Comparing program behavior against a combined model is abstract, and only an unconventional model can save the claim

2026-03-11Fed. Cir.

The Trustees of Columbia University in the City of New York v. Gen Digital Inc., Nos. 2024-1243, 2024-1244 (Fed. Cir. Mar. 11, 2026) (precedential) (Dyk, J., joined by Prost, J., and Reyna, J.), reversing in part, vacating in part and remanding a judgment of the United States District Court for the Eastern District of Virginia, No. 3:13-cv-00808-MHL (Lauck, C.J.)

Columbia University's United States Patent Nos. 8,601,322 and 8,074,115 claim detecting anomalous program executions by running part of a program in an emulator, "comparing a function call made in the emulator to a model of function calls," where "the model is a combined model created from at least two models created using different computers," and flagging the call as anomalous. A jury found that Norton's SONAR/BASH feature willfully infringed claims 2, 11 and 27 of the '322 patent and claim 2 of the '115 patent and awarded $185,112,727, including $94,037,265 for foreign sales; the district court, which had refused to find the claims abstract under Section 101 of Title 35 of the United States Code, enhanced damages 2.6 times. The Federal Circuit, by Judge Dyk, held the claims directed to "the abstract idea of comparing data against a model (created using different computers) to determine if it is anomalous." Distributed model building was a conceded abstract idea, and selective emulation and diversified models appeared only in the specification: "nothing in the claims requires the steps necessary to make the improvement." Whether the claimed model of function calls was conventional is a fact question, remanded for step two. The court also held that copies foreign customers downloaded and installed abroad were made outside the United States under Microsoft v. AT&T, eliminating the foreign royalty.

What it changesThe court applied to a model-based claim the rule it stated a month earlier in GoTV Streaming v. Netflix: the improvement has to be in the claim. A claim that compares new data against a model to flag anomalies, which describes most monitoring, fraud and security products built on machine learning, is abstract at step one even when the model is built in a distributed way, unless the claim recites how the model is built or what it contains in terms that make the improvement unavoidable. The remand helps drafters. The court treated the conventionality of the claimed model as a question of fact, so a claim that defines the model concretely, backed by a specification explaining why that model was not routine, can survive the pleadings. For enforcement budgets, the foreign-sales holding means a royalty on software that customers download and install abroad needs a causation theory put to the jury, not a made-in-the-United-States theory.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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