Trustees of Columbia University in the City of New York v. Symantec Corporation
Filing
689
Redacted version of ECF No. 684 MEMORANDUM OPINION pursuant to ORDER (ECF No. 688]). Signed by District Judge M. Hannah Lauck on 12/23/2021. (asho, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Richmond Division
THE TRUSTEES OF COLUMBIA
UNIVERSITY IN THE CITY OF
NEWYORK,
312.) Plaintiff the Trustees of Columbia University in the City ofNew York ("Columbia.,)
responded, (ECFNo. 325),2 and Norton replied, (ECFNo. 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.
Norton was previously known as "Symantec Corporation:' (See Notice ofName
Change, ECF No. 291.) Many of the documents that the Parties submitted in support of the
Partial Motion for Summary Judgment refer to Symantec. For consistency, throughout the
opinion the Court will substitute Norton where the documents refer to Symantec.
The day after Columbia filed its response to the Partial Motion for Summary Judgment,
Columbia filed a Consent Motion for Leave to File a Corrected Version of its response (the
"Consent Motion"), (ECFNo. 323), and attached a corrected version of its response to the Partial
Motion for Summary Judgment, (ECF No. 325). The Court granted the Consent Motion. (ECF
No. 326.) Therefore, the Court will consider Columbia's response filed at (ECF No. 325) when
considering the Partial Motion for Summary Judgment.
2
Plaintiff,
v.
NORTONLIFELOCK, INC.,
Civil Action No. 3:13cv808
UNDER SEAL
Defendant.
MEMORANDUM OPINION
This matter comes before the Court on Defendant NortonLifeLock, Inc. 's (''Norton.,) 1
Motion for Partial Summary Judgment (the "Partial Motion for Summary Judgment"). (ECF No.
1
The Court exercises jurisdiction pursuant to 28 U.S.C.§§ 13313 and 1367.4 For the
reasons that follow, the Court will grant in part and deny in part the Partial Motion for Summary
Judgment.
1bis 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 Partial Motion for Swnmary
Judgment speaks to a patent not yet substantively addressed in the Court's prior opinions-the
8,549,643 Patent (the "643 Patent"}---the Court sets forth the relevant factual and procedural
background below.
In its Amended Complaint, Colwnbia brings claims under both federal and state law.
(Am.Compl. ,r 6,ECF No. 12.) Specifically, Columbia alleges that Norton's Antivirus software
"The district courts shall have original jurisdiction of all civil actions arising under the
Constitution, laws,or treaties of the United States." 28 U.S.C. § 1331.
The Court exercises supplemental jurisdiction over Columbia's state law claims
pursuant to 28 U.S.C. § 1367(a) ("[I]n any civil action of which the district courts have original
jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are
so related to claims in the action within such original jurisdiction that they form part of the same
case or controversy ...."). The Amended Complaint alleges pendent claims of unjust
enrichment, fraudulent concealment and conversion under state law.
In ruling on the Partial Motion for Summary Judgment, the Court will view the
undisputed facts and all reasonable inferences therefrom in the light most favorable to Columbia
as the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,255 (1986).
A.
I. Factual and Procedural Background
Factual Background5
3
4
5
2
The patents can be grouped into three families. The 0544 and 0907 patents share
the same specification and relate to detecting malicious email attachments. The
0084 and 0306 patents share the same specification, and relate to a method for
detecting intrusions in the operation ofa computer system. The D 115 and the 0322
patents also share a specification and relate to detecting anomalous program
executions.
Trs. ofColumbia Univ. in the City ofNew York v. Symantec Corp., 811 F.3d 1359, 1362
(Fed. Cir. 2016). Of these six patents, only the claims relating to the 115 Patent and the
322 Patent remain before the Court.
infringed on six patents6 that Columbia owned-only 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,
fraudulent 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. (Mem. Supp. Partial Mot. Swnm. J.
Ex. 11 ''Sept. 24, 2009 Notice of Publication of Application" 2, ECF No. 313-11 (trap-based
decoy is allowed).)
The Court will address each of Colwnbia' 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
6
These six patents included: (1) Patent No. 7,487,544 (the "544 Patent"); (2) Patent No.
7,979,907 (the "907 Patent''); (3) Patent No. 7,448,084 (the "084 Patent"); (4) Patent No.
7,913,306 (the "306 Patent"); (5) Patent No. 8,074,115 (the "115 Patent"); (6) Patent No.
8,601,322 (the "322 Patent''). (See Am. Compl. ,r 1, ECF No. 12.) The Federal Circuit described
the patents as follows:
7 Counts
Five and Six of the Amended Complaint.
3
C
The Court will first present the factual background relevant to the State Law Claims.
Norton's challenges to these claims arise out of a Mutual Non-Disclosure Agreement signed by
(See Am. Compl. ,� 11-12, ECF No. 12.) Those discussions culminated in a series of proposals
Following this discussion, the Court will turn 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
and to receive the confidential information of the other Party." (Mem. Supp. Partial Mot. Summ.
inventorship of the 643 Patent (Count Ten), or in the alternative, joint inventorship of the 643
Patent (Count Eleven)--the two remaining Federal Claims.
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.
which allegedly became the 643 Patent and several patent applications by Columbia.
Factual Background as to the State Law Claims
a.
In 2004, Columbia and Norton Enter into the Mutual Non
Disclosure Agreement
Agreement" (the ''NOA''), governed by New York law, identifying that they wished to "disclose
J. Ex. 1 ''NDA" 2, 5, 8 ECF No. 313-1.) Specifically, Columbia and Norton recognized that
"[t]he purpose for the disclosure/exchange of Confidential Infonnation 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.)
8 The
indicated page number of each exhibit references the page number as assigned by
the Court's CM/ECF System.
1.
4
The NDA defined "Confidential Infonnation" 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, �awings,
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
Information. (Mem. Supp. Partial Mot. Summ. J. Ex. 1 ''NDA" 2, ECF No. 313-1.) In relevant
part, it stated that "Confidential lnfonnation 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 "disclos[ing] 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 ''NDA" 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 infonnation for their own benefit or the benefit of a third party
4
5
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, aNorton 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 ''2006NICECAP
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
(Mem. Supp.Partial Mot. Summ. J. Ex. 2 "May 4,
2006 Email from Witten to Stolfo" 2, ECFNo. 314-1.) That same day, Dr. Keromytis replied,
(Mem. Opp. Partial Mot. Summ. J. Ex. 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 andNorton should "work together on this." (Mem.Opp.Partial Mot. Summ. J. Ex.C
"May 4, 2006 Email from Keromytis to Witten" 2, ECFNo.320-2.)
After Columbia andNorton 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," ECFNo. 320-3; Mem. Opp. Partial
The Court presumes that an OTA is an Other Transaction Agreement. (See Mem. Supp.
Partial Mot Swnm. J. Ex. 8 "Aug. 29, 2006NICECAP Final Proposal"26, ECFNo. 314-4.)
The Court presumes that IPR nieans intellectual property rights. (See Mem. Supp.
Partial Mot. Summ. J.Ex. 8 "Aug. 29, 2006NICECAP Final Proposal" 26, ECF No. 314-4.)
b.
In 2006, Columbia and Norton Collaborate on the 2006
NICECAP ProposaJ
9
10
6
Mot. Summ. J. Ex. E "May 14, 2006 Email from Keromytis to Witten and Stolfo," ECF No. 3204.) 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. Partial 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.
Either party may submit as evidence "depositions, documents, electronically stored
information, affidavits or declarations, stipulations (including those made for purposes of the
motion only), admissions, interrogatory answers, or other materials" to support a factual
assertion made in a motion for summary judgment. Fed. R. Civ. P. 56(c)(l)(A).
11
7
C.
One Week Before Norton Submitted the 2006 NICECAP Fina)
Proposal, Columbia filed 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''). (Mem. Supp. Partial Mot Summ.
J. Ex. 7 "898 Application" l, ECF No. 313-7.) In the body of the application, the 898
Provisional Application incorporates the ideas embodied in the May 22, 2006 NICECAP Draft
Proposal. (Compare Mem. Supp. Partial Mot. Summ. J. Ex. 6 "May 22, 2006 NICECAP Draft
Proposal," ECF No. 314-3, with Mem. Supp. Partial Mot Summ. J. Ex. 7 "898 Application,"
ECF No. 313-7.) As Appendix A, the 898 Provisional Application incorporates the ideas
embodied in the earlier May 14, 2006 NICECAP Draft Proposal. 13 (Compare Mem. Supp.
