by Dennis Crouch
Three new amicus briefs were recently filed supporting EcoFactor in the pending en banc case against Google over patent damages methodology.
The briefs – one from Law Professor Michael Risch along with a group of patent trial attorneys and another from the Alliance of U.S. Startups and Inventors for Jobs (USIJ) argue that Google’s position – further limiting expert damages testimony – threatens to undermine core aspects of patent damages law while potentially violating the Seventh Amendment’s right to a jury trial. The third brief, filed by Professor Gregory Dolin argues that Judge Newman – who the court “temporarily” suspended in 2023 – should be permitted to sit on the en banc panel. (I put “temp” in scare quotes because it appears that this suspension is – in fact – permanent).
Professor Risch’s brief emphasizes the historical context, explaining that juries have long been entrusted with weighing damages evidence in patent cases. The brief traces this history back to early Supreme Court precedent like Suffolk Co. v. Hayden, 70 U.S. 315 (1865), which recognized that damages calculations are “always attended with difficulty and embarrassment” but are properly left to juries weighing “general evidence” about a patent’s nature and value. This historical practice, the brief argues, must inform interpretation of Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579 (1993).
Writing for the Court in Suffolk, Justice Nelson explained that when there is no established patent license fee to serve as a benchmark, courts should allow plaintiffs to present “general evidence” focused on “the utility and advantage of the invention over the old modes or devices that had been used for working out similar results.” The Court found this evidence both “appropriate and pertinent” since it helps the jury understand the actual value provided by the patented technology. In this particular case, which involved cotton cleaning technology, the evidence showed benefits such as more thorough cleaning, better preservation of cotton fibers, reduced dust, and lower maintenance costs. The Court also clarified two key limitations on damages: (1) damages should be calculated only for the period of infringement rather than the full patent term, and (2) payment of damages does not give the infringer an ongoing right to use the technology.
Building on the historical context, Professor Risch’s brief makes a powerful argument about the proper role of Daubert gatekeeping in patent damages cases. The brief emphasizes that courts must carefully separate reliability questions (which are properly decided by judges) from factual disputes about the weight and credibility of evidence (which belong to juries). As the brief explains, the challenged methodology in the EcoFactor case – calculating royalty rates from existing licenses – is a well-established practice widely accepted by licensing professionals and economists. The brief argues that excluding such evidence based on perceived flaws in the expert’s conclusions, rather than their methodology, improperly usurps the jury’s role in evaluating competing factual narratives.
The brief also directly confronts Google’s criticism that EcoFactor’s damages evidence was “self-serving” and therefore unreliable. This argument, according to Professor Risch, fundamentally misunderstands the hypothetical negotiation framework that underlies reasonable royalty analysis. The brief explains that this framework necessarily requires considering what rate both parties would have accepted in a hypothetical negotiation – including the patentee’s contemporaneous understanding of the rates it had received in actual licenses. The brief points out that it would be particularly problematic to exclude such evidence in cases like this one, where confidentiality obligations may have prevented EcoFactor’s CEO from accessing detailed licensee sales data. Creating bright-line rules excluding “self-serving” evidence, the brief warns, would not only conflict with longstanding damages law but also risk violating the Seventh Amendment by converting classic jury questions about witness credibility into legal issues decided by judges.
The Risch brief also challenges Google’s argument that expert testimony was unreliable because it relied on license agreements containing EcoFactor’s stated understanding of per-unit rates. The brief points to multiple pieces of evidence supporting the expert’s methodology, including contemporaneous documentation in the licenses themselves, testimony from EcoFactor’s CEO about how the rates were calculated, and supporting email correspondence. According to the brief, any disagreement about the credibility of this evidence should be resolved by the jury rather than excluded through Daubert gatekeeping.
The USIJ brief argues this case extends far beyond a narrow evidentiary dispute, representing part of a broader pattern they term “predatory infringement” and “efficient infringement.” To illustrate this practice, they quote a former Apple executive who candidly described such infringement as essentially a “fiduciary responsibility” for cash-rich firms that can afford to litigate without end. According to USIJ, this strategy deliberately exploits resource disparities to prevent small companies from becoming competitors before they can mount serious competitive challenges.
The brief traces how this dynamic intensified after the Supreme Court’s 2006 eBay decision effectively eliminated injunctive relief for most patent holders. Citing Chief Justice Roberts’ concurring opinion, USIJ explains that pre-eBay, the reasonable expectation of injunctive relief gave even large incumbents compelling reasons to consider settling patent cases or licensing from smaller companies. Without this remedy, USIJ argues that monetary damages became the only recourse – an amount that typically barely exceeds what could have been negotiated without costly litigation, while completely failing to account for lost growth opportunities. USIJ argues that the current trends in protecting technology in the US signal an “impending disaster” as entrepreneurs increasingly avoid patent-intensive industries critical to national security and public welfare in favor of lower-risk ventures like consumer products and smartphone apps.
The third brief filed by Professor Gregory Dolin on behalf of the New Civil Liberties Alliance has a different focus, arguing that Judge Pauline Newman must be permitted to participate in the en banc proceedings. The brief presents a detailed statutory analysis of 28 U.S.C. § 46, which governs the composition of appellate courts, contending that the law unequivocally requires all judges in “regular active service” to participate in en banc hearings unless they have recused themselves. Judge Newman, is the Federal Circuit’s longest-serving judge and at 97 the oldest active federal judge in the United States. However, she was suspended from hearing new cases in September 2023 (renewed in 2024) after she refused to undergo medical examinations by court-appointed doctors as part of an investigation into her fitness to serve. She has been fighting the suspension since then – arguing that it is a violation of the U.S. Constitution that provides lifetime appointments. Newman is also (by far) the most pro-patentee judge on the court.
Drawing on Supreme Court precedent and legislative history, the brief argues that Judge Newman’s status as an active judge who has not retired means she remains in “regular active service” despite her temporary suspension by the Judicial Council. Professor Dolin points to the Supreme Court’s 1960 decision in US v. American-Foreign SS, which defined an “active” judge simply as one who has not retired from regular active service. That interpretation led the court to conclude that Judge Medina, who had retired during the pendency of the en banc proceedings, was ineligible to participate in the final decision. Notably, of course, Judge Newman’s situation differs from Medina’s as she has not retired but rather faces a temporary suspension. But, the brief emphasizes that nothing in the relevant statutes creates an exception for temporarily suspended judges, and argues that excluding Judge Newman would create an improperly constituted tribunal that lacks the authority to issue binding decisions.
The brief also addresses the Federal Circuit’s unique statutory authority to sit in panels larger than three judges, explaining that this provision cannot justify excluding Judge Newman from en banc proceedings. While 28 U.S.C. § 46 permits the Federal Circuit to determine by rule the number of judges for regular panels, Professor Dolin argues this flexibility doesn’t extend to en banc hearings, which are explicitly governed by different statutory requirements.
The brief concludes that the court must either include Judge Newman in the en banc proceedings or vacate the order granting en banc review entirely, as any other approach would result in a judgment from an unlawfully constituted court.
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Oral arguments are set for March 13, 2025. Ginger Andres arguing for Google and Brian Ledahl arguing for EcoFactor. Each receive 30 minutes. The final brief due in the case – Google’s reply – is due February 17, 2025.