United States Court of Appeals 

for the Federal Circuit ______________________

TECSEC, INC.,

Plaintiff-Appellant

v.

ADOBE INC.,

Defendant-Cross-Appellant

SAS INSTITUTE, INC., SAP AMERICA, INC., SAP 

AG, CISCO SYSTEMS, INC., SYBASE, INC., 

SOFTWARE AG, SOFTWARE AG, INC., ORACLE 

CORPORATION, ORACLE AMERICA, INC.,

Defendants

______________________

2019-2192, 2019-2258

______________________

Appeals from the United States District Court for the 

Eastern District of Virginia in No. 1:10-cv-00115-LO-TCB, 

Judge Liam O’Grady.

______________________

Decided: October 23, 2020

______________________

MICHAEL OAKES, Hunton Andrews Kurth LLP, Washington, DC, argued for plaintiff-appellant. Also represented by OZZIE FARRES, BRIAN L. SAUNDERS, STEVEN 

LESLIE WOOD; DAVID PARKER, Richmond, VA. 

 GABRIEL BELL, Latham & Watkins LLP, Washington, 

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2 TECSEC, INC. v. ADOBE INC.

DC, argued for defendant-cross-appellant. Also represented by TARA ELLIOTT, RACHEL WEINER COHEN, MICHAEL 

A. MORIN. 

 ______________________

Before PROST, Chief Judge, REYNA and TARANTO, Circuit 

Judges.

TARANTO, Circuit Judge.

TecSec, Inc. brought this case in 2010 against several 

companies, including Adobe Inc., alleging that the companies directly and indirectly infringed claims of four TecSec 

patents. Aspects of the case have been before this court 

three times already. The present appeal involves Adobe 

only and several rulings of the district court, of which two 

are central. Specifically, before trial, in response to a motion in limine by Adobe, the court excluded all evidence of 

induced infringement from March 3, 2011, through the expiration of the patents at issue in October 2013. Earlier, 

the court had rejected Adobe’s challenge to the asserted 

claims as ineligible under 35 U.S.C. § 101.

A jury found for TecSec on direct infringement, but not 

induced infringement; rejected Adobe’s prior-art validity 

challenges; and awarded damages. The district court, 

though generally denying Adobe’s post-trial motions, reduced the damages award to zero on the ground that there 

was no proof of any damages from direct infringement and 

the jury had rejected induced infringement.

TecSec appeals. It challenges the district court’s motion-in-limine ruling, as well as certain jury instructions 

and the post-trial damages reduction. Adobe cross-appeals, challenging the district court’s ruling on eligibility. 

We reverse the evidentiary ruling that eliminated TecSec’s 

inducement case for a substantial period, and we reject 

Adobe’s challenge to the district court’s eligibility ruling. 

For those reasons, and others stated in this opinion, we 

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reverse the judgment in part and remand for further proceedings on TecSec’s claim of induced infringement.

I

A

TecSec owns U.S. Patent Nos. 5,369,702, 5,680,452, 

5,717,755, and 5,898,781, the patents asserted in this case. 

The patents are entitled “Distributed Cryptographic Object 

Method” (the “DCOM patents”) and claim particular systems and methods for multi-level security of various kinds 

of files being transmitted in a data network. See ’702 patent, col. 3, lines 12–24; id., col. 12, lines 2–16; id., col. 12, 

line 45, through col. 13, line 20. In particular, the DCOM 

patents describe a method in which a digital object—e.g., a 

document, video, or spreadsheet—is assigned a level of security that corresponds to a certain combination of access 

controls and encryption. Id., col. 3, line 58, through col. 4, 

line 2; id., col. 4, lines 18–25; id., col. 5, lines 42–51. The 

encrypted object can then be embedded or “nested” within

a “container object,” which, if itself encrypted and accesscontrolled, provides a second layer of security. Id., col. 4, 

lines 25–34. 

Claims 1 and 8 of the ’702 patent are representative of 

the asserted claims. Claim 1 recites:

1. A method for providing multi-level multimedia security in a data network, comprising the 

steps of:

A) accessing an object-oriented key manager;

B) selecting an object to encrypt;

C) selecting a label for the object;

D) selecting an encryption algorithm;

E) encrypting the object according to the encryption algorithm;

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4 TECSEC, INC. v. ADOBE INC.

F) labelling the encrypted object;

G) reading the object label;

H) determining access authorization based on 

the object label; and

I) decrypting the object if access authorization 

is granted.

’702 patent, col. 12, lines 2–15. Whereas the subject of 

claim 1 is a method, the subject of claim 8 is a system that 

includes components—a “system memory,” “an encryption 

algorithm module,” “an object labelling subsystem,” “a decryption algorithm module,” and “an object label identification subsystem”—that carry out the steps of claim 1’s 

method. Id., col. 12, line 45, through col. 13, line 19.

B

In 2010, TecSec filed a complaint alleging infringement 

of the DCOM patents by Adobe, International Business 

Machines Corp. (IBM), and several other companies. On 

March 3, 2011, after staying the case as to all defendants 

except IBM, the district court construed several claim 

terms of the DCOM patents, including the term “multimedia.” Based on those constructions, the district court 

granted IBM summary judgment of noninfringement. In 

January 2012, we summarily affirmed that noninfringement judgment without reaching certain issues, including 

the construction of “multimedia.” TecSec, Inc. v. Int’l Business Machines Corp., 466 F. App’x 882 (Fed. Cir. 2012). 

The case then proceeded in district court against Adobe 

and other defendants. As relevant here, on April 23, 2012, 

TecSec and Adobe stipulated that, under the claim construction already adopted (which TecSec reserved the right 

to appeal), TecSec could not show that Adobe or the users 

of its accused Acrobat products infringed the DCOM patents, as alleged, through their actions involving portable 

document format documents (PDFs). The next day, the 

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district court entered a judgment of noninfringement for 

Adobe. On October 2, 2013, we reversed the district court’s 

construction of “multimedia” and remanded for further proceedings under the correct construction. TecSec, Inc. v. 

Int’l Business Machines Corp., 731 F.3d 1336, 1345–49 

(Fed. Cir. 2013) (TecSec I), cert. denied sub nom. Cisco Systems, Inc. v. TecSec, Inc., 572 U.S. 1158 (2014). 

The DCOM patents expired on October 18, 2013,

shortly after our TecSec I ruling. In October 2014, Adobe 

filed a motion for summary judgment of noninfringement, 

J.A. 165, and the district court granted the motion in May 

2015, J.A. 27086–127. In August 2016, citing genuine disputes over material facts, we reversed that judgment and 

again remanded to the district court. TecSec, Inc. v. Adobe 

Systems Inc., 658 F. App’x 570 (Fed. Cir. 2016) (TecSec II).

