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

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

November 19, 2019

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

          MEMORANDUM OPINION

         M. Hannah Lauck, United States Judge

         This matter comes before the Court on Defendant Symantec Corporation's ("Symantec") Motion for Judgment on the Pleadings pursuant to Federal Rule of Civil Procedure 12(c)[1] and 35 U.S.C. § 101[2] (the "Motion for Judgment"). (ECF No. 245.) Plaintiff the Trustees of Columbia University in the City of New York ("Columbia") responded. (ECF No. 264.) Symantec replied, (ECF No. 267), and Columbia, with the Court's leave, filed a sur-reply, (ECF No. 279). The 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.[3] The Court exercises jurisdiction pursuant to 28 U.S.C. § 1331.[4] For the reasons that follow, the Court will deny the Motion for Judgment.

         I. Procedural and Factual Background

         Columbia began this patent infringement and related claims litigation[5] against Symantec nearly six years ago. Columbia alleges that Symantec's Norton Antivirus software infringed on two of Columbia's patents.[6] (ECF No. 12.) Symantec now contends that the remaining patent claims of those two patents do not constitute valid patentable ideas under 35 U.S.C. § 101 because the patent claims are directed to an abstract idea and lack an inventive concept. Because years of litigation have significantly reduced the issues this Court must address, the Court will first summarize this matter's procedural history and will then address the contours of the specific patent claims at issue.

         A. Relevant Procedural Background

         The Court provided an in-depth discussion of the procedural history in its prior Memorandum Opinions-the Inter Partes Review Opinion, (ECF No. 251), and the Markman Opinion, (ECF No. 253)-and incorporates that description here. The Court assumes familiarity with those decisions and provides only a summary of the procedural history prior to the Motion for Judgment.

         After Columbia filed its Amended Complaint, (ECF No. 12), Symantec filed an Answer, (ECF No. 20), asserting, in relevant part, that the patent claims included in Columbia's patents do not constitute valid patent claims under 35 U.S.C. § 101.[7] Following an initial pretrial conference, the Court held a Markman hearing and issued a Claim Construction Order (the "Claim Construction Order"), (ECF No. 123), and a Clarified Claim Construction Order (the "Clarified Claim Construction Order"), (ECF No. 146).

         Ten days later, based on the Court's Clarified Claim Construction Order, Columbia and Symantec jointly moved the Court to issue final judgment pursuant to Federal Rule of Civil Procedure 54(b)[8] 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, the Court entered the partial final judgment requested by Columbia and Symantec[9] (the "Partial Final Judgment Order"). (ECF No. 150.)

         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 Partial Final Judgment Order, the Court's original Claim Construction Order, and the Court's Clarified Claim Construction Order. (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 its 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 patents at issue in the Motion for Judgment-the Federal Circuit "reverse[d] the district court's construction of 'anomalous, '" and the Court's stipulated judgment as to the 115 and 322 patents. Id. at 1371. The Federal Circuit then remanded for proceedings consistent with its opinion. Id.

         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.)

         Symantec presented only a subset of its grounds of purported invalidity to the PTAB and the PTAB instituted inter partes review on all of Symantec's asserted grounds. The PTAB issued separate final written decisions as to the 115 Patent and the 322 Patent. In these decisions, the PTAB found patentable under 35 U.S.C. §§102 and 103 twelve claims of the 115 Patent-2, 9, 10, 12, 19, 20, 23, 30, 31, 33, 40, and 41-and six claims of the 322 Patent-2, 8, 11, 17, 25, and 27. Symantec Corp. v. Trs. of Columbia Univ. in the City of New York, IPR 2015-00375 (P.T.A.B. June 30, 2016); Symantec Corp. v. Trs. of Columbia Univ. in the City of New York, IPR 2015-00377 (P.T.A.B. June 30, 2016). The PTAB found that Columbia could not patent the thirty remaining claims of the 115 Patent and the twenty-one remaining claims 322 Patent. Id.

