Ecofactor, Inc. v. Google LLC

Case: 23-1101 Document: 18 Page: 1 Filed: 06/03/2024

United States Court of Appeals

for the Federal Circuit

______________________

ECOFACTOR, INC.,

Plaintiff-Appellee

v.

GOOGLE LLC,

Defendant-Appellant

______________________

2023-1101

______________________

Appeal from the United States District Court for the

Western District of Texas in No. 6:20-cv-00075-ADA, Judge

Alan D. Albright.

______________________

Decided: June 03, 2024

______________________

BRIAN DAVID LEDAHL, Russ August & Kabat, Los Ange-

les, CA, argued for plaintiff-appellee. Also represented by

MINNA CHAN, KRISTOPHER DAVIS, MARC A. FENSTER, REZA

MIRZAIE, JAMES PICKENS.

ROBERT A. VAN NEST, Keker, Van Nest & Peters LLP,

San Francisco, CA, argued for defendant-appellant. Also

represented by KRISTIN ELIZABETH HUCEK, LEO L. LAM,

ROBERT ADAM LAURIDSEN, EUGENE M. PAIGE.

______________________

Before LOURIE, PROST, and REYNA, Circuit Judges.

Case: 23-1101 Document: 18 Page: 2 Filed: 06/03/2024

2 ECOFACTOR, INC. v. GOOGLE LLC

Opinion for the court filed by Circuit Judge REYNA.

Opinion dissenting-in-part filed by Circuit Judge PROST.

REYNA, Circuit Judge.

EcoFactor sued Google in the Western District of Texas

alleging patent infringement of U.S. Patent No. 8,738,327.

After discovery and resolution of various motions, the case

was heard by a jury. The jury found that Google infringed

the asserted claim 5 of the ’327 patent and awarded dam-

ages to EcoFactor. Google appeals three of the district

court’s orders: the denial of Google’s motion for summary

judgment that claim 5 of the ’327 patent was invalid under

35 U.S.C. § 101; the denial of Google’s motion for judgment

as a matter of law of non-infringement of the ’327 patent;

and the denial of Google’s motion for a new trial on dam-

ages. For the following reasons, we affirm.

BACKGROUND

A. U.S. Patent No. 8,738,327

U.S. Patent No. 8,738,327 (“’327 patent”) relates gen-

erally to the operation of smart thermostats in computer-

networked heating and cooling systems (“HVAC systems”).

The primary recited purpose of the patent is to reduce

strain on the electricity grid during a period of expected

high demand through adjustments to the user’s thermostat

settings that reduce the electricity consumed by the user’s

HVAC system. ’327 patent at 1:21–27, 9:46–54. Claim 1 of

the ’327 patent recites a system “for controlling the opera-

tional status of an HVAC system” where “at least one ther-

mostat [is] associated with a structure that receives

temperature measurements from inside the structure.” Id.

at 9:26–31. Claim 1 includes an “estimation” limitation

where “one or more servers receive inside temperatures

from the thermostat and compare[] the inside tempera-

tures of the structure and the outside temperatures over

time to derive an estimation for the rate of change in inside

temperature of the structure in response to outside

Case: 23-1101 Document: 18 Page: 3 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 3

temperature.” Id. at 9:38–45 (emphasis added). Claim 5

adds that “the estimation [limitation in claim 1] is a pre-

diction about the future rate of change in temperature in-

side the structure.” Id. at 9:65–67.

B. Procedural History

EcoFactor, owner of the ’327 patent, sued Google for

patent infringement over Google’s smart thermostat prod-

ucts, particularly several Nest thermostats. 1 After discov-

ery, Google moved for summary judgment that certain

claims of the ’327 patent (including claim 5) were invalid

because they were directed to patent ineligible subject mat-

ter, an abstract idea, under 35 U.S.C. § 101. The district

court denied the motion. J.A. 5046.

The district court also denied Google’s Daubert motion

to exclude the opinion of EcoFactor’s damages expert, Mr.

Kennedy, rejecting Google’s argument that Mr. Kennedy’s

opinion was unreliable and therefore prejudicial.

J.A. 2254.

Following a six-day jury trial, the jury found that

Google infringed claim 5 of the ’327 patent and awarded

EcoFactor damages. J.A. 45–49. Google renewed its mo-

tion for judgment as a matter of law (“JMOL”) of non-in-

fringement of the ’327 patent, arguing that the accused

products do not measure, but rather, estimate the temper-

ature inside the structure and therefore cannot infringe.

Google also moved for a new trial on damages, arguing that

the opinion of EcoFactor’s damages expert, Mr. Kennedy,

was speculative and unreliable such that it should have

been excluded from trial. The district court denied both

motions from the bench. J.A. 6662; J.A. 6688.

1 Google acquired Nest Labs, Inc. prior to the under-

lying lawsuit.

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4 ECOFACTOR, INC. v. GOOGLE LLC

Google appeals. We have jurisdiction under

28 U.S.C. § 1295(a)(1).

DISCUSSION

Google raises three issues on appeal. 2 First, Google

contends the district court erred in denying Google’s mo-

tion for summary judgment that claim 5 of the ’327 patent

was directed to patent ineligible subject matter under

§ 101. Second, Google asserts the district court erred in

denying Google’s JMOL motion for non-infringement of the

’327 patent. Third, Google contends the district court erred

in denying Google’s motion for a new trial on damages be-

cause Mr. Kennedy’s damages opinion was based on unre-

liable methodology. We address each issue in turn.

I. Patent Eligibility

Google appeals the district court’s denial of summary

judgment that claim 5 of the ’327 patent was patent ineli-

gible under § 101.

Section 101 of the Patent Act provides that: “Whoever

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. The Supreme Court has articulated a two-

step test, commonly referred to as the “Alice” test, for ex-

amining whether a patent claims patent-ineligible subject

matter. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S.