The case returned to the district court. In March 2017, 

Adobe moved for summary judgment of ineligibility under 

§ 101. J.A. 1841–71. The district court, noting that the 

parties agreed that claims 1 and 8 of the ’702 patent were 

representative for § 101 purposes, J.A. 4, denied the motion 

in May 2017. J.A. 3–13. In its ruling, the court stated that 

its rationale actually warranted “judgment in favor of 

[TecSec]” on Adobe’s ineligibility challenge. J.A. 8.

In April 2018, after additional discovery, Adobe filed 

another motion for summary judgment of noninfringement, making at least one argument for lack of provable 

inducement of infringement. See ECF 1054 (motion); ECF 

1123 at 10–11 (reply supporting motion). The district court 

denied the motion in June 2018. J.A. 10298–99. In August 

2018, Adobe stipulated that “on at least one occasion,” 

“there was direct infringement of the asserted claims” by 

an Adobe employee. J.A. 10307–08. It is common ground 

on appeal that this stipulation was referring to an occasion 

when an Adobe employee performed the steps of the 

method claims using an accused version of Adobe’s Acrobat 

product, reflected in a February 2009 blog post on 

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6 TECSEC, INC. v. ADOBE INC.

“packaging options for encrypted PDFs” that he wrote for

an Adobe users’ forum. See J.A. 24459–60.

In October 2018, as trial was approaching, Adobe filed 

an omnibus motion in limine, the first heading of which 

asked the court to “preclude argument, evidence, or testimony on Adobe’s intent to induce or willfully infringe between March 3, 2011 and October 18, 2013, unless TecSec 

concedes admissibility of the March 3, 2011 Order (DX-28), 

Stipulation of Non-infringement (DX-29), and Judgment 

(DX-30).” J.A. 10429. Adobe argued that a “judgment or 

stipulation of non-infringement is highly relevant to an accused infringer’s state of mind.” Id. “If TecSec argues that 

Adobe had specific intent to induce infringement or willfully infringe during this period,” Adobe stated, “TecSec 

opens the door to the admissibility of this exculpatory evidence”—which, Adobe asserted (without citing evidence), it 

reasonably relied on, so that “there can be no specific intent 

to induce infringement during [the] roughly 31-month period” from March 2011 to October 2013. Id. TecSec argued 

that intent was a fact question for the jury, and it disagreed 

with Adobe’s submission that allowing proof of inducement 

during the period at issue required admission of the three 

documents. J.A. 10849. TecSec did not indicate that it 

would decline to proceed with its inducement case for the 

period at issue if that evidence was to be admitted.

At an oral argument on the omnibus motion on Friday, 

November 9, 2018, the district court indicated that it intended to preclude “any reference” to Adobe’s post-March 

2011 conduct, making admission of the three documents 

immaterial. ECF 1294, p. 35; id. at pp. 3–4, 34–37. The 

court stated its intent in that respect equally for the inducement contention and the willfulness contention. Id. 

On November 13, 2018, after the Veterans Day weekend

but before any ruling by the court, TecSec filed a supplemental brief stating expressly that even if the district court 

allowed Adobe to present evidence of Adobe’s lack of intent, 

“the Court should not preclude TecSec from presenting 

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evidence on Adobe’s intent to induce infringement.” 

TecSec, Inc.’s Suppl. Br. Regarding Def. Adobe Inc.’s Mot.

in Limine #1 at 7, TecSec, Inc. v. Adobe, Inc., No. 1:10-cv00115-LO-TCB (E.D. Va. Nov. 13, 2018), ECF 1283-1 

(TecSec’s Supp. MIL Br.). The district court, TecSec argued, could not “resolve a substantive factual dispute 

through a limine ruling before the evidence is presented at 

trial.” Id.

On November 21, 2018, the district court granted 

Adobe’s motion and excluded all evidence of induced infringement after March 3, 2011. J.A. 26–29. The court 

based its decision on what Adobe treats as two independent 

grounds. First, the court held that, after the favorable 

2011 claim construction, which was reasonable even 

though it was later reversed, it was impossible as a matter 

of law for Adobe to have had the requisite intent to induce 

third-party infringement. J.A. 27. Second, the court stated 

that, while allowing TecSec to argue inducement of infringement without permitting Adobe to introduce the 

three documents at issue would highly prejudice Adobe, admitting that evidence would be prejudicial to TecSec and 

confuse the jury. J.A. 28–29. The court therefore barred

the presentation of all inducement evidence concerning the 

period after March 3, 2011. Id. 

The case proceeded to a jury trial, which began on December 10, 2018.1 On December 12, 2018, TecSec stipulated that, because it had failed to mark its product in 

accordance with 35 U.S.C. § 287, it would not seek damages 

for any infringement that took place before the filing of its 

complaint. J.A. 11998. Accordingly, the trial was limited 

1 By December 9, 2018, the only patent claims at issue were the ’702 patent’s claims 1 and 8; the ’755 patent’s 

claim 1; the ’781 patent’s claims 1 and 14; and the ’452 patent’s claim 1. J.A. 11994. Several additional claims had 

been at issue at the time of the § 101 ruling. J.A. 1845.

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8 TECSEC, INC. v. ADOBE INC.

to TecSec’s ownership of the patents; direct infringement 

by Adobe from February 2010 to October 2013; induced infringement by Adobe from February 2010 to March 3, 2011;

Adobe’s anticipation and obviousness challenges; and damages. See J.A. 38–44.

At trial, TecSec offered the deposition testimony of 

George Johnson, an independent technology consultant, as 

evidence of direct infringement by third parties allegedly 

induced by Adobe. Mr. Johnson had stated that, in April 

2011, he provided Acrobat users with guidance on how to 

use certain features. The court excluded certain parts of 

Mr. Johnson’s testimony, stating that the period for inducement ended on March 3, 2011, and that TecSec could not

submit evidence of later conduct. J.A. 12429–30.

At the conclusion of trial, the court gave the jury two

instructions relevant to this appeal. Jury Instruction No. 

25 highlighted Adobe’s stipulation that the 2009 employee 

blog post constituted direct infringement, and it noted that 

this act had occurred before TecSec filed its complaint in 

2010. J.A. 12076; see J.A. 10307–08. Jury Instruction No. 

28 stated that “mere inaction, or a failure to stop or prevent 

infringement, does not constitute inducement.” J.A. 12079. 

On December 19, 2018, the jury, besides confirming 

TecSec’s ownership of the patents, J.A. 39, found that 

Adobe had directly infringed all asserted claims, but that 

Adobe had not committed inducement of infringement, J.A. 