12
The U.S. Patent and Trademark Office defines a provisional patent application as:
[A] U.S. national application filed in the USPTO under 35 U.S.C. § 11 l (b). A
provisional application is not required to have a formal patent claim or an oath or
declaration. Provisional applications also should not include any information
disclosure (prior art) statement since provisional applications are not examined. A
provisional application provides the means to establish an early effective filing date
in a later filed nonprovisional patent application filed under 35 U.S.C. § 11 l(a).
United States Patent and Trademark Office, Provisional Application for Patent,
https://www.uspto.gov/patents/basics/types-patent-applications/provisional-application-patent.
The PTO does not publish provisional patent applications, and they are an application,
not a patent. Section 122 of Title 35 of the United States Code governs the confidential status of
applications and the publication of applications. See 35 U.S.C. § 122. Section 122(b)(2)(A)
provides that "[a]n application shall not be published if that application is . .. (iii) a provisional
application." 35 U.S.C. § 122(b)(2)(A).
Norton alleges that the 898 Provisional Application included the May 22, 2006
NICECAP Draft Proposal "in the body of the '898 [Provisional] Application" and the May 14,
2006 NICECAP Draft Proposal "in Appendix A." (Mem. Supp. Partial Mot. Summ. J. 3-4, ECF
No. 314.) Norton identifies that, when including them in the 898 Provisional Application, Dr.
Keromytis and Dr. Stolfo excluded only the cover page and personal section of the May 22, 2006
13
8
Partial Mot. Summ. J. Ex. 6 "May 22, 2006 NICECAP Draft Proposal," ECF No. 314-3, with
Mem. Supp. Partial Mot. Sunun. J. Ex. 7 "898 Application" 14-18, ECFNo. 313-7.)
On May 31, 2007---one year after Columbia filed the 898 Provisional Application and
after Witten submitted the 2006 NICECAP Final Proposal-Columbia filed a patent application
with the World Intellectual Property Organization. (Mem. Supp. Partial Mot. Summ. J. Ex. 9
"Dec. 13, 2007 Published Proposal" 2, ECF No. 313-9 .) Approximately seven months later, on
December 13, 2007, this application published as the WO 2007/14301 l Patent. (Mem. Supp.
Partial Mot. Summ. J. Ex. 9 "Dec. 13, 2007 Published Proposal" 2, ECFNo. 313-9.)
Importantly, the WO 2007/143011 Patent identifies the 898 Provisional Application as "Priority
Data." (Mem. Supp. Partial Mot. Summ. J. Ex. 9 "Dec. 13, 2007 Published Proposal" 2, ECF
No. 313-9.) The WO 2007/143011 Patent states that it "claims the benefit" of the 898
Provisional Application and "incorporate[s] [it] by reference herein in its entirety." (Mem. Supp.
Partial Mot. Summ. J. Ex. 9 "Dec. 13, 2007 Published Proposal" 3, ECF No. 313-9.)
Approximately two years after the WO 2007/143011 Patent issued and two-and-a-half
years after Columbia filed the 898 Provisional Application, on September 24, 2009, the PTO
issued the 2009/0241191 Patent (the ..191 Patent"). (Mem. Supp. Partial Mot. Summ. J. Ex. 10
"191 Application" 2, ECFNo. 313-10.) The 191 Patent lists Dr. Keromytis and Dr. Stolfo as the
named inventors. (Mem. Supp. Partial Mot Summ. J. Ex. 10 "191 Application" 2, ECFNo.
NICECAP Draft Proposal and the organizational capabilities section of the May 14, 2006
NICECAP Draft Proposal. (Mem. Supp. Partial Mot Summ. J. 4, ECFNo. 314.)
Although Columbia disputes, as a matter of law, that the 898 Provisional Application
"became publicly available with the publication of International Publication No. WO
2007/143011," it does not disputeNorton's contention that the 898 Provisional Application
contained the ideas found in the two drafts of the 2006NICECAP Proposal. (See Mem. Opp.
Partial Mot. Summ. J. 3, ECF No. 325 (stating that "Columbia does not dispute Norton's Rule 56
Statement of Undisputed Facts, except for the following facts" and not listing this fact as a
disputed fact).)
9
313-10.) The 191 Patent identifies the 898 Provisional Application as "Related U.S. Application
Data" and "incorporate[s] [it] by reference herein in its entirety." (Mem. Supp. Partial Mot
Summ. J. Ex. 10 "191 Application" 2, 5, ECF No. 313-10.)
The PTO issued a "Notice of Publication of Application" stating that the 191 Patent "will
be electronically published as a patent application publication pursuant to 37 CFR 1.21 t ." 14
(Mem. Supp. Partial Mot. Summ. J. Ex. 11 "Sept. 24, 2009 Notice of Publication of Application"
2, ECF No. 313-11.) The Notice of Publication of Application also recognized that "[t]he
publication may be accessed through the [PTO,s] publically [sic] available Searchable Databases
via the Internet at www.uspto.gov. The direct link to access the publication is currently
http://www.uspto.gov/patft/." (Mem. Supp. Partial Mot. Summ. J. Ex. 11 "Sept. 24, 2009 Notice
of Publication of Application" 2, ECFNo. 313-11.) The Notice of Publication of Application
identified the date of publication as September 24, 2009. 15 (Mem. Supp. Partial Mot. Summ. J.
Ex. 11 "Sept. 24, 2009 Notice of Publication of Application" 2, ECF No. 313-11.)
In early 2010, after Witten submitted the 2006 NICECAP Final Proposal and after
Columbia had filed the 898 Provisional Application and received the WO 2007/143011 Patent
Section 1.211, of Title 37 of the Code of Federal Regulations governs when the PTO
will publish a patent application. In relevant part, it provides:
(a) Each U.S. national application for patent filed in the Office under 35 U.S.C.
11 l(a) and each international application in compliance with 35 U.S.C. 371 will be
published promptly after the expiration of a period of eighteen months from the
earliest filing date for which a benefit is sought under title 35, United States Code.
37 C.F.R. § 1.211.
15 On March 10, 2010, nearly six months after the PTO issued the 191 Patent, Dr. Stolfo
recognized that the 191 Patent "ha[d] been made public." (Mem. Supp. Partial Mot. Summ. J.
Ex. 12 "Mar. 10, 2010 Email from Stolfo to Habana', 2, ECF No. 314-5.)
14
d.
10
In 2010, Columbia and Norton Collaborate on the 2010
DARPA Proposal
and the 191 Patent, Marc Dacier, a Norton employee, contacted Dr. Stolfo and Dr. Keromytis
about the possibility of collaborating on another project. The 2010 project was called the
Defense Advance Research Projects Agency's ("DARPA") Cyber Genome Program (the "2010
DARPA Proposal"). (Mero. Opp. Partial Mot. Summ. J. Ex. H "Mar. 1, 2010 Email from
Keromytis to Stolfo" 4-5, ECF No. 320-6.) Specifically, Dacier stated that
(Mero.Opp.
Partial Mot. Summ. J. Ex. H "Mar. I, 2010 Email from Keromytis to Stolfo" 5, ECF No. 320-6.)
However, he stated that
(Mem.Opp. Partial Mot. Summ. J. Ex. H "Mar. 1, 2010 Email
from Keromytis to Stolfo'' 5, ECF No. 320-6.) Dacier specified that Darren Shau, another
Norton employee,
(Mem. Opp. Partial
Mot. Summ. J. Ex. H "Mar. 1, 2010 Email from Keromytis to Stolfo" 5, ECF No. 320-6.)
In response, Dr. Stolfo expressed concern about collaborating on the 2010 DARPA
Proposal based on the
d because
- (Mem. Opp. Partial Mot. Summ. J. Ex. H "Mar. 1, 2010 Email from Keromytis to
Stolfo" 4, ECF No. 320-6.) Several days later, on February 27, 2010, Dr. Stolfo recognized that
infonnation he had
- (Mem. Opp. Partial Mot. Sum.m. J. Ex. H "Mar. 1, 2010 Email from Keromytis to
Stolfo" 3, ECF No. 320-6.) Columbia and Norton agreed to work together to submit "a joint
(Mem. Opp. Partial Mot. Summ. J. Ex. H
proposal to DARPA
"Mar. 1, 2010 Email from Keromytis to Stolfo" 26, ECF No. 320-6.) On March 2, 2010, Shou
recognized in an email sent to Dacier, a fellow Norton employee, that
11
(Mem. Opp. Partial Mot. Summ. J. Ex. H "Mar. 1, 2010 Email from
Keromytis to Stolfo" 11, ECFNo. 320-6.)
