for storage on said storage medium" as required by claim 18. Because there is no dispute about how the accused products operate, there is no genuine issue as to any material fact concerning whether Defendant's accused products literally infringe the '776 Patent. Accordingly, because every limitation of claims 1 and 18 are not found in the accused products, this Court may grant summary judgment on the question of whether the accused products do not literally infringe the '776 Patent.

Id. at 859.

2. Symantec II

On appeal, the Federal Circuit rejected this Court's construction of the term "storage." The Court of Appeals concluded that "storage" "occurs when the incoming digital data [are] sufficiently present on the destination storage medium and accessible by the operating system or other programs so that any viruses contained in the data can spread and infect the computer system." Symantec II, 265 F.3d at 1342 (internal quotation marks and citation omitted) (alteration in original). In adopting this claim construction, the court reasoned:

The '776 patent distinguishes prior art virus scanning programs because they "do not automatically prevent the virus from being stored on the medium in the first place, hence they cannot totally prevent the virus from attacking or spreading." '776 patent, col. 1, 11. 51-54. Thus, "storage" of the virus is identified with the virus's ability to spread and infect the computer system. A virus may not spread or infect the computer system, however, unless it is accessed by the operating system or other programs.

Symantec II, 265 F.3d at 1342.

The Federal Circuit also rejected this Court's infringement analysis, concluding "that the conflicting affidavits of the parties' experts leave material fact questions unanswered." Id. In contrast to this Court's conclusion, the Federal Circuit found that Defendant's expert, Dr. Melvin, and Plaintiff's expert, Dr. John G. Geske, "did not in fact agree." Id. The court stated:

The experts described the operation of the accused products in different ways. Symantec's expert, Dr. Melvin, described the operation of NAV as occurring in a sequence of steps. In this sequence, first (step one) a file is transferred for storage onto the destination storage medium. This transfer includes opening a new file on the storage medium and recording incoming data into the new file. Second (step two), the application causing the transfer makes a request to...