Patience and Resources are Needed for Universities and TTOs to get Fair Compensation for their Intellectual Property.
As previously reported by Woodsford, the valuable technology advances created at colleges and universities are often implemented by non-affiliated businesses without fair compensation. Such was the case when Columbia University filed an 8-patent action against NortonLifeLock to remedy Norton’s use of Columbia’s innovative computer security technology.
When Columbia filed its suit in the Eastern District of Virginia in 2013, known at the time as being a “rocket docket,” it likely did not expect to still be litigating nine years later. But Norton, represented by litigation powerhouse Quinn Emmanuel, was able to substantially delay proceedings.
First, Norton convinced the District Court to adopt incorrect constructions of patent terms that prevented Columbia for asserting infringement. An appeal to the Federal Circuit revived two of Columbia’s patent claims, only to have the court stay the proceedings pending IPRs on both patents. The Patent Office found some claims patentable, others unpatentable, and both parties appealed. By the time the Federal Circuit affirmed and the action proceeded again in District Court, five years had already lapsed since the filing of the complaint. Yet Columbia still had to navigate lengthy briefing rounds on summary judgment, Daubert motions, and motions in limine, as well as other typical litigation disputes.
However, the lengthy litigation history finally paid off on May 2, 2022, when a jury found Norton had infringed all four claims that were tried, and finding those same claims valid. This verdict came with a damages figure of $185,112,727, and a finding that Norton had willfully infringed both patents which allows the trial court to award Columbia up to treble damages. Briefing on willful infringement remains ongoing,[1] and Columbia likely still faces another round of appeals.
While Columbia’s long trek to a jury verdict is longer than most, it does provide a University or Technology Transfer Office a good example of what may happen, and reinforces that patent litigation is almost always expensive. By involving an experienced litigation funder, a university can enter an enforcement campaign without the stress a litigation budget can cause. Funders such as Woodsford are well versed in providing the financial support universities need to vindicate their patent rights, and come equipped with their own highly experienced patent litigation attorneys to provide further assistance every step of the way.
And, most importantly, Woodsford’s non-recourse funding means it only receives compensation if the litigation is a success.
This post was authored by Woodsford’s Senior Investment Officer, Dan Kesack. If you have any questions or would like to discuss partnering with Woodsford, please contact Dan directly.
For a more detailed look at how litigation finding can help Universities and TTOs protect IP and help deliver significant revenue streams, read our whitepaper Litigation Funding for Universities and Technology Transfer Offices.
