the Trustees of Columbia University in the City of New York v. Gen Digital Inc., Fka Symantec Corporation, Fka Nortonlifelock, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
THE TRUSTEES OF COLUMBIA UNIVERSITY IN
THE CITY OF NEW YORK,
Plaintiff-Appellee
v.
GEN DIGITAL INC., FKA SYMANTEC
CORPORATION, FKA NORTONLIFELOCK, INC.,
Defendant-Appellant
______________________
2024-1243
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 3:13-cv-00808-MHL,
Chief Judge M. Hannah Lauck.
______________________
Decided: March 11, 2026
______________________
D USTIN G UZIOR, Sullivan & Cromwell LLP, New York,
NY, argued for plaintiff-appellee. Also represented by
G ARRARD R. BEENEY , STEPHEN J. ELLIOTT , ALEXANDER N.
G ROSS ; O LIVER ENGEBRETSON-S CHOOLEY , MORGAN L.
RATNER , J EFFREY B. WALL , Washington, DC.
D OUGLAS ETHAN L UMISH , Weil, Gotshal & Manges LLP,
Redwood Shores, CA, argued for defendant-appellant. Also
represented by G ABRIEL K. BELL , ASHLEY N. F INGER,
MICHAEL A. M ORIN, BRENT M URPHY , MELISSA ARBUS
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 2
SHERRY , MARGARET U PSHAW , Latham & Watkins LLP,
Washington, DC; DAVID K. CALLAHAN, Chicago, IL;
N ICOLAS L UONGO, New York, NY.
______________________
Before D YK, P ROST , and REYNA, Circuit Judges.
D YK, Circuit Judge.
The Trustees of Columbia University in the City of
New York (“Columbia”) brought suit against Gen Digital
Inc., which markets the Norton software brand, (“Norton”)
asserting infringement of several claims of United States
Patent Nos. 8,601,322 (the “’322 patent”) and 8,074,115
(the “’115 patent”) related primarily to protecting computer
systems from viruses and other malicious activity. Colum-
bia also sought correction of inventorship of United States
Patent No. 8,549,643 (the “’643 patent”).
Norton filed a motion for judgment on the pleadings
with respect to the ’322 and ’115 patent claims, arguing the
asserted claims were ineligible under 35 U.S.C. § 101. The
district court denied the motion, concluding that under
step one of the framework set forth in Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208 (2014), the claims were not di-
rected to an abstract idea. Before trial, the district court
struck the § 101 defense. After trial, the jury returned a
verdict of willful infringement on four claims: claims 2, 11,
and 27 of the ’322 patent and claim 2 of the ’115 patent (to-
gether, the “asserted claims”) and awarded $185,112,727
in damages. The damages figure included damages based
on Norton’s sales to customers outside the United States.
The district court denied judgment as a matter of law
(“JMOL”) on the issues of infringement, willfulness, and
damages as to the foreign sales. Based on the jury verdict,
the district court awarded enhanced damages and attor-
neys’ fees, in part because of a negative inference imposed
based on a contempt finding against Quinn Emanuel Ur-
quhart & Sullivan, LLP (“Quinn”), Norton’s counsel.
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We vacate the judgment. We conclude that the as-
serted claims are abstract at step one of the Alice analysis
and that further proceedings on remand are required as to
step two. Because other issues may arise on the remand,
we address those issues, which the district court need take
up only if the patent claims are determined to be eligible.
We see no error in the district court’s claim construction or
its denial of JMOL with regard to the issues of infringe-
ment and willfulness. However, we conclude the district
court erred in its denial of JMOL as to damages resulting
from foreign sales. In the companion case we also decide
today, No. 2024-1244, we reverse the contempt order
against Quinn. This would require vacating the award of
enhanced damages and attorneys’ fees in this case since
those awards relied in part on the contempt finding. Other
considerations also would require reconsideration of the
enhancement.
BACKGROUND
I. T HE ASSERTED P ATENTS
The ’322 patent and ’115 patent are directed towards
“[m]ethods, media, and systems for detecting anomalous
program executions.” ’322 patent, col. 3 ll. 7–8.1 The
claims disclose a process by which an “emulator” executes
a portion of a program and compares how the emulated pro-
gram performs with a “model of function calls” reflecting
how the program is typically expected to perform. A func-
tion call reflects the next action a program is requesting to
take and contains data setting the parameters of the re-
quest, so a model of function calls models the future behav-
ior of a program. Comparing a function call made in the
1 The ’322 patent and the ’115 patent share a com-
mon specification. For the purposes of this opinion, we cite
to the ’322 patent unless the distinction between the pa-
tents is relevant.
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emulator to the model helps to identify whether the emu-
lated program is behaving anomalously.
Independent claim 2 of the ’322 patent is illustrative.
The claim recites:
A method for detecting anomalous program ex-
ecutions, comprising:
executing at least a portion of a pro-
gram 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 cre-
ated using different computers; and
identifying the function call as anoma-
lous based on the comparison.
’322 patent, claim 2. The other asserted claims include a
claim to a system with a processor that performs the
claimed process (’322 patent, claim 27) and a claim to a
computer-readable medium containing instructions to per-
form the claimed process (’322 patent, claim 11). Claim 2
of the ’115 patent recites a method that includes a further
step of “notifying an application community . . . of the
anomalous function call.” ’115 patent, claim 2 (depending
from unasserted claim 1).
II. P ROCEDURAL H ISTORY
Several of Norton’s antivirus software products employ
a feature called SONAR/BASH. Norton sells its products
both in the United States and internationally. Its interna-
tional sales make use of a “content delivery network”
whereby the software is transmitted electronically from do-
mestic servers to other servers—including many located
abroad. J.A. 211. Customers then download the software
via an electronic transmission from a nearby server.
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Columbia brought suit against Norton in the United
States District Court for the Eastern District of Virginia,
asserting that SONAR/BASH infringes the asserted
claims. In addition to patent infringement claims, Colum-
bia brought claims for correcting inventorship of the
’643 patent owned by Norton. These latter claims were re-
solved in Columbia’s favor and are not relevant to this ap-
peal. However, they are relevant to the companion case.
Following a Markman hearing, the district court con-
strued the contested terms of the ’322 and ’115 patent
claims. The district court adopted Columbia’s proposed
construction of the claim term “emulator” as “[s]oftware,
alone or in combination with hardware, that permits the
monitoring and selective execution of certain parts, or all,
of a program.” J.A. 2.2 The district court rejected Norton’s
preferred construction, “[s]oftware, alone or in combination
with hardware, that simulates a computer system.”