Shou later admitted in his deposition that
Ex. G "Shou Dep." 19, ECFNo. 320-5.) Shou stated that he
320-5.)
(Mem. Opp. Partial Mot. Summ. J.
(See, e.g., Mem. Opp. Partial Mot. Summ. J. Ex. G "Shou Dep." 19-20, ECFNo.
On March 18, 2010, approximately six months after the PTO published the 191 Patent
and after Columbia had agreed to work on the 2010 DARPA Proposal withNorton, Shou
prepared an Invention Disclosure Form 16 entitled "Integrating Decoys and Data Loss
Prevention." (Mem. Supp. Partial Mot. Summ. J. Ex. 19 "Bailey Opening Report" 9, ECFNo.
314-7; Mero. Opp. Partial Mot. Summ. J. Ex. G "Shou Dep." 7, ECFNo. 320-5.) As to the
information included on the Invention Disclosure Form, Shou stated that he
Dep." 9, ECFNo. 320-5.)
(Mem. Opp. Partial Mot Summ. J. Ex. G "Shou
Mot. Summ. J. Ex. G "Shou Dep." 4, ECFNo. 320-5.)
e.
12
Norton Files a Provisional Patent Application That Later
Becomes the Basis of the 643 Patent Listing Only Norton
Employees as Inventors
(Mem. Opp. Partial Mot. Summ. J. Ex. G "Shou Dep." 9, ECF No. 320-5.)
(Mem. Opp. Partial Mot. Summ. J. Ex. L "Larson Dep." 4, ECF No. 320-10.)
On April 2, 2010, Norton filed a provisional patent application-Application Number
61/320,609 (the "609 Provisional Application")-with the PTO based on the ideas Shou set forth
in the Invention Disclosure Fonn. (Mem. Opp. Partial Mot. Summ. J. Ex. R ''Apr. 2, 2010
Provisional Patent Application" 2, ECF No. 321-19.) This provisional patent application listed
only Dacier and Shou-two Norton employees-as inventors. (Mem. Opp. Partial Mot. Summ.
J. Ex. R "Apr. 2, 2010 Provisional Patent Application" 5, ECF No. 321-19.)
Approximately one year later, on April 4, 201 I, Norton filed a non-provisional patent
application-U.S. Patent Application No. 13/066,013 (the "013 Non-Provisional
Application")----entitled "Integrating Decoys and Data Loss Prevention." (Mem. Supp. Partial
Mot. Summ. J. Ex. 13 "Non-Provisional 643 Application Apr. 4, 2011" 3, ECF No. 313-13.) To
, ensure that the O13 Non-Provisional Application would not be publicly available, Norton also
filed a Nonpublication Request Under 35 U.S.C. § 122(b)(2)(B)(i). 17 See 35 U.S.C.
§ 122(b)(2)(B)(i). The 013 Non-Provisional Application listed Shou, the Norton employee who
filed the Invention Disclosure Fonn, as the first named inventor. (See Mem. Supp. Partial Mot.
Summ. J. Ex. 13 ''Non-Provisional 643 Application Apr. 4, 2011" 4, ECF No. 313-13.)
Although non-provisional patent applications are generally published, see 35 U.S.C.
§ 122(b)(l )(A), because Norton filed a request that the 013 Non-Provisional Application not
publish and certified that the invention disclosed in the O13 Non-Provisional Application had not
and would not be the subject of an application filed in another country, or under a multilateral
international agreement, the 013 Non-Provisional Application did not publish, see 35 U.S.C.
§ 122(b)(2)(BXi).
17
13
On October 1, 2013, the PTO issued the 643 Patent (the subject of the state law claims
here). (Mem. Opp. Partial Mot Summ. J. Ex. Z "643 Patent" 3, ECF No. 321-27.) The 643
Patent lists only Shou-a Norton employee-as the inventor and identifies the 609 Provisional
Application which Norton filed in 2010 as "Related U.S. Application Data." (Mem. Opp. Partial
Mot. Summ. J. Ex. Z "643 Patent" 3, ECF No. 321-27.) The 643 Patent "incorporate[s] by
reference" the 609 Provisional Application. (Mem. Opp. Partial Mot Summ. J. Ex. Z "643
Patent'' 15,ECFNo. 321-27.)
Opp. Partial Mot. Summ. J. Ex. M "Dacier Dep." 4, ECF No. 320-11.)
(Mem.
Before the PTO issued the 643 Patent, and before Norton filed the 609 Provisional
Application or the O13 Non-Provisional Application, Norton contacted Columbia to alert
Columbia that it planned to file for patent protection.
On March 24, 2010,Delos Larson, a lawyer for Norton, contacted Dr. Stolfo and Dr.
Keromytis via email to tell them that Norton planned to seek patent protection for the ideas
expressed in the Invention Disclosure Form (incorporating information from the NICECAP and
DARPA proposals) Shou prepared, and to ask whether they considered themselves to be
inventors of any of the technology disclosed. (Mem. Opp. Partial Mot Summ. J. Ex. K "Mar.
24, 2010 Email from Larson to Keromytis, Stolfo, and Habana" 2, ECF No. 320-9.) -
(Mem. Opp. Partial Mot.
Summ. J. Ex. K "Mar. 24, 2010 Email from Larson to Keromytis,Stolfo, and Habana" 3-5, ECF
No. 320-9.) In the email, Larson called himself a "non-evil lawyer at [Norton]" and stated that
Norton "realiz.e[d] [it] did not invent the decoy creation technique." (Mem. Opp. Partial Mot.
f.
Columbia Answers Norton's Inquiries in the Affirmative as to
Whether Dr. Stolfo and Dr. Keromytis Consider Themselves to
Be the Inventors of the Ideas in the Invention Disclosure Form
14
Summ. J. Ex. K "Mar. 24, 2010 Email from Larson to Keromytis, Stolfo, and Habana" 2, ECF
No. 320-9.) Larson
Partial Mot. Summ. J. Ex. K
-ECF No. 320-9.) He stated
(Mem. Opp.
(Mem.Opp. Partial Mot. Summ. J. Ex. K "Mar. 24, 2010 Email from Larson to Keromytis,
Stolfo, and Habana" 2, ECF No. 320-9.)
(Mem.Opp. Partial Mot.
Summ. J. Ex. N "Mar. 24, 2010 Email from Larson to Keromytis, Stolfo, and Habana" 6, ECF
No. 321-15.)
(Mem.Opp.
Partial Mot Summ. J. Ex. P "Mar. 24, 2010 Email from Keromytis to Larson" 2, ECF No. 32013.)
On the same day that Larson contacted Dr. Stolfo and Dr. Keromytis, Shou-the now
listed inventor of the 643 Patent and the Norton employee who prepared the Invention Disclosure
Form-also emailed Dr. Stolfo and Dr. Keromytis to inform them that Norton's legal team was
considering patenting
(Mem. Opp. Partial Mot. Summ. J. Ex. Q "Mar. 24, 2010 Email from Keromytis to Shou" 2,
ECF No. 320-14.) Shou told Dr. Stolfo and Dr. Keromytis that he "added [their] names (along
with [DacierJ and [himself]) to the list of co-inventors.'' (Mem.Opp. Partial Mot. Summ. J. Ex.
Q "Mar. 24, 2010 Email from Keromytis to Shou" 2, ECF No. 320-14.)
Also on March 24, 2010, Dacier, another Norton employee and the Norton employee who
reached out to Columbia about collaborating on the 2010 DARPA Proposal, told Dr. Stolfo and
Dr. Keromytis that Norton "twisted [his] arm very hard to accept the idea of producing a patent."
15
(Mem. Opp. Partial Mot. Summ. J. Ex. Q "Mar. 24, 2010 Email from Keromytis to Shou" 8,
ECF No. 320-14.) Dacier stated
last thing [Dacier] wanted was to
start [Norton and Columbia's] possible collaboration on the wrong foot." (Mem. Opp. Partial
Mot Summ. J. Ex. Q ''Mar. 24, 2010 Email from Keromytis to Shou" 9, ECF No. 320-14.) Dr.
Stolfo replied that he wanted to continue working on the 2010 DARPA Proposal with Norton.
(See Mem. Opp. Partial Mot. Swnm. J. Ex. Q "Mar. 24, 2010 Email from Keromytis to Shou" 8,
ECF No. 320-14 (stating "None ofit is a real problem. Let's just bid and get on with it.").)
