Preserve It or Lose It: A Missing Jury Instruction Costs Columbia University $94M in Damages

The U.S. Court of Appeals for the Federal Circuit recently decided in Bd. of Trs. of Columbia Univ. v. Gen Digital Inc., No. 2024-1243 (Fed. Cir. 2026) that the district court erred in its denial of judgment as a matter of law as to damages resulting from foreign sales of downloadable software. At Columbia University's request, the jury had been instructed that “Columbia [was] entitled to damages based on sales to customers located outside of the United States if . . . the infringing product sold to those customers was made in or distributed from the United States, even if the infringing product [was] delivered to and used by the customer outside the United States.” The court concluded as a matter of law that the software sold to Gen Digital‘s (Norton) foreign customers was made outside the United States, and therefore the $94 million in foreign sales damages could not stand.

Columbia University sued Norton, asserting infringement of several patent claims related primarily to antivirus software. Norton sold its products outside the United States by using a “content delivery network” whereby the software was transmitted electronically from domestic servers to other servers located abroad, from which customers would download the software. The jury returned a verdict finding willful infringement of all asserted claims and awarded a reasonable royalty of $185 million, including a royalty of $94 million for Norton's sales to customers located outside the United States, based on findings that the infringing product sold to foreign customers was made in and distributed from the United States.

The Federal Circuit grounded its analysis in U.S. Supreme Court precedent holding that 35 U.S.C. § 271(f) did not apply where computer software first sent from the United States to a foreign manufacturer — whether on a master disk or by electronic transmission — was then copied by the foreign recipient for installation on computers made and sold abroad, because, in part, software in the abstract does not qualify as a component capable of combination under the statute. The Federal Circuit extended this logic in the present case, holding that software is not tangible — or capable of infringing the asserted claims — until tethered to a particular copy encoded in a computer-readable medium, and that if someone abroad builds an infringing product based upon a blueprint that exists in the United States, the product was nonetheless made abroad.

Bd. of Trs. of Columbia Univ. v. Gen Digital Inc. carries significant consequences for patent holders seeking to recover damages from defendants who distribute software internationally via electronic means. The court made clear that even a computer-readable medium claim does not escape this limitation: while a non-transitory computer-readable medium may be created on a server in the United States, that medium is not exported abroad, because the computer-readable media sold to foreign customers are only created once the foreign computer encodes the software onto its hard drive, which occurs outside the United States. Although the Federal Circuit acknowledged that under Brumfield, Trustee for Ascent Trust v. IBG LLC, No. 2022-1630 (Fed. Cir. 2024), a finding of domestic infringement can potentially allow a patent owner to recover “complete compensation,” including damages based on foreign sales caused by domestic infringement (e.g., the creation of master copies which enabled the foreign sales), the court declined to apply that theory because Columbia had never requested a corresponding jury instruction. The practical message for patent litigants is therefore twofold: plaintiffs must identify and preserve all viable damages theories from the outset through verdict, and while foreign software sales distributed via content delivery networks may fall outside the reach of standard U.S. patent damages, the Brumfield causation theory offers patent holders a potential path to recovery — provided it is properly developed in discovery and presented to the jury at trial.