The U.S. Court of Appeals for the Federal Circuit (CAFC) has recently delivered significant rulings in the case of The Trustees of Columbia University of the City of New York v. Gen Digital Inc., reversing a district court’s judgment that had deemed Columbia’s patent claims eligible for protection. Additionally, the court vacated a contempt order against the defendant’s legal team, Quinn Emanuel Urquhart & Sullivan, LLP.
Columbia Claims Fail at Alice Step One
In the initial decision, Columbia University accused Gen Digital, known for its Norton software, of infringing on several claims of its U.S. Patent Nos. 8,601,322 and 8,074,115, which focus on safeguarding computer systems from viruses and other malicious threats. The U.S. District Court for the Eastern District of Virginia had previously denied Norton’s motion for judgment on the pleadings, asserting that the claims were not directed toward an abstract idea. Following a jury’s verdict of willful infringement on four claims, Columbia was awarded 5.11 million in damages, including sales to international customers. The district court also granted enhanced damages and attorneys’ fees, partly due to a negative inference stemming from a separate contempt finding.
Upon appeal, the CAFC determined that Columbia’s claims did not introduce a novel method for virus screening nor did they enhance existing methodologies. The court concluded that the claims were, in fact, directed toward an abstract idea. Norton contended that the claims revolved around the abstract concept of “identifying a deviation in data based on a comparison” related to virus scanning. Columbia, on the other hand, maintained that the claims involved specific steps and techniques that improved computer security beyond prior methods. The CAFC noted that Columbia’s assertion of using multiple computers as a means to establish non-abstractness was insufficient, stating that the claimed “emulator” was conventional and that the collaborative approach of multiple computers was merely an abstract idea.
Despite Columbia’s references to various technological advancements that could render the claims non-abstract, the CAFC clarified that these improvements were not explicitly required by the language of the asserted claims. Columbia attempted to draw parallels with the Finjan, Inc. v. Blue Coat Systems, Inc. case to support its position, but the CAFC found no resemblance between the improvements deemed non-abstract in Finjan and the claims in this instance.
Hope at Step Two on Remand?
At Alice step two, however, the CAFC identified one argument from Columbia that warranted further examination upon remand. Columbia posited that the “model of function calls” component of the claims constituted an inventive concept. Although this argument had been forfeited regarding the step one analysis, it remained viable for step two. The CAFC indicated that the district court should address this issue on remand, as factual questions persist concerning the conventionality of this feature. The court emphasized that reasonable inferences should be drawn in favor of Columbia, suggesting that the dispute over the conventionality of this element precludes a judgment on the pleadings.
The opinion also addressed several additional matters that may be pertinent on remand if the patent claims are ultimately deemed eligible. The CAFC affirmed that the district court accurately interpreted the “emulator” as not necessitating the simulation of a computer system. Furthermore, it upheld the district court’s decision to deny judgment as a matter of law for Norton regarding willful infringement, while also noting that the rationale supporting the jury’s award of damages for foreign sales was flawed. The CAFC reversed the enhanced damages award, referencing its earlier decision to overturn the contempt order, and instructed the district court to reassess the attorneys’ fees without the influence of the negative inference from the contempt finding.
Attorney-Client Privilege Survives Conflict of Interest
In a separate ruling concerning the contempt order, the same panel of judges, led by Judge Dyk, concluded that Quinn was not in contempt. The CAFC determined that the district court’s Disclosure Order, which mandated Quinn to reveal any potential conflict of interest regarding the inventorship dispute over U.S. Patent No. 8,549,643 owned by Norton, was invalid. As such, it could not serve as a basis for a finding of civil contempt. The opinion clarified that attorney-client privilege remains intact despite the existence of an attorney-client conflict.
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Author: almoond