J.A. 2787. The relevant difference between the two is
whether simulation is a required element. The parties
then entered a stipulated judgment of noninfringement as
to the ’322 and ’115 patents based on the district court’s
construction of a different term, “anomalous.” On appeal,
we reversed the claim construction of “anomalous,” vacated
the stipulated judgment as to the ’322 and ’115 patents and
remanded for further proceedings. Trs. of Columbia Univ.
v. Symantec Corp., 811 F.3d 1359, 1370–71 (Fed. Cir.
2016). Meanwhile in a separate proceeding, the Patent
Trial and Appeal Board determined that various claims in
the ’322 and ’115 patents (previously asserted in this case)
were invalid as obvious, and we affirmed. Trs. of Columbia
Univ. v. Symantec Corp., 714 F. App’x 1021, 1022
(Fed. Cir. 2018) (Rule 36 affirmance).
2 Citations to the J.A. refer to the Joint Appendix
filed by the parties in this case. Dkt. No. 59.
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After our remand, Norton moved for judgment on the
pleadings that the remaining asserted claims were patent
ineligible under 35 U.S.C. § 101. For the purposes of the
§ 101 analysis, Columbia represented to the district court
that there were no relevant differences between ’322 pa-
tent claim 2 and the other asserted claims of the ’322 pa-
tent. At Alice step one, the district court denied the motion,
finding that the asserted claims of both the ’322 and
’115 patents were not directed to an unpatentable abstract
idea, but to “improving computer virus scanning” through
“the creation of unique models,” and “improvements in ef-
ficiency.” J.A. 18. The district court did not reach step two
of the Alice analysis.
At trial, Columbia’s expert witness, Michael Bailey,
testified that SONAR/BASH is software that, in combina-
tion with a computer, functions as the claimed emulator
because it permitted the monitoring and selective execu-
tion of programs. However, Dr. Bailey conceded that
SONAR/BASH “is not capable of simulating software,” so
it would not be infringing under Norton’s rejected construc-
tion. J.A. 52932. The jury returned a verdict finding literal
infringement of all asserted claims including induced and
contributory infringement of claims 2, 11, and 27 of the
’322 patent.3 The jury also found the infringement was
willful and awarded a reasonable royalty of $185,112,727.
The reasonable royalty included a royalty for Norton’s
sales to customers located outside the United States of
$94,037,265 based on findings that the infringing product
sold to foreign customers was made in the United States
and distributed from the United States.
After trial, Norton renewed its motion for JMOL, argu-
ing that there was insufficient evidence of infringement
and that damages for the foreign sales were not
3 The jury did not reach the question of doctrine of
equivalents.
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recoverable. The district court denied the motion. Then,
Columbia moved for enhanced damages under 35 U.S.C.
§ 284 and attorneys’ fees under § 285. The district court
granted the motions for enhanced damages and attorneys’
fees, increasing the damages by a factor of 2.6. In doing so,
the district court relied in part on a finding that Quinn was
in civil contempt for failing to produce communications al-
leged to be privileged, as discussed in the companion case.
Norton appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
D ISCUSSION
I. ELIGIBILITY U NDER § 101
As an initial matter, we conclude that the district court
erred in determining that the asserted claims were not ab-
stract at step one of the Alice inquiry. We therefore vacate
the district court’s denial of Norton’s motion for judgment
on the pleadings and remand for the district court to con-
sider step two of Alice in the first instance.4
4 Columbia argues, citing a case where we held that
a decision denying summary judgment on an issue that
eventually went to trial was not appealable, that the order
denying Norton’s motion for judgment on the pleadings
was not appealable. Appellee’s Br. 42–43 (citing Ecofactor,
Inc. v. Google LLC, 104 F.4th 243, 249–50 (Fed. Cir. 2024),
vacated 115 F.4th 1380 (Fed. Cir. 2024), reinstated in rele-
vant part 137 F.4th 1333, 1347 (Fed. Cir. 2025) (en banc)).
This is not an appeal from a denial of summary judgment,
and in any event the issue was not litigated at trial nor
submitted to the jury because the district court struck the
issue sua sponte; this argument is meritless. See Free
Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355, 1367
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An invention is patent eligible if it claims a “new and
useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. “But there are exceptions.” Free
Stream, 996 F.3d at 1361. The Supreme Court has inter-
preted this language to exclude “[l]aws of nature, natural
phenomena, and abstract ideas” from patent eligibility. Al-
ice, 573 U.S. at 216.
Patent eligibility involves a two-step inquiry. Id.
at 217–18; Recentive Analytics, Inc. v. Fox Corp., 134 F.4th
1205, 1211 (Fed. Cir. 2025), cert. denied — S. Ct. —,
No. 25-505, 2025 WL 3507020. “First, we determine
whether the claims at issue are directed to one of those pa-
tent-ineligible concepts.” Alice, 573 U.S. at 217. If the
claims are found to be directed to an abstract idea, we pro-
ceed to step two, where we assess the elements of each
claim both individually and as an ordered combination to
determine whether they possess an “inventive concept”
that ensures that the patent amounts to more than a pa-
tent upon the abstract idea itself. Id. at 217–18.
A. ALICE STEP O NE
To determine whether a claim is “directed to” a patent
ineligible concept, we evaluate “the focus of the claimed ad-
vance over the prior art to determine if the claim’s charac-
ter as a whole is directed to excluded subject matter.”
Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355,
1361 (Fed. Cir. 2023) (quoting PersonalWeb Techs. LLC
v. Google LLC, 8 F.4th 1310, 1315 (Fed. Cir. 2021)). This
requires “an accurate characterization of what the claims
require and of what the patent asserts to be the claimed
advance.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1294
(Fed. Cir. 2020). Although the specification is relevant to
the construction of the claims, “reliance on the specification
(Fed. Cir. 2021) (reversing denial of motion to dismiss
based on § 101).
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must always yield to the claim language in identifying that
focus.” Trinity, 72 F.4th at 1361 (quoting ChargePoint,
Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (Fed. Cir.
2019)); see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1152 (Fed. Cir. 2016) (“Our analysis fo-
cuses, as it must, on the Asserted Claims.”); Trading Techs.
Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1095 (Fed. Cir. 2019)
(“Eligibility depends on what is claimed, not all that is dis-
closed in the specification.”); AI Visualize, Inc. v. Nuance
Commc’ns, Inc., 97 F.4th 1371, 1378 (Fed. Cir. 2024) (“[W]e
consider the claims in light of the specification but avoid
importing concepts from the specification into the claims.”).
In the software context, Alice step one “often turns on
whether the claims focus on ‘the specific asserted improve-
ment in computer capabilities’” rather than “an ‘abstract
idea’ for which computers are invoked merely as a tool.”
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335–36 (Fed. Cir. 2016)). For example, a
claim may be eligible at step one if it “overcom[es] a prob-
lem specifically arising in the realm of computer networks.”
Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303,
1307 (Fed. Cir. 2020) (quoting DDR Holdings, LLC v. Ho-
tels.com, L.P., 773 F.3d 1245, 1257–58 (Fed. Cir. 2014)).
Such software-based innovations have been found to be pa-
tent eligible where they make “non-abstract improvements
to computer technology.” Finjan, 879 F.3d at 1304 (quot-
ing Enfish, 822 F.3d at 1335–36).
However, claims that recite something “already routine
and conventional” are not sufficient. See GoTV Streaming
v. Netflix, Inc., 166 F.4th 1053, 1065 (Fed. Cir. 2026). That
is, the use of “conventional or generic technology” cannot
alone constitute a technological improvement. See In re
TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir.
2016); Intell. Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1314 & n.5 (Fed. Cir. 2016) (noting that well-known
and fundamental practices are abstract ideas); accord
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 10
GoTV, 166 F.4th at 1065. “[T]he claim itself ‘must identify
“how” that functional result is achieved by limiting the
claim scope to structures specified at some level of con-
creteness, in the case of a product claim, or to concrete ac-
tion, in the case of a method claim.’” Free Stream, 996 F.3d
at 1363 (quoting Am. Axle & Mfg., Inc. v. Neapco Holdings,
LLC, 967 F.3d 1285, 1302 (Fed. Cir. 2020)). Claims that
“do not delineate steps through which the [relevant] tech-
nology achieves an improvement” are insufficient for pa-
tent eligibility. See Recentive, 134 F.4th at 1213 (citing
Int’l Bus. Machs. Corp. v. Zillow Grp., Inc., 50 F.4th 1371,
1381 (Fed. Cir. 2022)).
In the computer context, “[b]y itself, virus screening is
well-known and constitutes an abstract idea.” Intell. Ven-
tures, 838 F.3d at 1319. Therefore, a claim that “does not
claim a new method of virus screening or improvements
thereto” and does not “improve or change the way a com-
puter functions” is directed to an abstract idea. Id.
at 1319–20.
In its motion for judgment on the pleadings, Norton ar-
gued that the asserted claims were drawn to the abstract
idea of “identifying a deviation in data based on a compar-
ison” in connection with virus scanning. J.A. 7820. In re-
sponse, Columbia argued that the claims “recite specific
steps and a technique for improving computer security that
departs from earlier approaches.” Mem. in Opp. at 16, Trs.
of Columbia Univ. v. Symantec Corp., No. 3:13-cv-808
(E.D. Va. Aug. 5, 2019), Dkt. No. 264.
Relying primarily on the patents’ shared specification,
the district court held that the asserted claims “improve
computer functionality by improving computer virus scan-
ning” by “(1) the creation of unique models and (2) improve-
ments in efficiency,” J.A. 18, and therefore are patent
eligible. The only claim language relied on by the district
court was the limitation requiring that “the model is a com-
bined model created from at least two models created using
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different computers.” J.A. 20 (quoting ’322 patent,
claim 2). On appeal, Columbia supports the district court’s
rationale, namely that the claims are not abstract because
of the use of multiple computers. Columbia argues that the
use of a model that is created using different computers is
more efficient and allows a computer to be more resistant
to viruses because viruses are detected more quickly.
As the specification describes, by dividing the task of
creating a model between different computers, a complete
model can be created much more quickly than one com-
puter working on its own. If “models are shared among
many members of a community running the same applica-
tion (referred to as an ‘application community’),” then
“some embodiments can share models with each other
and/or update each other’s models such that the learning
of anomaly detection models is relatively quick.” ’322 pa-
tent, col. 6 ll. 37–42. This approach can provide an effi-
ciency gain: “For example, instead of running a particular
application for days at a single site . . . thousands of repli-
cated applications can be run for a short period of time . . .
and the models created based on the distributed data can
be shared.” Id. col. 6 ll. 42–47; accord id. col. 9 ll. 14–21.
Under this divide-and-conquer method, “[w]hile only a por-
tion of each application instance may be monitored [by a
single computer] . . . the entire software body can be moni-
tored across the entire community” of devices monitoring
the program. Id. col. 6 ll. 47–49.
Columbia concedes that emulators were conventional
technology and that a divide-and-conquer approach where
multiple computers collaborate on a single task is an ab-
stract idea. Cf. Finjan, 879 F.3d at 1304 (quoting Intell.
Ventures, 838 F.3d at 1321) (recognizing mere use of a sec-
ond computer in virus scanning does not render a claim
non-abstract). The claimed invention’s efficiency gain from
the use of multiple computers is no more than this conced-
edly abstract idea.
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Columbia nonetheless argues that the asserted claims
recite various other technological improvements not relied
on by the district court that render the claims directed to
something non-abstract. The problem is these supposed
improvements are not what the claims are directed to, i.e.,
the supposed improvements are not required by the lan-
guage of the asserted claims at all.
First, although Columbia conceded at oral argument
that the use of emulators was conventional, it argued that
selective emulation was not. Selective emulation refers to
emulating only part of a program rather than the full pro-
gram to reduce the burden of emulation on the computer.
Columbia argues that the emulator’s capacity to selectively
emulate was at the heart of the technological improvement
disclosed in the asserted patents. This argument was not
raised before the district court and is therefore forfeited.
See Nuvo Pharms. (Ir.) Designated Activity Co. v. Dr.
Reddy’s Lab’ys Inc., 923 F.3d 1368, 1378 (Fed. Cir. 2019).
Even if this argument were not forfeited, it is without
merit. Columbia’s reading of the patent is not supported
by the plain language of the claims. The language of
’322 patent claim 2 (“executing at least a portion of a pro-
gram in an emulator”) suggests that selectivity is not re-
quired, and that the entire program may be emulated. The
specification consistently describes selective emulation as
optional. E.g., ’322 patent, col. 9 ll. 41–43, col. 13 ll. 1–3.
In other words, the claims are satisfied even when there is
no selective emulation. We do not read the district court’s
construction as requiring selective emulation, given the
reference to “permit[ting]” emulation of the entire pro-
gram. J.A. 2.
It cannot be said that the claims are directed to a tech-
nological improvement when nothing in the claims re-
quires the steps necessary to make the improvement.
GoTV, 166 F.4th at 1061 (“[O]nly features that are
claimed, not unclaimed details that appear in the specifi-
cation, can supply something beyond . . . an abstract idea
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 13
and sufficient to render the claim eligible . . . .”); Uniloc,
957 F.3d at 130 (discussing Digitech Image Techs., LLC
v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014));
Free Stream, 996 F.3d at 1364 (claims abstract where “as-
serted claims do not incorporate any such methods” of
achieving the technological improvement described in the
specification). Because the claims do not require selective
emulation, selective emulation cannot prevent the claims
from constituting an abstract idea.
