Trs. of Columbia Univ. in City of New York v. NortonLifeLock Inc.
| Docket Number | Civil Action 3:13cv808 |
| Decision Date | 13 January 2022 |
| 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 |
MMORANDUM OPINION
This matter comes before the Court on Defendant NortonLifeLock Inc. 's (''Norton., )[1] Motion for Parta Suma Judgment (the "Partial Motion for Summary Judgment"). (ECF No. 312.) Plaintiff the 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 §§ 1331[3] and 1367.[4] For the reasons that follow, the Court will grant in part and deny in part the Partial Motion for Summary Judgment.
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 Parta Motion for Swmary Judgment speaks to a patent not yet substantively addressed in the Court's prior opinions-the 8, 549, 643 Patent (the "643 Patent"}e Court sets forth the relevant factual and procedural background below.
In its Amended Complaint, Colwbia 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 patents[6] that Columbia oweonly 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, fudulent 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. (
The Court will address each of Colwbia' 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)--te two remaining Federal Claims.
The Court will first present the factual background relevant to the State Law Claims. Norton's challenges to these claims ase 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, Ors. Salvatore Stolfo and Angelos Keromytis, and individuals who worked with Norton's predecessor entity. (See Am. 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 wll t to the Federal Infringement Claims, which require the Court to look to the prosecution history of the 115 and 322 Patents.
On November 29, 2004, Columbia and Norton entered into a "Mutual Non-Disclosure Agreement" (the ''OA''), governed by New York law, identifying that they wished to "disclose and to receive the confidential information of the other Party." (Mem. Supp. Partial Mot. Summ. J. Ex. 1 ''DA" 2, 5, [8] ECF No. 313-1.) Specifically, Columbia and Norton recognized that "[t]he purpose for the disclosure/exchange of Confidential Infonation between [Norton] [and] Dr. Stolfo is facilitating discussions between the parties regarding a possible collaboration." (Mem. Supp. Partial Mot. Summ. J. Ex. 1 "NDA" 3, ECF No. 313-1.)
The NDA defined "Confidential Infnnation" 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. Partial Mot. 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. Partial Mot. Summ. J. Ex. 1 "NDA" 2, ECF No. 313-1.)
The NDA specified when infonnation could no longer be considered Confidential Infration. (Mem. Supp. Partial Mot. Summ. J. Ex. 1 ''NDA" 2, ECF No. 313-1.) In relevant part, it stated that "Confidential lfonnation 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. Partial Mot. Summ. J. Ex. 1 "NOA" 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 "disclosing] any Confidential Information to third parties for five (5) years following the effective date of this Agreement." (Mem. Supp. Partial Mot. Summ. J. Ex. 1 ''A" 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. Partial Mot. 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 Infonnation only for the Purpose for which it was disclosed and shall not use or exploit such infonation for their own benefit or the benefit of a third party without the prior written consent of the Disclosing Party." (Mem. Supp. Partial Mot. Summ. J. Ex. 1 ''NDA" 3, ECF No.313-1.)
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 Partial Mot. Summ. J. Ex. 2 "May 4, 2006 Email from Witten to Stolfo" 2, ECF No. 314-1.) Witten explained that [XXXXX] [9] [XXXXX] That same day, Dr. Keromytis replied, saying that [XXXXX] (Mem. Opp. Partial Mot. Summ. J. 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[10] 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. (See Mem. Opp. Partial Mot. Summ. J. Ex. B "Stolfo Dep." 5, ECF No. 320-1.)[11] Dr. Keromytis also stated that he had engaged in discussions with Norton. (See Mem. 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 submitted the draft proposal. (Mem. Supp. Partial Mot Summ. J. Ex. 5 "May 22, 2006 Email from Witten to Stolfo" 2, ECF No. 314-2; see generally Mem. Supp. Partial Mot. Summ. J. Ex. 6 "May 22, 2006 NICECAP Draft Proposal," ECF No. 314-3.) On August 29, 2006, over three months later, Witten submitted the Final 2006 NICECAP Proposal. (See Mem. Supp. Partia Mot. Summ. J. Ex. 8 "Aug. 29, 2006 NICECAP Final Proposal" 2, 26, ECF No. 314-4.) Columbia and Norton entitled the 2006 NICECAP Final Proposal "Honeypots for Insider Threats on Closed Intelligence Networks." (Mem. Supp. Partial Mot. Summ. J. Ex. 8 "Aug. 29, 2006 NICECAP Final Proposal" 2, ECF No. 314-4.) As noted above, this "honeypot'' technology can be called Decoy or Trap-Based defenses.
C. One Week Before Norton Submitted the 2006 NICECAP Final Proposal, Columbia filled the 898 Provisional Application, Which a Later Patent (the 191 Patent) Incorporates in Its Entirety
On May 31, 2006, one week before Witten submitted the 2006 NICECAP Final Proposal, Dr. Keromytis and Dr. Stolfo filed a provisional patent application[12] —U.S. Provisional Patent Application 60/8099898 (the "898 Provisional Application''...
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