A few days later, on April 2, 2010, Norton filed the 609 Provisional Application, listing
only Dacier and Shou as inventors. Dr. Stolfo and Dr. Keromytis were not listed as inventors
despite being told by Norton that they would be listed.
(Mem. Opp. Partial Mot. Summ. J. Ex. R "Apr. 2, 2010 Provisional Patent Application" 5, ECF
No. 321-19.) Three days later, on April 5, 2010, Larson again emailed Dr. Stolfo and Dr.
Keromytis to inform them that Norton "is filing a provisional patent application this week based
on the [Invention Disclosure Form]." (Mem. Opp. Partial Mot. Summ. J. Ex. S "Apr. 28, 2010
Email from Larson to Chu" 2, ECF No. 321-20.) The April 5, 2010 email did not mention that
Norton had already filed the 609 Provisional Application on April 2, 2010. (See Mem. Opp.
Partial Mot. Summ. J. Ex. S "Apr. 28, 2010 Email from Larson to Chu" 2, ECF No. 321-20.)
(Mem. Opp. Partial
Mot. Summ. J. Ex. T "Mar. 31, 2011 Email from Kimes to Stolfo et al." 2, ECF No. 320-15.)
16
(See Mem. Opp. Partial Mot.
Summ. J. Ex. T "Mar. 31, 2011 Email from Kimes to Stolfo et al." 2, ECF No. 320-15.) (Mem. Opp.
Partial Mot. Summ. J. Ex. T "Mar. 31, 2011 Email from Kimes to Stolfo et al." 2, ECF No. 32015.)
(Mem. Opp. Partial Mot. Summ.
J. Ex. T "Mar. 31, 2011 Email from Kimes to Stolfo et al." 2, ECF No. 320-15.)
- (Mem. Opp. Partial Mot. Surnm. J. Ex. U "Draft Patent Application" 2, ECF No. 32016.)
(Mem.
Opp. Partial Mot. Swmn. J. Ex. X "Mar. 31, 2011 Email from Shou to Dacier" 3, ECF No. 320-
(Mem. Opp. Partial Mot. Summ. J. Ex. V "Apr. 1, 2011 Email from Shou to
Murphy" 2, ECF No. 320-17.)
Kimes, however, never responded to Dr. Stolfo, Dr. Keromytis, or anyone at Colwnbia.
(Mem. Opp. Partial Mot Su.mm. J. Ex. W "Kimes Dep." 9-10, ECF No. 321-24.) Kimes
testified that he
17
(Mem.Opp. Partial Mot. Summ. J. Ex. W "Kimes Dep." 11, E CF No. 321-24.)
As stated above, on April 4, 2011, Norton filed the 013 Non-Provisi;:mal Application, and
on October 1, 2013, the PTO issued the 643 Patent.
The Court turns now to the factual background relevant to Columbia's Federal Claims,
specifically the prosecution history of the 115 Patent and the 322 Patent.
On June 15, 2009, approximately three months before the PTO issued the 191 Patent,
Columbia filed Application Number 12/091,150, which would later become the 115 Patent.
(Mem. Opp. Partial Mot. Summ.J.Ex.AA "115 Patent Prosecution History" 24, ECF No. 321On August 23, 2010, the PTO rejected "(c]laims 1-7, [and] 22 ...under 35 U.S.C.
§ 102(e)C18l as being anticipated by Vu (U.S. Patent number 7496898)." (Mem.Opp. Partial
Section 102(e) of Title 35 of the United States Code describes the conditions of
patentability and speaks to novelty. See 35 U.S.C. § 102(e). At the time the PTO rejected the
proposed patent claims of the 115 Patent, Section 102{e) stated in relevant part:
A person shall be entitled to a patent unless-(e) the invention was described in (1) an application for patent, published under section
122(b), by another filed in the United States before the invention by the applicant for
patent or (2) a patent granted on an application for patent by another filed in the United
States before the invention by the applicant for patent, except that an international
application filed under the treaty defined in section 35 l (a) shall have the effects for the
purposes of this subsection of an application filed in the United States only if the
international application designated the United States and was published under Article
21(2) of such treaty in the English language;
35 U.S.C. § 102(e)(2010) (footnote omitted).
2.
a.
28.)
18
18
Factual Background as to the Federal Claims: Prosecution History of
the 115 and 322 Patents
Columbia's Amendments to the 115 Patent Before the PTO
Mot. Summ. J. Ex. AA "115 Patent Prosecution History" 24, 27, ECF No. 321-28.) The PTO
explained in part that "Vu disclose[d] creating a combined model from at least two models
created using different computers." (Mem. Opp. Partial Mot. Summ. J. Ex. AA "115 Patent
Prosecution History" 27, ECF No. 321-28.) The PTO also recognized that "Vu disclose[d]
creating a combined model from at least two models created at different times." (Mem. Opp.
Partial Mot. Summ. J. Ex. AA "115 Patent Prosecution History" 27, ECF No. 321-28.)
On February 23, 2011, Columbia responded to the PTO's rejection of certain claims.
(Mem. Opp. Partial Mot. Summ. J. Ex. AA "115 Patent Prosecution History" 10, 22, ECF No.
321-28.) In relevant part, Columbia amended certain claims in the patent application and made
remarks in response to the PTO's rejection. (Mem. Opp. Partial Mot. Swnm. J. Ex. AA "115
Patent Prosecution History" 10, ECF No. 321-28.) Among other changes, Columbia amended
claims 1, 11, 21 to state that "upon identifying the anomalous function call, notifying an
application community that includes a plurality of computers of the anomalous function call."
(Mem. Opp. Partial Mot. Summ. J. Ex. AA "115 Patent Prosecution History" 11-13, ECF No.
321-28.) In its remarks, Columbia stated that "[a]mendments to the claims are being made solely
to expedite prosecution and do not constitute an acquiescence to any of the Examiner's
,,
objections or rejections. (Mem. Opp. Partial Mot. Summ. J. Ex. AA "115 Patent Prosecution
History" 17, ECF No. 321-28.) As to the amendments to claims 1, 11, and 21, specifically,
Colwnbia noted that "nothing in Vu shows or suggests the feature of 'executing at least a part of
the program in an emulator.' Instead of using an emulator that executes at least a part of the
program, Vu relies on examining the code for generic function calls." (Mem. Opp. Partial Mot.
Summ. J. Ex. AA "115 Patent Prosecution History'' 19, ECF No. 321-28.)
19
Columbia continued by saying that "Vu also does not show or suggest 'comparing a
function call made in the emulator to a model of function calls for the at least a part of the
program."' (Mem. Opp. Partial Mot. Summ. J. Ex. AA "115 Patent Prosecution History" 19,
ECF No. 321-28 (emphasis in original).) As to the specific language added to claims 1, 11, and
21, Columbia pointed out that "[a]s described in [Columbia's] specification, 'the application
community member that detects or predicts the fault may notify the other application community
members. Other application members that have succumbed to the fault may be restarted with the
protection mechanisms or fixes generated by the application member that detected the fault."'
(Mem. Opp. Partial Mot. Summ. J. Ex. AA "115 Patent Prosecution History" 19, ECF No. 321-
28 (citation omitted).) Columbia argued that "Vu does not show or suggest notifying an
application community of the anomalous function call. At most, Vu mentions providing an error
message that includes infonnation about the failure mode." (Mem. Opp. Partial Mot. Swrun. J.
Ex. AA "115 Patent Prosecution History" 19, ECF No. 321-28.)
On March 17, 2011, in response to these amendments and remarks, the PTO issued a
Notice of Allowability and approved the revised claims. (Mem. Opp. Partial Mot. Summ. J. Ex.
AA "115 Patent Prosecution History" 7, 9, ECF No. 321-28.) On December 6, 2011, the PTO
issued the 115 Patent. (Mem. Opp. Partial Mot Summ. J. Ex. AA "115 Patent Prosecution
History" 4, ECF No. 321-28.) Revised claims 1, 11, and 21 became claims 1, 11, and 21 of the
115 Patent.19 (Compare Mem. Opp. Partial Mot. Summ. J. Ex. AA "115 Patent Prosecution
History" 11-13, ECF No. 321-28, with 115 Patent 23, 24, ECF No. 12-5.)
Although the PTAB later invalidated claims 1, 11, and 21 of the 115 Patent during the
IPR proceedings, claims 2, 9, and 10, claims that depend upon the method of claim 1, remain at
issue. Similarly, claims 12, 19, and 20, claims that depend upon the medium of claim 11, also
remain at issue. (See Symantec Corp. v. Trs. of Columbia Univ. in the City ofNew York, IPR
2015-00377 (P.T.A.B. June 30, 2016), ECF No. 199-22.)
