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

• Decision Date: 19 November 2019
• Docket Number: Civil Action No. 3:13cv808
• Citation: 425 F.Supp.3d 601
• Court: U.S. District Court — Eastern District of Virginia
• Parties: The TRUSTEES OF COLUMBIA UNIVERSITY IN the CITY OF NEW YORK, Plaintiff, v. SYMANTEC CORPORATION, Defendant.

425 F.Supp.3d 601

The TRUSTEES OF COLUMBIA UNIVERSITY IN the CITY OF NEW YORK, Plaintiff,

v.SYMANTEC CORPORATION, Defendant.

Civil Action No. 3:13cv808

United States District Court, E.D. Virginia, Richmond Division.

Signed November 19, 2019

Dana Duane McDaniel, John Michael Erbach, Spotts Fain PC, Richmond, VA, Dustin Guzior, Pro Hac Vice, Garrard Russ Beeney, Pro Hac Vice, Stephen Joseph Elliott, Pro Hac Vice, William Rudolph Kleysteuber, IV, Pro Hac Vice, Christopher Alan Graham, Pro Hac Vice, Steve Hsieh, Pro Hac Vice, Wen-Ying Angela Chang, Pro Hac Vice, Sullivan & Cromwell LLP, New York, NY, Robert Michael Tyler, University of Virginia Office of University Counsel, Charlottesville, VA, for Plaintiff.

Dabney Jefferson Carr, IV, Troutman Sanders LLP, Richmond, VA, David Aaron Nelson, Pro Hac Vice, John Poulos, Pro Hac Vice, Nathaniel Andrew Hamstra, Pro Hac Vice, Stephen Andrew Swedlow, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Chicago, IL, Meghan Elizabeth Bordonaro, Quinn Emanuel Urquhart & Sullivan, LLP, Redwood Shores, CA, Alexander Rudis, Pro Hac Vice, David Morad Elihu, Pro Hac Vice, Richard Wolter Erwine, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, Benjamin L. Singer, Pro Hac Vice, Colt / Singer / Bea LLP, San Francisco, CA, Derek Lawrence Shaffer, Pro Hac Vice, Jared Weston Newton, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC, Yury Kapgan, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Los Angeles, CA, for Defendant.

MEMORANDUM OPINION

M. Hannah Lauck, United States District Judge

This matter comes before the Court on Defendant Symantec Corporation's ("Symantec") Motion for Judgment on the Pleadings pursuant to Federal Rule of Civil Procedure 12(c)¹ and 35 U.S.C. § 101² (the "Motion for Judgment"). (ECF No. 245.) Plaintiff the Trustees of Columbia University in the City of New York ("Columbia") responded. (ECF No. 264.) Symantec replied, (ECF No. 267), and Columbia, with the Court's leave, filed a sur-reply, (ECF No. 279). The matter is ripe for disposition. The Court dispenses with oral argument because the materials before it adequately present the facts and legal contentions, and argument would not aid the decisional process.³ The Court exercises jurisdiction pursuant to 28 U.S.C. § 1331.⁴ For the reasons that follow, the Court will deny the Motion for Judgment.

I. Procedural and Factual Background

Columbia began this patent infringement and related claims litigation⁵ against Symantec nearly six years ago. Columbia alleges that Symantec's Norton Antivirus software infringed on two of Columbia's patents.⁶ (ECF No. 12.) Symantec now contends that the remaining patent claims of those two patents do not constitute valid patentable ideas under 35 U.S.C. § 101 because the patent claims are directed to an abstract idea and lack an inventive concept. Because years of litigation have significantly reduced the issues this Court must address, the Court will first summarize this matter's procedural history and will then address the contours of the specific patent claims at issue.

A. Relevant Procedural Background

The Court provided an in-depth discussion of the procedural history in its prior Memorandum Opinions—the Inter Partes Review Opinion, (ECF No. 251), and the Markman Opinion, (ECF No. 253)—and incorporates that description here. The Court assumes familiarity with those decisions and provides only a summary of the procedural history prior to the Motion for Judgment.

After Columbia filed its Amended Complaint, (ECF No. 12), Symantec filed an Answer, (ECF No. 20), asserting, in relevant part, that the patent claims included in Columbia's patents do not constitute valid patent claims under 35 U.S.C. § 101.⁷ Following an initial pretrial conference, the Court held a Markman hearing and issued a Claim Construction Order (the "Claim Construction Order"), (ECF No. 123), and a Clarified Claim Construction Order (the "Clarified Claim Construction Order"), (ECF No. 146).

Ten days later, based on the Court's Clarified Claim Construction Order, Columbia and Symantec jointly moved the Court to issue final judgment pursuant to Federal Rule of Civil Procedure 54(b)⁸ as to Columbia's first through sixth claims for relief and staying the case as to its seventh through eleventh claims. (Jt. Mot. Entry Final J. 1–2, ECF No. 148.) The Parties specifically asked the Court to enter "judgment of non-infringement on all asserted claims and [to] find[ ] ... invalidity for indefiniteness of claims 1 and 16 of the [ ]544 [P]atent." Trs. of Columbia Univ. , 811 F.3d at 1362. The next day, the Court entered the partial final judgment requested by Columbia and Symantec⁹ (the "Partial Final Judgment Order"). (ECF No. 150.)

