Intellectual Ventures I LLC v. Symantec Corp.
234 F. Supp. 3d 601
D. Del.2017Background
- Intellectual Ventures I & II sued Symantec (and Veritas) alleging infringement of claims 25 and 33 of U.S. Patent No. 5,537,533, which claims a method for remote mirroring of digital data (including use of a nonvolatile buffer and a "spoof packet").
- Symantec moved for summary judgment that the asserted claims are patent-ineligible under 35 U.S.C. § 101, and for non-infringement, no damages, and no willful infringement. IV cross-moved to hold the claims patent-eligible and sought other relief.
- The court previously construed the term "substantially concurrent" to mean "not separated in time except as a result of processing delays," with the causation of delay being dispositive.
- The accused product (WR/VVR) writes first to a storage-replicator-log (SRL) and then, after an explicit setup step for remote writes, writes to the primary volume; Symantec contends that separation is a designed delay, not a processing delay.
- The court considered the Alice/Mayo two-step framework and whether the claims, read as a whole, embody an inventive concept beyond the abstract idea of backing up data.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Patent eligibility under §101 (Alice/Mayo) | Claims are a specific technical solution improving data integrity using nonvolatile stores and spoof packets; therefore not abstract | Claims are directed to the abstract idea of keeping an up-to-date remote backup; computer components are generic tools | Court: Claims are directed to the abstract idea of backing up data and lack an inventive concept; summary judgment for Symantec (ineligible) |
| Infringement — "substantially concurrently" requirement | WR meets the court's construction because delays are merely processing and required for correct operation | WR intentionally separates writes (SRL then setup then primary) — the separation is a designed delay, not a processing delay | Court: No reasonable juror could find WR meets the construed "substantially concurrently" limitation; summary judgment of non-infringement for Symantec |
| Direct infringement / customer use evidence | IV proffered circumstantial evidence (support tickets, maintenance purchases, Symantec testimony) showing customers used WR | Symantec argued software sales alone are insufficient and IV offered no specific instances of method performance | Court: IV presented sufficient circumstantial evidence to survive summary judgment on customer use (no summary judgment for Symantec on direct infringement at this stage) |
| Willful infringement / enhanced damages | Symantec had pre-suit knowledge because the ’533 patent was cited on Symantec-owned patents and continued to sell product after suit | Pre-suit citation alone is insufficient; no evidence of egregious post-suit conduct | Court: Pre-suit citation and normal post-suit conduct insufficient to support willfulness; summary judgment of no enhanced damages for Symantec |
Key Cases Cited
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (summary judgment standards)
- Reeves v. Sanderson Plumbing Prods., 530 U.S. 133 (drawing inferences for nonmovant; credibility)
- Anderson v. Liberty Lobby, 477 U.S. 242 (genuine dispute standard at summary judgment)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden)
- Diamond v. Chakrabarty, 447 U.S. 303 (statutory patent-eligibility baseline)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (two-step framework foundations)
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (Alice/Mayo two-step test for abstract ideas)
- Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350 (claims to data collection/analysis as abstract)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (claims directed to improvements in computer functionality can be eligible)
- Bascom Global Internet Servs. v. AT&T Mobility, 827 F.3d 1341 (ordered combination of known elements can supply inventive concept)
- TLI Commc’ns v. AV Automotive, 823 F.3d 607 (high-level functional claims likely abstract)
- Internet Patents Corp. v. Active Network, 790 F.3d 1343 (claims to storing information can be abstract)
- FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089 (using conventional computer functionality to implement monitoring/backups is insufficient)
- buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (invocation of generic computer components insufficient for inventive concept)