19
20
Approximately two weeks before the PTO issued the 115 Patent, on November 21, 2011,
Columbia filed Application Number 13/301,741, which became the 322 Patent. (Mem. Opp.
Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History" 20, ECFNO'. 321-29.)
In its September 7, 2012 Detailed Action, the PTO recognized that "[t]his Application is
a continuation of U.S. Patent Application number 12/091150 filed June 15, 2009"-the
application that ripened into the 115 Patent (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322
Patent Prosecution History" 22, ECF No. 321-29.) The PTO also stated that Columbia has
"canceled claims 1-42 of the previously filed application and therefore will not be considered by
the Examiner." (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History" 22,
ECF No. 321-29.) The PTO rejected the remaining claims (claims 43-63) for a variety of
reasons, including "nonstatutory double patenting over claims 1-10 & 32-41 of [the 115 Patent]
since the claims, if allowed, would improperly extend the 'right to exclude' already granted in
patent" (Mem. Opp. Partial Mot. Su.mm. J. Ex. BB "322 Patent Prosecution History" 23, ECF
No. 321-29.)
As to some of the proposed patent claims, the PTO rejected the proposed patent claims
based on two prior patents. (See Mem. Opp. Partial Mot. Swnm. J. Ex. BB "322 Patent
Prosecution History" 25-28, ECF No. 321-29.) In explaining why it rejected each of these
proposed patent claims, the PTO stated that the prior patents disclosed certain features found in
the proposed patent claims. (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution
History" 25-28, ECF No. 321-29.) These included the general method undertaken in the
proposed patent claims; "modifying the function call so that the function call becomes non
anomalous;" and, "generating a virtualized error in response to the function call being identified
b.
21
Columbia's Amendments to the 322 Patent Before the PTO
as being anomalous." (Mem. Opp. Partial Mot SW1Ull. J. Ex. BB "322 Patent Prosecution
History'' 25-26, ECF No. 321-29.)
Although the PTO recognized that one of the prior patents "disclose[d] that the model
reflects normal activity of the at least a portion of the program," the PTO did not reject any of the
proposed patent claims based on how the patent created the model. (See Mem. Opp. Partial Mot
Summ. J. Ex. BB "322 Patent Prosecution History" 26-27, ECF No. 321-29.)
The PTO observed that "[c]laims 44, 45, 54, & 55 are objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in independent form including all
of the limitations of the base claim and any intervening claims." (Mem. Opp. Partial Mot.
Summ. J. Ex. BB "322 Patent Prosecution History" 28, ECF No. 321-29.) These proposed
patent claims disclosed how the model would be created under the 322 Patent. For instance,
proposed claim 44 and 54 included the limitation that "the model is a combined model created
from at least two models created using different computers." (Mem. Opp. Partial Mot. Summ. J.
Ex. BB "322 Patent Prosecution History" 10, ECF No. 321-29.) Proposed claims 45 and 55
included the limitation that ''the model is a combined model created from at least two models
created at different times." (Mem. Opp. Partial Mot Summ. J. Ex. BB "322 Patent Prosecution
History" 10, ECFNo. 321-29.)
On January 4, 2013, Columbia responded to the PTO's rejection of its claims. (Mem.
Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History" 9, 19, ECF No. 321-29.)
In relevant part, Columbia amended claim 44 and 54 to be independent claims and cancelled
claims 45 and 55. (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History"
10, 12, ECF No. 321-29.) Columbia incorporated the limitations of claims 45 and 55 into
amended independent claims 43 and 53. (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent
22
Prosecution History» 10-11, 17, ECFNo. 321-29.} The amended claims 44 and 54 included the
limitation that the "model is a combined model created from at least two models created using
different computers." (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution
History" 10, 12, ECFNo. 321-29.} The amended claims 43 and 53 included the limitation
"wherein the model is a combined model created from at least two models created at different
times.'' (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History" 10-11,
ECF No. 321-29.) Thus, Columbia proceeded with the amended claims 43, 53, 44, and 54, but
not 45 and 55.
In the Summary of its Reply, Columbia stated that "[a]mendments to the claims are being
made solely to expedite prosecution and do not constitute an acquiescence to any ofthe
Examiner's objections or rejections.'' (Mem. Opp. Partial Mot.Surnm. J. Ex. BB "322 Patent
Prosecution History" 15, ECF No.321-29.) When discussing its amendments further, Colwnbia
recognized that the PTO rejected "[c]laims 43, 46-53, and 56-63 . . . under 35 U.S.C. §
103(a}1201 as allegedly being unpatentable over Hasse in view ofVu"-two prior patents. (Mem.
Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History" 17, ECF No. 321-29.)
Columbia, noting its disagreement, asserted that "to facilitate allowance, [Columbia] ...
amended independent claims 43 to incorporate dependent claim 45 and independent claim 53 to
Section 103 of Title 35 of the United States Code governs conditions for patentability
over non-obvious subject matter. 35 U .S.C. § 103. When the PTO rejected certain proposed
patent claims of the 322 Patent, Section 103(a) stated:
A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section I 02 of this title, if the differences between the
subject matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability
shall not be negatived by the manner in which the invention was made.
35 U.S.C. § 103(a) (2012}.
20
23
incorporate dependent claim 55, which the Examiner indicated to be allowable." (Mem. Opp.
Partial Mot Summ. J. Ex. BB "322 Patent Prosecution History" 17, ECFNo. 321-29.) Columbia
also stated that it "wish[ed] to thank the Examiner for indicating that dependent claims 44 and 54
contain allowable subject matter and would be allowable if rewritten in independent form
including all of the limitations of the based claim and any intervening claim.'' (Mem. Opp.
Partial Mot Summ. J. Ex. BB "322 Patent Prosecution History" 18, ECFNo. 321-29.)
Therefore, Columbia "amended dependent claims 44 and 54 to include the limitations of
independent based claims 43 and 53." (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent
Prosecution History" 18, ECF No. 321-29.) These limitations spoke to how the model would be
created under the patent.
On May 28, 2013, the PTO issued aNotice of Allowability and approved, in relevant
part, claims 43, 44, 53, and 54. (Mem. Opp. Partial Mot. Sutn.m. J. Ex. BB "322 Patent
Prosecution History" 2, 7, ECFNo. 321-29.) These claims became claims 1, 2, 10, and 1121 of
the 322 Patent. (Mem. Opp. Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History" 8,
ECF No. 321-29.)
Having considered the factual background that affects the State Law Claims and the
Federal Claims, the Court turns now to the procedural background of this matter.
The Court provided an in-depth discussion of the procedural history in its prior
Memorandum Opinions-the Inter Partes Review Opinion, (ECFNo. 251); the Markman
Although the PTO approved claims 1, 2, 10, and 11 of the 322 Patent, (Mem. Opp.
Partial Mot. Summ. J. Ex. BB "322 Patent Prosecution History" 8, ECFNo. 321-29), following
th� IPR proceedings only claims 2 and 11 remain pending before the Court, (see Symantec Corp.
v. Trs. of Columbia Univ. in the City ofNew York, IPR 2015-00377, 33 (P.T.A.B. June 30, 2016),
ECFNo. 199·22.)
B.
21
Procedural Background
24
Opinion, (ECF No. 253); and, the Court's opinion addressing Norton's Rule 12(c) Motion, (ECF
No. 288}-and incorporates that description here. The Court assumes familiarity with those
decisions and provides only a summary of the relevant procedural history prior to the Partial
Motion for Summary Judgment.
1.
2014 Proceedings
After Columbia filed its Amended Complaint, (ECF No. 12), Norton filed a Partial
Motion to Dismiss (the "Motion to Dismiss"), (ECF No. 18), and 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. § 101.22 In the Motion to Dismiss, Norton requested that the
Court dismiss Columbia's conversion, fraudulent concealment, and unjust enrichment claims
the same claims that it challenges in the instant Partial Motion for Summary Judgment.
(Compare Mem. Supp. Mot. Dismiss 2, ECF No. 19; with Mem. Supp. Partial Mot. Summ. J. 2,
ECF No. 314.) In the Motion to Dismiss, Norton argued that federal patent law preempts each of
the three State Law Claims. (See Mem. Supp. Mot Dismiss 7-14, ECF No. 19.)