40–41. The jury also found that Adobe had failed to establish that the asserted claims were invalid under the prior 

art. J.A. 42–43. The jury awarded TecSec $1.75 million in 

damages. J.A. 44.

The district court then ruled on Adobe’s post-trial motion. It declined to disturb the verdicts on direct infringement and invalidity, J.A. 53–55, but it vacated the jury’s 

damages award and set damages to zero, J.A. 55–60. The 

court explained that TecSec’s only evidence of damages related to sales of Acrobat software to customers and that 

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such evidence could support damages only for inducing infringement—which the jury found had not occurred. Id. 

The district court thereafter entered a final judgment 

as to Adobe under Fed. R. Civ. P. 54(b). J.A. 2. TecSec 

timely appealed, and Adobe timely cross-appealed. We 

have jurisdiction under 28 U.S.C. § 1295(a)(1).

II

In general, we apply regional-circuit law to evidentiary 

determinations and jury instructions. Barry v. Medtronic, 

Inc., 914 F.3d 1310, 1320 (Fed. Cir. 2019). The Fourth Circuit reviews both types of rulings for an abuse of discretion. 

See Campbell v. Boston Sci. Corp., 882 F.3d 70, 77 (4th Cir. 

2018) (evidentiary determinations); Chaudhry v. Gallerizzo, 174 F.3d 394, 408 (4th Cir. 1999) (jury instructions). 

But “where a district court rules, as a matter of patent law, 

that a party is precluded from introducing evidence, we apply Federal Circuit law and review the district court’s ruling de novo.” Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 

1356, 1363 (Fed. Cir. 2004). We review de novo a jury instruction that concerns patent law. Bettcher Indus., Inc. v. 

Bunzl USA, Inc., 661 F.3d 629, 638 (Fed. Cir. 2011). We 

review a judgment as a matter of law de novo. Barry, 914 

F.3d at 1320; Huskey v. Ethicon, Inc., 848 F.3d 151, 156 

(4th Cir. 2017). Whether a patent claim is eligible for patenting under 35 U.S.C. § 101 is a question of law, to which 

underlying facts may be relevant. Berkheimer v. HP Inc., 

881 F.3d 1360, 1365 (Fed. Cir. 2018).

A

We begin with TecSec’s appeals of the district court’s 

motion-in-limine ruling and the court’s related exclusion of 

Mr. Johnson’s deposition testimony. We reverse the district court’s decision to exclude evidence of inducement of

infringement after March 3, 2011, and the related exclusion of Mr. Johnson’s testimony. We remand for further 

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10 TECSEC, INC. v. ADOBE INC.

proceedings on TecSec’s inducement claim as to the period 

after March 3, 2011. 

The district court set forth two reasons for ruling that 

there could be no proof of post-March 3, 2011 inducement 

of infringement. First, the district court explained that the 

March 3, 2011 claim construction and stipulation of noninfringement made it legally impossible for Adobe to have 

had, after that date, the knowledge—of the infringing character of the allegedly induced customer actions—required 

for inducement. J.A. 27–28. Because such knowledge was 

legally precluded, the district court reasoned, Adobe could 

not be liable for induced infringement. Id. Second, the district court stated that allowing either party to present evidence would substantially prejudice the other party and 

would confuse the jury. J.A. 28–29. We reject both rationales for the motion-in-limine ruling.

1

A defendant is liable for “induced infringement under 

§ 271(b)” if the defendant took certain affirmative acts to 

bring about the commission by others of acts of infringement and had “knowledge that the induced acts constitute 

patent infringement.” Global-Tech Appliances, Inc. v. SEB 

S.A., 563 U.S. 754, 765–66 (2011); see Commil USA, LLC 

v. Cisco Systems, Inc., 135 S. Ct. 1920, 1928 (2015); Power 

Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 

F.3d 1315, 1331 (Fed. Cir. 2016). The intent element requires “knowledge that the induced acts constitute patent 

infringement,” which can be established by a proper finding of “willful blindness.” Global-Tech, 563 U.S. at 766–71; 

see Commil, 135 S. Ct. at 1926–28 (reiterating requirement 

of knowledge of infringing character of induced conduct, 

not just knowledge of patent). This intent element was the 

basis for the district court’s primary rationale for its motion-in-limine ruling, a ruling that assumed that the induced conduct was in fact infringing. 

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TECSEC, INC. v. ADOBE INC. 11

The intent standard focuses on, and can be met by proof 

of, the defendant’s subjective state of mind, whether actual 

knowledge or the subjective beliefs (coupled with action to 

avoid learning more) that characterizes willful blindness. 

Global-Tech, 563 U.S. at 769. As a logical matter, a defendant may have the liability-supporting subjective state of 

mind even if a person could believe, with objective reasonableness (though wrongly), that the induced conduct was 

not infringing. To make the point in terms of this case,

Adobe may have had the requisite knowledge of infringement if it believed (as we ultimately held in 2013) that the 

March 3, 2011 claim construction was incorrect, even if 

that construction was objectively reasonable.

We have so ruled as to willfulness—an issue that 

Adobe, in its motion, and the district court, in its ruling, 

treated together with inducement. Specifically, we have 

held that, under Halo Electronics, Inc. v. Pulse Electronics, 

Inc., 136 S. Ct. 1923, 1933 (2016), a finding of willfulness 

may rest on the subjective bad faith of the infringer even if 

it would be objectively reasonable to view the conduct at 

issue as non-infringing. WesternGeco LLC v. ION Geophysical Corp., 837 F.3d 1358, 1362 (Fed. Cir. 2016), reinstated

913 F.3d 1067, 1075 (Fed. Cir. 2019). That logic applies 

equally to the intent element of inducement, as we concluded in our non-precedential decision in Smith & Nephew 

Inc. v. Arthrex, Inc., 603 F. App’x 981 (Fed Cir. 2015), 

where we explained that a district court’s prior judgment 

of noninfringement, and statement to the parties that the 

plaintiff’s inducement claim was objectively weak, did not

prevent the plaintiff, as a matter of law, from proving the 

subjective intent element of induced infringement, which 

is a fact issue. Id. at 989–90; see also Sanofi v. Watson 

Labs. Inc., 875 F.3d 636, 645 (Fed. Cir. 2017) (factual issue); AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1056, 

1059–60 (Fed. Cir. 2010) (same).

