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

• Decision Date: 02 July 2019
• Docket Number: Civil Action No. 3:13cv808
• 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.

390 F.Supp.3d 665

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 July 2, 2019

Dana Duane McDaniel, John Michael Erbach, Spotts Fain PC, Richmond, VA, Dustin Guzior, Garrard Russ Beeney, Stephen Joseph Elliott, William Rudolph Kleysteuber, IV, Sullivan & Cromwell LLP, New York, NY, Crawford Maclain Wells, David I. Gindler, Gavin Snyder, Jason G. Sheasby, Richard M. Birnholz, Thomas Charles Werner, Xinlin Li, Irell & Manella LLP, Los Angeles, CA, Michael Henry Strub, Jr., Irell & Manella LLP, Newport Beach, CA, 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, Nathaniel Andrew Hamstra, Stephen Andrew Swedlow, Quinn Emanuel Urquhart & Sullivan, LLP, Chicago, IL, Meghan Elizabeth Bordonaro, Quinn Emanuel Urquhart & Sullivan, LLP, Redwood Shores, CA, Alexander Rudis, David Morad Elihu, Richard Wolter Erwine, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, Benjamin L. Singer, Colt / Singer / Bea LLP, San Francisco, CA, Derek Lawrence Shaffer, Jared Weston Newton, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC, Yury Kapgan, Quinn Emanuel Urquhart & Sullivan LLP, Los Angeles, CA, for Defendant.

MEMORANDUM OPINION

"The Inter Partes Review Opinion"

M. Hannah Lauck, United States District Judge This matter comes before the Court on four motions filed by the Plaintiff the Trustees of Columbia University in the City of New York's ("Columbia"):

1. the Motion for Partial Summary Judgment¹ Regarding Inter Partes Review Estoppel (the "Partial Summary Judgment Motion"),² (ECF No. 198);³

2. the November 9, 2018 Motion for Leave to File Supplemental Authority (the "First Motion to File Supplemental Authority"), (ECF No. 223);

3. the February 4, 2019 Motion for Leave to File Supplemental Authority (the "Second Motion to File Supplemental Authority"), (ECF No. 240); and,

4. the May 9, 2019 Motion for Leave to File Supplemental Authority (the "Third Motion to File Supplemental Authority"), (ECF No. 243).

The Court heard oral argument on the Partial Summary Judgment Motion and the matter is ripe for disposition. The Court exercises jurisdiction pursuant to 28 U.S.C. § 1331.⁴ For the reasons that follow, the Court will grant the Motion for Partial Summary Judgment, which will preclude Symantec from supporting its invalidity affirmative defense with the dozens of grounds of invalidity it previously raised in its invalidity contentions, but chose not to assert in its petitions for inter partes review before the PTAB.⁵ For ease of reference, the Court will occasionally refer to this opinion and accompanying order as the " Inter Partes Review Opinion," and the companion memorandum opinion and order as the "Markman Opinion."

I. Procedural Background ⁶

A. Litigation Prior to Inter Partes Review

On December 24, 2013, Columbia filed an Amended Complaint alleging that Symantec's Norton Antivirus software infringed on six patents⁷ owned by Columbia, only two of which remain at issue. (ECF No. 12.) Columbia also raised five claims for relief arising out of one patent owned by Symantec, which Columbia believes Symantec unlawfully obtained.⁸ (ECF No. 12.) On January 14, 2014, Symantec answered.⁹ (ECF No. 20.) In its Answer, Symantec asserted several defenses, including that it did not infringe on Columbia's patents and that the patent claims in Columbia's patents do not constitute valid patent claims.¹⁰

On February 27, 2014, the Court held a pretrial conference. On March 5, 2014, the Court issued a scheduling and pretrial order, which scheduled the trial for January 5–16, 2015. (ECF No. 54.) On March 17, 2014, following a joint request from Columbia and Symantec, the Court entered an order setting the deadlines to file infringement and invalidity contentions. (ECF No. 56.) In that order, the Court ordered Symantec to provide Columbia "a list of all prior art on which it relies and a complete and detailed explanation of what it alleges the prior art shows and how that prior art invalidates the claims asserted by plaintiff." (Mar. 17, 2014 Order ¶ 5 (emphasis added), ECF No. 56.) On May 12, 2014, Symantec served this list—its invalidity contentions—on Columbia.