The Court denied the Motion to Dismiss in full. (Apr. 2, 2014 Mem. Op., ECF No. 67.)
As to the unjust enrichment and fraudulent concealment claims, the Court concluded that
Based on the Court's decision in the Inter Par/es Review Opinion, Norton may no
longer support its invalidity affirmative defense with the prior art identified in its invalidity
contentions but not raised in its petitions for inter partes review before the PTAB. Trs. of
Columbia Univ. in the City ofNew York v. Symantec Corp., 390 F. Supp. 3d 665,681 (E.D. Va.
2019). Of course, Norton asserts other defenses which remain before the Court: limitation on
damages and recovery, dedication to the public, no entitlement to an injunction or other equitable
relief, unavailability of enhanced damages, unavailability of unjust enrichment, unavailability of
conversion, and preemption by federal patent law.
In its decision on Norton's Rule 12(c) Motion, the Court concluded that, taking all
inferences in the light most favorable to Columbia, Norton had not shown by clear and
convincing evidence that the remaining patent claims in the 115 Patent and the 322 Patent are
invalid patenflclaims under 35 U.S.C. § 101. (See Nov. 19, 2019 Mem. Op., ECF No. 288.) The
Court clarifies that any mention in that decision of those claims being "valid" was in error.
22
25
(Apr. 2, 2014 Mem. Op. 22, ECF No. 67 (quoting Gerawan Farming, Inc. v. Rehrig Pac. Co.,
"Columbia's right of recovery does not 'stand as an obstacle to the accomplishment and
execution of the full purposes and objectives' of the patent laws.'' (Apr. 2, 2014 Mem. Op. 19,
ECF No. 67 (quoting Aronson v. Quick Point Pencil Co., 440 U.S. 257,262 (1979)).)
Specifically, the Court stated that "Columbia has alleged a confidential relationship with
[Norton] that prohibited [Norton] from using confidential disclosure for its sole benefit," and
"Columbia alleges that the breach of that confidence creates a right of recovery and, if proven,
allows Columbia to disgorge [Norton] of any benefit that accrued to it as a result of its wrongful
conduct." (Apr. 2,2014 Mem. Op. 19,ECF No. 67.)
As to the conversion claim,the Court found that the conversion claim survived under
either New York or Virginia law. (Apr. 2,2014 Mem. Op. 21,ECF No. 67.) Specifically, the
Court stated that
To the extent that Columbia asserts a claim for conversion of the 2006 NICECAP
grant proposal drafts themselves,it has plausibly asserted a claim for conversion of
tangible property. This claim is not preempted by federal law because the 2006
NICECAP grant proposal drafts conveyed no patent right to Columbia. As such,
to the extent that Columbia asserts a claim for conversion that is not "dependent on
a detennination of patent inventorship or ownership," it has asserted a claim for
conversion that is not preempted by the federal patent laws.
No. 1:l l-cv-01273,2012 WL 691758, at *7 (E.D. Cal. Mar. 2, 2012)).) The <;ourt also stated
that it "must accept as true Columbia's factual allegation that the 2006 NICECAP grant proposal
drafts were utilized in obtaining the '643 Patent" and that "[f]rom this factual allegation,the
Court may reasonably infer that the 2006 NICECAP grant proposal drafts were similarly
employed by [Norton] for other beneficial uses not related to obtaining a patent" (Apr. 2,2014
Mem. Op. 22,ECF No. 67.)
26
After denying the Motion to Dismiss, the Court held an initial pretrial conference. The
Construction Order"), (ECF No. 123), and a Clarified Claim Construction Order (the "Clarified
Construction Order. (Jt. Mot. Entry Final J. 1-2, ECF No. 148.) The Parties specifically asked
811 F.3d at 1362. The next day, the Court entered the partial final judgment requested by
1, ECF No. 152.) In a 2016 opinion, the Federal Circuit affirmed in part and reversed and
The Parties requested that the Court enter partial final judgment "to allow Columbia to
take an immediate appeal of'' the Claim Construction Order and the Clarified Claim Construction
Order. (Mem. Supp. Partial Mot. Swnm. J. 8, ECF No. 199.)
27
remanded in part the Court's grant of final judgment and its claim construction orders. See Trs.
Court presided over a Markman hearing and issued a Claim Construction Order (the "Claim
Claim Construction Order"), (ECF No. 146).
Ten days later, Columbia and Norton jointly moved the Court to issue final judgment
pursuant to Federal Rule of Civil Procedure 54(bf3 as to Columbia's first through sixth claims
for relief and to stay the case as to its seventh through eleventh claims construed in the Claim
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. ofColumbia Univ.,
Columbia and Norton24 (the "Partial Final Judgment Order"). (ECF No. 150.)
2.
Appeals from the 2014 Order by Columbia and Norton (Federal
Circuit and Inter Portes Review)
Approximately one week later Columbia (unsuccessful below) filed its Notice of Appeal
to the Federal Circuit and appealed the Court's Partial Final Judgment Order, the Court's original
Clai� Construction Order, and the Court's Clarified Claim Construction Order. (Notice Appeal
23 Federal Rule of Civil Procedure 54(b) provides: "When an action presents more than
one claim for relief ... the court may direct entry of a final judgment as to one or more, but
fewer than all, claims or parties only if the court expressly determines that there is no just reason
for delay." Fed. R. Civ. P. 54(b).
24
ofColumbia Univ., 811 F.3d at 1371. The Federal Circuit upheld the judgment ofnon
infringement as to the 544, 907, 084, and 306 patents. Id at 1366-67, 1369. With regard to the
115 and 322 patents-two of the patents subject to this Motion-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 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, Norton (who prevailed below) filed petitions with
,
the Patent Trial and Appeal Board ("PTAB, ) ofthe United States Patent and Trademark Office
("PTO") requesting, in relevant part, inter partes review ofthe 115 and 322 patents at issue in
the litigation. (Notice Pets. Inter Partes Review 1, ECF No. 158.)
Norton chose to present only a subset of its grounds of purported invalidity to the PTAB
and the PTAB instituted inter partes review on all ofNorton'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 that, under 35 U.S.C. §§ 102 and 103, Norton had shown by a
preponderance of the evidence that thirty claims of the 115 Patent-claims 1, 3-8, 11, 13-18, 21,
22, 24-29, 32, 34-39, and 42-and twenty-one claims ofthe 322 Patent-claims 1, 3-7, 9, 10,
12-16, 18-24, and 2�were unpatentable. Thus, only twelve claims ofthe 115 Patent�laims
2, 9, 10, 12, 19, 20, 23, 30, 31, 33, 40, and 41-and six claims ofthe 322 Patent-claims 2, 8,
11, 17, 25, and 27-remained. Symantec Corp. v. Trs. a/Columbia Univ. in the Ci-ry ofNew
York, IPR 2015-00375 (P.TA.B. June 30, 2016); Symantec Corp. v. Trs. o/Columbia Univ. in
the City o/New York, IPR 2015-00377 (P.TAB. June 30, 2016). In 2018, in an assessment
separate from its 2016 decision regarding this Court's Claim Construction Orders, the Federal
28
Circuit affirmed the PT s decisions. Trs. of Columbia Univ. in the City ofNew York v.
AB'
Symantec Corp., 714 F. App'x 1021, 1022 (Fed. Cir. 2018).25
Upon return to this Court, Columbia filed a Motion for Partial Summary Judgment
Regarding Inter Partes Review Estoppel, (ECF No. 198), and Norton 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 Norton from
relying on prior art arguments that it did not raise during inter partes review before the PTAB.
See Trs. ofColumbia Univ., 390 F. Supp. 3d at 679. The Court also granted Norton's Markman
Motion, which allowed 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 ofNew Yorkv. Symantec Corp.,
No. 3:13cv808, 2019 WL 2774321, at •10 (E.D. Va. July 2, 2019).
While the Motion for Partial Summary Judgment and the Markman Motion were still
pending, Norton filed the Motion for Judgment. (ECF No. 245.) 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.) The Court denied the Motion for Judgment,
concluding that Norton did not show by clear and convincing evidence that the remaining patent
claims in the 115 Patent and the 322 Patent were invalid under 35 U.S.C. § 101.26 See (Nov. 19,
2019 Mero. Op., ECF No. 288.)
The Federal Circuit addressed the PTAB's inter partes review decisions as to the 115
Patent and the 322 Patent in a single opinion. See Trs. of Columbia Univ., 714 F. App'x at 1022.
Section 101 states: "Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof,
3.