2 This appeal was originally consolidated and in-

cluded an original appeal by EcoFactor and cross-appeal by

Google. The consolidated appeal contained other patents

and issues. Prior to oral argument, the parties stipulated

to the dismissal of the original appeal by EcoFactor, Appeal

No. 22–1974, leaving only Google’s cross-appeal involving

the ’327 patent. See Appeal No. 22–1974, ECF No. 59 at 7.

Case: 23-1101 Document: 18 Page: 5 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 5

208, 217–18 (2014). At Alice step one, we review whether

a claim is directed to a patent-ineligible concept, such as an

abstract idea. Id. At Alice step two, we review whether the

claim recites elements sufficient to transform the abstract

idea into a patent-eligible application. Id. at 217–18, 221.

Prior to trial, Google filed a motion for summary judg-

ment, arguing that claim 5 of the ’327 patent (among oth-

ers) was invalid as directed to patent ineligible subject

matter under § 101. The district court reviewed the mo-

tion, relying on the Alice inquiry. The district court denied

the motion and submitted step two of the Alice inquiry to

the jury. J.A. 5046.

At trial, the verdict form asked whether Google met its

burden to prove by clear and convincing evidence that the

elements of claim 5 of the ’327 patent, when taken individ-

ually and as an ordered combination, involved activities or

technology that were well-understood, routine, or conven-

tional to a skilled artisan at the time of the invention.

J.A. 47. After hearing testimony and receiving evidence

from both parties, the jury answered “no” for claim 5 of the

’327 patent. J.A. 47. Google filed a post-trial JMOL motion

repeating its § 101 arguments, which the district court de-

nied.

Google now appeals the district court’s denial of sum-

mary judgment regarding patent ineligibility of claim 5 of

the ’327 patent, but we have held that a district court’s de-

nial of summary judgment is not appealable after a trial on

the merits. Syngenta Crop Prot., LLC v. Willowood, LLC,

944 F.3d 1344, 1364 n.7 (Fed. Cir. 2019) (citing Ortiz v. Jor-

dan, 562 U.S. 180, 183–84 (2011)); see also 10 Wright and

Miller, Federal Practice and Procedure § 2715 (4th ed.) (ex-

plaining a denial from summary judgment is an order

“from which no immediate appeal is available”). We have

explained that an order denying summary judgment is “not

a judgment” and “does not foreclose trial on the issues on

which summary judgment was sought;” rather, it is

Case: 23-1101 Document: 18 Page: 6 Filed: 06/03/2024

6 ECOFACTOR, INC. v. GOOGLE LLC

“merely a judge’s determination that genuine issues of ma-

terial fact exist.” Glaros v. H.H. Robertson Co., 797 F.2d

1564, 1573 (Fed. Cir. 1986) (reasoning that a denial of sum-

mary judgment “does not settle or even tentatively decide

anything about the merits of the claim” (citation omitted)).

Denial of summary judgment decides only one thing—that

the case should go to trial. Id.

At trial, the jury heard testimony from various wit-

nesses on whether the elements of claim 5 were well-un-

derstood, routine, or conventional. See, e.g., J.A. 5345–

5346 (209:20–210:6); J.A. 6373–6374 (1237:15–1238:19);

J.A. 6415–6416 (1279:1–1280:20); J.A. 6449–6451

(1313:17–1315:11). Google, however, appeals the order

denying summary judgment but not the jury verdict of in-

eligibility. As the Supreme Court has explained, “the full

record developed in court supersedes the record existing at

the time of the summary-judgment motion.” Ortiz, 562

U.S. at 184. Because trial on the merits of the § 101 issue

was held, the court’s denial of summary judgment is not

appealable.

II. Infringement

For infringement, the only limitation at issue is

claim 1’s recitation of a system for controlling the HVAC

system that includes a thermostat “that receives tempera-

ture measurements from inside the structure.” ’327 patent

at 9:26–31. Google alleges that because the accused ther-

mostat products are designed to be completely enclosed in

metal, plastic, and/or glass housings, they cannot directly

measure the surrounding ambient temperature “inside the

structure” like other thermostats. 3 Appellant Br. 41–44.

3 The parties agree that the term “ambient tempera-

ture” refers to the temperature surrounding a particular

thermostat, i.e., the temperature of the room or structure

Case: 23-1101 Document: 18 Page: 7 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 7

Google argues that its thermostats can only derive an esti-

mate of the ambient temperature by measuring only the

temperature within the thermostat housing itself, which is

not “inside the structure.” See id. As a result, Google ar-

gues that the jury’s verdict of infringement is unsupported

by substantial evidence.

We review the disposition of motions for JMOL under

the law of the regional circuit, here the Fifth Circuit. See

Energy Transp. Grp. Inc. v. William Demant Holding A/S,

697 F.3d 1342, 1350 (Fed. Cir. 2012). The Fifth Circuit re-

views de novo the grant or denial of a JMOL motion. Clear-

Value, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340,

1343 (Fed. Cir. 2012). Under Fifth Circuit law, a jury’s ver-

dict is upheld if supported by substantial evidence. Med.

Care Am., Inc. v. Nat’l Union Fire Ins. Co., 341 F.3d 415,

420 (5th Cir. 2003).

We conclude that the jury’s infringement verdict is sup-

ported by substantial evidence. EcoFactor’s infringement

expert testified that the accused thermostat products meet

the claimed limitation because the thermostats measured

temperature of the structure and not just the temperature

within the thermostat housing. J.A. 5462–63

(326:20–327:6). EcoFactor’s expert supported his conclu-

sion with several forms of evidence. EcoFactor’s expert re-

lied on website guides maintained by Google for the benefit

of software engineers who develop applications for use with

Nest thermostats. One website page states that the Nest

thermostats measure the “[a]mbient temperature,” defined

as the “temperature measured near the thermostat”—not

just within the thermostat. J.A. 10429 (emphasis added).