In its invalidity contentions, Symantec identified dozens of prior art that allegedly rendered both the 115 and 322 patents invalid, including 10 patents, 43 printed publications, and the systems DIDUCE and ReVirt.¹¹ (Id. 7–8.) With regard to the DIDUCE and ReVirt systems, Symantec included two articles—a 2002 article by Sudheendra Hangal and a 2002 article by George Dunlap—and source code publicly available on the Internet.¹² (Id. 8.)

On October 7, 2014, following briefing and a hearing,¹³ the Court issued a Claim Construction Order. (ECF No. 123.) Columbia then filed a Motion for Clarification of Claim Construction Order (the "Motion for Clarification"). (ECF No. 128.) Specifically, Columbia asked that the Court clarify the meanings of the phrase "probabilistic model of normal computer system usage" as used in the 084 Patent and the 306 Patent, and the word "anomalous" as used in the 115 Patent and the 322 Patent. (Mem. Supp. Mot. Clarification 2–3, ECF No. 129.) On October 23, 2014, the Court issued its Clarified Claim Construction Order. (ECF No. 146.)

Ten days later, based on the Court's 2014 Clarified Claim Construction Order, Columbia and Symantec jointly moved the Court to issue final judgment pursuant to Federal Rules of Civil Procedure 54(b)¹⁴ 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. On November 4, 2014, the Court entered the partial final judgment requested by Columbia and Symantec. (ECF No. 150.)

B. First Appeal to the Federal Circuit: Claim Construction Orders

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 November 4, 2014 Partial Final Judgment Order, (ECF Nos. 150, 151), the Court's original Claim Construction Order, (ECF No. 123), and the Court's Clarified Claim Construction Order, (ECF No. 146). (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 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 Federal Circuit vacated the Court's clarified construction of the term "anomalous," reversed the Court's judgment as to those two patents, and remanded for proceedings consistent with the Federal Circuit's opinion. Id. at 1370–71.

This appellate process left only Columbia's causes of action as to the 115 and 322 patents pending in this district court. Columbia's seventh through eleventh claims for relief that concern Symantec's 643 Patent, stayed by the Court in 2014, also remain pending before the Court.

C. The Inter Partes Review Proceedings

On December 5, 2014, after the Court issued its partial final judgment order and while the Federal Circuit considered Columbia's appeal from that order, Symantec (which 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 review¹⁵ of the 115 and 322 patents at issue in the litigation.¹⁶ (Notice Pets. Inter Partes Review 1, ECF No. 158.) Thus, two avenues of additional proceedings—one started by each party—commenced at approximately the same time. As did this Court's 2014 Claim Construction Orders, Symantec's inter partes review proceedings reached the Federal Circuit. The Federal Circuit's inter partes review decision, however, took two years longer than its order discussing this Court's 2014 Claim Construction Orders. Compare Trs. of Columbia Univ. in the City of New York v. Symantec Corp. , 811 F.3d 1359 (Fed. Cir. 2016), with Trs. of Columbia Univ. in the City of New York v. Symantec Corp. , 714 Fed. App'x 1021 (Fed. Cir. 2018).

Despite having identified dozens of grounds of invalidity while before the District Court as to both the 115 and 322 patents,¹⁷ Symantec plucked only a few of those grounds to assert in its petitions for inter partes review before the PTAB. Specifically, in its petition seeking inter partes review of the 115 Patent, Symantec asserted only three grounds of invalidity. (Mem. Supp. Summ. J. Mot. 9, ECF No. 199.) Similarly, in its petition relating to the 322 Patent, Symantec asserted only two grounds of invalidity. (Id. )

On July 1, 2015, the PTAB construed the terms in the patent claims pursuant to their "broadest reasonable construction"¹⁸ and fully instituted inter partes review on all of Symantec's asserted grounds of invalidity.¹⁹ (Id. ) On June 30, 2016, the PTAB issued separate final written decisions—one as to the 115 Patent and one as to the 322 Patent. In these decisions, PTAB found that Symantec proved that certain claims of the 115 Patent and the 322 Patent could not be patented but failed to meet that standard as to other patent claims.²⁰

D. The Second Federal Circuit Appeal: Inter Partes Review Appeal

On August 5, 2016, Columbia and Symantec jointly requested a one-year stay in the case pending before this Court to allow the Parties to appeal to the Federal Circuit the PTAB's inter partes review decisions concerning the 115 and...