Software Claims Failed Alice Step One Where Purported Improvements Were Not Claimed
In Trustees Of Columbia University v. Gen Digital Inc., Appeal No. 24-1243, the Federal Circuit held that software claims were directed to an abstract idea at Alice step one where the technical improvements described in the specification were not required by the claims.
Columbia University sued Gen Digital, Inc. (formerly Norton), alleging that Norton’s antivirus products infringed patents directed to detecting anomalous program executions using an emulator and a model of function calls. Norton moved for judgment on the pleadings, arguing the asserted claims were ineligible under § 101. The district court denied Norton’s motion, concluding that the claims were not abstract at Alice step one because they “improve[d] computer functionality by improving computer virus scanning” by “(1) the creation of unique models and (2) improvements in efficiency.” After the district court denied the motion, the case proceeded to a jury trial resulting in a verdict of willful infringement and over $185 million in damages, including damages based on Norton’s sales of software to customers outside the United States.
On appeal, the Federal Circuit reversed the district court’s ruling on § 101 and vacated the judgment. The court held that the asserted claims were directed to the abstract idea of comparing data against a model created using different computers to determine if it is anomalous. The court reasoned that virus scanning and dividing analysis across multiple computers were well‑known, abstract techniques and that the claims did not specify how the purported efficiency gains were achieved. Columbia also argued the claims were not abstract because they were directed to selective emulation, where only part of a program was emulated rather than the full program. The court rejected this argument because the claim language did not require selective emulation and the specification described selective emulation as optional. The court similarly rejected Columbia’s other arguments based on purported advances described in the specification but not reflected in the claim language. Accordingly, the Federal Circuit held the claims were directed to an abstract idea at Alice step one and remanded for consideration of Alice step two.
The court also addressed other issues, including damages based on Norton’s sales and transmission of software to foreign customers. The court explained that software is not tangible or capable of infringing the asserted claims until tethered in a particular copy of the software encoded in a computer-readable medium. Thus, as a matter of law, the software Norton transmitted to foreign customers via servers was made outside of the United States, and thus there were no damages as a result of those foreign sales.
Conflict of Interest Does Not Automatically Extinguish Attorney-Client Privilege
In The Trustees Of Columbia University In The City Of New York v. Gen Digital Inc.; Quinn Emanuel Urquhart & Sullivan, LLP, Appeal No. 24-1244, the Federal Circuit held that even if an attorney would be disqualified from representing a client due to a conflict of interest, a court may not compel the disclosure of privileged communications because the conflict of interest does not automatically eliminate the attorney‑client privilege.
Columbia University sued Gen Digital (Norton) seeking, among other claims, correction of inventorship of Norton’s U.S. Patent No. 8,549,643 to identify two Columbia professors as the true inventors or at least joint inventors. After jury trial, the district court entered judgment correcting inventorship to add the Columbia professors as joint inventors. The district court also awarded Columbia enhanced damages for infringement and attorneys’ fees.
In connection with the inventorship issue, Columbia argued that Norton’s counsel, Quinn Emanuel, improperly represented both Norton and a former Norton employee, Dr. Dacier, and improperly prevented Dacier from testifying at trial in support of Columbia’s inventorship claims. Norton originally identified Dacier as a fact witness regarding the inventorship issue. But during a years-long stay in the litigation, Dacier met with one of the Columbia professors at a professional event and expressed regret for Norton’s conduct regarding the inventorship issue. Columbia then contacted Dacier, who said he was unrepresented, to have him testify in support of Columbia’s inventorship claims. Norton then reconfirmed that Quinn still represented Dacier. Before trial, Quinn represented that Dacier had moved to Saudi Arabia and would not attend the trial.
During motions in limine, the district court sua sponte ruled that Quinn had a conflict of interest in representing Dacier based on his expressed regret over Norton’s conduct. The district court ruled the conflict “voided” the retainer agreement and ordered Quinn to disclose information obtained from Dacier during the conflict period. Quinn refused and asserted attorney-client privilege. After trial, Columbia continued seeking Quinn’s compliance with the disclosure order to support an award for enhanced damages or attorneys’ fees. The district court held Quinn in civil contempt and imposed a negative‑inference sanction for purposes of enhanced damages and attorneys’ fees in the related infringement dispute.
