Trs. of Columbia Univ. in N.Y. v. NortonLifeLock, Inc.

• Decision Date: 23 December 2021
• Docket Number: Civil Action No. 3:13cv808
• Citation: 580 F.Supp.3d 236
• Parties: The TRUSTEES OF COLUMBIA UNIVERSITY IN the CITY OF NEW YORK, Plaintiff, v. NORTONLIFELOCK, INC., Defendant.
• Court: U.S. District Court — Eastern District of Virginia

580 F.Supp.3d 236

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

v.NORTONLIFELOCK, INC., Defendant.

Civil Action No. 3:13cv808

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

Signed December 23, 2021

Filed January 13, 2022

Dana Duane McDaniel, Clay Sutton Hester, John Michael Erbach, Spotts Fain PC, Richmond, VA, Alexander Nourse Gross, Pro Hac Vice, Christopher Alan Graham, Pro Hac Vice, Dustin Francis Guzior, Pro Hac Vice, Garrard Russ Beeney, Pro Hac Vice, Gillian Palmer Seaman, Pro Hac Vice, Jessica Rogers Ecker, Pro Hac Vice, Stephen Joseph Elliott, Pro Hac Vice, Steve Hsieh, Pro Hac Vice, Wen-Ying Angela Chang, Pro Hac Vice, Sullivan & Cromwell LLP, New York, NY, for Plaintiff.

Dabney Jefferson Carr, IV, Troutman Pepper Hamilton Sanders LLP, Richmond, VA, Alexander Rudis, 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, 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, Jared Weston Newton, Nina Tallon, Pro Hac Vice, Derek Lawrence Shaffer, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Washington, DC, Laura Anne Kuykendall, Troutman Pepper Hamilton Sanders LLP, Richmond, VA, Meghan Elizabeth Bordonaro, Quinn Emanuel Urquhart & Sullivan, LLP, Redwood Shores, CA, Yury Kapgan, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Los Angeles, CA, for Defendant.

MEMORANDUM OPINION

M. Hannah Lauck, United States District JudgeThis matter comes before the Court on DefendantNortonLifeLock, Inc.'s ("Norton")¹Motion for Partial Summary Judgment(the "Partial Motion for Summary Judgment").(ECF No. 312.)Plaintiffthe Trustees of Columbia University in the City of New York("Columbia") responded, (ECF No. 325),² and Norton replied, (ECF No. 333).This 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.

The Court exercises jurisdiction pursuant to 28 U.S.C. §§ 1331³and1367.⁴For the reasons that follow, the Court will grant in part and deny in part the Partial Motion for Summary Judgment.

I.Factual and Procedural Background

This longstanding litigation comes before the Court on remand from the United States Court of Appeals for the Federal Circuit and following an inter partes review by the Patent Trial and Appeals Board(the "PTAB") of the United States Patent and Trademark Office(the "PTO"), the outcome of which the Federal Circuit affirmed.Although the factual and procedural background of this matter are now well-known, because the Partial Motion for Summary Judgment speaks to a patent not yet substantively addressed in the Court's prior opinions—the 8,549,643 Patent (the "643 Patent")—the Court sets forth the relevant factual and procedural background below.

A.Factual Background⁵

In its Amended Complaint, Columbia brings claims under both federal and state law.(Am. Compl. ¶ 6, ECF No. 12.)Specifically, Columbia alleges that Norton's Antivirus software infringed on six patents⁶ that Columbia owned—only two of which remain at issue—and seeks correction of inventorship, or in the alternative, joint inventorship for the 643 Patent (the "Federal Claims").Columbia also brings three state law claims for relief—unjust enrichment, fraudulent concealment, and conversion—arising out of the 643 Patent, a patent owned by Norton, but which Columbia believes Norton unlawfully obtained (the "State Law Claims").The 643 Patent is known as a Decoy or Trap-Based Patent.(Mem. Supp. PartialMot. Summ. J. Ex. 11"Sept. 24, 2009 Notice of Publication of Application" 2, ECF No. 313-11 (trap-based decoy is allowed).)

The Court will address each of Columbia's State Law Claims when deciding the instant Partial Motion for Summary Judgment.As to the Federal Claims, the Court will analyze whether prosecution history estoppel bars Columbia from making certain arguments under the doctrine of equivalents.Regarding Columbia's infringement claims for the 115 Patent and the 322 Patent,⁷ Norton has not moved for summary judgment on Columbia's claim for correction of inventorship of the 643 Patent (Count Ten), or in the alternative, joint inventorship of the 643 Patent (Count Eleven)—the two remaining Federal Claims.

The Court will first present the factual background relevant to the State Law Claims.Norton's challenges to these claims arise out of a Mutual Non-Disclosure Agreement signed by Columbia and Norton's predecessor entity, Symantec.To address Norton's challenges, the Court must also introduce the discussions between two professors at Columbia, Drs. Salvatore Stolfo and Angelos Keromytis, and individuals who worked with Norton's predecessor entity.(SeeAm. Compl. ¶¶ 11–12, ECF No. 12.)Those discussions culminated in a series of proposals which allegedly became the 643 Patent and several patent applications by Columbia.

