TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.
Before Dyk, Prost, and Reyna. Appeal from the United States District Court for the Eastern District of Virginia.
Summary: 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.
Co-Author: Gabrielle Capulong (NY State Bar Pending)
Editor: Sean Murray
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