Another website page explains that the temperature sen-

sors of certain Nest products measure ambient room tem-

perature. J.A. 10888. EcoFactor’s expert testified that this

in which the thermostat is placed. Appellant Br. 13, 43;

Appellee Br. 1, 9–10.

Case: 23-1101 Document: 18 Page: 8 Filed: 06/03/2024

8 ECOFACTOR, INC. v. GOOGLE LLC

evidence shows that the Nest thermostat “devices have

temperature measurements near the thermostat” that

measures the “inside temperature” of the structure and are

not limited to measuring temperature inside the thermo-

stat housing. J.A. 5453–55 (317:17–319:14). EcoFactor’s

expert cited Google’s source code for the accused products

and demonstrated where it described the function of the

accused products to measure the surrounding temperature.

J.A. 5456–60 (320:18–324:14).

Google’s experts conceded the substance of EcoFactor’s

evidence on cross-examination. Google’s non-infringement

expert agreed that, according to Google’s website pages, the

current ambient temperature in the room is measured by

the Nest thermostat’s internal sensors. J.A. 6154–55

(1018:9–1020:13). Another Google expert witness agreed

that the accused thermostat products contain temperature

sensors that measure the temperature inside customer

homes. J.A. 5945–46 (809:4–809:17).

The expert testimony from both parties, documentary

evidence, and source code information demonstrating that

the accused products measure temperature of the sur-

rounding structure (and not just the housing) is substantial

evidence. See In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir.

2012) (explaining substantial evidence is “relevant evi-

dence as a reasonable mind might accept as adequate to

support a conclusion”).

In conclusion, the jury’s infringement verdict that the

accused Nest thermostat products satisfy the claim lan-

guage of “receives temperature measurements from inside

the structure” is supported by substantial evidence.

III. Damages

Google argues that the district court abused its discre-

tion in denying its Rule 59 motion for a new trial on dam-

ages. Appellant Br. 30. According to Google, a new trial

on damages was warranted because the initial trial was

Case: 23-1101 Document: 18 Page: 9 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 9

unfair or marred by prejudicial error. Id. at 25; J.A. 6689

(91:4–8). The alleged error was the district court’s eviden-

tiary ruling that the opinion of EcoFactor’s damages ex-

pert, Mr. Kennedy, was admissible. Appellant Br. 25, 30.

Google argues that Mr. Kennedy’s damages opinion should

have been excluded from trial because it lacked any relia-

ble methodology or underlying calculations. Id. at 30.

Google also argues that Mr. Kennedy’s opinion should have

been excluded for lack of comparability and apportionment.

Id. at 34. We address each argument in turn.

We review the denial of a motion for a new trial under

regional circuit law. Wordtech Sys., Inc. v. Integrated Net-

works Sols., Inc., 609 F.3d 1308, 1312 (Fed. Cir. 2010). The

Fifth Circuit reviews a district court’s denial of a motion for

a new trial for an abuse of discretion. Fornesa v. Fifth

Third Mortg. Co., 897 F.3d 624, 627 (5th Cir. 2018). A new

trial may be granted if the district court finds that “the ver-

dict is against the weight of the evidence, the damages

awarded are excessive, the trial was unfair, or prejudicial

error was committed.” Seidman v. Am. Airlines, Inc., 923

F.2d 1134, 1140 (5th Cir. 1991) (citation omitted); Fed. R.

Civ. P. 59. “Courts do not grant new trials unless it is rea-

sonably clear that prejudicial error has crept into the rec-

ord or that substantial justice has not been done, and the

burden of showing harmful error rests on the party seeking

the new trial.” Jordan v. Maxfield & Oberton Holdings,

L.L.C., 977 F.3d 412, 417 (5th Cir. 2020) (citation omitted).

Here, Mr. Kennedy used the hypothetical negotiation

approach for calculating reasonable royalty damages under

35 U.S.C. § 284. This approach “necessarily involves an el-

ement of approximation and uncertainty.” Lucent Techs.,

Inc. v. Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009)

(citation omitted); see also generally 2 Janice M. Mueller,

Mueller on Patent Enforcement § 20.04(a) at 869–70 (rev.

ed. 2019). According to Mr. Kennedy, EcoFactor would

have entered the hypothetical negotiation with the

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10 ECOFACTOR, INC. v. GOOGLE LLC

expectation of receiving a royalty in the amount of $X 4 per

unit and would have requested that from Google.

J.A. 1277. Based on this $X rate, Mr. Kennedy calculated

his proposed damages amount of $Y 5. J.A. 5740

(604:14–17).

A.

Google argues that Mr. Kennedy’s damages model was

speculative and conclusory. Appellant Br. 31. Specifically,

Google argues that Mr. Kennedy’s proposed $X royalty rate

was “plucked . . . out of nowhere.” Id. at 34 (citation omit-

ted). We disagree.

“[W]hile all [damages] approximations involve some

degree of uncertainty, the admissibility inquiry centers on

whether the methodology employed is reliable.” Summit 6,

LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1296 (Fed. Cir.

2015). This includes whether a damages expert’s testi-

mony is tied to the particular facts of the case. Virnetx, Inc.

v. Cisco Sys., Inc., 767 F.3d 1308, 1333–34 (Fed. Cir. 2014);

Whitserve, LLC v. Comput. Packages, Inc., 694 F.3d 10, 30

(Fed. Cir. 2012); Lucent Techs., 580 F.3d at 1330. Testi-

mony is inadmissible when it is based only on speculation

or guesswork, such that the jury is left to fill in the gaps

when calculating a damages award. Whitserve, 694 F.3d at

30–33 (holding that testimony was conclusory and specula-

tive when expert did not explain how lump sum amounts

could be converted to a reasonable royalty rate); Wordtech,

609 F.3d at 1320 (holding that expert’s reliance on two

4 The amount of the per-unit royalty rate is confiden-

tial business information subject to a protective order, and

as such, is not recited in this opinion.

