Addressing patent eligibility, infringement, willfulness, enhanced damages, and the limits of patent damages tied to foreign software sales, the US Court of Appeals for the Federal Circuit vacated a $185 million jury award after finding that damages based on foreign sales were improperly included because the accused software copies were made and installed abroad. Trs. of Columbia Univ. v. Gen Digital Inc., Case No. 24-1243 (Fed. Cir. Mar. 11, 2026) (Dyk, Prost, Reyna, JJ.)
The Trustees of Columbia University sued Gen Digital, the Norton software brand marketer, for infringement of patents directed to detecting anomalous program execution in antivirus software. A jury found willful infringement and awarded approximately $185 million in damages, including more than $94 million attributable to foreign sales of Norton software products based on findings that the infringing product sold to foreign customers was made in and distributed from the United States. The district court denied Gen Digital’s post-trial motions, enhanced the damages, and awarded attorneys’ fees. Gen Digital appealed.
Patent eligibility: Abstract at Alice step one
The Federal Circuit determined that the asserted claims are directed to an abstract idea at step one of the Alice framework. The Court explained that the claims, at their core, involve comparing data (function calls) to a model – created using multiple computers – to identify anomalous behavior, which is a long-standing abstract concept in the context of virus detection. Although Columbia argued that the claims improved computer functionality through efficiency gains and the use of distributed models, the Court found that those purported improvements were either themselves abstract or not required by the claim language. The Court agreed with Columbia that factual disputes remain as to whether certain claimed features – particularly the “model of function calls” – were well-understood, routine, and conventional, precluding resolution of step two of the Alice framework. The Court remanded for further proceedings to perform an Alice step two analysis.
Willfulness: Affirmed by substantial evidence
The Federal Circuit found that substantial evidence supported a finding that Gen Digital knew or should have known of the asserted patents, including evidence that its personnel were aware of the underlying technology and related patent applications prior to issuance. The Court rejected Gen Digital’s argument that its litigation defenses precluded willfulness, explaining that post hoc reasonable defenses do not negate willfulness absent evidence that the defendant relied on those defenses at the time of the accused conduct. Because the record supported a finding that Gen Digital failed to adequately investigate potential infringement despite being aware of the patents, the Federal Circuit found no basis to disturb the district court jury’s willfulness determination.
No domestic infringement for foreign-made software copies
The Federal Circuit reiterated the general rule that US patent law does not apply to products made and sold abroad. Although the jury was instructed that damages could include foreign sales if the infringing product was “made in or distributed from the United States,” the Court found this instruction legally incorrect. The Court further explained that 35 U.S.C. § 271(f) was not implicated, as the case did not involve the supply of components from the US for combination abroad.
Relying on the Supreme Court’s 2007 ruling in Microsoft v. AT&T, the Federal Circuit emphasized the distinction between software in the abstract and a particular copy of software encoded on a physical medium. Software does not constitute an infringing product until it is embodied in a tangible copy. The Court explained that software code transmitted from the US is akin to a blueprint: infringement occurs only when that code is embodied in a tangible copy (e.g., installed on a computer). When foreign customers download and install software on their own systems, the resulting copies are made abroad – not in the US.
Because Norton’s foreign customers created the relevant software copies when installing the software on their devices overseas, those copies could not support a finding of domestic infringement.
No recovery across claim types
The Federal Circuit applied this reasoning across all asserted claims:
- System claims requiring a processor were not infringed domestically because infringement occurs only when the software is installed on a computer, which took place outside the US.
- Method claims were not infringed because the claimed processes could only be performed once the software was installed on a computer, which occurred abroad.
- Computer-readable medium claims also failed because the relevant media were created when foreign computers encoded the software locally, not when the code was transmitted from the US.
The Federal Circuit rejected the district court’s alternative theories of liability, including joint and induced infringement, explaining that any such infringement must still occur within the US.
Failure to present a valid causation theory under Brumfield
Columbia argued that damages for foreign sales could still be recovered under a causation theory – namely that domestic acts such as creating master copies enabled the foreign sales under the Federal Circuit’s 2024 decision in Brumfield v. IBG. The Court declined to reach that issue, explaining that Columbia had not presented that theory to the jury or requested a corresponding jury instruction. Instead, Columbia pursued an invalid theory that foreign sales were directly compensable based on domestic “making” or “distribution.” Because a patentee cannot recover damages based on a theory not presented to the jury, the Court refused to uphold the award on an alternative basis.
Enhanced damages
The Federal Circuit vacated the award of enhanced damages, concluding that the district court’s analysis of the Read factors (Read v. Portec (Fed. Cir. 1992) was flawed. The district court particularly relied heavily on a negative inference drawn from a contempt finding against Gen Digital’s counsel, which the Federal Circuit reversed in a companion case, undermining the enhancement determination. The Federal Circuit also found that the district court improperly characterized certain litigation conduct and failed to adequately consider the closeness of the case, including Gen Digital’s noninfringement and eligibility defenses. On remand, the Court instructed that any enhancement determination must be reconsidered considering the full record and without reliance on the vacated contempt finding.
Practice note: This decision underscores that damages based on foreign sales must be supported by a legally valid theory tied to domestic infringement and properly presented to the jury. Failure to advance the correct damages theory at trial may result in forfeiture of recovery, even where an alternative, potentially viable theory exists.
