Trs. of Columbia Univ. in the City of N.Y. v. Symantec Corp.

Citation: 390 F. Supp. 3d 665Docket: Civil Action No. 3:13cv808

Court: District Court, E.D. Virginia; July 2, 2019; Federal District Court

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On July 1, 2015, the PTAB initiated inter partes review of Symantec's patent claims using the "broadest reasonable construction" standard. On June 30, 2016, the PTAB issued final decisions on the 115 Patent and the 322 Patent, determining that certain claims were proven invalid by Symantec, while others remained valid. Columbia and Symantec requested a one-year stay on August 5, 2016, to appeal the PTAB's decisions, which the Federal Circuit affirmed in 2018. Consequently, only the 115 Patent, 322 Patent, and 643 Patent remained at issue, with specific claims in the 115 and 322 Patents deemed valid by the PTAB.

After the Federal Circuit's mandate, Columbia filed an unopposed Motion to Reopen Proceedings, which was granted, leading to a pretrial conference on October 4, 2018. Following this, Columbia sought partial summary judgment, which was also granted. The court emphasized that summary judgment is appropriate when no genuine issue of material fact exists, requiring the nonmoving party to provide specific factual evidence rather than mere allegations. The court must consider all evidence in the light most favorable to the nonmoving party and has an obligation to prevent unsupported claims from proceeding to trial.

The court found no genuine dispute regarding the issue of statutory estoppel, concluding that 35 U.S.C. 315(e)(2) clearly estops Symantec from asserting additional invalidity grounds not raised in its inter partes review petitions. The court stated that principles of fairness support this outcome, rejecting Symantec's argument based on the Shaw decision. As a result, the court granted the Partial Summary Judgment Motion.

Symantec's attempt to avoid summary judgment is based on its claim that a genuine dispute of material fact exists regarding whether source code qualifies as a 'printed publication' for inter partes review. However, the Court finds this claim insufficient for two reasons. First, Symantec's assertion lacks evidentiary support, violating Local Rule 56(B) and Fourth Circuit precedent, as it relies solely on an outdated version of 35 U.S.C. 102(b). Second, evaluating the merits, the Court suggests that source code could indeed be considered a printed publication, as the definition encompasses various forms of dissemination, including microfilm and magnetic media. Columbia has provided evidence demonstrating the public availability of the DIDUCE and ReVirt source codes, which Symantec previously acknowledged as prior art. Consequently, the Court is likely to conclude that no genuine dispute exists regarding the status of these source codes. 

Additionally, the Court's analysis will be guided by three legal principles: statutory interpretation, statutory estoppel under 35 U.S.C. 315(e)(2), and inter partes review types. The interpretation process focuses on congressional intent and the statutory text's ordinary meaning, considering the context of the statute as a whole. Under Section 315(e)(2), a petitioner in inter partes review, having received a final written decision, is barred from asserting any grounds for invalidity in subsequent civil actions that were raised or could have been raised during the review process.

The provision addresses two categories of invalidity grounds: non-instituted grounds, which are those raised by a petitioner in an inter partes review (IPR) petition that the PTAB chooses not to institute, and non-petitioned grounds, which are those that the petitioner did not raise but could have reasonably raised. IPR commences when a party files a petition with the PTAB, established by Congress to provide an efficient alternative to litigation and improve patent quality. Before 2018, the PTAB could either fully or partially institute an IPR. Following the Supreme Court's ruling in SAS Institute, Inc. v. Iancu, the PTAB is now required to institute review on all grounds asserted in a petition or reject the petition entirely. 

In this case, the PTAB fully instituted IPR on all of Symantec's claims, leaving only non-petitioned grounds in question. Columbia argues that Symantec, having identified multiple grounds of invalidity but only including a few in its petitions, could have reasonably raised those additional grounds, thus invoking statutory estoppel under 35 U.S.C. § 315(e)(2). Symantec counters that Columbia's interpretation is overly broad and inconsistent with Federal Circuit precedent, asserting that estoppel applies only to grounds actually raised in the IPR process. The court finds that the plain language of § 315(e)(2) supports Columbia’s view, indicating that Symantec cannot assert invalidity grounds it was aware of but chose not to include in its petitions. The interpretation aligns with the Federal Circuit's decision in Shaw, confirming that estoppel applies to non-petitioned grounds that a diligent searcher would have reasonably discovered.