The Supreme Court’s conclusion about subjective beliefs and legal reasonableness in another context supports

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12 TECSEC, INC. v. ADOBE INC.

this conclusion. In Cheek v. United States, 498 U.S. 192 

(1991), the Court reviewed the conviction of a taxpayer 

charged with willful failure to pay taxes, which requires 

“knowing” that the law required the payment not made. Id.

at 194 n.2, 199–201. The Court held that, even though it 

would be not just incorrect but unreasonable as a matter of 

law for the taxpayer to believe that the statute did not require payment, the jury had to be permitted to decide

whether the taxpayer in good faith believed the incorrect, 

legally unreasonable view that no tax was due. Id. at 202–

04. Thus, the legally material question of what the defendant subjectively believed was not answered as a matter of 

law even by the objective unreasonableness of that belief. 

Likewise, the question whether the defendant subjectively 

had what turned out to be the correct belief (here, that 

Adobe believed that the claims meant what we eventually 

held in 2013) is not answered as a matter of law by the objective reasonableness of a contrary belief.

The district court in this case erred when it concluded 

as a matter of law that, after the district court’s (later reversed) claim construction on March 3, 2011, Adobe “lacked 

the requisite intent to induce infringement.” J.A. 27. The 

court explained that it had “reasonably, though erroneously, ruled in Adobe’s favor on infringement,” and, accordingly, Adobe was entitled to rely on that ruling as proof

that the relevant induced acts were non-infringing. Id.

That reasoning makes dispositive what Adobe, with objective reasonableness, could have believed. The Global-Tech 

inducement standard, however, can be met by proof of what 

Adobe in fact subjectively believed. For example, Adobe 

might have believed that the March 2011 claim-construction ruling was erroneous (though reasonable) and would 

likely be reversed (as it was in 2013). Thus, the district 

court’s March 2011 ruling “could, at most, create a factual 

question, not an entitlement to a no-knowledge finding as 

a matter of law.” Smith & Nephew, 603 F. App’x at 989–

90.

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For those reasons, we conclude that the district court

legally erred in its primary rationale for ruling out inducement after March 3, 2011, namely, that the claim-construction ruling of that date furnished an objectively reasonable 

basis for a belief that use of the accused products did not 

infringe, even if Adobe did not have such a belief. 

2

The district court’s second ground for its motion-inlimine ruling was that “allowing TecSec to argue [postMarch 3, 2011] induced or willful infringement . . . would 

taint the trial and any verdict with undue prejudice and 

juror confusion.” J.A. 28. Whether we review that ruling 

de novo or for an abuse of discretion, we conclude that the 

district court erred in relying on this rationale to preclude 

TecSec from proving inducement after March 3, 2011.

In defending the district court’s rationale, Adobe invokes Rule 403 of the Federal Rules of Evidence, which provides that a court “may exclude relevant evidence if its 

probative value is substantially outweighed by a danger 

of,” among other factors, “unfair prejudice” or “confusing 

the issues.” But the district court in this case went beyond 

excluding a single piece, or even a fixed set, of evidence and 

leaving TecSec to present such other relevant, admissible 

evidence as it may have on inducement in the period at issue. Instead, the court foreclosed the introduction of any

evidence on the issue of post-March 3, 2011 inducement of

infringement. This is materially different from any application of Rule 403 Adobe has identified. Cf. General Dynamics Corp. v. United States, 563 U.S. 478, 484–85 (2011) 

(distinguishing case involving “purely evidentiary dispute” 

over state-secret privilege, where “the privileged information is excluded and the trial goes on without it,” from 

case involving foreclosure of a claim).

The district court reasoned that if TecSec was allowed

to argue inducement of infringement after that date, Adobe 

would be prejudiced were it not allowed to introduce the 

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14 TECSEC, INC. v. ADOBE INC.

March 3, 2011 claim construction and the stipulation by 

TecSec that, under that construction, Adobe’s customers 

did not directly infringe. J.A. 28. The court then concluded

that “it would also be substantially and unduly prejudicial 

and confusing for the jury to see a prior ruling in this case 

and TecSec’s stipulation that Adobe’s products did not infringe.” J.A. 28–29. On that basis, the district court precluded TecSec from offering any proof of post-March 3, 

2011 inducement. 

Adobe has not cited any authority that supports such 

foreclosure of liability for a given period in the circumstances present here. Any conclusion that post-March 3, 

2011 inducement could not be fairly tried would have required consideration of what other admissible evidence 

TecSec had that was relevant to the intent element of inducement, as well as of the possible measures for effectively but fairly reducing jury confusion. But the district 

court did not undertake, and because of the limited scope 

of Adobe’s motion in limine was in no position to undertake, 

that required consideration. 

Adobe’s motion, besides what it suggested on the legalimpossibility point, was limited to arguing for Adobe’s ability to introduce the claim-construction ruling and TecSec’s 

stipulation. It did not call for TecSec to identify all evidence of intent—as a motion for summary judgment would 

have done—so that the district court could determine if 

there was a triable issue of post-March 3, 2011 inducement 

of infringement. See J.A. 10429. TecSec therefore properly

limited its response to arguing against the admission of the 

construction and stipulation. See J.A. 10849. On the motion as framed, the district court lacked the basis to consider the totality of TecSec’s post-March 3, 2011 

inducement evidence to determine whether that issue 

could fairly be tried. And the court did not consider the 

totality of such evidence. Nor, in taking the extraordinary 

action of foreclosing liability for a substantial period, did 

the district court set forth an analysis of potential means, 

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such as cautionary jury instructions, that could reduce jury 

confusion and allow a fair trial considering the totality of 

relevant evidence. 

Adobe cites several cases to support the proposition 

that “there are circumstances where, for willfulness or inequitable conduct, there can be no intent as a matter of 

law.” Appellant’s Br. at 28. None of those cases support 

the ruling in this case. The cited cases all involved ordinary motions for summary judgment that, with proper procedural protections, duly enabled the court to consider all 

evidence relevant to the particular liability issue. See Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1190–94 (Fed. 

Cir. 2006) (finding lack of intent for inequitable conduct after consideration of evidence on summary judgment); Intercontinental Great Brands LLC v. Kellogg N. America 

Co., 869 F.3d 1336, 1352 (Fed. Cir. 2017) (same). By contrast, Adobe’s motion in limine did not call for, or provide a

basis for, consideration of all relevant material evidence. 

Without such consideration, the district court could not 

properly resolve the issue as a matter of law.2 

As Adobe acknowledges in this court, see Cross-Appellant’s Principal and Response Br. at 15, 20, when the district court stated that it would be “substantially and 

unduly prejudicial and confusing for the jury to see” the 

claim-construction ruling and TecSec’s stipulation, J.A. 

28–29, the court was determining that the evidence Adobe 

was entitled to introduce would be “unduly prejudicial” to 

TecSec. But TecSec never stated that, if that evidence had 

to be admitted at Adobe’s behest, TecSec would drop its inducement claim for the post-March 3, 2011 period. To the 

2 Adobe has not argued in its briefing in this court 

that any error in the motion-in-limine ruling was harmless 

because TecSec lacked sufficient evidence of intent to create a triable issue. See Cross-Appellant’s Principal and Response Br. at 19–34.

