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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

          M. HANNAH LAUCK, UNITED STATES DISTRICT JUDGE

         "The Inter Partes Review Opinion"

         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 Judgment[1] 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 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 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 review[[1]] 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.Appx. 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 322 patents. (ECF No. 167.) On appeal, in an assessment separate from its 2016 decision regarding this Court's Claim Construction Orders, in 2018 the Federal Circuit 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).[21]

         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.[22] 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 decisions as to 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, Columbia sought leave to file for partial summary judgment. (ECF No. 195.) The Court granted Columbia's unopposed request, (ECF No. 197), and on October 5, 2018, Columbia filed the Partial Summary Judgment Motion. Symantec responded and Columbia replied.

         II. Standard of Review: Summary Judgment

         Summary judgment under Rule 56 is appropriate only when the Court, viewing the record as a whole and in the light most favorable to the nonmoving party, determines that there exists no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-24 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986). Once a party has properly filed evidence supporting the motion for summary judgment, the nonmoving party may not rest upon mere allegations in the pleadings, but instead must set forth specific facts illustrating genuine issues for trial. Celotex Corp., 477 U.S. at 322-24. These facts must be presented in the form of exhibits and sworn affidavits. Fed.R.Civ.P. 56(c).

         A court views the evidence and reasonable inferences drawn therefrom in the light most favorable to the nonmoving party. Anderson, 477 U.S. at 255. Whether an inference is reasonable must be considered in conjunction with competing inferences to the contrary. Sylvia Dev. Corp. v. Calvert Cty., 48 F.3d 810, 818 (4th Cir. 1995). Nonetheless, the nonmoving "party is entitled 'to have the credibility of his evidence as forecast assumed.'" Miller v. Leathers, 913 F.2d 1085, 1087 (4th Cir. 1990) (en banc) (quoting Charbonnages de France v. Smith, 597 F.2d 406, 414 (4th Cir. 1979)). Ultimately, the court must adhere to the affirmative obligation to bar factually unsupportable claims from proceeding to trial. Felty v. Graves-Humphreys Co., 818 F.2d 1126, 1128 (4th Cir. 1987) (citing Celotex Corp., U.S. at 323-24).

         III. Analysis

         First, the Court finds that no genuine dispute of material fact exists that precludes summary judgment on the issue of statutory estoppel. As to the merits, the Court concludes that the plain language of 35 U.S.C. § 315(e)(2) unambiguously estops Symantec from asserting as grounds of invalidity those dozens of additional grounds presented in its invalidity contentions which Symantec chose not to raise in its petitions for inter partes review. Contrary to Symantec's argument otherwise, the Federal Circuit's decision in Shaw does not preclude this result. Rather, the purpose of inter partes review and fundamental principles of fairness nearly compel it. For these reasons, the Court will grant the Partial Summary Judgment Motion.

         A. No Genuine Dispute of ...


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