25
26
29
Post-Appeal Proceedings in this Court
Following the Court's decision on the Motion for Judgment, the Parties filed
Supplemental Claim Construction briefs addressing the correct construction of "model of
function calls for the [part/portion] of the program"-the sole remaining term following the
Court's Markman Opinion.27 (See ECF Nos. 292, 293.) The Parties then filed responses to the
other's Supplemental Claim Construction brief, (ECF Nos. 300,301), and the Court held a
December 18, 2019 Markman Hearing, (ECF No. 305). Following the Markman Hearing, the
Court issued the Claim Construction Order defining the phrase "model of function calls for the at
least a [part/portion] of the program" as not requiring a model created by modeling the program,
but meaning ''model of function calls created by modeling program executions." (Dec. 20, 2019
Order, ECF No. 307.) Today, the Court issued a Memorandum Opinion striking Norton's § 101
defense of invalidity.
What remains before the Court is Norton's Partial Motion for Summary Judgment.
Columbia has responded, and Norton has replied. The Court turns to the instant motion.
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); Liberty Lobby, 477 U.S.
at 248-50.
may obtain a patent therefor,subject to the conditions and requirements of this title." 35 U.S.C.
§ 101.
Although the Court originally allowed the Columbia and Norton to brief the proper
construction of both "anomalous" and the phrase "model of function calls for the at least a
[part/portion] of the program,'' (see Markman Op. 19, ECF No. 253), the Parties later stipulated
to Norton•s proposed definition of"anomalous," i.e. "deviating from normal," (see Pl. Resp. to
Notice of Proposed Schedule 2, ECF No. 282; see also Nov. 8, 2019 Order 3, ECF No. 287).
27
30
II. Standard of Review: Motion for Summary Judgment
"A fact is material if the existence or non-existence thereof could lead a jury to different
resolutions of the case.,, Thomas v. FTS USA, LLC, 193 F. Supp. 3d 623,628 (E.D. Va. 2016)
(citing Liberty Lobby, 477 U.S. at 248). Once a party has properly filed evidence supporting its
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. The parties must present these 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. Liberty Lobby, 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. CalvertCty., 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 bane) (quoting Charbonnages de France v. Smith, 591 F.2d
406,414 (4th Cir. 1979)).
In the end, the non-moving party must do more than present a scintilla of evidence in
its favor.
Rather, the non-moving party must present sufficient evidence such that reasonable
jurors could find by a preponderance of the evidence for the non-movant, for an
apparent dispute is not genuine within contemplation of the summary judgment rule
unless the non�movant' s version is supported by sufficient evidence to permit a
reasonable jury to find the facts in his favor.
Sylvia Dev. Corp., 48 F.3d at 818 (internal quotations,citations, and alterations omitted). The
ultimate inquiry in examining a motion for swnmary judgment is whether there is "sufficient
evidence favoring the nonmoving party for a jury to return a verdict for that party. If the
31
[nonmoving party's] evidence is merely colorable, or is not significantly probative, summary
judgment may be granted." Liberty Lobby, 477 U.S. at 249-50 (internal citations omitted).
In the end, the question the Court must determine is "whether the evidence presents a
sufficient disagreement to require submission to a jury or whether it is so one-sided that one
party must prevail as a matter of law." Id. at 251-52.
The Court will first assess Norton's arguments about the State Law Claims, beginning
with unjust enrichment and fraudulent concealment. As to these claims, Norton seeks "partial
swnmary judgment based only on the issue of the NICECAP proposals' confidentiality and the
NDA." (ECF No. 333 at 2 (emphasis in original).) The Court will then turn to Norton's
arguments on Columbia's conversion claim. As to that claim, Norton argues-similar to those
arguments made in the Motion to Dismiss-that federal patent law preempts the conversion
claim. Finally, the Court will address Norton's arguments about the Federal Claims, namely the
infringement claim as to the 115 and 322 Patents. As to these claims, Norton contends that
amendment-based prosecution history estoppel results in Columbia being foreclosed from
making certain arguments under the doctrine of equivalents.28
On December 10, 2021, the Court gave the parties notice that, under Federal Rule of
Civil Procedure 56(f), it may find summary judgment in either party's favor on all issues of
prosecution history estoppel Norton has raised in this litigation. (ECF No. 680.} In response to
the Court's Order, Norton appears to have withdrawn its request for a bench trial on any
prosecution history estoppel grounds that remain after this Opinion. (See ECF No. 682.) The
Court will rule on prosecution history estoppel as to the live arguments from Norton's Motion
for Partial Summary Judgment and conclude that it is no longer available as a trial defense in any
form.
32
III. Analysis
28
A.
33
The Court Will Grant the Partial Motion for Summary Judgment as to the
Unjust Enrichment Claim, But Deny it as to the Fraudulent Concealment
Oaims to the Extent that These Claims are Based on the Confidentiality of
the 2006 NICECAP Draft Proposals and the Requirements of the NDA
As to Columbia's state law unjust enrichment (Count Eight) and fraudulent concealment
(Count Seven) claims, Norton argues that the potential confidentiality of the 2006 NICECAP
Draft Proposals and the requirements of the NDA cannot support these causes of action. Norton
maintains that, at the time it filed the 643 Patent, neither of the two 2006 NICECAP Draft
Proposals constituted Confidential Information under the NDA. Norton looks to Columbia's
prior patent filings and to the requirements of the NDA to support this argument Because
different legal standards apply to Columbia's unjust enrichment and fraudulent concealment
claims, the Court will address each cause of action in tum.
1.
Federal Patent Law Preempts Columbia's Unjust Enrichment Claim
to the Extent it is Based on the 2006 NICECAP Draft Proposals a�d
the Requirements of the NDA
Federal patent law preempts Columbia's unjust enrichment claim to the extent it is based
on the 2006 NICECAP Draft Proposals because Columbia has failed to show a confidential
relationship existed between it and Norton as it pertains to these proposals. This is so because
Columbia had introduced the 2006 NICECAP Draft Proposals into the public knowledge through
filing the 191 Patent and related patent applications by the time Norton filed for what would
become the 643 Patent29 The Court introduces the legal standards for unjust enrichment claims
and federal preemption before analyzing the claims.
The Court recognizes that the Court's April 2, 2014 Opinion on Norton's Motion to
Dismiss did not dismiss the Unjust Enrichment claim. That Opinion comports with the rationale
here. In the April 2, 2014 Opinion, the Court correctly identified that the crux of an unjust
enrichment claim turns on whether the parties had a confidential relationship, and found that
"Columbia ha[d] alleged a confidential relationship with Symantec that prohibited Symantec
from using confidential disclosure for its sole benefit" (ECF No. 67 at 19.) With the benefit of
additional discovery, it is clear that Norton has overcome Columbia's initial allegation and
29
Under New York law,30 "[u]njust enrichment is a quasi contract theory of recovery, and
is an obligation imposed by equity to prevent injustice, in the absence of an actual agreement
between the parties concerned." 3839 Holdings LLC v. Farnsworth, No. 654463/2016, 2017 WL
5649812, at *9 (N.Y. Sup. Ct. Nov. 24, 2017) (citations omitted). "In order to plead a claim for
unjust enrichment, the plaintiff must allege that the other party was enriched, at plaintiff's
expense,and that it is against equity and good conscience to permit the other party to retain what
is sought to be recovered." Id. (internal quotation marks and citations omitted); see also Buttner
v. RD Palmer Enters., Inc., No. 5:13-cv-0342,2013 WL 6196560, at *2 (N.D.N.Y. Nov. 27,
2013) (citing Levine v. Landy, 832 F. Supp. 2d 176, 188 (N.D.N.Y. 2011)).
Under Virginia law, "[t]he cause of action for unjust enrichment ... applies as follows:
(1) plaintiff conferred a benefit on defendant; {2) defendant knew of the benefit and should
reasonably have expected to repay plaintiff; and (3) defendant accepted or retained the benefit
without paying for its value." T Musgrove Constr. Co., Inc. v. Young, 298 Va. 480,486 (Va.
2020) (quoting Schmidt v. Household Fin. Corp., ll, 276 Va. 108, 116 (Va. 2008)). "The
measure of recovery for unjust enrichment is limited to the benefit realized and retained by the
defendant." Id (citing Schmidt, 276 Va. at 116).
shown that a confidential relationship did not exist for the reasons articulated later in this
Opinion.
