2024 Federal Circuit IP Appeals – EcoFactor, Inc. v. Google LLC, 115 F.4th 1380 (Fed. Cir. 2024) (en banc)

The Federal Circuit granted rehearing en banc and directed Google and EcoFactor to address the district court’s application of Federal Rule of Evidence 702 and the principles set forth in Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993). In particular, the parties are to address these issues in the context of the trial court allowing EcoFactor’s damages expert to assign a per-unit royalty rate based on three licenses in the record.

In granting Google’s petition for rehearing en banc, the court also vacated the panel decision in EcoFactor, Inc. v. Google LLC, 104 F.4th 243 (Fed. Cir. 2024), which affirmed, among other things, the district court’s decision to deny Google’s motion for a new trial on damages. The panel decision by Judge Reyna—writing for the majority (joined by Judge Lourie)—held that the trial court did not abuse its discretion in admitting the testimony of EcoFactor’s damages expert. Judge Prost dissented only as to the damages issue.

Before the panel, Google argued that EcoFactor’s damages expert unreliably used a per-unit royalty rate recited in three lump-sum licenses even though statements within the licenses indicated the parties may not have used that particular royalty rate to arrive at the lump sum. Google also argued that EcoFactor failed to apportion for the single asserted patent, given that the three lump-sum agreements licensed EcoFactor’s entire patent portfolio. Put differently, Google challenged the economic comparability of the licenses and EcoFactor’s apportionment methodology. These are the issues expected to be addressed en banc.

The en banc hearing is scheduled for March 13, 2025, at 10 a.m. EST.

This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.