         In 2018, in an assessment separate from its 2016 decision regarding this Court's Claim Construction Orders, the Federal Circuit affirmed the 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 Yorkv. Symantec Corp., 714 Fed.Appx. 1021, 1022 (Fed. Cir. 2018).[10]

         Upon return to this Court, Columbia filed a Motion for Partial Summary Judgment, (ECF No. 198), and Symantec filed a Motion to Permit Additional Claim Construction Proceedings (the "Markman Motion"), (ECF No. 204). The Court granted Columbia's Motion for Partial Summary Judgment, which precludes Symantec from relying on prior art arguments that it did not raise during inter partes review before the PTAB. See Trs. of Columbia Univ. in the City of New York v. Symantec Corp., 390 F.Supp.3d 665, 679 (E.D. Va. 2019) (hereinafter the "Inter Partes Review Opinion"). The Court also granted Symantec's Markman Motion, allowing the Parties to conduct additional Markman briefing on the proper definition of "anomalous" and "model of function calls for the at least a [part/portion] of the program." See Trs. of Columbia Univ. in the City of New York v. Symantec Corp., No. 3:13cv808, 2019 WL 2774321 (E.D. Va. July 2, 2019) (hereinafter the "Markman Opinion").

         While the Motion for Partial Summary Judgment and the Markman Motion were still pending, Symantec filed the Motion for Judgment. The Court initially stayed briefing on the Motion for Judgment because resolution of Columbia's Motion for Partial Summary Judgment "w[ould] likely affect the required briefing for the Motion for Judgment." (May 30, 2019 Order 1, ECF No. 248.) The Court later granted Columbia's Motion for Summary Judgment-which precludes Symantec from relying on prior art that it could have, but chose not to, raise before the PTAB in inter partes review. (July 2, 2019 Order 1, ECF No. 252.)

         Following an August 1, 2019 Court Conference, the Court lifted the stay imposed on the Parties' briefing on the Motion for Judgment. (Aug. 5, 2019 Order 1, ECF No. 263.) Columbia filed its response to the Motion for Judgment and Symantec replied. With leave of Court, Columbia filed a sur-reply to Symantec's reply.

         B. Factual Background [11]

         All Parties recognize that the nearly six-years of litigation have significantly narrowed the matters before the Court.[12] Specifically, 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.[13] Only those twelve patent claims in the 115 Patent and six patent claims in the 322 Patent that the PTAB found valid survive.

         Symantec's affirmative defenses have also been narrowed by this Court's decision in the Inter Partes Review Opinion such that it may no longer rely on the prior art arguments that it chose not to raise before the PTAB. Inter Partes Review Opinion, 390 F.Supp.3d at 668. In the Motion for Judgment, Symantec seeks a judgment from this Court that the remaining patent claims of the 115 Patent and 322 Patent[14] do not constitute valid patent claims under 35 U.S.C. § 101. (Mot. Judgment 1.)

         The 322 Patent is a "[continuation of the 115 Patent. (322 Patent 1.) The two patents share a "common specification," which states that they contain "[m]ethods, media, and systems for detecting anomalous program executions." (Resp. Mot. Judgment 3, ECF No. 264; 322 Patent 1:49-50.) Columbia asserts that the

inventions of the 115 and 322 [P]atents share several common features including: (1) running at least a part of the program being monitored for malware in an "emulator"; (2) comparing one or more of the function calls made by the program in the emulator to a "model of function calls"; (3) identifying 'anomalous' function calls based on comparison with the model; and (4) notifying an "application community" of the anomalous function call.

(Resp. Mot. Judgment 3-4 (citing 322 Patent 2:20-26, 6:31-33).) Claim 2 of the 322 Patent represents the remaining patent claims:

A method for detecting anomalous program executions, comprising:
executing at least a portion of a program in an emulator; comparing a function call made in the emulator to a model of function calls for the at least a portion of the program, wherein the model is a combined model created from at least two models created using different computers; and identifying the function call as anomalous based on the comparison.

(322 Patent 20:47-55.) Claim 11 of the 322 Patent constitutes "[a] non-transitory computer-readable medium containing computer-executable instructions that, when executed by a processor, cause the processor to perform a method for detecting anomalous program executors, comprising" the same method from claim 2. (Id. 21:20-30.) Claim 27 of the 322 Patent sets forth the same method from claim 2, but constitutes a "system for detecting anomalous program executions." (Id. 22:38-48.) The 115 Patent, which preceded the 322 Patent, includes a similar method. (See 115 Patent 20:37-46.)