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16 TECSEC, INC. v. ADOBE INC.

contrary, after the district court opined at the oral argument that admitting that evidence would be “far too prejudicial,” ECF 1294 at 36, TecSec reiterated its intent to 

present the inducement case even if that evidence were admitted. TecSec’s Supp. MIL Br. (ECF 1283-1) at 7. The

court furnished no justification for making that determination itself instead of leaving to TecSec the determination 

that the prejudice to TecSec was too severe for the issue to 

be tried at all.

Accordingly, we reverse the district court’s decision to 

preclude TecSec from introducing evidence of post-March 

3, 2011 inducement of infringement.

3

TecSec’s appeal of the exclusion of certain aspects of 

Mr. Johnson’s deposition testimony is closely tied to the 

motion-in-limine ruling. In the testimony at issue, Mr. 

Johnson stated that, in April 2011, he had posted responses 

on an Adobe forum explaining how to use Acrobat products 

in ways that TecSec alleged were infringing. At trial, 

Adobe objected to the introduction of that testimony, arguing that the testimony “runs afoul of the Court’s [motionin-limine] ruling on eliciting alleged infringement [postMarch 3, 2011].” J.A. 12427. The district court agreed with 

Adobe, excluding the testimony because “it’s outside of the 

timeframe and it is clearly inducement evidence.” J.A. 

12429–30. Because we conclude that the district court

erred in its motion-in-limine ruling that was the basis for 

the exclusion of the Johnson testimony at issue, we reverse 

that evidentiary exclusion as well.

B

TecSec challenges Jury Instruction Nos. 25 and 28. We 

find no reversible error in either instruction, asking 

whether TecSec has “establish[ed] that the instructions 

were legally erroneous and that the errors had a prejudicial 

effect.” Bettcher, 661 F.3d at 638. 

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TECSEC, INC. v. ADOBE INC. 17

1

In Jury Instruction No. 25, the district court told the 

jury that Adobe had admitted that a certain sequence of 

steps (“create” a file, “attach” it to a second file, “encrypt” 

the second file, “decrypt” the first file) constituted direct infringement, that Adobe had admitted that “this occurred on 

at least one occasion, by Adobe itself,” and that the “parties 

agree that the one time for which Adobe has admitted infringement—that is Adobe’s use in connection with creating a February 2009 blog post—occurred before TecSec 

filed its lawsuit in February 2010.” J.A. 12076 (emphases 

added). That instruction mirrors Adobe’s pre-trial stipulation, differing only in its specific reference to the February 

2009 blog post. See J.A. 10307. 

TecSec challenges the district court’s inclusion of the 

reference to the February 2009 blog post, stating that 

“TecSec never agreed that Adobe only admitted to a single 

act of infringement” and that the “instruction is misleading 

because it implies that, in the context of the district court’s 

narrow damages window, Adobe’s 2009 blog is irrelevant.” 

Appellant’s Br. at 43–44. We reject the challenge.

TecSec relies on a single piece of evidence as showing a 

broader Adobe admission, namely, Adobe’s stipulation that 

it had “installed for its own internal use at least one copy 

of each version of the accused products on a computer having system memory.” J.A. 11994 (emphasis added). But 

Jury Instruction No. 25 is best understood to tie “the one 

time” language, to which TecSec objects, to what the immediately preceding two sentences discuss, which is on its face 

performance of a method. Installation, by contrast, could 

constitute infringement only of the system claims. See J.A. 

12769 (Trial Tr. at 534:4–5). The installation action thus 

is simply outside the scope of, and does not contradict, Jury 

Instruction No. 25—which left TecSec free to argue that 

there were instances of Adobe-admitted infringement of 

the system claims. Moreover, the reference to the timing 

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18 TECSEC, INC. v. ADOBE INC.

of the blog post is accurate and does not itself imply anything about the legal relevance of the timing. We therefore 

find no reversible error in Jury Instruction No. 25, without 

foreclosing the district court, in any new trial on inducement after March 3, 2011, from considering whether the 

instruction should be modified. 

2

In Jury Instruction No. 28, the district court told the 

jury that inducement of infringement requires “an affirmative act to encourage infringement” and that “[e]vidence 

of mere inaction, or a failure to stop or prevent infringement, does not constitute inducement.” J.A. 12079. That 

language mirrors our statement in Tegal Corp. v. Tokyo 

Electron Co. that “[a]ctively inducing . . . requires an affirmative act of some kind.” 248 F.3d 1376, 1378 (Fed. Cir. 

2001) (internal quotation marks omitted).

TecSec challenges the instruction on the ground that it 

opened the door for Adobe to imply that TecSec had accused 

Adobe of inaction only. Specifically, TecSec argues, Adobe 

“exploited the improper instruction during closing” arguments when Adobe characterized its failure to remove the

2009 blog post as mere inaction. Appellant’s Br. at 45; see

J.A. 13544. We reject this challenge.

TecSec does not contest the accuracy of Jury Instruction No. 28 as a statement of the law, and it has not shown 

that instruction was misleading. TecSec believes that 

Adobe’s conduct to have been more than mere inaction, but 

the instruction left TecSec free to so argue. As for Adobe’s 

closing argument, TecSec forfeited a challenge to the argument by failing to object contemporaneously. See United 

States v. Cone, 714 F.3d 197, 217 (4th Cir. 2013).

C

TecSec challenges the district court’s reduction of the 

jury’s damages award to zero. We reject this challenge.

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TecSec argues that because the jury found direct infringement of each asserted claim, 35 U.S.C. § 284 entitles 

TecSec to a non-zero reasonable royalty. Specifically, 

TecSec highlights § 284’s statements that “[u]pon finding 

for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in 

no event less than a reasonable royalty” and that “[w]hen 

the damages are not found by a jury, the court shall assess 

them.” 35 U.S.C. § 284. Taken together, TecSec contends, 

those statements require an award of damages greater 

than zero in all cases where the jury finds infringement. 

The statute does not require an award of damages if 

none are proven that adequately tie a dollar amount to the 

infringing acts. We have explained that “a patent owner 

may waive its right to a damages award when it deliberately abandons valid theories of recovery in a singular pursuit of an ultimately invalid damages theory.” Promega 

Corp. v. Life Techs. Corp., 875 F.3d 651, 666 (Fed. Cir. 