5 The amount of EcoFactor’s proposed damages

award is confidential business information subject to a pro-

tective order, and as such, is not recited in this opinion.

Case: 23-1101 Document: 18 Page: 11 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 11

lump licenses was inappropriate when neither explained

how the lump-sum amounts were calculated).

Far from plucking the $X royalty rate from nowhere,

Mr. Kennedy based this rate on the following admissible

evidence: three license agreements and the testimony of

EcoFactor’s CEO, Mr. Habib. Turning first to the agree-

ments, Mr. Kennedy relied on three license agreements

EcoFactor entered into with third-party smart thermostat

manufacturers—the Schneider and Daikin licenses in

2020, and the Johnson license in 2021. J.A. 10389–399;

J.A. 10400–410; J.A. 10411–419. Each of these agreements

included the same $X royalty rate at issue here. Each li-

cense agreement provided in a whereas clause that the li-

censee would pay EcoFactor a lump sum amount “set forth

in this Agreement based on what EcoFactor believes is a

reasonable royalty calculation of [$X] per-unit for . . . esti-

mated past and [] projected future sales of products ac-

cused of infringement in the Litigation.” J.A. 10389

(emphasis added); J.A 10400; J.A. 10411. Thus, as Mr.

Kennedy testified at trial, the $X royalty rate was “specifi-

cally spelled out in the license agreement[s].” J.A. 5764

(628:2–3).

Mr. Kennedy then relied on the testimony of EcoFac-

tor’s CEO, Mr. Habib, who signed the three license agree-

ments on behalf of EcoFactor. J.A. 5794 (658:17–18);

J.A. 5666 (530:23–25); J.A. 5669 (533:6–8). Mr. Habib tes-

tified that he had seven years in the industry, an under-

standing of the market, and “what is reasonable for the

technologies that [EcoFactor] ha[s].” J.A. 5670

(534:22–25). He then testified that the lump sums con-

tained in each of the three license agreements were based

on the $X royalty rate. J.A. 5672, 536:17–18 (“[M]y under-

standing was that all of it is based on [$X] per infringing

unit.”). He testified that while he was shielded from the

licensees’ confidential sales information, he understood

that EcoFactor calculated each of the three licenses’ lump

sums using the $X royalty rate and the past and future

Case: 23-1101 Document: 18 Page: 12 Filed: 06/03/2024

12 ECOFACTOR, INC. v. GOOGLE LLC

projected sales for each licensee. J.A. 5798 (662:2–5); J.A.

5670 (534:4–10). He also testified that despite being

shielded from the licensees’ confidential sales numbers, he

believed, based on his understanding of the market, that

the lump sums reasonably reflected the licensees’ sales.

J.A. 5672 (536:14–24). According to Mr. Habib, there were

“large players” and high barriers to entry in the smart ther-

mostat and smart HVAC control industry, and the licen-

sees were “relatively new or more recent.” J.A. 5672

(536:19–24). Thus, “it ma[de] sense that their sale num-

bers would be low since they’d recently started.” J.A. 5672

(536:23–24). He testified that the $X royalty rate in each

of the three license agreements was accepted by the par-

ties. J.A. 5671 (535:5–11) (“So, you know, if three compa-

nies were willing to accept it, then yeah. That further

made it clear to me that it was a reasonable royalty rate

that was being accepted by counterparties.”).

Finally, in support of Mr. Kennedy’s proposed $X roy-

alty rate, EcoFactor introduced at trial an email chain be-

tween EcoFactor and Johnson concerning the $X royalty

rate. J.A. 10797–99; J.A. 6278 (1142:3–10). In the chain,

which was dated a few months before the parties signed the

license agreement, the parties discuss the $X royalty rate.

J.A. 10797–99. Johnson notes that “[w]e are applying the

[$X rate] to the time period” identified by EcoFactor.

J.A. 10798.

In light of the three license agreements, Mr. Habib’s

testimony, and the EcoFactor-Johnson email chain, we de-

termine that Mr. Kennedy’s damages opinion concerning

the $X royalty rate was sufficiently tied to the facts of the

case and thus admissible. See Finjan, Inc. v. Secure Com-

puting Corp., 626 F.3d 1197, 1212 (Fed. Cir. 2010); C & F

Packing Co., v. IBP, Inc., 224 F.3d 1296, 1304–05 (Fed. Cir.

2000). And based on this context, the “jury was entitled to

hear the expert testimony” from Mr. Kennedy concerning

the $X royalty rate and “decide for itself what to accept or

reject.” Pavo Sols. LLC v. Kingston Tech. Co., 35 F.4th

Case: 23-1101 Document: 18 Page: 13 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 13

1367, 1379 (Fed. Cir. 2022) (citation omitted). That is ex-

actly what the jury did in this case. The jury heard Mr.

Kennedy’s testimony and Google’s extensive cross-exami-

nation concerning Mr. Kennedy’s understanding of the

three license agreements, his reliance on Mr. Habib’s testi-

mony, and testimony concerning the emails between Eco-

Factor and Johnson about the $X royalty rate. J.A.

5793–5812 (657:4–676:2); J.A. 5794 (658:17–18); J.A. 5667

(531:8–25); J.A. 5668–5670 (532:3–534:3); J.A. 6278–6280

(1142:6–1144:19). Ultimately, the jury returned a verdict

of $20,019,300, which represents significantly less than

Mr. Kennedy’s proposed damages amount of $Y that would

have resulted from applying the $X royalty rate to Google’s

past sales.

