Trustees of Columbia University v. Gen Digital Inc., Appeal No. 2024-1243 (Fed. Cir. Mar. 11, 2026)

In our Case of the Week, the Federal Circuit vacated a $185 million damages award for willful infringement of Columbia University’s computer security patents by Norton antivirus software, and remanded for further proceedings.  Columbia asserted claims from U.S. Patent Nos. 8,601,322 and 8,074,115, which the Federal Circuit found to be directed to an abstract idea at step one of the patent-eligibility inquiry under Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), and directed the district court on remand to consider whether the claims incorporated an inventive concept at Alice step two.  The Court also reviewed issues of claim construction, willfulness, and damages for foreign sales that could arise on remand should the lower court determine the claims are directed to patent-eligible subject matter.

Columbia’s related ’322 and ’115 patents are directed to methods, systems, and computer media for detecting anomalous program executions by comparing a portion of an emulated execution to a model of function calls for that program.  Claim 2 of the ’322 patent was treated as illustrative, and recited as follows:

A method for detecting anomalous program executions, comprising:

executing at least a portion of a program in an emulator;
comparing a function call made in the emulator to a model of function calls for the at least a portion of the program, wherein the model is a combined model created from at least two models created using different computers; and identifying the function call as anomalous based on the comparison.

In the proceedings below, Norton had sought judgment on the pleadings that the asserted claims are patent-ineligible under 35 U.S.C. § 101.  The district court denied Norton’s motion based on a finding that the claims were not directed to an abstract idea, relying on the patents’ shared specification to find that the invention improved computer virus scanning through the creation of unique models and improvements in efficiency.  The Federal Circuit reversed, explaining that the Alice step one inquiry is directed to the invention reflected in the claim language, not as described in the specification.  Here, the reviewing panel found the claims were drawn to the abstract idea of identifying a data deviation based on a comparison, coupled with the abstract idea of “a divide-and-conquer approach where multiple computers collaborated on a single task,” to be executed through conventional emulator technology.  While Columbia argued at oral argument, inter alia, that the use of function calls in particular rendered the claims non-abstract, the panel found this argument to be forfeited.  However, the Court found that Columbia sufficiently preserved an argument as to function calls at Alice step two—i.e. that the use of function calls was an inventive concept—and remanded to the district court for further consideration of that question.

In the event the claims were determined on remand to be patent-eligible, the Federal Circuit also provided guidance on other appealed issues.  Perhaps most notably, the Court found that any damages must exclude Norton’s foreign sales, which amounted to about $94 million of the amount awarded by the jury.  While the jury had included the foreign sales because they were based on software provided from the United States, the Court relied on Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2006) (concerning software as an exported “component” under 35 U.S.C. § 271(f)), to hold that intangible “software,” in the abstract, is akin to a mere blueprint or schematic from which an infringing product might be made.  Here, the system, method, and removable media claims of Columbia’s patents could be infringed only when the software was actually fixed in a tangible medium and/or run on a computer, and because it was undisputed that those events occurred outside of the U.S. with respect to the foreign sales at issue, the district court erred in denying JMOL to Norton of no damages based on foreign sales.

Among other things, the Federal Circuit also affirmed the district court’s claim construction in favor of Columbia on an issue that would otherwise have provided Norton with a non-infringement defense, and held there was sufficient evidence from which a jury could determine Norton’s infringement was willful.  However, the panel instructed the lower court to reconsider whether a fee award and enhanced damages were appropriate under 35 U.S.C. §§ 284 and 285, in view of the Federal Circuit’s companion decision vacating a sanctions award against Norton’s counsel (see our Also This Week write-up below), and because the district court improperly considered the “closeness” of the case only in terms of the jury’s verdict, and not with respect to the claims and defenses presented as a whole.

The opinion can be found here.

By Jason A. Wrubleski

ALSO THIS WEEK

Trustees of Columbia University v. Gen Digital Inc., Appeal No. 2024-1244 (Fed. Cir. Mar. 11, 2026)

In a companion case to our Case of the Week, the district court reversed a sanctions order against the law firm Quinn Emanuel.  In relation to an inventorship claim raised in the case against one of Norton’s patents, Quinn Emanuel had entered into an attorney/client relationship with a witness in the case, who had previously worked for Norton.  In the intervening years, that witness indicated his views that Columbia’s researchers should have been given inventorship of Norton’s patents.  The district court found that to be a conflict of interest that waived attorney-client privilege, and ordered Quinn to produce documents relevant to their representation of the witness.  Quinn refused, resulting in a contempt order against Quinn, an adverse instruction at trial, and a finding of enhanced damages for improper litigation conduct.