The Federal Circuit reversed the disclosure order and the order holding Quinn in contempt. The court held that a conflict does not automatically terminate the attorney‑client relationship or vitiate attorney-client privilege, making the disclosure order invalid. Because civil contempt requires violation of a valid decree, the invalid disclosure order could not support contempt sanctions. As a result, the court also set aside the district court’s award of enhanced damages and attorneys’ fees, which were based in part on the contempt sanctions.
Corresponding Structure for a Means-Plus-Function Limitation Need Only Perform the Claimed Function, Not Other Unclaimed Functions
In Richard Gramm, et al. v. Deere & Company, Appeal No. 24-1598, the Federal Circuit held that disclosure of an additional function in the specification should not disqualify a structure that performs the claimed function of a means-plus-function limitation.
Gramm sued Deere & Co. for infringement of a patent directed to controlling the header of a crop harvester. The asserted claims recited a limitation, “control means … for raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil.” During claim construction, the parties agreed the limitation was means-plus-function, that the claimed function was for raising and lowering the header at a designated height, and that the specification disclosed a “head controller” for performing the function. Deere, however, argued that the “head controller” was not sufficiently definite structure because the specification explained that the “head controller” was a commercial embodiment “as incorporated in a Deere combine.” At the time of the invention, there were three commercially available Deere head controllers—one based on logic circuitry and two based on microprocessors. Deere argued that the specification was not referring to the circuit-based controller because the specification described the “head controller” as controlling both (1) height and (2) lateral position, and the circuit-based controller controlled only height. The district court agreed with Deere, and further found that because the only commercially available headers that performed both functions were microprocessor-based, the specification needed to disclose an algorithm for performing the function. Because the specification did not disclose such an algorithm, the district court held the claims indefinite.
The Federal Circuit reversed and remanded. The Federal Circuit acknowledged that the specification described a “head controller” capable of performing the claimed function and capable of performing a secondary function. Even though the circuit-based controller could not perform the secondary function, it could perform the claimed function. Thus, the district court erred in excluding the circuit-based controller from its identification of corresponding structure. Further, because the circuit-based controller was not a general-purpose computer, it did not trigger a requirement that the specification must disclose an algorithm for performing the claimed function. Thus, the Federal Circuit reversed the district court’s indefiniteness ruling.
No Do-Overs: Voluntary Dismissal Does Not Reset Deadline For Stay
In Ascendis Pharma A/S v. Biomarin Pharmaceutical Inc., Appeal No. 26-1026, the Federal Circuit held that a respondent in an ITC proceeding may not seek a mandatory stay of their refiled declaratory judgment action in a district court action involving the same parties after they had previously filed a declaratory judgment action and failed to meet the deadline to seek a stay under 28 U.S.C. § 1659(a)(2).
BioMarin Pharmaceutical Inc. brought an ITC action against Ascendis accusing certain drug products of patent infringement. Ascendis filed for declaratory judgment of non-infringement in district court. After waiting more than 30 days, Ascendis filed a notice of voluntary dismissal without prejudice. Ascendis explained that it intended to refile its complaint and seek a mandatory stay under 28 U.S.C. § 1659(a)(2). Ascendis then filed a new, nearly identical, declaratory judgment complaint and soon thereafter filed for a mandatory stay. BioMarin opposed the stay as untimely. The district court entered a temporary stay and denied Ascendis’s request for the mandatory stay as moot. Ascendis appealed.
The Federal Circuit affirmed the denial of the mandatory stay, though it disagreed that the temporary stay mooted Ascendis’s request. The court explained that a request for a mandatory stay under 28 U.S.C. § 1659(a)(2) must be made within 30 days after a district court action is filed. Ascendis did not request a mandatory stay within 30 days of its initially filed declaratory judgment action and instead dismissed its complaint with the goal of resetting the deadline. Applying common-law principles and analyzing the statutory text and history, the Federal Circuit explained that a voluntary dismissal cannot be used for the purpose of circumventing the statute’s explicit requirement. Therefore, the court held Ascendis’s request for a mandatory stay under 28 U.S.C. § 1659(a)(2) was untimely.
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