2017). More generally, we have observed that there can be 

an award of no damages where “none were proven.” Gustafson, Inc. v. Intersystems Indus. Prods., Inc., 897 F.2d 

508, 509–10 (Fed. Cir. 1990); cf. Gadsden Indus. Park, LLC 

v. United States, 956 F.3d 1362, 1372 (Fed. Cir. 2020) (Takings Clause does not require an award of compensation 

without adequate proof). Although we have not upheld a 

zero royalty rate in a case with an affirmative infringement 

finding—and have stated that it is “unlikely” that a hypothetical negotiation would result in a zero royalty rate—we 

have previously stated that “in a case completely lacking 

any evidence on which to base a damages award, the record 

may well support a zero royalty award.” Apple, Inc v. 

Motorola, Inc., 757 F.3d 1286, 1328 n.7 (Fed. Cir. 2014). 

In this case, TecSec presented no evidence of damages 

caused by Adobe’s direct infringement, which was the only 

form of infringement that the jury found Adobe to have 

committed. J.A. 58. TecSec did not, for example, provide

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20 TECSEC, INC. v. ADOBE INC.

any evidence regarding the number of Adobe employees in 

the United States or the number of times that Adobe employees installed Acrobat. Id. TecSec’s only damages evidence relied on “sales of accused products.” E.g., J.A. 

12840, 12842–44, 12854–56, 12866; see also J.A. 13499–

500 (TecSec’s closing argument, stating, “all that TecSec is 

asking for here, a reasonable royalty based on [Adobe’s]

sales of Acrobat products”). But the district court found, 

and TecSec does not dispute, that direct infringement occurs only after Acrobat is installed. J.A. 57. Sales of Acrobat, therefore, cannot be a measure of damages for direct 

infringement by Adobe—sales could serve here as a measure of damages only for TecSec’s indirect infringement theory, which relies on infringement by Adobe customers. But 

the jury found no indirect infringement.

On appeal, TecSec tries to rationalize the jury’s award 

by theorizing ways the jury could have used sales data to 

derive a value for Adobe’s conduct. For instance, TecSec 

argues that the jury could have decided that sales were a 

good proxy for the value of TecSec’s patented invention to 

Adobe’s development of Acrobat. Appellant’s Opening Br. 

at 59–60. But this theory, like the others that TecSec offers, is ultimately speculative and insufficiently grounded 

in evidence. The district court therefore committed no error in concluding that the jury’s damages award was not 

supported by the evidence. J.A. 57–58. 

III

The district court denied Adobe’s motion for summary 

judgment that the asserted claims are ineligible under 35 

U.S.C. § 101, and in its opinion, the court stated that its 

conclusion required judgment for TecSec rejecting the eligibility challenge. Adobe now cross-appeals that ruling. It 

does not object to the district court’s turning the denial of 

summary judgment for Adobe into summary judgment for 

TecSec. Adobe thus accepts that the dispositive ruling 

against its eligibility challenge should be judged on the 

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record made on its motion for summary judgment. We affirm the district court’s § 101 ruling.

A

Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or 

composition of matter, or any new and useful improvement 

thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. But 

this provision “contains an important implicit exception: 

Laws of nature, natural phenomena, and abstract ideas are 

not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 

573 U.S. 208, 216 (2014). In Alice, the Supreme Court explained that a “claim falls outside § 101 where (1) it is ‘directed to’ a patent-ineligible concept, i.e., a law of nature, 

natural phenomenon, or abstract idea, and (2), if so, the 

particular elements of the claim, considered ‘both individually and “as an ordered combination,”’ do not add enough 

to ‘“transform the nature of the claim” into a patent-eligible 

application.’” SAP America, Inc. v. InvestPic, LLC, 898 

F.3d 1161, 1166–67 (Fed. Cir. 2018) (citing Alice, 573 U.S. 

at 217). 

We have approached the Step 1 “directed to” inquiry by 

asking “what the patent asserts to be the ‘focus of the 

claimed advance over the prior art.’” Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019) (quoting Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 

1253, 1257 (Fed. Cir. 2016)); see Trading Techs. Int’l Inc. v. 

IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). In conducting that inquiry, we “must focus on the language of the Asserted Claims themselves,” Synopsis, Inc. v. Mentor 

Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016), “considered in light of the specification,” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). See also 

Chamberlain Group, Inc. v. Techtronic Indus. Co., 935 F.3d 

1341, 1346 (Fed. Cir. 2019); ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019); In re TLI 

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22 TECSEC, INC. v. ADOBE INC.

Communications LLC Patent Litigation, 823 F.3d 607, 

611–12 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015). And 

we have reiterated the Supreme Court’s caution against 

“overgeneralizing claims” in the § 101 analysis, explaining 

that characterizing the claims at “a high level of abstraction” that is “untethered from the language of the claims 

all but ensures that the exceptions to § 101 swallow the 

rule.” Enfish, 822 F.3d at 1337; see Solutran, 931 F.3d at 

1167–68; McRO, Inc. v. Bandai Namco Games America, 

Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (explaining that 

courts “‘must be careful to avoid oversimplifying the claims’ 

by looking at them generally and failing to account for the 

specific requirements of the claims”).

“In cases involving software innovations, this inquiry 

often turns on whether the claims focus on specific asserted 

improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which 

computers are invoked merely as a tool.” Uniloc USA, Inc. 

v. LG Electronics USA, Inc., 957 F.3d 1303, 1306–07 (Fed. 

Cir. 2020) (citing Customedia Techs., LLC v. Dish Network 

Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020), and Finjan, 

Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303 (Fed. 

Cir. 2018)); see also BSG Tech LLC v. Buyseasons, Inc., 899 

F.3d 1281, 1285–86 (Fed. Cir. 2018); Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1361–

62 (Fed. Cir. 2018). “[S]oftware can make patent-eligible 

improvements to computer technology, and related claims 

are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network 

platform itself.” Uniloc, 957 F.3d at 1309; see Customedia 

Techs., 951 F.3d at 1364 (collecting cases); Enfish, 822 F.3d 

at 1335. We have found claims directed to such eligible 

matter in a number of cases where we have made two inquiries of significance here: whether the focus of the 

claimed advance is on a solution to “a problem specifically 

arising in the realm of computer networks” or computers, 

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DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 

1257–58 (Fed. Cir. 2014); and whether the claim is properly 

characterized as identifying a “specific” improvement in 

computer capabilities or network functionality, rather than 

only claiming a desirable result or function, Uniloc, 957 

F.3d at 1306, 1308–09; see Enfish, 822 F.3d at 1135–36; see 

also, e.g., Packet Intelligence LLC v. NetScout Systems, 

Inc., 965 F.3d 1299, 1309–10 (Fed. Cir. 2020); Ericsson Inc. 

v. TCL Communication Tech. Holdings Ltd., 955 F.3d 

1317, 1328 (Fed. Cir. 2020); Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019); 

SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303–

04 (Fed. Cir. 2019); Ancora Techs., Inc. v. HTC America, 

Inc., 908 F.3d 1343, 1347–49 (Fed. Cir. 2018); Visual 

Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258–59 

(Fed. Cir. 2017); Intellectual Ventures I, LLC v. Capital One 

Financial Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017);

McRO, 837 F.3d at 1313–16.