Second, Columbia points to language in the specifica-
tion, arguing that the specification describes how the
claims capture a non-abstract technological improvement
involving the creation of non-standard models. The speci-
fication provides that “[m]odel sharing can result in one
standard model that an attacker could potentially access
and use to craft a mimicry attack.” ’322 patent, col. 6
ll. 54–56. A system that builds a single standardized model
is easier to infiltrate because a virus only has to mimic that
single model to be undetected throughout the entire sys-
tem. The specification goes on to describe improvements
that can be made to solve this problem, such as creating a
set of “unique and diversified models.” Id. col. 6 ll. 56–57.
These diversified models are not merely created by combin-
ing models from different computers, but by “randomly
choosing particular features from the application execution
that is modeled.” Id. col. 6 ll. 57–60. These requirements
again are not reflected in the relevant claim language.
Third, Columbia argues that the claims are not ab-
stract because they use the claimed application community
members to create a model, citing a portion of the specifi-
cation that states that “distributed sensors whose data is
correlated among many (e.g., a thousand) application com-
munity members can be used to compute a substantially
accurate [combined model] in a relatively short amount of
time.” ’322 patent, col. 7 ll. 58–62. Even if this feature
were distinct from the concededly abstract divide-and-con-
quer approach discussed above, it is not reflected in the
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 14
language of the claims. Only one claim at issue here,
claim 2 of the ’115 patent, references the application com-
munity and, as the district court recognized in its claim
construction, it involves the application community only af-
ter the combined model is developed, not in the develop-
ment of the model. See ’115 patent, claim 2 (“upon
identifying the anomalous function call [based on the com-
parison to the model], notifying an application community”
(depending from claim 1)). Likewise, none of the asserted
claims requires, or even references, the use of “distributed
sensors.”
At oral argument, Columbia sought to support the dis-
trict court’s step one decision based on a ground that was
not relied on by the district court: the requirement in the
claims of the use of function calls in creating the model. We
find this argument forfeited because Columbia failed to de-
velop the issue properly in its brief, though as will be seen,
the same issue arises again at step two. See SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320
(Fed. Cir. 2006) (collecting cases); see also Kao Corp.
v. Unilever U.S., Inc., 441 F.3d 963, 973 n.4 (Fed. Cir.
2006) (arguments alluded to in the “Statement of the
Facts” and not developed in the argument section of a brief
are forfeited).
Finally, Columbia argues that our decision in Finjan,
Inc. v. Blue Coat Systems, Inc., counsels us to find the as-
serted claims non-abstract. We disagree. In Finjan, we
found a patent claim directed to a technological improve-
ment in the virus-scanning context where it claimed a “se-
curity profile that identifies suspicious code in [a] received
Downloadable.” 879 F.3d at 1304. This novel file type rep-
resented an improvement in computer functionality be-
cause traditional code detection models relied on “code-
matching” virus scans that merely compared the analyzed
code with code listed in a database of viruses, whereas the
claimed file type required the use of an improved “behavior-
based” virus scan that analyzed the operations that may be
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 15
attempted by the Downloadable and that “link[ed]” the re-
sults of the scan to the Downloadable so that downloading
computers could review them. Id. at 1304–05. The im-
provements found to be non-abstract in Finjan bear no re-
semblance to the purportedly non-abstract claims in this
case.
We therefore find that the asserted claims are directed
towards the abstract idea of comparing data against a
model (created using different computers) to determine if
it is anomalous and proceed to step two of Alice.
B. ALICE STEP T WO
At Alice step two, we consider the elements of the claim
both individually and “as an ordered combination” to deter-
mine whether the additional elements “transform the na-
ture of the claim” into a patent-eligible application. Alice,
573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Pro-
metheus Lab’ys, Inc., 566 U.S. 66, 78–79 (2012)); Recentive,
134 F.4th at 1214. This requires identifying “an inventive
concept sufficient to transform the claimed abstract idea
into a patent-eligible application.” Recentive, 134 F.4th
at 1215 (quoting Trinity, 72 F.4th at 1365). “An inventive
concept . . . must be significantly more than the abstract
idea itself.” BASCOM Glob. Internet Servs. v. AT&T Mo-
bility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). So too,
“[s]imply appending conventional steps, specified at a high
level of generality,” which are “well known in the art” and
consist of “well-understood, routine, conventional ac-
tivit[ies]” previously engaged in by workers in the field, is
not sufficient to supply the inventive concept. Alice,
573 U.S. at 221–22, 225 (second alteration in original)
(quoting Mayo, 566 U.S. at 73, 79, 82).
To a large extent, Columbia raises the same arguments
at step two that it made at step one, and these arguments
have no more merit at step two than they had at step one.
However, Columbia does raise one argument at step two
that merits further attention. Columbia argues the “model
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of function calls” supplies an inventive concept itself.
While Columbia’s argument that the model of function
calls does not render the claims abstract was forfeited in
this court, it has not forfeited its argument that the model
of function calls is an inventive concept at step two, which
was also raised before the district court.
Norton argues that we can make a determination as to
this step two issue based on the record before us. Columbia
argues that factual issues remain that preclude our deter-
mining step two of Alice in the first instance. In this re-
spect, we agree with Columbia. Since we are reviewing an
action of the district court at the pleadings stage, we draw
all reasonable factual inferences in favor of the nonmovant.
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1293 (Fed. Cir. 2016) (applying Fourth Circuit law). The
district court construed the phrase “model of function calls
for a [part/portion] of the program” to mean “model of func-
tion calls created by modeling program executions.”
J.A. 178. Drawing all reasonable inferences in Columbia’s
favor, the parties’ dispute over whether this feature was
conventional is a question of fact that precludes judgment
on the pleadings.
As this factual issue was raised before the district court
and left unaddressed in the district court’s decision on
§ 101, we believe that it is best addressed by the district
court in the first instance. We therefore vacate the district
court’s denial of judgment on the pleadings as to patent el-
igibility, hold that the claims are directed to an abstract
idea, and remand for the district court to solely consider, at
step two, the question whether the claimed model of func-
tion calls feature was conventional.
II. REMAINING I SSUES
Given the interest in judicial efficiency, we address the
remaining issues raised by the parties, which have been
fully briefed, because these issues may again be relevant
on remand, depending on whether the claims are
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determined to be patent eligible. See Optis Cellular Tech.,
LLC v. Apple Inc., 139 F.4th 1363, 1377 (Fed. Cir. 2025);
Jiaxing Super Lighting Elec. Appliance, Co. v. CH Lighting
Tech. Co., 146 F.4th 1098, 1110 (Fed. Cir. 2025); accord La-
serDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 78
(Fed. Cir. 2012).
A. CLAIM CONSTRUCTION AND I NFRINGEMENT
Norton argues that the district court’s construction of
the claim term “emulator” was erroneous and that under
Norton’s construction it did not infringe the asserted
claims. Claim construction based on intrinsic evidence is
an issue of law that we review de novo. Teva Pharm. USA,
Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). To the extent
the claim construction depends on extrinsic evidence, we
review the district court’s factual findings under a clearly
erroneous standard. Id. at 326.
Claims are construed based on the “ordinary and cus-
tomary meaning . . . that the term would have to a person
of ordinary skill in the art in question at the time of the
invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc). The skilled artisan “is deemed
to read the claim term not only in the context of the partic-
ular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.”
Id. Thus, claim construction begins with an analysis of the
intrinsic record of the patent. Id. at 1313–14. But extrinsic
evidence may be relevant if the intrinsic record does not
resolve the claim construction issue. See id. at 1317.
The claims here do not define the term “emulator.” The
function of the emulator is only described generally in the
specification as involving the monitoring and execution of
programs. See ’322 patent, col. 3 ll. 28–37, col. 13 ll. 1–3,
16–27, 52–67, col. 14 ll. 18–21. Primarily relying on the
specification, Columbia successfully argued before the dis-
trict court that “emulator” should be construed as “Soft-
ware, alone or in combination with hardware, that permits
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the monitoring and selective execution of certain parts, or
all, of a program.” J.A. 2. Norton argued, largely based on
extrinsic evidence, that the term emulator should be con-
strued as “Software, alone or in combination with hard-
ware, that simulates a computer system.” J.A. 2787.
Norton’s construction is incorrect in requiring simulation.
The question is whether an emulator in the patent re-
quires the ability to simulate. The claims on the face re-
quire an “emulator” rather than a “simulator.” Simulate,
in this context, appears to refer to executing programs on
a “virtual” processor rather than the real computer proces-
sor. J.A. 2788. The specification references some embodi-
ments that execute on a virtual processor. See ’322 patent,
col. 14 ll. 2–3, 57–59. Additionally, the Valgrind emulator,
named in the specification, appears to simulate a com-
puter. Id. col. 3 ll. 28–37; J.A. 3428 (describing the
Valgrind emulator as “simulat[ing] the operation of the
CPU”). However, we do not read the specification as limit-
ing the claims to only emulators that simulate computer
systems.
Norton nonetheless argues the prosecution history sup-
ports its construction. First, it points to language in the
provisional application that states that in Selective Trans-
actional Emulation, “the emulator . . . executes all instruc-
tions on the virtual processor.” J.A. 4215. However, this is
only a description of one embodiment. Second, Norton ar-
gues that the prior art cited in the information disclosure
statement refers to emulators as simulating in a virtual en-
vironment, but a narrow definition used by one patent can-
not narrow the scope of another patent that does not
disclaim the broader meaning of the term. Neither of the
patents cited in the information disclosure statement pur-
port to define the meaning of the term in general usage.
Based on the intrinsic evidence of the patent, we conclude
that there is no requirement that the claimed emulator
simulate a computer system.
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Even if the intrinsic evidence proffered by Columbia
were less than clear, Norton’s remaining arguments—
based on extrinsic evidence—are unpersuasive. To be sure,
some evidence presented in the form of language from tech-
nical dictionaries supports Norton’s construction. See, e.g.,
Dictionary of Computer Science, Engineering, and Technol-
ogy 158, J.A. 3694 (Phillip A. Laplante ed., 2001) (defining
an emulator as “the firmware that simulates a given ma-
chine architecture”). But the proffered dictionaries also in-
dicated that an emulator does not necessarily require
“simulation” if it can provide another method of imitating
the operation of a computer system. See Glossary, Virus
Bulletin, J.A. 3226 (“Emulation refers to any method of cre-
ating a fake environment . . .”); Microsoft Computer Dic-
tionary 191, J.A. 3223 (5th ed. 2002) (defining an emulator
as something “mak[ing] one type of computer or component
act as if it were another”). At least one of the textbooks
that Norton cites also supports the idea that emulators do
not necessarily involve simulation or use of a virtual ma-
chine. See J.A. 3207 (describing two kinds of emulation,
one involving a “virtual machine” and the other “using the
[real] processor”). Thus, the extrinsic evidence here indi-
cates that Norton’s proposed construction maps onto some,
but not all, accepted definitions of the term “emulator.”
Norton’s expert testimony opinion was more supportive
of Norton’s position. The expert testified that a skilled ar-
tisan would understand “emulator” to require simulation.
But his testimony was the kind of unsupported conclusory
evidence that we have consistently held should be afforded
no weight. See Smartrend Mfg. Grp., Inc. v. Opti-Luxx Inc.,
159 F.4th 1322, 1330–31 (Fed. Cir. 2025) (“‘[C]onclusory’
testimony by experts unsupported by reliable extrinsic ma-
terial . . . is insufficient.” (quoting Phillips, 415 F.3d at
1318)); Network Com., Inc. v. Microsoft Corp., 422 F.3d
1353, 1361 (Fed. Cir. 2005); SkinMedica, Inc. v. Histogen
Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013); see also Phillips,
415 F.3d at 1318 (“[E]xpert reports . . . [are] generated at
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 20
the time of and for the purpose of litigation and thus can
suffer from bias that is not present in intrinsic evidence.”).
We therefore agree that the district court properly con-
strued the “emulator” as not requiring simulating a com-
puter system.
Norton argues alternatively that even under the dis-
trict court’s construction, its products did not infringe the
asserted claims as a matter of law, and the district court
erred in denying its motion for JMOL on noninfringement.
We review the district court’s denial of JMOL de novo.
Trudell Med. Int’l Inc. v. D R Burton Healthcare, LLC,
127 F.4th 1340, 1350 (Fed. Cir. 2025) (applying Fourth Cir-
cuit law). Norton’s theory of noninfringement is that its
product feature, SONAR/BASH, standing alone, acts as the
claimed “emulator.” Norton argues that because the claims
require programs to be executed “in” the emulator, and it
is undisputed that programs are not executed “in”
SONAR/BASH, its products do not infringe the asserted
claims. This argument is meritless. Columbia presented
sufficient evidence that SONAR/BASH—operating in con-
junction with an operating environment—was the emula-
tor. The evidence supported the proposition that Norton’s
products enable computers to execute programs in the op-
erating environment. The district court concluded that
“this presented a factual question for the jury.” J.A. 184
n.17. We agree that there was sufficient evidence to allow
a reasonable jury to conclude that Norton’s products in-
fringed the asserted claims.5
5 Norton also argues that it was entitled to JMOL of
noninfringement under the district court’s construction be-
cause, as the customers’ computers provide the operating
environment that is part of the claimed emulator, it cannot
be liable for direct infringement and could only have been
found liable for divided infringement. Because this
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B. WILLFUL I NFRINGEMENT
Norton challenged the jury’s finding of willfulness in
its JMOL motion, arguing that it lacked notice of the pa-
tents prior to receiving actual notice from Columbia6 and
had a reasonable belief that its products did not infringe.
“Willful infringement is a question of fact reviewed for sub-
stantial evidence following a jury trial.” Polara Eng’g Inc.
v. Campbell Co., 894 F.3d 1339, 1353 (Fed. Cir. 2018) (cit-
ing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341–42
(Fed. Cir. 2016)). An infringement may be willful if the in-
fringer knew or should have known of the patent’s exist-
ence. See Arctic Cat Inc. v. Bombardier Recreational Prods.
Inc., 876 F.3d 1350, 1371–72 (Fed. Cir. 2017).
As the district court recognized, “[s]ufficient evidence
exists on the record that would support a jury finding that
Norton knew about the Columbia professors’ designs and
work before the patents issued” including the provisional
application. J.A. 198 & n.22. An inventor of the ’322 and
’115 patents testified that a Norton representative at-
tended a workshop in 2004 where he discussed the re-
search that became the basis of the patents. He further
testified that it was his understanding that Norton was
aware of the patent rights Columbia was seeking based on
communications he had with Norton about potentially li-
censing the claimed invention as early as November 2005,
after the provisional patent application had been filed. We
have established that notice of a pending patent applica-
tion is sufficient for a jury to find that the infringer should
argument was not raised in Norton’s JMOL motion before
the district court, we find it forfeited.
6 Uncontested evidence showed that Columbia in-
formed Norton of the ’115 patent on August 14, 2012, and
the ’322 patent on December 6, 2013, the latter of which
was during the course of litigation and prior to the filing of
the operative complaint.
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have known of the patent at the date of issuance. See Arctic
Cat, 876 F.3d at 1371; Georgetown Rail Equip. Co. v. Hol-
land L.P., 867 F.3d 1229, 1245 (Fed. Cir. 2017). The jury
was entitled to infer based on Norton’s expressed interest
in licensing the intellectual property that it was aware of
the patent application at that time. In this respect, this
case is different from SRI International, Inc. v. Cisco Sys-
tems, Inc. (“SRI I”), 930 F.3d 1295 (Fed. Cir. 2019). There,
it was “undisputed” that the defendant “did not know of
[the] patent” until it received a notice letter from the patent
owner. Id. at 1309. While the defendant had met with the
inventor prior to developing its infringing products, the de-
fendant “could not have been aware of the patent applica-
tion” that was filed because it was filed after they met. Id.
Norton also argues that it had reasonable defenses to
infringement that preclude a finding of willfulness. While
there is evidence that its defenses were reasonable, that
does not mandate reversal. “Proof of an objectively reason-
able litigation-inspired defense to infringement is no longer
a defense to willful infringement.” WBIP, LLC v. Kohler
Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016) (citing Halo El-
ecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105–06 (2016)).
Because “culpability is generally measured against the
knowledge of the actor at the time of the challenged con-
duct,” Norton was required to show that it “act[ed] on the
basis of the defense” or was “aware of it” at the relevant
time. See Halo, 579 U.S. at 105. Here, the district court
identified evidence that Norton’s software development
team “failed to investigate any potential infringement” by
the SONAR/BASH feature of their products. J.A. 125.
Even assuming the existence of objectively reasonable de-
fenses, a reasonable jury could have found that Norton did
not actually rely on them when deciding to develop and dis-
tribute its software product. See C R Bard Inc. v. AngioDy-
namics, Inc., 979 F.3d 1372, 1380 (Fed. Cir. 2020). The
district court did not err in denying JMOL on the issue of
willfulness.
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C. F OREIGN SALES
Norton argues that the district court erred in denying
JMOL of no damages based on the district court’s instruc-
tion as to foreign sales. We agree.
“It is the general rule under United States patent law
that no infringement occurs when a patented product is
made and sold in another country.” Microsoft Corp.
v. AT & T Corp., 550 U.S. 437, 441 (2006). This general
principle applies to both direct and indirect infringement.
Id. at 443 (citing Deepsouth Packing Co. v. Laitram Corp.,
406 U.S. 518, 526–29 (1972)). Although Congress has cre-
ated “an exception to the general rule” with 35 U.S.C.
§ 271(f), that provision is not implicated in this case. See
Microsoft, 550 U.S. at 442; accord id. at 444; Life Techs.
Corp. v. Promega Corp., 580 U.S. 140, 151 (2017).
Here, at Columbia’s request, the jury was instructed:
Columbia is entitled to damages based on
sales to customers located outside of the
United States if you find that the infringing
product sold to those customers was made
in or distributed from the United States,
even if the infringing product is delivered
to a customer and used by the customer
outside the United States.
Tr. of Trial at 2842:1–7, Trs. of Columbia Univ. v. Syman-
tec, Corp., No. 3:13-cv-808 (E.D. Va. May 10, 2022), Dkt.
No. 1220 (emphasis added). The verdict form also asked
jurors to identify whether the reasonable royalty award
“include[d] a royalty for Norton’s sales to customers located
outside of the United States.” J.A. 43917. The verdict form
stated that if this was marked “yes,” then the jury “must
check ‘yes’ to at least one of the three questions below,” re-
ferring to separate inquiries as to whether the infringing
product was made in, distributed from, or sold in the
United States. J.A. 43917–18. The jury indicated it found
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 24
that “the infringing product sold to customers located out-
side of the United States was made in the United States,”
and “the infringing product sold to customers located out-
side the United States was distributed from the United
States.” J.A. 43918.7 Norton argues that it was entitled to
JMOL because no reasonable jury could conclude that any
infringing copies of Norton’s software that were sold to cus-
tomers outside of the United States were made in the
United States or distributed from the United States.
“The Supreme Court has recognized the important dis-
tinction between software and a particular copy of it on a
[computer-readable medium].” Brumfield, Tr. for Ascent
Tr. v. IBG LLC, 97 F.4th 854, 880 (Fed. Cir. 2024) (citing
Microsoft, 550 U.S. at 447–48, 449 n.10, 451 & n.12.). Mi-
crosoft Corp. v. AT&T Corp. concerned a patent that
claimed an “apparatus” that was capable of performing cer-
tain functions. 550 U.S. at 446. The question was whether
§ 271(f) (knowingly supplying “components” of an infring-
ing product from the United States with the intent that
they are combined into the infringing product outside the
United States) applied to “computer software first sent
from the United States to a foreign manufacturer on a mas-
ter disk, or by electronic transmission, then copied by the
foreign recipient for installation on computers made and
sold abroad.” Id. at 441. The patentee argued that the
7 The jury was also instructed that Columbia would
be entitled to damages based on sales to customers located
outside the United States if the sales substantially oc-
curred in the United States. Tr. of Trial at 2842:8–11, Trs.
of Columbia Univ. v. Symantec Corp., No. 3:13-cv-808
(E.D. Va. May 10, 2022), Dkt. No. 1220. The jury did not
find that “Norton’s sales to foreign customers were sales
that substantially occurred in the United States.”