A 'skilled searcher conducting a diligent search reasonably could have been expected to discover' the non-petitioned grounds in this case. Symantec previously identified grounds of invalidity in its May 12, 2014, contentions but chose not to assert them in its December 5, 2014, inter partes review petitions. The Court interprets that the phrase 'during that inter partes review' retains meaning, as the Supreme Court established that inter partes review begins with the filing of a petition. Consequently, the grounds asserted in the petition are considered to have been raised 'during that inter partes review.' As a result, under the plain language of 315(e)(2), Symantec is estopped from using the previously identified grounds that were not included in its inter partes review petitions. This interpretation aligns with the Federal Circuit’s view in Shaw and is supported by the purpose of inter partes review, which aims to streamline the patent system and reduce litigation costs. Allowing non-petitioned grounds would contradict this goal and enable parties like Symantec to avoid full accountability in their initial petitions. Furthermore, principles of fairness indicate that estoppel applies to non-petitioned grounds, as permitting Symantec to assert these grounds later would unfairly give it another opportunity to challenge the validity of the patent. The Court finds that the plain reading of 315(e)(2) and the intent behind inter partes review necessitate that estoppel applies to the grounds Symantec omitted from its petitions.

The Court interprets the plain language of 35 U.S.C. 315(e)(2) to apply statutory estoppel to non-petitioned grounds of invalidity that Symantec seeks to assert in its defense. This decision is supported by the legislative intent behind 315(e) estoppel and principles of fairness, and it aligns with the Federal Circuit's ruling in Shaw. Consequently, Symantec is barred from using invalidity grounds included in its 2014 contentions that were not raised in its inter partes review petitions. The Court grants the Partial Summary Judgment Motion.

When construing patent terms, a district court must reference the claims, specification, and prosecution history, aiming for a construction that reflects the claim language and the patent's description. In contrast, the PTAB employs a "broadest reasonable construction" standard during inter partes review. In its Final Written Decisions for the 115 and 322 Patents, the PTAB defined 'anomalous' as 'deviation/deviating from a model of typical computer system usage' and noted that 'attack data' could be used to establish this model.

PTAB fully instituted Symantec’s inter partes review requests for the 115 and 322 Patents, finding 12 claims of the 115 Patent and 6 claims of the 322 Patent patentable. PTAB also determined that Columbia could not patent 30 claims of the 115 Patent and 21 claims of the 322 Patent based on prior art. Both parties acknowledge that the PTAB's patentability decisions narrowed the claims before this Court. The Federal Circuit reviewed the PTAB's decisions in a unified opinion, excluding the 643 Patent, which remains stayed due to prior Court action.

Furthermore, adopting Symantec's interpretation of the statute would render the phrase "reasonably could have raised" meaningless, as it would apply to an improbable scenario. The Court finds that such an interpretation does not align with the statute's common meaning. Therefore, under Section 315(e)(2), a petitioner is estopped from asserting any claim invalidity grounds that were raised or could have been raised during inter partes review.

In Shaw, the petitioner filed two petitions to the Patent Trial and Appeal Board (PTAB) for inter partes review on various grounds of patent invalidity. The PTAB instituted review on some grounds but denied it on others, a practice deemed impermissible by the Supreme Court. Upon appeal, the Federal Circuit refused to compel the PTAB to review the denied grounds, asserting that the petitioner would not be barred by 35 U.S.C. § 315(e) from later arguing invalidity based on those unreviewed grounds, since inter partes review only begins upon institution and the PTAB opted not to institute on those grounds. The Court acknowledged that a minority of courts interpret Shaw differently, suggesting that the estoppel under § 315(e)(2) could apply to both non-instituted and non-petitioned grounds, but found these interpretations unpersuasive. The Court emphasized that the clear language of § 315(e)(2) is decisive and indicated that, even considering its legislative history, it would likely suggest that estoppel applies to non-petitioned grounds. Statements from Senator Kyl and former PTO director David Kappos reinforce this interpretation. The Court concluded that the recent emergence of differing interpretations does not affect the fairness of its decision, noting that the statutory language sufficiently informed parties, like Symantec, that failure to raise all reasonable grounds of invalidity would result in estoppel in civil litigation.