For example, in SRI, we found to be eligible claims directed to “a specific technique—using a plurality of network monitors that each analyze specific types of data on 

the network and integrating reports from the monitors—to 

solve a technological problem arising in computer networks: identifying hackers or potential intruders into the 

network.” 930 F.3d at 1303. The claims focused on a solution to a computer-specific problem—uniquely difficult-totrack, large-scale attacks caused by the decentralized nature of computer networks—and a concrete improvement 

to network functionality—the deployment of specific monitors to collect specific types of data. Id. In Ancora, we upheld claims requiring use of a modifiable portion of 

particular computer capacity to prevent running software 

on an unauthorized computer. 908 F.3d at 1345. We noted 

that “[i]mproving security . . . can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a 

specific computer problem”—there, the particular difficulty 

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24 TECSEC, INC. v. ADOBE INC.

of controlling unauthorized use of software. Id. at 1348. In 

Data Engine Technologies LLC v. Google LLC, we held that 

claims reciting “a specific method for navigating through 

three-dimensional electronic spreadsheets” were patent eligible because the claimed advance “improv[ed] computers’ 

functionality as a tool able to instantly access all parts of 

complex three-dimensional electronic spreadsheets”—a 

form of information-organization unique to computers. 906 

F.3d 999, 1007–08 (Fed. Cir. 2018). And in Finjan, we held 

to be eligible claims directed to a specific “behavior-based 

virus scan” that provided a “flexible and nuanced virus filtering” to help solve the problem of security on networked 

computers. 879 F.3d at 1304–05. 

Other illustrative cases lie on the ineligibility side of 

the line. In Ericsson, we held to be ineligible claims describing “a system and method for controlling access to a 

platform for a mobile terminal for a wireless telecommunications system.” 955 F.3d at 1325–26. The claims, we explained, “merely make generic functional recitations that 

requests are made and then granted.” Id. at 1328. In Intellectual Ventures I LLC v. Symantec Corp., we held ineligible claims directed to using computers to screen 

telephone calls for viruses. 838 F.3d 1307, 1319 (Fed. Cir. 

2016). The claims did not “claim a new method of virus 

screening or improvements thereto” and merely claimed 

use of conventional virus-screening software to carry out 

the abstract virus-screening idea. Id. And in RecogniCorp, 

LLC v. Nintendo Co., we held that claims to encoding and 

decoding image data were ineligible. 855 F.3d 1322, 1326 

(Fed. Cir. 2017). The claims did nothing more than use 

computers to perform standard encoding and decoding 

practices. Id. at 1326–27.

The Step 1 “directed to” analysis called for by our cases 

depends on an accurate characterization of what the claims 

require and of what the patent asserts to be the claimed 

advance. The accuracy of those characterizations is crucial 

to the sound conduct of the inquiries into the problem being 

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addressed and whether the line of specificity of solution has 

been crossed.

B

Adobe argued to the district court that “the claims are 

directed to the impermissibly abstract idea of managing access to objects using multiple levels of encryption.” J.A. 

1845; see J.A. 1857 (heading: “The Asserted Claims of the 

DCOM Patents Are Directed to the Impermissibly Abstract 

Idea of Managing Access to Objects Using Multiple Levels 

of Encryption”); id. (“The asserted claims of the DCOM patents are directed to the abstract idea of managing access 

to objects using multiple levels of encryption, and fail to 

provide any specific solution for accomplishing that 

claimed result.”). But that characterization of the two representative claims is materially inaccurate. To arrive at it, 

Adobe had to disregard elements of the claims at issue that 

the specification makes clear are important parts of the 

claimed advance in the combination of elements.

It suffices to discuss claim 1.3 Adobe’s characterization 

of what claim 1 as a whole is directed to does not go beyond 

what is required simply by the claim term “multi-level . . . 

security,” which means “‘security achieved when encrypted 

objects are nested within other objects which are also encrypted, possibly within other objects, resulting in multiple 

layers of encryption.’” J.A. 1853 (Adobe’s motion quoting 

construction) (citing TecSec I, 731 F.3d at 1345). But claim 

3 Adobe has stated that system claim 8, the other 

representative claim, merely claims a system for performing the functions recited in method claim 1 and is not relevantly different from claim 1 in substance for § 101 

purposes. Principal and Response Br. of Cross-Appellant 

at 62, 65. Adobe has not argued, even as a fallback position, that the two claims could call for different § 101 results.

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1 requires more. It goes beyond managing access to objects 

using multiple levels of encryption, as required by “multilevel . . . security.” Notably, it expressly requires, as well, 

accessing an “object-oriented key manager” and specified 

uses of a “label” as well as encryption for the access management. ’702 patent, col. 12, lines 4–16. To disregard 

those express claim elements is to proceed at “a high level 

of abstraction” that is “untethered from the claim language” and that “overgeneraliz[es] the claim.” Enfish, 822 

F.3d at 1337; see id. at 1338. 

As to the key-manager requirement, we explained in

TecSec II that the requirement was important during prosecution. Specifically, rather than deleting the claim limitation after an indefiniteness rejection, TecSec amended 

the specification to provide the required clarity by adding 

what now appears at ’702 patent, col. 1, line 61, to col. 2, 

line 4, which provided the definition that this court eventually relied on in construing “object-oriented key manager.” TecSec II, 658 F. App’x at 582 (construing the term 

as “a software component that manages the encryption of 

an object by performing one or more of the functions of generating, distributing, changing, replacing, storing, checking on, and destroying cryptographic keys”). As to the 

combination of labeling with the required encryption, the 

specification makes clear that this is part of the focus of the 

claimed advance. The specification expressly identifies a 

deficiency of using only multilevel security through encryption requiring keys at more than one level: that approach, 

the specification says, “is quite unwieldy, inflexible, and 

difficult to manage by a security officer or key administrator.” ’702 patent, col. 2, lines 25–29. The specification then 

explains that it proposes a solution in which “[a] secure 

method of labelling files or messages that are sent from a 

sending user to a receiving user over a network” is used “in 

addition to cryptographic protection.” Id., col. 2, lines 30–

33 (emphasis added). Adobe has not shown how it could 

properly disregard these claim requirements in 

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determining “what the patent asserts to be the focus of the 

claimed advance over the prior art.” Solutran, 931 F.3d at 

1167–68 (internal quotation marks omitted). The focus of 

the claimed advance cannot ignore all but the multilevel 

encryption.

