Intellectual Ventures I LLC v. Symantec Corp.

Citations: 234 F. Supp. 3d 601; 2017 U.S. Dist. LEXIS 27105; 2017 WL 639638Docket: CA. No. 13-440-LPS

Court: District Court, D. Delaware; February 12, 2017; Federal District Court

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Plaintiffs Intellectual Ventures I LLC and Intellectual Ventures II LLC (IV) filed a patent infringement lawsuit against Defendants Symantec Corporation and Veritas Technologies (Symantec), alleging that Symantec’s WR product infringes claims 25 and 33 of U.S. Patent No. 5,537,533, which pertains to remote data mirroring systems. The Court is currently reviewing motions for summary judgment and motions to exclude expert testimony, with oral arguments held on January 3, 2017, and a jury trial set for April 10, 2017. The Court has decided to grant Symantec's motions for summary judgment based on patent ineligibility, non-infringement, and lack of willful infringement, while also granting IV's motion regarding Symantec's defenses of prosecution history estoppel and waiver. All other motions have been denied.

Under Rule 56(a) of the Federal Rules of Civil Procedure, summary judgment is warranted if there is no genuine dispute over material facts, placing the burden on the moving party to demonstrate this absence. The nonmoving party must then present specific facts to show a genuine issue for trial, with the Court favoring the nonmoving party in its inferences and not weighing evidence. To counter a summary judgment motion, the nonmoving party must provide more than mere assertions or doubts; they must present evidence that could reasonably lead a jury to find in their favor. The presence of a minimal amount of evidence is insufficient to defeat a summary judgment motion; rather, substantial evidence is required to establish a genuine issue for trial.

Patent eligibility is governed by 35 U.S.C. § 101, allowing patents for new and useful processes, machines, manufactures, or compositions of matter, with three exceptions: laws of nature, physical phenomena, and abstract ideas. Notably, abstract ideas cannot be patented, as established in Diamond v. Chakrabarty and reaffirmed in Alice Corp. v. CLS Bank Int’l. The Supreme Court has articulated a two-step framework for evaluating claims related to these exceptions. 

Step 1 involves determining if the claims are directed to a patent-ineligible concept, such as an abstract idea, by examining the claims in their entirety and focusing on their advancement over prior art. Courts must avoid oversimplifying the invention's benefits and should consider the claims as an ordered combination.

Step 2 requires an analysis of whether the claims include an inventive concept, meaning they must present elements that provide significantly more than the ineligible concept itself. This step also considers both the overall claim and its individual elements to assess patentability comprehensively.

The standard step-2 inquiry in patent eligibility assesses whether claim elements merely describe "well-understood, routine, conventional activities." Simply adding conventional steps at a high level does not suffice to demonstrate an inventive concept. The inquiry must go beyond recognizing that individual claim elements are known in the art. In Bascom Glob. Internet Services v. AT&T Mobility, while the Federal Circuit noted that the components of the claims were generic and not inventive on their own, it found that their ordered combination was patent-eligible. The court also considers both claims and specifications during this inquiry. A mere generic computer reference does not convert an abstract idea into a patent-eligible invention, as generic implementation lacks the necessary additional features to ensure the process is not merely an attempt to monopolize the abstract idea.

In the context of expert testimony under Federal Rule of Evidence 702, the trial judge plays a gatekeeping role to ensure the testimony is based on a reliable foundation and relevant to the case. Expert testimony is admissible only if it is based on sufficient facts or data, adheres to reliable principles and methods, and the expert has applied these methods reliably to the case facts. Three key requirements for expert testimony include expert qualification, reliability of the opinion, and relevance to the facts.

In summary judgment motions regarding the patent eligibility of claims 25 and 33 of the '533 patent, Symantec argues that these claims are not patent-eligible, while IV contends they are. Independent claim 25 outlines a method for remote mirroring of digital data, detailing steps including copying data from a primary server to a data buffer, transmitting the data through a communication link, generating a spoof packet, and copying the data to a remote server's nonvolatile store.

Claim 33, which is dependent on claim 25, includes steps for compressing data before copying it from a data transfer unit to a communication link and decompressing it after copying from the output end. IV asserts that the claims offer a precise, innovative solution for protecting critical data during power interruptions, involving nonvolatile data storage and the use of spoof packets for continuous data copying. IV argues that this constitutes a technological improvement rather than an abstract idea. In contrast, Symantec argues that the claims represent the abstract concept of backing up data remotely, a practice historically performed by humans long before digital technology. Symantec asserts that the claims merely employ computers as tools without improving their functionality. The Court, considering the claims' focus, agrees with Symantec, stating that the claims reflect the abstract idea of data backup, outlining basic steps of data copying and confirmation. The Court notes that similar claims have been categorized as abstract ideas in prior rulings. Despite IV's claims of technological improvement over prior methods, the Court finds that the claims lack concrete details to limit the invention to a specific solution, relying instead on functional language. The claims do not enhance computer or network functions but utilize existing capabilities for remote mirroring. Therefore, the Court concludes that the claims center on an abstract idea, and the additional steps in claim 33 do not alter this assessment. The Court will examine the claim limitations for any inventive concept.