Google argues that Mr. Kennedy’s testimony is unreli-

able because there is no evidence that the parties to the

three license agreements actually applied the $X royalty

rate. To the contrary. First, the three admissible license

agreements each disclose that EcoFactor believed that the

lump sums in each license was “based on” the $X royalty

rate. Additionally, in its whereas clause, the Schneider li-

cense agreement, unlike the Johnson and Daikin agree-

ments, states that “nothing in this clause should be

interpreted as agreement by Schneider that [$X] per unit

is a reasonable royalty.” J.A. 10400. This clause, included

by Schneider, speaks to its belief that $X may not have been

reasonable but it does not speak to whether $X was actu-

ally applied in arriving at the lump sum. Arguably, this

provision, when read in context, could also mean that the

$X royalty rate was applied by EcoFactor and Schneider.

If Schneider did not believe that the $X royalty rate was

actually being applied, it could have said such in the agree-

ment. But Schneider did not. Finally, as noted above,

Johnson noted in an email chain with EcoFactor that it was

“applying” the $X royalty rate. How much weight should

be given to the provisions in the license agreements, includ-

ing whether they are “self-serving” as Google claims, and

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14 ECOFACTOR, INC. v. GOOGLE LLC

the EcoFactor-Johnson email is a question for the jury. See

Pavo, 35 F.4th at 1379; Finjan, 626 F.3d at 1212; C & F

Packing, 224 F.3d at 1304. 6

To conclude, we determine that Mr. Kennedy’s opinion

concerning the $X royalty rate was sufficiently reliable for

admissibility purposes. For this reason, we hold that the

district court did not abuse its discretion in denying

Google’s motion for a new trial on damages.

B.

Google argues that Mr. Kennedy’s damages testimony

should have also been excluded from trial for a lack of com-

parability and apportionment. Appellant Br. 34. Google

does not dispute the technical comparability between the

three licenses and Mr. Kennedy’s hypothetically negotiated

agreement. Nor could it. Mr. Kennedy relied on the testi-

mony of EcoFactor’s technical expert, Mr. De la Iglesia, for

his opinion that the three license agreements were

6 The dissent relies on a statement in the body of the

of the Schneider and Daikin license agreements to support

its position that the parties did not apply the $X royalty

rate contained in these two license agreements’ whereas

clauses. See Dissent 3–6. This statement provides that the

agreed to lump sum “does not reflect or constitute a roy-

alty.” J.A. 10391; J.A. 10402. That the lump sum amount

is not a royalty does not mean the parties did not use the

$X royalty rate discussed in the agreements to arrive at the

lump sum amount. But even if we were to set aside these

two license agreements, the Johnson license agreement

alone would suffice. As Google’s own expert agreed at trial,

“just one” license agreement can be sufficient to support a

damages opinion. J.A. 6269 (1133:10–14). This assertion

comports with our damages precedent, which does not de-

mand “absolute precision” but may involve some degree of

approximation and uncertainty. Virnetx, 767 F.3d at 1328.

Case: 23-1101 Document: 18 Page: 15 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 15

technically comparable to the hypothetically negotiated li-

cense. J.A. 5578–5583 (442:22–447:2); J.A. 5763

(627:7–23); J.A. 5768 (632:7–19). Google’s experts did not

rebut Mr. De la Iglesia’s opinion on this issue at trial. J.A.

6268–6270 (1132:4–1134:5).

Rather, Google challenges Mr. Kennedy’s economic

comparability analysis of the three licenses and the hypo-

thetically negotiated agreement. Appellant Br. 36–37; Re-

ply Br. 9. According to Google, the three license

agreements were for EcoFactor’s entire patent portfolio

and Mr. Kennedy failed to account for the value of the ’327

patent within that portfolio. Appellant Br. 36. We disa-

gree.

Damages owed to the patentee must reflect the value

of only the patented improvement—called apportionment.

Omega Pats., LLC v. CalAmp Corp., 13 F.4th 1361, 1376

(Fed. Cir. 2021). If a sufficiently comparable license is used

for determining the appropriate reasonable royalty rate,

further apportionment may not be required because the

comparable license has built-in apportionment. Id. at

1377. “Built-in apportionment effectively assumes that the

negotiators of a comparable license settled on a royalty rate

and royalty base combination embodying the value of the

asserted patent.” Id. (citation omitted). “For built-in ap-

portionment to apply, the license must be sufficiently com-

parable in that principles of apportionment were effectively

baked into the purportedly comparable license.” Id. (cita-

tion omitted). Part of this comparability analysis requires

an expert to account “for differences in the technologies and

economic circumstances of the contracting parties” to the

past licenses and to the hypothetical negotiation at issue.

Finjan, 626 F.3d at 1211–12.

The degree of comparability of license agreements is a

“factual issue[] best addressed by cross examination and

not by exclusion.” ActiveVideo Networks, Inc. v. Verizon

Commc’ns, Inc., 694 F.3d 1312, 1333 (Fed. Cir. 2012); Bio-

Case: 23-1101 Document: 18 Page: 16 Filed: 06/03/2024

16 ECOFACTOR, INC. v. GOOGLE LLC

Rad Lab’ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1373

(Fed. Cir. 2020); Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d

1201, 1227 (Fed. Cir. 2014); Finjan, 626 F.3d at 1211. For

example, in Bio-Rad, we concluded that there was no abuse

of discretion in allowing an expert to testify about three li-

censes, even though one of the licenses was ultimately not

proven to be technically comparable to the hypothetically

negotiated license. 967 F.3d at 1374 (holding that the “‘de-

gree of comparability’ was appropriately left for the jury to

decide”).

Here, Mr. Kennedy sufficiently showed, for purposes of

admissibility, that the three license agreements were eco-

nomically comparable to the hypothetically negotiated

agreement. Mr. Kennedy acknowledged that, based on Mr.