         In addition to those patent claims described above, the remaining claims of the 115 Patent and the 322 Patent are dependent patent claims because they seek to add limitations to the independent patent claims upon which they depend. These dependent claims can be grouped into four types: (1) application community claims; (2) indicator claims; (3) combined model claims; and, (4) random model claims. The groups are as follows:

(1) The "application community claims"-claims 2, 9, 10, 12, 19, and, 20 of the 115 Patent-depend upon a method or medium that requires the invention to notify an "application community" when it identifies an anomaly. (See, e.g., 115 Patent 20:36-46.)
(2) The "indicator claims"-claims 23, 30, 31, 33, 40, and, 41 of the 115 Patent-depend upon a method or medium that "modif[ies] a program to include indicators of program-level function calls being made during execution of the program." (See, e.g., Id. 21:50-62.)
(3) The "combined model claims"-claims 2, 12, 23, and 33 of the 115 Patent-seek to limit the method and medium from which they depend by requiring that the model constitute a "combined model from at least two models created using different computers." (See, e.g., Id. 20:47-49.)
(4) The "random model claims"-claims 9, 10, 19, 20, 30, 31, 40, and, 41 of the 115 Patent and claims 8, 17, and, 25 of the 322 Patent-seek to limit the method or medium from which they depend by requiring the invention "randomly select[]" the model or portion of the model against which the comparison will be made. (See, e.g., Id. 20:65-67; 21:1-2.)

         II. Standard of Review

         A. Motion for Judgment on the Pleadings: Rule 12(c)

         Federal Rule of Civil Procedure 12(c) allows a party to move for judgment on the pleadings "[a]fter the pleadings are closed-but early enough not to delay trial." Fed.R.Civ.P. 12(c). "A motion for judgment on the pleadings under Rule 12(c) is assessed under the same standards as a motion to dismiss under Rule 12(b)(6)." Occupy Columbia v. Haley, 738 F.3d 107, 115 (4th Cir. 2013) (citing City of Goldsboro, 178 F.3d at 243). "A Rule 12(c) motion for judgment on the pleadings therefore is also analyzed for compliance with the Supreme Court's holdings in Ashcroft v. Iqbal, 556 U.S. 662 (2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007)." U.S. v. Sum of Three Hundred Nine Million Five Hundred Thousand Dollars, 85 F.Supp.3d 111, 115 (D.D.C. 2015) (citations omitted).

         "It is axiomatic ... that for purposes of the court's consideration of the Rule 12(c) motion, all of the well pleaded factual allegations in the adversary's pleadings are assumed to be true and all contravening assertions in the movant's pleadings are taken to be false." 5C Arthur R. Miller, et al., Federal Practice and Procedure § 1368 (3d ed. 2019) (citing cases). Similar to a Rule 12(b)(6) motion, the Court must view all "the inferences to be drawn [from the facts] in the light most favorable to the nonmoving party." Id. "To survive a motion for judgment on the pleadings, a pleading need only provide a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what... the claim is and the grounds upon which it rests." Sum of Three Hundred Nine Million Five Hundred Thousand Dollars, 85 F.Supp.3d at 115 (citing Twombly, 550 U.S. at 555) (internal quotation marks omitted). "Patent eligibility can be determined on the pleadings under Rule 12(c) when there are no factual allegations that, when taken as true, prevent resolving the eligibility question as a matter of law." Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007 (Fed. Cir. 2018) (citing Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018); Berkeimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)).

         B. Statutory Presumption of Validity: 35 U.S.C § 282(a)

         The Court begins, as it must, by presuming that the patent and patent claims are valid. See 35 U.S.C. § 282(a). Section 282(a) provides, in relevant part:

A patent shall be presumed valid. Each claim of a patent... shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

35 U.S.C. § 282(a). The party challenging the validity of a patent must "prov[e] the invalidity of each claim by clear and convincing evidence." Content Extraction & Transmission LLC v. WellsFargo Bank, Nat'l Assoc,776 F.3d 1343, 1348 (Fed. Cir. 2014) (citing Dana Corp. v. Am. Axle& ...


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