Court of Appeals Reverses Summary Judgment in Hilgraeve v.
Network Associates
(August 7, 2000) The U.S. Court of Appeals reversed a summary judgment rendered by the U.S. District Court Judge Edmunds that McAfee VirusScan does not infringe a Hilgraeve patent.
| Documents |
| Appeals Court Opinion, 8/2/00 [HTML]. |
| A copy of the Appeals Court opinion in Hilgraeve Corporation, Inc., Case No. 99-1481 and 1491, will also be available for download by FTP for 90 days in MS Word format from the web site of the U.S. Court of Appeals for the Federal Circuit. The URL for this download is ftp://ftp.fedcir.gov/fedcir.gov /99-1481.exe. |
| For the opinion of the U.S. District Court, see Hilgraeve Corp. v. McAfee Assocs., Inc., 70 F. Supp. 2d 738 (E.D. Mich. 1999). |
Hilgraeve Corporation filed suit against Network Associates (NAI), owner of McAfee, on September 15, 1997 in U.S. District Court for the Eastern District of Michigan. Hilgraeve alleged that the McAfee's popular VirusScan product infringes a Hilgraeve patent which was issued on June 7, 1994.
Hilgraeve sought injunctive relief and monetary damages.
Judge Nancy Edmunds granted NAI/McAfee's motion for summary judgment of non-infringement by written order on May 20, 1999. Hilgraeve then appealed to the U.S. Court of Appeals for the Federal Circuit.
A three judge panel of the Court of Appeals issued its opinion reversing and remanding on August 2, 2000. The panel was comprised of Judges Paul Michel, Alan Lourie, and Randall Rader. Judge Rader wrote the opinion for the unanimous panel.
At issue was U.S. Patent No. 5,319,776, issued to Hilgraeve, and entitled "In Transit Detection of Computer Virus with Safeguard." This patent describes a program that scans for computer viruses. The claimed invention scans a body of data during its transfer, and before storage of the data with potential viruses on the destination storage medium. If the program detects signs of a virus during the scan, the program automatically blocks storage.
Hilgraeve argued that McAfee's VirusScan screens incoming digital data for viruses during transfer and before "storage" on the destination storage medium.
NAI/McAfee argued that VirusScan does not infringe because it screens the incoming digital data only after it has been transferred and "stored" on the destination storage medium.
The Court of Appeals concluded that there exist genuine issues of material fact regarding whether or not VirusScan screens before or after the time at which incoming data is present on the destination storage medium and accessible by the operating system and other programs. Hence, the Court reversed the summary judgment, and remanded the case to the District Court for further proceedings.
In addition, the Court of Appeals affirmed the District Court's finding that prosecution history estoppel bars application of the doctrine of equivalents.
The law offices of Wilson Sonsini Goodrich & Rosati represented Network Associates on appeal. Brooks & Kushman, of Southfield, Michigan, represented Hilgraeve.
Network Associates is based in Santa Clara, California. It produces security products. Its five business units are PGP Security, providing firewall, intrusion detection and encryption products, Sniffer Technologies, providing network and application management, Magic Solutions, providing web-based service desk solutions, McAfee, providing anti-virus products, and myCIO.com, an infrastructure ASP providing security and anti-virus services.
Hilgraeve Corporation is based in Monroe, Michigan. It produces communications software for PCs. It makes DropChute instant file delivery software, HyperAccess communications software, and other products.