In the Motion to Dismiss, the Court stated that it could not determine whether Virginia
or New York law applied to Columbia's conversion claim and did not address which state's law
applied to Columbia's unjust enrichment and fraudulent concealment causes of action. Norton
the moving party-contends that New York law must govern Columbia's state law claims of
unjust enrichment and fraudulent concealment. However,Columbia--who did not move for
summary judgment-argues that New York law does not necessarily apply and that its claims
survive under either New York or Virginia law. Because Columbia's unjust enrichment claim
fails and its fraudulent concealment claim survives under both New York and Virginia law, the
Court need not decide which law to apply here.
a.
30
34
Legal Standard: Uniust Enricbme11t Claims
b.
Legal Standard: Preemption By Federal Patent Law
The Supremacy Clause of the United States Constitution ensures that a state law that
conflicts with federal law is without effect. U.S. CONST. art. VI, cl. 2; Hunter Douglas, Inc. v.
Harmonic Design, Inc., 153 F.3d 1318, 1331 (Fed. Cir. 1998) (citation omitted), overruled in
part on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir.
1999). "Federal Circuit law governs whether federal patent law preempts a state law claim."
Tavory v. NTP, Inc., 297 F. App'x 976,982 (Fed. Cir. 2008) (citing Ultra-Precision Mfg., Ltd. v.
Ford Motor Co., 411 F.3d 1369, 1376 (Fed. Cir. 2005)).
Federal law may preempt state law in one of three ways: (1) explicit preemption;
3d
(2) field preemption; and (3) conflict preemption. Hunter Douglas, 153 F. at 1332. Federal
patent law "plainly does not provide for explicit preemption." Id. (citing 35 U.S.C. §§ 1-376).
As Judge Spencer correctly noted in this case's Memorandum Opinion denying Norton's Motion
to Dismiss, "Congress does not intend to occupy exclusively the field of fraudulent concealment
and unjust enrichment law ... [and therefore] only conflict preemption might bar Columbia's
claims for fraudulent concealment and unjust enrichment." (ECF No. 67 at 18 (citing Univ. of
Colo. Foundation, Inc. v. Am. Cyanamid Co. (Am. Cyanamid IV), 196 F.3d 1366, 1371 (Fed. Cir.
1999)).)
Parties claiming patent infringement often bring unjust enrichment claims as well. Many
courts, including the Federal Circuit, have addressed when federal patent law preempts a state
law unjust enrichment claim. In the patent context, the Federal Circuit has recognized that "[a]n
unjust enrichment claim is preempted by federal patent law when it conflicts with 'the
accomplishment and execution of the full purposes and objectives of Congress,'" such as when
the unjust enrichment claims seeks a determination of true inventorship. Tavory, 297 F. App'x at
35
982 (quoting Aronson, 440 U.S.at 262). On the other hand, the Federal Circuit has concluded
that federal patent law does not preempt a state law unjust enrichment claim where "whether a
confidential relationship existed ...was central to the unjust enrichment claim." Id at 983
(citing Univ. of Colo. Found., Inc. v. Am. Cyanamid Co. (Am. Cyanamid VI), 342 F.3d 1298,
1306 (Fed.Cir. 2003)). Where a plaintiff's claim does not involve a confidential relationship,
federal patent law may preempt a state law unjust enrichment claim because the claim would
seek correction of inventorship under federal patent law. See id. at 984 (concluding that the
district court correctly held that federal patent law preempted plaintiff's unjust enrichment claim
where "the dispositive issue is [the plaintiff's] alleged co-inventorshlp, which is governed
exclusively by federal patent law'' (citation omitted)).
As to Columbia's unjust enrichment claim, Norton seeks summary judgment on a narrow
issue-the confidentiality of the 2006 NICECAP Draft Proposals and the NDA. Because
Columbia included the 2006 NICECAP Draft Proposals as a part of the 898 Provisional
Application, those drafts no longer constituted Confidential Information under the NOA when
the PTO issued the 191 Patent. Therefore, to the extent that Columbia relies on the 2006
NICECAP Proposals, Columbia cannot prove a confidential relationship, meaning that federal
patent law preempts its unjust enrichment claim.
Because Norton seeks summary judgment solely on the confidentiality of the 2006
NICECAP Draft Proposals and the NDA, the Court will consider only whether a confidential
31
relationship arises under these documents.
Norton asserts that "Columbia's [Unjust Emichment and Fraudulent Concealment]
claims fail for additional reasons, but Norton does not move for summary judgment on those
2.
31
36
Analysis: Because the 898 Provisional Application Became Public
When the PTO Issued the 191 Patent, No Confidential Relationship
Exists Under the NDA Based on the 2006 NICECAP Draft Proposals
a.
Because the 191 Patent Encompassed the 2006 NICECAP
Draft Proposals, the 2006 NICECAP Draft Proposals Did Not
Constitute Confidential Information Under the NDA After the
PTO Issued the 191 Patent
Norton asserts that neither of the two 2006 NICECAP Draft Proposals constituted
Confidential Information under the NDA after Columbia disclosed them as a part of the 191
Patent, which the PTO published on September 24, 2009. To detennine the confidentiality of the
2006 NICECAP Draft Proposals, the Court turns to the obligations expressed in the NDA and the
timeline of events that led to the issuance of the 191 Patent and the 643 Patent.
The NDA, which Columbia and Norton signed on November 29, 2004, recognized that
Columbia and Norton sought to "disclose and to receive the confidential information of the other
Party." (ECF No. 313-1 at 2.) The NDA defined Confidential Information as "infonnation not
generally known to the public, in written. oral, or in any other form." (ECF No.313-1 at 2.) It
also stated that "Confidential Information shall not include that inf
onnation 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 . .. (ECF
"
No. 313-1 at 2.)
On May 31, 2006, before Norton, through Witten, submitted the 2006 NICECAP Final
Proposal, Columbia filed the 898 Provisional Application. As a provisional patent application,
the 898 Provisional Application did not publish publicly. See 35 U.S.C. § 122(b)(2)(A)(iii). The
898 Provisional Application included the 2006 NICECAP Draft Proposals. Columbia does not
dispute this fact.
grounds." (ECF No. 314 at 7 n.l.) Norton does not address any additional grounds in support of
the Partial Motion for Summary Judgment, the Court does not consider them here. Clearly no
party can pursue a determination of true inventorship under a theory of unjust enrichment.
Tavory, 297 F. App'x at 983.
37
On September 24, 2009, the PTO publicly issued the 191 Patent, which identified the 898
Provisional Application as "Related U.S. Application Data" and "incorporate[s] [it] by reference
. .. in its entirety." (ECF No. 313-10 at 2, 5.) Under Federal Circuit precedent, "[t]he
incorporated patents are 'effectively part of the host [patents] as if [they] were explicitly
contained therein."' X2Y Attenuators, LLC v. Int'/ Trade Comm 'n, 757 F.3d 1358, 1362-63
(Fed. Cir. 2014) (quoting Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329
(Fed. Cir. 2001)). The Notice of Publication of Application that the PTO sent to Columbia
recognized that the 191 Patent "may be accessed through the [PTO's] publically [sic] available
Searchable Databases via the Internet at www.uspto.gov." (ECF No. 313-11 at 2.)
Nearly one year later, on March 18, 2010, Norton drafted the Invention Disclosure Form
that would eventually become the 643 Patent. On April 2, 2010, Norton filed the 609
Provisional Application. Similar to the 898 Provisional Application, the 609 Provisional
Application did not publish. See 35 U.S.C. § 122(b)(2)(A)(iii). Yet another year later, on April
4, 2011, Norton filed the 013 Non-Provisional Application, which also did not publish. Finally,
on October 1, 2013, the PTO issued the 643 Patent.
The undisputed progress of this timeline shows that Columbia's 191 Patent became
public information for the purposes of the NDA on September 24, 2009, before Norton filed the
Invention Disclosure Form (on March 18, 2010), the 609 Provisional Application (on April 2,
2010), the 013 Non-Provisional Application (on April 4, 2011), and before the PTO issued the
643 Patent (on October 1, 2013). Indeed, on March 10, 2010, Dr. Stolfo recognized that the 191
Patent "ha[d] been made public." (ECF No. 314-5 at 2.) Although the 191 Patent-the host
Patent-/2C2. \
Richmond, Virginia
M.Hann�.
�
The Court is aware that Columbia stipulated to Norton's definition of the term
anoma:lous as �'deviating from normal" on OGtober 31, 2019. (Pl. Resp. Notice Propo�d
Schedule 2, ECF No. 282.) The Court would like the joint stipulation on the record for purposes
of trial.
S$
77
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