The Court agrees with Symantec that the claims in the '533 patent do not contain sufficient elements to qualify as patent-eligible subject matter, as they rely on conventional computer components that lack an inventive concept. The individual components, including network servers and data buffers, are described as generic and operate in expected manners, which courts have ruled as inadequate for establishing inventiveness in abstract ideas. IV argues that the ordered combination of components enhances data retention and system performance but fails to demonstrate how this combination is inventive or what improvements it achieves. Claim 25's requirement for a specific sequence of events is countered by evidence that this order is conventional, which IV does not dispute. For claim 33, IV claims that the inclusion of compression and decompression steps is inventive, but the record shows no unconventional aspects to the data compression itself. Consequently, claims 25 and 33 do not present an inventive concept that elevates them to patent-eligible applications of the abstract idea of data backup. The patent merely identifies a general problem with prior art methods, offering a solution that reiterates the problem without specificity. Thus, the Court grants Symantec's motion for summary judgment on patent ineligibility and denies IV's cross-motion.

Symantec seeks summary judgment of non-infringement, arguing that its product, WR, does not write data into the nonvolatile server store and a nonvolatile data buffer concurrently, as required by the claims. The Court previously defined "substantially concurrent" to mean not separated by time except for processing delays, indicating that delays caused by system design do not qualify as acceptable under this definition. Symantec asserts that WR intentionally writes data to a storage replicator log (SRL) before writing to the primary network server, with a programmed delay between these steps, meaning the delay is a design choice rather than an unavoidable processing delay. Symantec cites IV's expert, Mr. Webster, as corroborating this operation. In contrast, IV opposes the summary judgment, arguing that Symantec misinterprets "substantially concurrent" as requiring simultaneous actions and claims that any delays in WR are processing delays. IV maintains that the setup for writing to remote volumes is integral to WR's operation and does not negate the substantially concurrent nature of the writes, which are only separated by processing delays as defined by the Court.

The Court finds in favor of Symantec, concluding that no reasonable juror could determine that Symantec's WR product performs a substantially concurrent copy to a data transfer unit from the primary network server, as defined by the Court. The operation of WR involves writing data first to the SRL, a nonvolatile data buffer, followed by setting up a write to remote servers, and then writing to the primary data volume. This sequence indicates a clear separation by an intervening step, leading to delays that exceed what is necessary for processing. IV's argument that this setup step constitutes a mere processing delay is countered by its own expert's admission that WR could have been designed without this step. Therefore, the delays are not related to necessary processing, as they are intentionally designed into the system. IV's assertion that the delays are justified due to the system's design choice does not alter their classification. The Court concludes that these delays are not processing delays and grants Symantec's motion for summary judgment of non-infringement. Additionally, Symantec argues for summary judgment on the grounds of lack of direct infringement evidence by IV, emphasizing that method claims require evidence of actual performance of the claimed method, not just the capability of the product. The Court reiterates that circumstantial evidence can be sufficient for proving method claim infringement, but IV has failed to provide specific instances of direct infringement.

IV presented circumstantial evidence indicating customer use of WR, including a customer support call database, maintenance package purchases, and testimony from a Symantec representative about two customers using WR. For the compression feature in claim 33, IV highlighted evidence that Symantec enabled this feature in response to customer requests. This evidence suggests that a reasonable jury could conclude that at least one customer used WR, making summary judgment on non-infringement inappropriate.

Symantec sought summary judgment on damages, arguing that IV failed to quantify the number of customers who used WR, rendering the damages claim speculative. While a patentee must show that devices performed the patented method during the infringement period to claim damages, they are not required to establish a direct correlation between sold units and infringing customers. IV's damages theory assumes that most customers who bought WR used it, supported by evidence indicating that it would be unreasonable for customers to spend significantly on an unused product. IV provided sufficient evidence for a jury to connect WR's purchase with its actual use.

Regarding enhanced damages, IV's argument centered on Symantec's pre-suit knowledge of the ’533 patent, as it is cited on two patents owned by Symantec. However, this citation alone is not sufficient for establishing willfulness, as previous rulings indicate that awareness of a patent through citation does not equate to willful infringement. IV also claimed that Symantec's ongoing sales and updates of WR post-lawsuit warranted enhanced damages, but failed to present evidence of behavior exceeding typical infringement. Consequently, the Court granted Symantec's motion for summary judgment on willful infringement.

The Court granted Symantec's motions for summary judgment regarding patent ineligibility, non-infringement, and no willful infringement. IV's motion for summary judgment on Symantec’s prosecution history estoppel and waiver defenses was granted as Symantec did not oppose it. All other motions were denied without prejudice. An appropriate order will follow.