United States District Court, E.D. Virginia, Richmond Division
THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK, Plaintiff,
NORTONLIFELOCK, INC., Defendant.
Hannah Lauck, United States district Judge
matter comes before the Court on Plaintiff the Trustees of
Columbia University in the City of New York
("Columbia") and Defendant NortonLifeLock,
Inc.'s ("Norton," and collectively with
Columbia, the "Parties") Supplemental
Markman Briefs. (ECF Nos. 292, 293.) Each Party
has also filed a rebuttal Markman Brief. (ECF Nos. 300, 301.)
The Parties seek claim construction on a single phrase found
in the remaining patent claims of Patent No. 8, 074, 115 (the
"115 Patent") and Patent No. 8, 601, 322 (the
"322 Patent"). On December 18, 2019, the Court held
a supplemental Markman hearing. This matter is ripe for
adjudication. The Court exercises jurisdiction pursuant to 28
U.S.C. § 1331.
Court presumes familiarity with the background of this matter
which has been detailed in three prior opinions: (1) the
Inter Partes Review Opinion, Trs. of Columbia
Univ. in the City of N.Y. v. Symantec Corp., 390
F.Supp.3d 665 (E.D. Va. 2019); (2) the Markman Opinion,
Trs. of Columbia Univ. in the City of N.Y. v. Symantec
Corp., No. 3:13cv808, 2019 WL 2774321 (E.D. Va. July 2,
2019); and, (3) the Section 101 Invalidity Opinion, Trs.
of Columbia Univ. in the City of N.Y.v. Symantec Corp.,
No. 3:13cv808, 2019 WL 613 8419 (E.D. Va. Nov. 19, 2019).
Patent and the 322 Patent relate to computer virus scanning
and provide "[m]ethods, media, and systems for detecting
anomalous program executions." (115 Patent 1:48-49, ECF
No. 12-5; 322 Patent 1:49-5O, ECF No. 12-6.) In this second
Markman proceeding, the Parties have presented a single
phrase-"model of function calls for the at least a
[part/portion] of the program"-for construction.
explained in the Court's Section 101 Invalidity Opinion,
claim 2 of the 322 Patent is representative of the overall
idea of the patent claims remaining at issue in this
litigation. Section 101 Invalidity Opinion, 2019 WL 6138419,
at *9. It states:
A method for detecting anomalous program executions,
executing at least a portion of a program in an emulator;
comparing a function call made in the emulator to a model
of Junction 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;
identifying the function call as anomalous based on the
(322 Patent 20:47-55 (emphasis added).)
Legal Standard: Claim Construction
purpose of claim construction is to 'determin[e] the
meaning and scope of the patent claims asserted to be
infringed.'" Samsung Elecs. Co., LTD v. NVIDIA
Corp., No. 3:14cv757, 2015 WL 4622472, at *l (E.D. Va.
July 30, 2015) (quoting Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.
1995) (en banc), qff`d 517 U.S. 370 (1996)). The
Court must decide the correct construction of a claim term.
See generally Markman, 517 U.S. 370.
construing a patent claim generally applies the
"ordinary and customary meaning" of the words.
Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
Cir. 2005) (en banc) (citations omitted). "[T]he
ordinary and customary meaning of a claim term is the meaning
that the term would have to a person of ordinary skill in the
art in question at the time of the invention."
Id. at 1313 (citations omitted).
is well-settled that, in interpreting an asserted claim, the
court should look first to the intrinsic evidence of record,
i.e., the patent itself, including the claims, the
specification and, if in evidence, the prosecution
history." Vitronics Corp, v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citations
omitted). "[T]he claims themselves provide substantial
guidance as to the meaning of particular claim terms,"
Phillips, 415 F.3d at 1314 (citations omitted).
However, "the specification 'is always highly
relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a
disputed term.'" Id. at 1315 (citing
Vitronics, 90 F.3d at 1582). Although the
specification may be dispositive, a court should not impose a
limitation on the patent claims based on an embodiment found
in the specification- even if it constitutes a preferred
embodiment or the only embodiment. See Cont 7
Circuits LLC v. Intel Corp., 915 F.3d 788, 800 (Fed.
Cir. 2019). The Federal Circuit has instructed that
"[t]o avoid improperly importing limitations into the
claims, 'it is important to keep in mind that the
purposes of the specification are to teach and enable those
of skill in the art to make and use the invention and to
provide a best mode for doing so.'" Id. at
797 (citations omitted).
the intrinsic record is ambiguous, and when necessary, [the
Court may] rely on extrinsic evidence, which consists of all
evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and
learned treatises." Samsung Elecs,, 2015 WL
4622472, at *2 (citations omitted). "Extrinsic evidence,
however, may not be used to contract or expand the ...