An Eastern District of Virginia jury has returned a willful infringement verdict for Columbia University against NortonLifeLock, awarding $185.1M in damages. The jury also resolved a dispute over inventorship, finding that two Columbia professors were coinventors of a Norton patent that the university alleged was the result of technology disclosed through a prior partnership. That verdict follows a string of other high-dollar awards in recent years, including another that issued just days later—and caps off the latest chapter in a nine-year-old lawsuit that became mired in allegations of attorney misconduct shortly before trial.

The Litigation Below: The Federal Circuit Trims Columbia’s Case

Columbia, via the Trustees of Columbia University in the City Of New York, sued NortonLifeLock (then known as Symantec) in the Eastern District of Virginia in December 2013, accusing it of infringing five patents (7,448,084; 7,487,544; 7,913,306; 7,979,907; 8,074,115) through the provision of antivirus and computer security software (3:13-cv-00808). The complaint further alleged that the defendant had wrongfully obtained a patent of its own (8,549,643) over technology disclosed via a partnership with the university’s researchers, covering the use of “decoys in detecting and thwarting viruses and other malicious intrusions by (among other things) baiting the attacks with false information”, seeking a correction of inventorship naming two Columbia professors as the sole inventors. An infringement claim for a sixth patent (8,601,322) was added via amended complaint later that month, along with state law claims of fraudulent concealment, unjust enrichment, and conversion with respect to the ‘643 patent.

However, an October 2014 claim construction order adverse to Columbia trimmed the case significantly: the following month, District Judge James R. Spencer granted the parties’ joint motion for entry of final judgment as to the asserted claims from all six patents-in-suit as a result of that Markman order as subsequently clarified, under which the parties agreed that the accused products did not infringe under the court’s construction of certain claim terms and under which claims from the ‘544 patent were invalid as indefinite. An extended stay soon followed as Columbia’s appeal proceeded before the Federal Circuit, during which time the Patent Trial and Appeal Board (PTAB) also invalidated a subset of the challenged claims from the two patents then remaining in suit—leaving intact just 12 claims from the ‘115 patent and six from the ‘322 patent.

As the case sat idle, it also got a new judge: District Judge M. Hannah Lauck. The Federal Circuit ultimately affirmed as to all but the ‘115 and ‘322 patents, holding that the judgment as to those patents had been based on an incorrect claim construction and remanding for further proceedings. However, the case did not resume until August 2018, after the Federal Circuit also resolved appeals over the PTAB decisions (affirming as to both).

In July 2019, Judge Lauck granted summary judgment of inter partes review (IPR) estoppel against Symantec, ruling that it was barred from raising certain invalidity arguments that it could have raised, but chose not to, in its IPR petitions. Later that month, after having scheduled an additional Markman hearing as a result of the Federal Circuit’s mandate to revisit the term “anomalous”, the court “reluctantly” agreed to construe an additional claim term—“model of function calls for the at least a [part/portion] of the program”—that the parties had previously disputed without notifying the court. The court resolved that dispute against Symantec in December 2019, noting that the defendant (by that point, renamed to NortonLifeLock, following the sale of its enterprise security division to Broadcom) had pursued a broader definition of the term before the PTAB and the Federal Circuit, and holding that it would not allow the company to change course: “Now that its interests have changed as this Court considers infringement, Norton requests a narrow definition of the term, thereby narrowing the possibility of infringement. Allowing such a change in position would result in Norton having an ‘unfair advantage’ in this litigation. The Court will not allow this”.

In November 2019, the court also denied Symantec’s motion for judgment on the pleadings under Alice, which argued that the remaining claims from the ‘115 and ‘322 patents unpatentably “encompass[] only an ‘Executing Step,’ a ‘Comparing Step,’ and an ‘Identifying Step’”. The court instead ruled that the claims “constitute specific improvements in computer functionality, such that they satisfy Alice step one”. In December 2021, Judge Lauck clarified that order at Columbia’s request, declining to construe her decision as granting summary judgment on the 101 issue for the university or to find that Norton had waived its eligibility defense—but nonetheless striking that defense in the name of judicial economy.

As Case Approaches Trial, Court Flags Attorneys’ Handling of Witness Dispute

As the case approached trial in April 2022, following various delays, among the issues remaining in dispute were several involving Dr. Marc Dacier, a former Norton employee and prospective witness. In May 2020, Norton filed a motion for sanctions against Columbia, alleging that its litigation counsel, Sullivan & Cromwell, improperly contacted Dacier on multiple occasions despite the fact that he was purportedly represented by Quinn Emanuel, which also represented the defendant. However, Columbia disputed whether Dacier was actually represented by Quinn, and Judge Lauck declined to sanction the university on that basis in her September 2021 order denying the motion for sanctions—explaining that Columbia had acted based on a good-faith belief that Dacier was so represented, and noting that the question of his representation at the relevant time remained at issue (“It remains undetermined whether Dr. Dacier was or was not represented by Norton’s attorneys in October 2019”).