The specification elaborates in a way that simultaneously shows that the claims at issue are directed at solving 

a problem specific to computer data networks. The patent 

focuses on allowing for the simultaneous transmission of 

secure information to a large group of recipients connected 

to a decentralized network—an important feature of data 

networks—but without uniform access to all data by all recipients. See ’702 patent at col. 11, lines 40–48. The proposed improvement involves, among other things, labeling 

together with encryption. “Using a secure labelling regimen, a network manager or user can be assured that only 

those messages meant for a certain person, group of persons, and/or location(s) are in fact received, decrypted, and 

read by the intended receiver.” Id., col. 2, lines 39–43. 

“[M]any people within a company may have the key necessary to read a data file” that is encrypted and sent to many 

terminals, but the sender may not want all such people to 

read the file. Id., col. 2, lines 45–51. “By employing a secure labelling technique in addition to encryption, the 

sender can be assured that people having the correct key to 

decrypt the message but working at different terminals 

will not receive or be allowed to access the communication.” 

Id., col. 2, lines 51–55 (emphasis added).

In light of what the claim language and specification 

establish, we conclude that the claims are directed to improving a basic function of a computer data-distribution 

network, namely, network security. See SRI, 930 F.3d at 

1703; Ancora, 908 F.3d at 1348–49. The patent makes 

clear that the focus of the claimed advance is on improving 

such a data network used for broadcasting a file to a large 

audience, with the improvement assertedly being an efficient way for the sender to permit different parts of the 

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audience to see different parts of the file. ’702 patent, col. 

2, lines 44–57. While non-computer settings may have security issues addressed by multilevel security, it does not 

follow that all patents relating to multilevel security are 

necessarily ineligible for patenting. Here, although the patent involves multilevel security, that does not negate the 

conclusion that the patent is aimed at solving a particular 

problem of multicasting computer networks. 

By way of comparison, in Uniloc, we held the claims at 

issue to be directed to solving a problem of reducing communication time by using otherwise-unused space in a particular protocol-based system, 957 F.3d at 1305, 1307–09, 

even though reducing communication time by using such 

available blank space (or, generally, reducing resource use 

by using otherwise-unused available resources) is a goal in 

many settings. Similarly, in Ancora, we held the claims at 

issue to be directed to solving a problem presented by particularly easy unauthorized use of software by placing the 

software in an especially secure computer location, 908 

F.3d at 1349, even though placing items in especially secure locations to prevent unauthorized access is a goal in 

many settings. The patent claims at issue here are directed 

to improving a data network’s basic functioning by enabling secure and efficient transmission to intended recipients when use is made of the basic multicasting 

functionality of such a data network. As the district court 

said, the claims address the data-network problem presented by “multiple users in multiple locations accessing 

information at different security levels from a central repository.” J.A. 10.

A second inquiry significant in our case law remains—

whether the claims provide a “specific” solution in the way 

our cases discuss. For similar reasons to those mentioned 

above, Adobe has not persuaded us that the claims fail to 

do so, because its arguments ignore what plainly are important aspects of the claims and the focus of the claimed 

advance in the combination. See, e.g., J.A. 1857 (arguing 

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that the “asserted claims of the DCOM patents are directed 

to the abstract idea of managing access to objects using 

multiple levels of encryption, and fail to provide any specific solution for accomplishing that claimed result”).

In these circumstances, we conclude that the district 

court correctly rejected Adobe’s ineligibility challenge as 

Adobe presented it to that court.

C

On appeal, Adobe seeks to modify its definition of what 

the asserted claims are directed to, now contending that 

“[t]he representative claims are directed to the abstract 

idea of managing access to objects using multiple layers of 

encryption and labels.” Cross-Appellant Principal and Response Br. at 61 (emphasis added). This is a new formulation on appeal. Adobe cites J.A. 1853 and 1857 following 

the just-quoted sentence, but neither those pages nor any 

others in Adobe’s summary-judgment motion identify the 

encryption/labeling combination as the abstract idea to 

which the claims are directed. As recited above, Adobe 

omitted labeling—as well as the object-oriented key manager—from its characterization of the purported abstract 

idea in the district court.

For the reasons we have set forth, Adobe’s change in its 

“articulation of the purported abstract idea” is substantively significant. Core Wireless Licensing S.A.R.L. v. LG 

Electronics, Inc., 880 F.3d 1356, 1362 n.3 (Fed. Cir. 2018)

(declining to decide waiver where the appellant’s “articulation of the purported abstract idea was advanced for the 

first time on appeal”). Adobe’s analysis on appeal is still 

deficient. 

When Adobe discusses what is now in its formulation 

of the asserted abstract idea, it does not meaningfully address the combination. Rather, it asserts the “commonplace” character of the individual component techniques 

generally, see Cross-Appellant Principal and Response Br. 

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at 62 (encryption and labeling); id. at 63 (“[t]he only purported contribution is nesting encrypted objects within 

other encrypted objects, thereby providing ‘multi-level’ encryption”), or speaks at an even higher level of generality 

of “encoding, converting, encrypting, and controlling access 

to data,” id. at 66. But that approach is insufficient where,

as is true here for the reasons we have explained, it is the 

combination of techniques that is “what the patent asserts 

to be the focus of the claimed advance over the prior art.” 

Solutran, 931 F.3d at 1168. Moreover, to the extent, if any,

that extrinsic evidence is relevant to the summary-judgment analysis at Step 1, the evidence is one-sided. TecSec 

submitted an expert declaration asserting that the combination of techniques we have discussed was a specific, unconventional improvement in computer network 

functionality. J.A. 1960–72; see also J.A. 13 (denying 

Adobe’s motion to strike portions of TecSec’s declaration). 

Adobe has pointed to no evidence of its own that it submitted in support of its § 101 motion.4

For those reasons, even apart from its departure from 

the theory presented in the district court, the analysis 

Adobe has presented on appeal is insufficient to make the 

showing required for ineligibility.

IV

For the foregoing reasons, the judgment of the district 

court is reversed in part and affirmed in part, and the case 

is remanded for further proceedings on TecSec’s claim of 

inducement of infringement.

4 In this court, Adobe has cited a statement contained in an expert report from its expert, J.A. 7980, but 

TecSec notes, without contradiction from Adobe, that

Adobe did not present the statement in the summary-judgment proceedings regarding § 101 eligibility, see PlaintiffAppellant Corrected Response and Reply Brief at 54 n.16.

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Costs awarded to TecSec.

REVERSED IN PART, AFFIRMED IN PART, AND 

REMANDED

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