De la Iglesia’s unrebutted testimony, the Schneider and

Daikin licenses list seven technically comparable asserted

patents, including the ’327 patent at issue in the hypothet-

ically negotiated agreement. See J.A. 10398; J.A. 10409.

He also noted that the Johnson license did not list the ’327

patent as an asserted patent but listed four others that cov-

ered the same interrelated smart thermostat technologies.

J.A. 10411; J.A. 1276. Finally, Mr. Kennedy acknowledged

that the three licenses also covered patents in EcoFactor’s

portfolio that were not asserted in the underlying litigation

facing Johnson, Schneider, and Daikin. J.A. 10398;

J.A. 10409; J.A. 10411; J.A. 1275–76.

Mr. Kennedy accounted for such differences. Mr. Ken-

nedy testified that in arriving at the $X royalty rate in a

hypothetical negotiation, Google would argue that the

three license agreements included EcoFactor’s portfolio,

not just the ’327 patent, and thus the $X royalty rate

should be decreased. J.A. 5767 (631:19–23). Mr. Kennedy

then provided that the three license agreements reflect a

settlement and thus the $X royalty rate reflects a risk that

that EcoFactor’s patents would be found not infringed or

invalid. J.A. 1276. According to Mr. Kennedy, this consid-

eration would not be present at the hypothetical

Case: 23-1101 Document: 18 Page: 17 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 17

negotiation between EcoFactor and Google, since the as-

sumption is that the ’327 patent was infringed and valid.

J.A. 1276. As a result, this point would place upward pres-

sure on the negotiated rate.

The three licenses aside, Mr. Kennedy separately

grounded his apportionment opinion on underlying inter-

nal profit and survey data from Google. Mr. Kennedy tes-

tified that, based on underlying customer surveys from

Google and based on EcoFactor’s technical expert’s testi-

mony, the infringed technology at issue in this case at-

tributed to Z% 7 of the profits for the infringed products.

J.A. 5755–5758 (619:16–622:13); J.A. 5775–5777

(639:22–641:7). Based on this data, Mr. Kennedy calcu-

lated the amount of profit per unit that could be attributed

to the ’327 patent, which was more than double the $X roy-

alty rate. J.A. 5755–5758 (619:16–622:13). According to

Mr. Kennedy, this would also place upward pressure on the

negotiated rate at the hypothetical negotiation. J.A. 5780

(644:6–7) (“And that’s EcoFactor’s response, saying it

should actually be a lot higher.”). Mr. Kennedy thus con-

cluded that the $X royalty rate “would be a very reasonable

and conservative first offer.” J.A. 5779 (643: 17–18). This

testimony is additional evidence for the jury to consider

and weigh when calculating a damages award. C & F Pack-

ing, 224 F.3d at 1304; ResQNet.com, Inc., v. Lansa, Inc.,

594 F.3d 860, 869 (Fed. Cir. 2010) (“At all times, the dam-

ages inquiry must concentrate on compensation for the eco-

nomic harm caused by infringement of the claimed

invention.”).

Based on this evidence, we conclude that the district

court did not abuse its discretion in declining to grant a

new trial on damages. Mr. Kennedy’s damages opinion

7 The percentage amount is confidential business in-

formation subject to a protective order, and as such, is not

recited in this opinion.

Case: 23-1101 Document: 18 Page: 18 Filed: 06/03/2024

18 ECOFACTOR, INC. v. GOOGLE LLC

relied on sufficiently comparable licenses and his opinion

sufficiently apportioned the value of the ’327 patent for the

issue to be presented to the jury.

Supporting our conclusion is ActiveVideo. There, the

damages expert relied on an agreement that included the

patents at issue and other software services without any

alleged attempt to “disaggregate the value of the patent li-

cense from the value of the services.” 694 F.3d at 1333 (ci-

tation omitted). We held that there was no error in failing

to exclude the expert’s testimony because the degree of

comparability and “any failure on the part of [the] expert

to control for certain variables are factual issues best ad-

dressed by cross examination and not by exclusion.” Id.

Here, Mr. Kennedy went further than the ActiveVideo ex-

pert by sufficiently accounting for the economic differences

between the patents in the three license agreements (as-

serted and non-asserted) and the hypothetically negotiated

agreement. And like in ActiveVideo, if there were any fail-

ures to control for certain variables in comparability, these

factual issues were for the jury to decide. Id.

Contrary to Google’s position, our case law does not

compel a contrary result. In Omega, we remanded for a

new trial where the expert “merely identified . . . differ-

ences” between the patents in the licenses and the patents

in the hypothetical negotiation and did not distinguish

such facts. 13 F.4th at 1380–81. In Apple, two of the three

license agreements relied on by the expert did not list the

subject patent all, and the third license listed the subject

patent as a non-asserted patent in a long list of “hundreds

of Non-Asserted patents.” Apple Inc. v. Wi-LAN Inc., 25

F.4th 960, 973 (Fed. Cir. 2022). We determined that there

was no record evidence supporting the expert’s assumption

that the subject patent was a “key patent” in these three

licenses. Id.

Unlike in Omega and Apple, here we have two of the

three licenses at issue explicitly listing the ’327 patent as

Case: 23-1101 Document: 18 Page: 19 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 19

an “asserted patent.” J.A. 10398; J.A. 10409. Additionally,

Mr. Kennedy addressed and distinguished the remaining

patents discussed in the license agreements. He testified

that at the hypothetical negotiation, Google would empha-

size the downward pressure that these patents would have

on the $X royalty rate. Mr. Kennedy then testified that

EcoFactor would note upward pressure on the $X royalty

rate by assuming that the ’327 patent was valid and in-

fringed. And, unlike in these cases, Mr. Kennedy sepa-

rately rooted his apportionment analysis on underlying

internal profit and survey data from Google. As previously

noted, based on this data, Mr. Kennedy was able to deter-

mine that the $X royalty rate was a conservative amount

attributable to the ’327 patent.