J.A. 43918.
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computer software transmitted from the United States was
a “component” that was later incorporated into an infring-
ing product that was sold abroad. Id. at 450–51.
Although Microsoft involved § 271(f), Microsoft’s hold-
ing that infringement only occurred when software was “in-
stalled on a computer,” id. at 446, equally applies here.
Microsoft establishes that software in the abstract—that
is, software not physically encoded in a “tangible copy” like
a CD or hard drive—is akin to a “blueprint” or “a sche-
matic, template, or prototype.” Id. at 449–50. If someone
abroad builds an infringing product based upon a blueprint
that exists in the United States, for example, then the prod-
uct was still made abroad. See id. at 442. So too, 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. See id. at 450–
51. Under the logic of Microsoft, we conclude, as a matter
of law, that the products sold to Norton’s foreign customers
were made outside the United States. Therefore, and for
the reasons further discussed below, Columbia’s damages
theory must fail under each of the four asserted claims.
The four claims at issue here reflect one system claim,
two method claims, and one computer-readable-medium
claim. The system claim, ’322 patent, claim 27, includes a
“processor.” Like the apparatus claim at issue in Microsoft,
this claim is not infringed until a particular instance of
software is installed onto a computer with a processor. See
Centillion Data Sys., LLC v. Qwest Commc’ns. Int’l, Inc.,
631 F.3d 1279, 1288 (Fed. Cir. 2011). Because the in-
stances of software sold to customers located abroad are
not installed on a computer in the United States, those in-
stances were not made in or distributed from the United
States.
The same conclusion follows as to the other claims as-
serted here. A method claim is only infringed when the
claimed process is performed; it is not infringed by the
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 26
mere existence of software that, if installed on a computer,
could perform the method. See Ericsson, Inc. v. D-Link
Sys., 773 F.3d 1201, 1219 (Fed. Cir. 2014). Because the in-
fringing software is only capable of performing either of the
claimed methods once installed on a computer, the versions
installed abroad also cannot give rise to domestic infringe-
ment. In any event, “[t]here is no established recognition
in patent law of direct infringement by ‘making’ a
‘method.’” See Brumfield, 97 F.4th at 879. The methods
here were not “made” in the United States nor “distributed”
from the United States.
This leaves only claim 11 of the ’322 patent, the com-
puter-readable medium claim. Columbia argues that this
claim must be treated differently, because it does not re-
quire that a particular version of software be first installed
on a computer with a processor to be infringing. It is true
that claim 11 does not require software to be installed on a
device with a processor, but claim 11 does still require that
the software be encoded in a particular “non-transitory
computer-readable medium.” ’322 patent, claim 11. While
a non-transitory computer-readable medium may be cre-
ated on a server in the United States, that medium is not
exported abroad. The computer-readable media sold to for-
eign customers are only created once the foreign computer
encodes the software on its hard drive, which occurs out-
side the United States. These computer-readable media
are—like the apparatuses in Microsoft—created outside
the United States and therefore cannot be domestically in-
fringing. Under the logic the Court applied in Microsoft,
these cannot constitute infringing products that were made
in or distributed from the United States.
Nonetheless, Columbia points out that under our deci-
sion in Brumfield, Trustee for Ascent Trust v. IBG LLC
(which relied on the Supreme Court’s decision in Western-
Geco LLC v. Ion Geophysical Corp., 585 U.S. 407 (2018)
and was decided after the trial in this case), a finding of
domestic infringement allows a patent owner to recover
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 27
“complete compensation,” including damages based on for-
eign activity shown to be caused by domestic infringement.
97 F.4th at 872, 875. Columbia argues that this was the
case here—the foreign damages verdict was supported by
substantial evidence because, under Brumfield, the jury
could have found that the domestic infringement involved
in creating its master copies, which enabled the foreign
sales, were the cause of the foreign sales damages. How-
ever, the jury was not instructed, and Columbia did not
seek an instruction, that they could grant a reasonable roy-
alty for foreign sales based on this theory. We cannot re-
form the damages theory actually presented to the jury in
favor of an alternative that was not, even if the alternative
would have been legally valid. See Promega Corp. v. Life
Techs. Corp., 875 F.3d 651, 666 (Fed. Cir. 2017) (“[A] pa-
tent owner may waive its right to a damages award when
it deliberately abandons valid theories of recovery in a sin-
gular pursuit of an ultimately invalid damages theory.”).
We thus need not reach the question of whether Columbia’s
theory of foreign damages was proper under the causation
theory of Brumfield.
The district court relied on two other grounds to sup-
port the jury’s award of foreign damages, but they both fail.
First, the district court held that Norton could be liable for
joint infringement based on its domestic actions. This the-
ory was not clearly articulated, and it fails in any event be-
cause in order for Norton to be liable for joint infringement,
under the district court’s instruction, the product must be
“made in” or “distributed from” the United States, a condi-
tion that is not sustained even under a joint infringement
theory.8 Second, the district court held that the jury could
8 On appeal, Columbia attempts to salvage this the-
ory by arguing that Norton is liable for joint infringement
of claim 2 of the ’115 patent based on the theory that Nor-
ton’s customers abroad perform the majority of the claimed
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 28
reasonably find that Norton induced its foreign customers
to infringe the patents. But again, the induced infringe-
ment would have to have occurred within the United
States. See Microsoft, 550 U.S. at 443 (citing Deepsouth,
406 U.S. at 526–29).
D. ENHANCED D AMAGES
Norton challenges the district court’s imposition of en-
hanced damages, arguing that the district court improperly
weighed the factors we articulated in Read Corp. v. Portec,
Inc., 970 F.2d 816 (Fed. Cir. 1992), abrogated in part on
other grounds by Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996)). Enhanced damages under 35 U.S.C.
§ 284 may be warranted if infringement is willful and the
district court finds that the infringer’s conduct is suffi-
ciently egregious to warrant the enhanced damages. Pre-
sidio Components, Inc. v. Am. Tech. Ceramics Corp.,
875 F.3d 1369, 1382 (Fed. Cir. 2017). A district court is not
required to analyze the Read factors in making an en-
hancement determination, id., but we have held that the
Read factors are an appropriate method of weighing the
particular circumstances of the case to determine whether
the relevant conduct is sufficiently egregious to warrant
enhanced damages, see SRI Int’l, Inc. v. Cisco Sys., Inc.