Approximately one week later, having seemingly lost its case in this Court, Columbia filed its Notice of Appeal to the Federal Circuit and appealed the Court's Partial Final Judgment Order, the Court's original Claim Construction Order, and the Court's Clarified Claim Construction Order. (Notice Appeal 1, ECF No. 152.) In a 2016 opinion, the Federal Circuit affirmed in part and reversed and remanded in part the Court's grant of final judgment and its claim construction orders. See Trs. of Columbia Univ. , 811 F.3d at 1371. Specifically, the Federal Circuit upheld the judgment of non-infringement as to the 544, 907, 084, and 306 patents. Id. at 1366–67, 1369. With regard to the 115 and 322 patents —the patents at issue in the Motion for Judgment—the Federal Circuit "reverse[d] the district court's construction of ‘anomalous," " " and the Court's stipulated judgment as to the 115 and 322 patents. Id. at 1371. The Federal Circuit then remanded for proceedings consistent with its opinion. Id.

After the Court issued its Partial Final Judgment Order and while the Federal Circuit considered Columbia's appeal from that order, Symantec, who prevailed below, filed petitions with the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office ("PTO") requesting, in relevant part, inter partes review of the 115 and 322 patents at issue in the litigation. (Notice Pets. Inter Partes Review 1, ECF No. 158.)

Symantec presented only a subset of its grounds of purported invalidity to the PTAB and the PTAB instituted inter partes review on all of Symantec's asserted grounds. The PTAB issued separate final written decisions as to the 115 Patent and the 322 Patent. In these decisions, the PTAB found patentable under 35 U.S.C. §§ 102 and 103 twelve claims of the 115 Patent —2, 9, 10, 12, 19, 20, 23, 30, 31, 33, 40, and 41—and six claims of the 322 Patent —2, 8, 11, 17, 25, and 27. Symantec Corp. v. Trs. of Columbia Univ. in the City of New York , IPR 2015-00375, 2016 WL 3574961 (P.T.A.B. June 30, 2016) ; Symantec Corp. v. Trs. of Columbia Univ. in the City of New York , IPR 2015-00377 (P.T.A.B. June 30, 2016). The PTAB found that Columbia could not patent the thirty remaining claims of the 115 Patent and the twenty-one remaining claims 322 Patent. Id.

In 2018, in an assessment separate from its 2016 decision regarding this Court's Claim Construction Orders, the Federal Circuit affirmed the PTAB's decisions as to the validity of the patent claims in the 115 and 322 Patents in all respects. Trs. of Columbia Univ. in the City of New York v. Symantec Corp. , 714 F. App'x 1021, 1022 (Fed. Cir. 2018).¹⁰

Upon return to this Court, Columbia filed a Motion for Partial Summary Judgment, (ECF No. 198), and Symantec filed a Motion to Permit Additional Claim Construction Proceedings (the "Markman Motion"), (ECF No. 204). The Court granted Columbia's Motion for Partial Summary Judgment, which precludes Symantec from relying on prior art arguments that it did not raise during inter partes review before the PTAB. See Trs. of Columbia Univ. in the City of New York v. Symantec Corp. , 390 F. Supp. 3d 665, 679 (E.D. Va. 2019) (hereinafter the " Inter Partes Review Opinion"). The Court also granted Symantec's Markman Motion, allowing the Parties to conduct additional Markman briefing on the proper definition of "anomalous" and "model of function calls for the at least a [part/portion] of the program." See Trs. of Columbia Univ. in the City of New York v. Symantec Corp. , No. 3:13cv808, 2019 WL 2774321 (E.D. Va. July 2, 2019) (hereinafter the " Markman Opinion").

While the Motion for Partial Summary Judgment and the Markman Motion were still pending, Symantec filed the Motion for Judgment. The Court initially stayed briefing on the Motion for Judgment because resolution of Columbia's Motion for Partial Summary Judgment "w[ould] likely affect the required briefing for the Motion for Judgment." (May 30, 2019 Order 1, ECF No. 248.) The Court later granted Columbia's Motion for Summary Judgment—which precludes Symantec from relying on prior art that it could have, but chose not to, raise before the PTAB in inter partes review. (July 2, 2019 Order 1, ECF No. 252.)

Following an August 1, 2019 Court Conference, the Court lifted the stay imposed on the Parties' briefing on the Motion for Judgment. (Aug. 5, 2019 Order 1, ECF No. 263.) Columbia filed its response to the Motion for Judgment and Symantec replied. With leave of Court, Columbia filed a sur-reply to Symantec's reply.

B. Factual Background ¹¹

All Parties recognize that the nearly six-years of litigation have significantly narrowed the matters before the Court.¹² Specifically, following both the appeal from this Court's prior orders and the appeal from the PTAB's inter partes review decisions, only three patents remain at issue: the 115 Patent, the 322 Patent, and the 643 Patent.¹³ Only those twelve patent claims in the 115 Patent and six patent claims in the 322 Patent that the PTAB found valid survive. Symantec's affirmative defenses have also been narrowed by this Court's decision in the Inter Partes Review Opinion such that it may no longer rely on the prior art arguments that it chose not to raise before the PTAB. Inter Partes...