En Banc Activity / Featured / Panel Activity
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Since our last update, in the only pending en banc patent case, which presents a question concerning a district court’s responsibility to scrutinize a patentee’s reliance on supposedly comparable licenses, the opening en banc brief was filed, the Federal Circuit issued an order indicating parts of the opening brief went beyond the scope of en banc rehearing, and five new amicus briefs were filed. Additionally, a new petition was filed raising questions related to reliance on expert testimony in applying the doctrine of equivalents. Finally, the court denied two petitions raising questions regarding the written description requirement, obvious-type double patenting, and attorney fees. Here are the details.

En Banc Cases

There are several updates in EcoFactor, Inc. v. Google LLC, which presents the following question:

  • Did the court err in “failing to rigorously scrutinize a patentee’s reliance on supposedly comparable licenses” resulting in an “artificially inflated damages award that is divorced from market realities and devoid of connection to the patent’s incremental improvement to the art”?

In granting rehearing, the court requested new briefs from the parties related to “the district court’s adherence to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.”

Opening Brief

Since our last update, Google submitted its opening brief. Google argues the damages expert’s calculations failed to comply with Rule of Evidence 702 for two reasons.

First, Google claims, the damages expert’s opinion was not based on a sufficient factual foundation and did not reflect a reliable methodology. Google argues that the expert ignored “operative license provisions that disclaimed the use of any royalty rate” and instead relied on assertions by EcoFactor that lump-sum amounts reflected a royalty rate. Google argues the damages expert’s opinion was based on “nothing more than speculation.”

Second, Google claims, the expert did not reliably apportion the value of the disputed patent. Google argues that, rather than analyzing the value of the disputed patent, the expert applied “vague ‘upward’ and ‘downward’ adjustments . . . that conveniently happened to cancel each other out.” Google argues the expert’s methods were not based on the facts of the case. In the absence of proper testimony, Google argues, the jury was left with no way of assessing the value of the disputed patent.

Order Limiting Briefing

After the opening brief was filed, the Federal Circuit sua sponte ordered EcoFactor not to respond to certain pages in Google’s brief. In this order, the court ruled Google’s argument on certain pages of its brief exceeded the scope of the court’s en banc rehearing. On those pages, Google argued the expert’s proposed royalty rate should have been excluded for not being reliably apportioned.

Amicus Briefs

Since our last update, there are five new amicus briefs in this case. As of this blog post, there are six total amicus briefs. All new amicus briefs support Google.

In its amicus brief, Lawyers for Civil Justice argues the district court and panel “failed to apply Rule 702’s standard: The court must rule on admissibility.” Lawyers for Civil Justice also contend the panel, in deferring to the district court, “ignored the preponderance of the evidence standard” of Rule 702.

Askeladden L.L.C. argues the court failed to follow Rule 702. Askelladen maintains the expert’s methods were “fraught with risk” and “vigilance” is necessary to ensure the royalty rate and its methodology are based on the facts. Askelladen argues the damages must only be apportioned to capture the incremental value of the patented technology. Askeladden claims “[l]oose applications of Rule 702 and Daubert have allowed damages to balloon in ways that are unconnected to the invention, unconnected to the alleged infringement, and unconnected to the marketplace.” Askeladden calls for the system to be “reset.”

The National Retail Federation argues “the district court in this case adopted the approach that the Judicial Conference has condemned” in amending Rule 702. More specifically, NRF claims, the court allowed the admission of expert testimony that relied on purportedly “unverified assertions” about past licensing rates that did not account for non-asserted patents in the portfolio used for comparison.

In their amicus brief, fourteen law professors argue the district court and panel “failed to properly apply [Rule] 702.” The professors claim the expert “skipped the apportionment step entirely” because the expert allegedly used “comparable licenses with apportionment already ‘built-in.'”

Samsung Electronics argues the Federal Circuit “should charge district courts to be more vigilant in ensuring compliance with the law of apportionment.” Samsung Electronics argues excluding unreliable apportionment theories does not encroach on the jury’s factfinding role. Samsung Electronics claims methodologically flawed damages theories return verdicts that are “entirely divorced” from a patent’s actual value.

Order Setting Oral Argument

The Federal Circuit scheduled oral argument for March 13, 2025.

Petitions

New Petition

Since our last update, there is one new petition. In NexStep, Inc. v. Comcast Cable Communications, LLC, NexStep raised the following questions:

  1. “Whether expert testimony is always required to prove infringement under the doctrine of equivalents.”
  2. “Whether proving equivalence requires the same type of testimony in every case, or whether the proof of equivalence should depend on the nature of the technology and the alleged equivalence at issue.”
  3. “Whether the jury is entitled to rely on an expert’s literal infringement testimony in determining equivalence.”

Denials

Since our last update, the Federal Circuit denied two petitions: