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Trustees of Columbia University in City of New York v. Symantec Corp.

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

July 2, 2019

THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK, Plaintiff,
v.
SYMANTEC CORPORATION, Defendant.

          MEMORANDUM OPINION "THE MARKMAN OPINION"

          M. HANNAH LAUCK UNITED STATES DISTRICT JUDGE.

         This matter comes before the Court on four motions:

1. Defendant Symantec Corporation's ("Symantec") Motion to Permit Additional Claim Construction Proceedings (the "Markman Motion"), [1] (ECF No. 204);
2. Symantec's Motion to File Documents Under Seal ("Symantec's Motion to Seal"), [2] (ECF No. 206); and,
3. Plaintiff the Trustees of Columbia University in the City of New York's ("Columbia")[3] Motion to File Exhibits Under Seal ("Columbia's Motion to Seal"), [4] (ECF No. 214).

         The Court heard oral argument on the Markman Motion and the matter is ripe for disposition. The Court exercises jurisdiction pursuant to 28 U.S.C. § 1331.[5] For the reasons that follow, the Court will grant the Markman Motion as to "anomalous" as to the phrase "model of function calls for the at least a [part/portion] of the program."[6] For ease of reference, the Court will occasionally refer to this opinion as the "Markman Opinion," and the companion memorandum opinion and order as the "Inter Partes Review Opinion."

         I. Procedural Background

         A. Litigation History in This Court

         On December 24, 2013, Columbia filed an Amended Complaint alleging that Symantec's Norton Antivirus software infringed on six patents[7] 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 Markman hearing[11] for September 4, 2014, and the trial for January 5-16, 2015. (ECF No. 54.) The scheduling and pretrial order also set the claim construction briefing schedule. (Id.) The scheduling and pretrial order warned that "[c]ounsel are advised that all time limits and restrictions outlined herein shall be strictly observed." (Scheduling & Pretrial Order ¶ 26 (underline in original).) 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 its invalidity contentions on Columbia and identified dozens of grounds of invalidity including patents, articles, and systems.

         After that, both Columbia and Symantec timely filed their claim construction briefs with supporting documents. (ECF Nos. 106, 107.) The Parties each submitted their responses to the initial claim construction briefs. (ECF Nos. 109, 110.)

         Approximately one week later, the Court held the Markman hearing. (ECF No. 121.) Following that hearing, the Court issued a Claim Construction Order (the "Claim Construction Order"), construing nine terms. (Claim Construction Order 1-2, ECF No. 123.) As to the 115 and 322 family of patents (still at issue in the litigation) the Court construed three terms: "anomalous," "emulator," and "application community."[12] (Id. 2.) Relevant to this Markman Opinion, the Court construed "anomalous" as "[d]eviation/deviating from a model of typical, attack-free computer system usage." (Id.)

         Two days after the Court issued the Claim Construction Order, Columbia filed a Motion for Clarification of Claim Construction Order (the "Motion for Clarification"). (ECF No. 128.) In relevant part, Columbia asked that the Court clarify the meaning of the word "anomalous" as used in the 115 Patent and the 322 Patent.[13] (Mem. Supp. Mot. Clarification 2-3, ECF No. 129.) On October 23, 2014, following briefing from both Parties, the Court issued its Clarified Claim Construction Order (the "Clarified Claim Construction Order"). (ECF No. 146.) In the Clarified Claim Construction Order, the Court, looking to claim 1 of the 084 Patent for guidance, found that the model to which anomalous referred "is generated with only attack-free data." (Clarified Claim Construction Order 2, 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 Rule 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. The next day, November 4, 2014, the Court entered the partial final judgment requested by Columbia and Symantec[15] (the "Partial Final Judgment Order"). (ECF No. 150).

         Prior to entry of the Partial Final Judgment Order, neither Columbia nor Symantec asked the Court to define "model of function calls for the at least a [part/portion] of the program." Symantec concedes that it knew of the Parties' dispute as to the proper definition of this term prior to the entry of the Partial Final Judgment Order, but claims that because the Partial Final Judgment Order seemingly ended the case in Symantec's favor, it would have been "ludicrous" for it to raise the issue in the days leading up to Court's entry of the Partial Final Judgment Order. (Reply 12, ECF No. 222.)

         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 No. 150), the Court's original Claim Construction Order, (ECF No. 123), and the Court's 2014 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 grant of final judgment and 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 "reversed the district court's construction of 'anomalous, '" and the Court's stipulated judgment as to the 115 and 322 patents. The Federal Circuit then remanded for proceedings consistent with its opinion. Id. at 1370-71.

         This part of the 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 Paries 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, 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.) Thus, two avenues of additional proceedings-one started by each party-commenced in parallel actions at approximately the same time. 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.Appx. 1021 (Fed. Cir. 2018).

         On July 1, 2015, PTAB construed the terms in the patent claims pursuant to their "broadest reasonable construction"[16] and fully instituted inter partes review on all of Symantec's asserted grounds of invalidity.[17] (Id.). On June 30, 2016, the PTAB issued separate final written decisions as to the 115 Patent and 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.[18]

         D. The Second Federal Circuit Appeal: Inter Paries 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 322 patents. (ECF No. 167.) On appeal, in an assessment separate from its 2016 decision regarding this Court's Claim Construction Orders, the Federal Circuit, in 2018, affirmed 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 Fed.Appx. 1021, 1022 (Fed. Cir. 2018).[19]

         E. The Current Posture of the Case

         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.[20] Only those twelve patent claims in the 115 Patent and six patent claims in the 322 Patent that the PTAB found valid remain.

         After the issuance of the Federal Circuit's 2018 mandate regarding the PTAB's inter partes review of the 115 and 322 patents, Columbia filed an unopposed Motion to Reopen Proceedings (the "Motion to Reopen"), (ECF No. 179), which the Court granted, (ECF No. 181). On October 4, 2018, both Parties attended a pretrial conference. Following that pretrial conference, Symantec filed the Markman Motion. Columbia responded in opposition, and Symantec replied.

         II. Applicable Law: Principles of Claim ...


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