The Federal Circuit reversed, finding the district court’s order to have been improper, because a conflict of interest does not waive the attorney-client privilege.  Having reversed that decision, the contempt order was also reversed.

The opinion can be found here.

By Nika Aldrich

Richard Gramm v. Deere & Company, Appeal No. 2024-1598 (Fed. Cir. Mar. 11, 2026)

In an appeal from a district court’s conclusion of invalidity of a claim reciting a “control means” limitation, the Court reviewed whether a general reference in the specification to commercial embodiments used in crop harvesters was a sufficient disclosure of corresponding structure to support the means-plus-function claim limitation.  The Court agreed with defendant (Deere & Co.) that the algorithm requirement for computer-implemented means-plus-function terms is triggered when a patentee relies on commercial embodiments that employ general purpose hardware, and found no error in the district court’s conclusion of lack of a prose algorithm in the specification.

However, an additional commercial embodiment relied on by patentee did not trigger the algorithm requirement because it employs application-specific hardware – namely a series of diodes, switches, and integrated circuits.  Although an embodiment in the patent’s specification included a “head controller 20” to control both the vertical and lateral position of the header, the claim limitation recited only vertical positioning.  A commercial embodiment that lacked the lateral positioning control could still be relied upon by the patentee, because lateral positioning was an additional function not required by the claim.  Since the district court’s conclusion of invalidity rests on discounting this additional one of the commercial embodiments in reaching its conclusion of invalidity, the Court reversed and remanded for further proceedings.

The full opinion can be found here.

By Michael Cofield

Implicit, LLC v. Sonos, Inc., Appeal Nos. 2020-1173, -1174 (Fed. Cir. Mar. 9, 2026)

On appeal of an inter partes review decision finding challenged claims to be unpatentable, the Federal Circuit found that patentee Implicit forfeited a prior art antedating argument notwithstanding that an intervening inventorship correction under 35 U.S.C. § 256 would have resulted in earlier “conception” dates for the claims at issue.

Implicit owns U.S. Patent Nos. 7,391,791 and 8,942,252, which both originally listed two co-inventors. Sonos petitioned for IPRs of both patents, asserting unpatentability and relying on a prior art reference known as “Janevski.” Implicit argued that the two originally named inventors of the ‘791 patent and ‘252 patent worked with another engineer, a Mr. Carpenter, prior to Janevski’s filing date, and therefore Janevski did not constitute prior art because the engineer’s work inured to the inventors’ benefit. The Board determined that Implicit’s evidence was insufficient to establish that any reduction to practice could inure to the inventors’ benefit, and that the challenged claims were therefore unpatentable as anticipated by, or obvious over, Janevski.

Following that decision, the Supreme Court issued its decision in United States v. Arthrex, Inc., 594 U.S. 1 (2021) (finding Appointments Clause violations in permitting administrative law judges to have final say in post-grant proceedings), and this case was remanded for the limited purpose of allowing Implicit to request rehearing and review by the Director of the PTO.  Implicit then requested that the USPTO correct the inventorship of the ‘791 and ‘252 patents to add Mr. Carpenter as an inventor.

In this appeal, Implicit contended that 35 U.S.C. § 256 corrections have a retroactive effect, and as a result, equitable doctrines such as forfeiture should not apply “to nullify the effect of that correction.” The Court disagreed, holding that forfeiture can apply notwithstanding the retroactive effect of 35 U.S.C. § 256, and that the Board did not abuse its discretion in finding Implicit forfeited its new antedating argument based on the inventorship correction. The Court explained that forfeiture occurs when a party fails to make the timely assertion of a right and raised concerns of “sandbagging.” Because Implicit could not adequately explain why it could not have made its inventorship argument in the first instance, or could not have more diligently sought correction of inventorship, the court affirmed the Board’s decision.

The full opinion can be found here.

By Julia Davis

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.