Google loses sight of the issue on appeal and the appli-

cable standard of review. Our focus is on the admissibility

of Mr. Kennedy’s damages testimony, and we assess the

district court’s determination of this issue under the highly

deferential abuse of discretion standard. “Credibility de-

terminations, the weighing of the evidence, and the draw-

ing of legitimate inferences from the facts” are jury

functions, not those of a trial judge, and certainly not of an

appellate judge. Reeves v. Sanderson Plumbing Prods.,

Inc., 530 U.S. 133, 150 (2000) (citation omitted). If the

standard for admissibility is raised too high, then the trial

judge no longer acts as a gatekeeper but assumes the role

of the jury.

Based on the record before us, we conclude that the dis-

trict court did not abuse its discretion when it denied

Google’s motion for a new trial. Google has not shown that

the district court’s decision to admit Mr. Kennedy’s dam-

ages opinion resulted in prejudicial error or a substantial

injustice requiring a new trial on damages.

CONCLUSION

We have considered Google’s remaining arguments and

find them unpersuasive. We reject Google’s attempt to

Case: 23-1101 Document: 18 Page: 20 Filed: 06/03/2024

20 ECOFACTOR, INC. v. GOOGLE LLC

appeal the district court’s denial of summary judgment.

We affirm the district court’s post-trial denials of Google’s

motion for JMOL of non-infringement and Google’s motion

for a new trial on damages.

AFFIRMED

COSTS

No costs.

Case: 23-1101 Document: 18 Page: 21 Filed: 06/03/2024

United States Court of Appeals

for the Federal Circuit

______________________

ECOFACTOR, INC.,

Plaintiff-Appellee

v.

GOOGLE LLC,

Defendant-Appellant

______________________

2023-1101

______________________

Appeal from the United States District Court for the

Western District of Texas in No. 6:20-cv-00075-ADA, Judge

Alan D. Albright.

______________________

PROST, Circuit Judge, dissenting-in-part.

In recent years, our court has made some progress in

clarifying important questions related to damages for pa-

tent infringement. Such clarifications relate to deriving a

reasonable royalty from a lump-sum license and requiring

the patentee to confine its damages to the value of the pa-

tented technology. Unfortunately, the majority opinion

here at best muddles our precedent and at worst contra-

dicts it. I therefore respectfully dissent from the decision

Case: 23-1101 Document: 18 Page: 22 Filed: 06/03/2024

2 ECOFACTOR, INC. v. GOOGLE LLC

to affirm the district court’s denial of Google’s motion for a

new trial. 1

Google argues that (1) Mr. Kennedy, EcoFactor’s dam-

ages expert, calculated an $X royalty rate 2 from the Schnei-

der, Daikin, and Johnson lump-sum licenses in an

unreliable way; and (2) the $X rate in any event did not

reflect the value of the ’327 patent (as distinct from that of

other patents covered by those licenses). Google is right on

both counts. The district court therefore, in my view,

abused its discretion by not granting a new damages trial

given Mr. Kennedy’s flawed testimony. 3

I

Mr. Kennedy’s $X rate rests on EcoFactor’s self-serv-

ing, unilateral “recitals” of its “beliefs” in the license agree-

ments. These recitals are not only directly refuted by two

of those same agreements; they also have no other support

(e.g., sales data or other background testimony) to back

them up. Our law does not allow damages to be so easily

manufactured.

When deriving reasonable royalties from lump-sum li-

censes, we have emphasized that “lump sum payments . . .

should not support running royalty rates without testi-

mony explaining how they apply to the facts of the case.”

1 I join the other aspects of the majority’s decision.

2 Because the specific per-unit royalty rate that Mr.

Kennedy uses has been designated confidential, I use $X to

refer to his rate.

3 When reviewing a district court’s exercise of discre-

tion on a critical, often-complicated evidentiary decision

such as a damages-expert Daubert, it usually helps to see

the court’s explanation for its decision. Here, at both the

Daubert stage and in the context of Google’s new-trial mo-

tion, the district court gave no explanation. J.A. 2254,

6687–89.

Case: 23-1101 Document: 18 Page: 23 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 3

Whitserve, LLC v. Comput. Packages, Inc., 694 F.3d 10, 30

(Fed. Cir. 2012); see also Lucent Techs., Inc. v. Gateway,

Inc., 580 F.3d 1301, 1330 (Fed. Cir. 2009) (requiring that

“some basis for comparison must exist in the evidence pre-

sented to the jury”). We have vacated damages awards

where the derivation of a reasonable royalty from a lump

sum was “incompatible with the . . . agreement as a whole,”

MLC Intell. Prop., LLC v. Micron Tech., Inc., 10 F.4th 1358,

1368 (Fed. Cir. 2021), where there was no testimony ex-

plaining how lump-sum “payments could be converted to a

royalty rate,” Whitserve, 694 F.3d at 30, and where “[n]ei-

ther license describe[d] how the parties calculated each

lump sum,” Wordtech Sys., Inc. v. Integrated Network Sols.,

Inc., 609 F.3d 1308, 1320 (Fed. Cir. 2010). Mr. Kennedy’s

$X rate repeats the same fatal errors we identified in MLC,

Whitserve, and Wordtech. As in those cases, the licenses

here are for a lump-sum amount with no record evidence

supporting a calculation of a royalty rate.

Consider what these licenses do (and do not) say.

Starting with the Schneider license, one preliminary re-

cital states: “WHEREAS EcoFactor represents that it has

agreed to the payment set forth in this Agreement based

on what [it] believes is a reasonable royalty calculation of

[$X] per-unit for what it has estimated is past and pro-

jected future sales of products accused of infringement in

this Litigation.” J.A. 10400 (emphasis added). Yet the

body of the license (i.e., its substantive and agreed upon

terms and conditions)—which, unlike the recitals, reflects

the view of both parties—says that its lump-sum payment

“is not based upon sales and does not reflect or constitute a

royalty.” J.A. 10402 (emphasis added).