Following this discussion, the Court will to the Federal Infringement Claims, which require the Court to look to the prosecution history of the 115 and 322 Patents.

1.Factual Background as to the State Law Claims

a. In 2004, Columbia and Norton Enter into the Mutual Non-Disclosure Agreement

On November 29, 2004, Columbia and Norton entered into a "Mutual Non-Disclosure Agreement"(the "NDA"), governed by New York law, identifying that they wished to "disclose and to receive the confidential information of the other Party."(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 2, 5,⁸ECF No. 313-1.)Specifically, Columbia and Norton recognized that "[t]he purpose for the disclosure/exchange of Confidential Information between [Norton][and] Dr. Stolfo is facilitating discussions between the parties regarding a possible collaboration."(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 3, ECF No. 313-1.)

The NDA defined "Confidential Information" as "information not generally known to the public, in writing, oral, or in any other form ... that a Party marks as confidential, proprietary or other such marking."(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 2, ECF No. 313-1.)The NDA identified a non-exhaustive list of items that could be considered Confidential Information, including "technical information, discoveries, methodologies, ideas, designs, concepts, drawings, specifications, techniques, models, data, software code, algorithms, documentation," among others.(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 2, ECF No. 313-1.)

The NDA specified when information could no longer be considered Confidential Information.(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 2, ECF No. 313-1.)In relevant part, it stated that "Confidential information shall not include that information that the Receiving Party can establish: (i) is, or has subsequently become, rightfully in the public domain without the Receiving Party's breach of any obligation owed to the Disclosing Party ...."(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 2, ECF No. 313-1.)

The NDA applied some restrictions to disclosures by the Parties.For instance, the NDA restricted the "[t]he Receiving Party" from "disclos[ing] any Confidential Information to third parties for five (5) years following the effective date of this Agreement."(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 3, ECF No. 313-1.)Similarly, the NDA provided in that same paragraph, "[t]he Receiving Party agrees not to publish, disclose, or allow disclosure to others of, (i) any Confidential Information, in whole or in part."(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 3, ECF No. 313-1.)In a separate paragraph, Columbia and Norton agreed that "[t]he Parties shall use Confidential Information only for the Purpose for which it was disclosed and shall not use or exploit such information for their own benefit or the benefit of a third party without the prior written consent of the Disclosing Party."(Mem. Supp. PartialMot. Summ. J. Ex. 1"NDA" 3, ECF No. 313-1.

b. In 2006, Columbia and Norton Collaborate on the 2006 NICECAP Proposal

On May 3, 2006, Brian Witten, a Norton employee, contacted Columbia professors Dr. Keromytis and Dr. Stolfo about the possibility of collaborating on a new proposal for the National Intelligence Community Enterprise Cyber Assurance Program (the "2006 NICECAP Proposal").(Mem. Supp. PartialMot. Summ. J. Ex. 2"May 4, 2006 Email from Witten to Stolfo" 2, ECF No. 314-1.Witten explained that [redacted]⁹ (Mem. Supp. PartialMot. Summ. J. Ex. 2"May 4, 2006 Email from Witten to Stolfo" 2, ECF No. 314-1.That same day, Dr. Keromytis replied, saying that [redacted]¹⁰ (Mem. Opp. Partial Mot. Summ. J. Ex. C "May 4, 2006 Email from Keromytis to Witten" 3, ECF No. 320-2.Witten asked whether Norton and Columbia "[s]hould ... work together."The next day, May 4, 2006, Dr. Keromytis agreed that Columbia and Norton should "work together on this."(Mem. Opp. Partial Mot. Summ. J. Ex. C "May 4, 2006 Email from Keromytis to Witten" 2, ECF No. 320-2.)

After Columbia and Norton agreed to work together, Dr. Keromytis and Dr. Stolfo exchanged drafts of the proposal with Witten.(See Mem. Opp. Partial Mot. Summ. J. Ex. D "May 12, 2006 Email from Keromytis to Witten and Stolfo,"ECF No. 320-3; Mem. Opp. Partial Mot. Summ. J. Ex. E "May 14, 2006 Email from Keromytis to Witten and Stolfo,"ECF No. 320-4.)Dr. Stolfo testified in his deposition that he had conversations with Brian Witten.(SeeMem. Opp. Partial Mot. Summ. J. Ex. B "Stolfo Dep." 5, ECF No. 320-1.)¹¹Dr. Keromytis also stated that he had engaged in discussions with Norton.(SeeMem. Opp. Partial Mot. Summ. J. Ex. F "Keromytis Dep." 4, ECF No. 321-7.)

On May 22, 2006, roughly three weeks after initially contacting Dr. Stolfo and Dr. Keromytis, Witten...