(“SRI II”), 14 F.4th 1323, 1330–31 (Fed. Cir. 2021). We
steps in the method, but that Norton performed the step of
notifying the application community domestically. This ar-
gument fails because joint infringement of that method
claim could only occur if all the steps of the method are per-
formed domestically. See NTP, Inc. v. Rsch. In Motion,
Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005) (“We therefore
hold that a process cannot be used ‘within’ the United
States as required by section 271(a) unless each of the steps
is performed within this country.”), abrogated in part on
other grounds by Zoltek Corp. v. United States, 672 F.3d
1309 (Fed. Cir. 2012) (en banc).
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review a district court’s grant of enhanced damages for
abuse of discretion. Id. at 1327. “[A] clear error of fact, an
error of law, or a manifest error of judgment” would consti-
tute an abuse of discretion. Id. at 1330 (quoting Va. Panel
Corp. v. MAC Panel Co., 133 F.3d 860, 867 (Fed. Cir.
1997)).
Here, after weighing the Read factors, the district court
enhanced damages by a factor of 2.6. Norton takes issue
with the district court’s analysis of two of the Read factors
in particular. First, Norton argues that the district court’s
analysis of factor three—litigation misconduct—requires
vacatur of the enhanced damages order. We agree. In the
district court’s contempt order sanctioning Quinn for fail-
ing to comply with its order to disclose communications
with Dr. Dacier, it imposed as a penalty “a negative infer-
ence of egregiousness regarding any unproduced communi-
cations . . . for the purpose of deciding Columbia’s pending
motion[] for enhancement of the jury’s damage award un-
der 35 U.S.C. § 284.” J.A. 60. In consideration of this neg-
ative inference, and in light of the alleged misconduct
notwithstanding the inference, the court found that this
factor weighed “as heavily in favor of enhancement as it
could.” J.A. 130. Because we reverse the contempt order
in the companion case also decided today, the award of en-
hanced damages cannot be sustained.9 If, following the
9 Columbia argues that vacating the Contempt Or-
der does not necessitate revisiting the district court’s en-
hanced damages award because the district court stated
that “even without considering the . . . negative infer-
ence . . . Norton’s conduct in this case has been sufficiently
egregious to warrant enhanced damages.” J.A. 120–21.
However, the district court relied on the negative inference
at least in determining the magnitude of enhanced dam-
ages awarded and gave that factor particular weight. See
J.A. 139 (“As a whole, the clear weight of the Read factor
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remand proceedings, the claims are determined to be pa-
tent eligible, the district court may reweigh the relevant
factors to determine if an enhancement is warranted, and
if so, the magnitude of the enhancement.
Norton also argues that the district court erred under
Read factor three in inaccurately characterizing other con-
duct as litigation misconduct. Litigation misconduct refers
to “bringing vexatious or unjustified suits, discovery
abuses, failure to obey orders of the court, or acts that un-
necessarily prolong litigation.” i4i Ltd. P’ship v. Microsoft
Corp., 598 F.3d 831, 859 (Fed. Cir. 2010). The district
court repeatedly chastised Norton for “relitigating” and “re-
hashing settled issues.” E.g., J.A. 106, 142. Repetitive ar-
guments are generally not the kind of litigation misconduct
warranting enhancement. See Jack Guttman, Inc.
v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir.
2002) (noting that claim construction may be revisited and
altered on a “rolling” basis as “understanding of the tech-
nology evolves”). It appears that some of the alleged mis-
conduct falls into this category, which would also require
the district court to revisit whether, and to what degree,
this factor supports enhanced damages if the claims are
found to be patent eligible.
Finally, Norton argues that the district court erred in
not finding that the case was a close case in analyzing Read
factor five, closeness of the case. The district court “[did]
not find that this case was close,” largely relying on its con-
clusion that “this was not a close case for the jury,” and
declined to address the strength of Norton’s affirmative de-
fenses. J.A. 133–34. The court further concluded that the
fact that other asserted patents were found to not be
analysis weighs heavily in favor of enhancement, especially
in light of the Court’s negative inference . . . .” (emphasis
added)).
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 31
infringed was “not relevant” to the enhancement inquiry.
J.A. 133.
By limiting its analysis to solely the case as submitted
to the jury, the district court improperly failed to consider
the overall circumstances of the case at least because, as to
the asserted claims for which infringement was found, the
district court failed to address Norton’s non-infringement
theories and affirmative defenses. This was error. See Cy-
bor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1461
(Fed. Cir. 1998) (en banc), abrogated in part on other
grounds by Teva Pharms., 574 U.S. 318 (finding of infringe-
ment as to all claims did not mean case was not close where
party made “justifiable albeit unsuccessful arguments” as
to other aspects of the case). The district court was re-
quired to address whether the legal defenses raised by the
defendant presented close questions, even if they were un-
successful. See Polara, 894 F.3d at 1355 (vacating award
of enhanced damages and remanding where district court
failed to recognize the closeness of defendant’s affirmative
defense).
We today find that substantial questions are presented
on the issue of patent eligibility under § 101. Norton also
raised other questions as to infringement. After the first
claim construction opinion, Columbia conceded that it
could not prove infringement. Though we reversed the
claim construction, the initial decision indicates that Nor-
ton’s construction was reasonable. If the claims are found
to be patent eligible, the district court must consider the
closeness with respect to each of these questions, not
merely the ultimate question submitted to the jury. In
light of these considerations and the fact that it may ulti-
mately be unnecessary to address the question of enhance-
ment, we think that we should not, at this time, address
Norton’s argument that the district court, in considering
the closeness of the case, was required to consider other
patent claims that were previously and unsuccessfully as-
serted in this case.
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TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. 32
E. ATTORNEYS ’ F EES
Finally, the district court based its decision on attor-
neys’ fees in part relying on the negative inference awarded
as a sanction in its contempt order. While Norton has not
otherwise challenged the district court’s analysis of the at-
torneys’ fees issue, on remand the attorneys’ fees issue re-
quires reconsideration. The district court must reconsider
the issue of fees unburdened by the negative inference from
the contempt finding.
CONCLUSION
We reverse the district court’s determination that the
’322 and ’115 patents are not directed to an abstract idea
at Alice step one and remand for further proceedings under
step two, and if the patent claims are determined to be eli-
gible, to reduce the damages award to eliminate the royalty
based on foreign sales and reconsider its attorneys’ fees
and enhanced damages decisions consistent with this opin-
ion.
REVERSED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
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