Federal patent law preempts unjust enrichment claim

Where patent holder Columbia University in New York claimed the defendant was unjustly enriched when it allegedly used confidential information in proposals, but Columbia failed to show a confidential relationship existed as it pertained to the proposals, federal patent law preempted the unjust enrichment claim.

Background

The Trustees of Columbia University in the City of New York allege that NortonLifeLock Inc.’s antivirus software infringed on six patents 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. Columbia also brings law claims for unjust enrichment, fraudulent concealment and conversion. Norton has filed a motion for partial summary judgment.

State law claims

On the state law claims for unjust enrichment and fraudulent concealment, Norton seeks partial summary judgment based only on the issue of the National Intelligence Community Enterprise Cyber Assurance Program, or NICECAP, proposals’ confidentiality and the mutual nondisclosure agreement.

The court finds that 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 patent.

Columbia asserts that the court cannot grant summary judgment on its unjust enrichment claim because Columbia disputes whether the 898 provisional application ever published. Columbia maintains that Norton “provides no evidence that the ‘898 [provisional] Application was publicly available before April 2010, much less that anyone obtained the document from the public record.” Columbia states that the 898 provisional application “was never published.” However, because Columbia provides no evidence to support its contentions, it fails to raise a dispute of material fact to preclude summary judgment.

Turning to the fraudulent concealment claim, Norton did not identify any duty it had to disclose information to Columbia, nor the degree of that duty. Columbia, on the other hand, has identified this requirement and has shown that Norton had a duty to disclose information. Therefore, the court will deny the partial motion for summary judgment as to the fraudulent concealment claim.

Finally, because the damages Columbia seeks in its conversion claim stem from a correction of ownership, and federal patent law governs this remedy, federal patent law preempts Columbia’s state law conversion claim.

Doctrine of equivalents

Norton next argues that Columbia is estopped from asserting the doctrine of equivalents because of the prosecution history of the 115 and 322 patents.

The court concludes that no genuine dispute of material fact exists as to the “application community” limitation during the prosecution of the 115 patent. Therefore, the court will deny the partial motion for summary judgment on Columbia’s infringement claim and, instead, grant summary judgment in favor of Columbia. That is, Norton is precluded from making this prosecution history estoppel argument to a doctrine of equivalents theory that Columbia asserts at trial.

As to the 322 patent, Columbia rewrote certain proposed patent claims from a dependent form to an independent form after the Patent and Trademark Office indicated that such a change would result in the proposed patent claims being allowable. Although this type of change generally gives rise to prosecution history estoppel, Columbia has rebutted the presumption by showing that the amendment was “merely tangential.” Therefore, the court will deny the partial motion for summary judgment on Columbia’s infringement claim concerning the 322 patent and, instead, grant summary judgment in favor of Columbia on this issue.

However, because the court finds that, as a matter of law, that estoppel does not apply to the amendments made to the 115 patent during inter partes review, the court will deny Norton’s motion for summary judgment on this ground and, instead, grant summary judgment in favor of Columbia.

Defendant’s motion for summary judgment granted in part, denied in part.

The Trustees of Columbia University in the City of New York v. NortonLifeLock Inc., Case No. 3:13-cv-808, Jan. 13, 2022. EDVA at Richmond (Lauck). VLW 022-3-010. 77 pp.