Despite that finding regarding Dacier’s representation, Norton’s attorneys subsequently informed him that the “Court concluded that he is represented by Norton’s counsel”. Judge Lauck took issue with this misstatement, pointing out that the court “had not so concluded”, in a March 2022 order denying Norton’s request to delay the trial and reconsider its subsequent Daubert order. The court placed the blame for the defendant’s predicament at the feet of its counsel: “Norton’s counsel having misread the Court’s decision, or having strategically let the issue lay fallow between the explicit notice in November 2021 and the February 28, 2022 Motions in Limine, does not lay at the feet of the court. Norton’s counsel, which seeks emergency relief now, had ample opportunity to clarify the record or address any conflict”.

Judge Lauck also chided Norton’s counsel for misrepresenting the court’s ruling: its order did not “disqualify” Quinn, as the defendant’s attorneys had asserted; rather, it held that Quinn could not represent both Norton and Dacier. While the court pointed out that it could have—and would still—allow a waiver with respect to Norton, this was not possible for Dacier, who had since taken an appointment in France and was purportedly unavailable to testify—a “peculiar circumstance”, remarked Judge Lauck. (He has since apparently moved to Saudi Arabia.) The court declined to revisit its earlier decisions, based on these misrepresentations and on what it deemed a “burdensome approach to litigation” under which “[t]he manner in which the parties were presenting the case veered toward the unmanageable”. The court declined to delay the proceedings “on the eve of trial”, allowing Dacier's “statements to be admitted as the only practical remedy that would keep trial viable”—noting the proper place to hear Norton’s disagreement on that point would be “in the appellate court after trial”.

Quinn’s attorneys subsequently withdrew from representing Norton as a result of the court’s ruling, and the defendant then retained a new team from Latham & Watkins shortly before trial—which began on April 11, 2022. On May 2, after three days of deliberations, a jury returned a verdict of willful infringement as to both the ‘115 and ‘332 patents, awarding $185.1M in damages—comprised of $91.1M in US sales and $94M in sales to non-US customers. The jury also found that Columbia had not proven that its two professors were the patents’ sole inventors, but it did find that they should be named as coinventors along with the Norton employee named on the face of the patent. Norton has already announced that it plans to appeal the verdict.

Other Notable Damage Awards and Related Appeals

As noted above, Columbia’s damages award against NortonLifeLock joins a variety of other high-dollar verdicts issued by juries in the past few years—including another massive one issued four days later. On May 6, a Delaware jury issued a willful infringement verdict against Illumina, awarding $334M in damages for Complete Genomics in litigation over DNA sequencing technology.

Other notable verdicts have come in NPE campaigns, including a Texas jury’s $300M verdict last August in a damages retrial between several subsidiaries of PanOptis Holdings, LLC and Apple over LTE-compliant devices (details here and here). Three more came in March 2021: a $308M verdict issued for NPE Personalized Media Communications, LLC against Apple over digital rights management technology in the Eastern District (details here); a nearly $63M verdict handed down earlier in the month for NPE Solas OLED Limited against Samsung over certain smartphones, also in the Eastern District (details here); and a week before that, a jury verdict that awarded $2.2B to VLSI Technology LLC, a subsidiary of Fortress Investment Group LLC, in a West Texas trial against Intel over processor technology (details here). A second trial between VLSI and Intel went for the defendant, while a third trial was cancelled on its first day late last month after “multiple” attorneys tested positive for COVID-19.

For more on other significant verdicts that issued in 2020 and courts’ posttrial handling of additional large damage awards issued before then, see “VirnetX Verdict Joins Multiple High-Dollar Patent Infringement Awards Throughout the US” (November 2020).

On the other hand, some notable damage awards have not withstood appellate scrutiny in recent months. In early February of this year, the Federal Circuit overturned two sizable damages verdicts: the California Institute of Technology’s (Caltech’s) $1.1B award against Apple and Broadcom and Quarterhill Inc. subsidiary Wi-LAN Inc.’s (WiLAN’s) $85.2M award against Apple. Now, recent activity suggests that at least the latter ruling could potentially have a ripple effect on other large damages awards currently on appeal. The ensuing weeks have seen the defendant-appellants in those cases cite the WiLAN opinion, which faulted a district court for allowing a flawed methodology that was “untethered to the facts of this case”, as relevant authority justifying similar reversals. See “Federal Circuit’s WiLAN Ruling Could Affect Other Large Damage Awards” (February 2022) for more on those arguments and the preceding WiLAN decision.

Finally, an appeal is ongoing over the nearly $2B award that resulted from a fall 2020 bench trial in litigation filed by Centripetal Networks against Cisco, with the defendant alleging that the ownership of Cisco stock by the presiding judge’s wife requires the vacatur of that award and other rulings. More on that appeal can be found here: “Parties File Supplemental Briefs Addressing Recusal Issues, as Centripetal Proposes Both an Expansion and a Contraction of Its Wider Campaign” (April 2022).