The Daikin and Johnson licenses both contain nearly

identical preliminary recitals about the $X rate.

J.A. 10389; J.A. 10411. As in the Schneider license, the

body of the Daikin license—which, again, reflects the view

of both parties—says that its lump-sum payment “is not

based upon sales and does not reflect or constitute a

Case: 23-1101 Document: 18 Page: 24 Filed: 06/03/2024

4 ECOFACTOR, INC. v. GOOGLE LLC

royalty.” J.A. 10391 (emphasis added). And while the

Johnson license lacks a similar refutation of the recital’s

“belief” (a belief that, again, was EcoFactor’s alone), it still

offers nothing more than the recital itself to support any

royalty rate.

These recitals became Mr. Kennedy’s $X rate.

J.A. 5764 (628:10–17); J.A. 5769 (633:9–18); J.A. 5772–73

(636:22–637:4). Mr. Kennedy also relied on the testimony

of EcoFactor’s CEO, Mr. Habib, as support for this rate.

J.A. 5794 (658:17–18). But Mr. Habib’s testimony does not

establish anything beyond his unsupported “understand-

ing” that these licenses used the $X royalty rate. See

J.A. 5668–69 (532:23–533:2). When asked during direct

examination about the basis for his “understanding,” Mr.

Habib testified that he was not allowed to see any underly-

ing financial information or sales data. J.A. 5670 (534:4–

14). Mr. Habib also explained his basis for believing that

the $X rate was a reasonable rate based on his understand-

ing of the market, J.A. 5672 (536:14–24), but his market-

based testimony provided no explanation for converting

from the lump-sum payments in these licenses to any roy-

alty rate, let alone the $X royalty rate. 4

On this record, it’s impossible to establish that these

lump-sum payments were calculated using any royalty

rate, let alone the specific $X rate. The self-serving recitals

reflect only EcoFactor’s transparent attempt to

4 The only other basis Mr. Habib offers is that the $X

royalty rate was EcoFactor’s baseline policy for licensing,

regardless of the number of patents. J.A. 5671 (535:12–

24). Understandably, neither the majority nor EcoFactor

rely on the baseline policy as a valid basis for Mr. Habib’s

understanding that the $X rate was used. See Omega

Pats., LLC v. CalAmp Corp., 13 F.4th 1361, 1379–80 (Fed.

Cir. 2021) (concluding that a comparable license analysis

using a baseline royalty rate policy is unreliable).

Case: 23-1101 Document: 18 Page: 25 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 5

manufacture a royalty rate using its “belief.” EcoFactor

even had to refute its “belief” by agreeing, in the Schneider

and Daikin licenses, that the lump-sum payment is not a

royalty. Mr. Kennedy’s assertion that the Schneider and

Daikin licenses used the $X rate is “incompatible with the

. . . agreement[s] as a whole.” MLC Intell. Prop., 10 F.4th

at 1368. And the Johnson license does not “describe how

the parties calculated [the] lump sum.” Wordtech Sys., 609

F.3d at 1320.

Mr. Kennedy cited nothing else showing that the $X

rate was actually used. He cited no documents, records,

sales data, or testimony showing any calculation of the

lump-sum payments or otherwise establishing that these

licenses used the $X rate. Mr. Habib’s testimony, relying

on no underlying data, likewise offers no support. EcoFac-

tor offered no testimony explaining how the lump-sum

“payments could be converted to a royalty rate.” Whitserve,

694 F.3d at 30.

At bottom, all we have are the recitals of one party’s

“beliefs” contradicted by mutually agreed upon contractual

language by both parties. That’s not enough under our law.

None of the majority’s responses on this issue with-

stand scrutiny. The majority first insists that the Schnei-

der and Daikin licenses do not disclaim the $X royalty rate.

It reasons, “[t]hat the lump sum amount is not a royalty

does not mean [that] the parties did not use the $X royalty

rate discussed in the agreements to arrive at the lump sum

amount.” Maj. 14 n.6 (emphasis in original). If the major-

ity’s point is that a lump sum is not itself a royalty, then

fair enough—no one disputes that truism. The issue here,

however, is whether the lump sum in these licenses reflects

the application of the $X royalty rate (or, in the majority’s

words, whether it was used “to arrive at the lump sum

amount”). And the majority cannot credibly claim that was

the case when the licenses themselves say that each lump-

sum payment “is not based upon sales and does not reflect

Case: 23-1101 Document: 18 Page: 26 Filed: 06/03/2024

6 ECOFACTOR, INC. v. GOOGLE LLC

or constitute a royalty.” J.A. 10391, 10402 (emphasis

added). I’m not sure how these licenses could more clearly

establish that the lump sums were not calculated using

royalties.

The majority next asserts that “the Johnson license

agreement alone would suffice.” Maj. 14 n.6. But the John-

son license contains no language describing how its lump-

sum payment was calculated, see Wordtech Sys., 609 F.3d

at 1320, and Mr. Kennedy offered no other basis from

which he could conclude that the Johnson license used the

$X rate.

The majority also cites an email chain that purportedly

concerns the use of the $X rate in the Johnson license. But

Mr. Kennedy never discussed this email; EcoFactor intro-

duced this email during the cross-examination of Google’s

expert. J.A. 6278 (1142:3–10). The question here is not

whether any document in the record supports the jury’s

damages award. We are instead asking whether Mr. Ken-

nedy’s testimony was so unreliable that it requires a new

trial. I can’t see how an email Mr. Kennedy never ad-

dressed supports the reliability of his analysis.

In the end, Mr. Kennedy conjured the $X rate from

nothing, and the majority’s treatment of his analysis can-

not be squared with our law or the facts.

II

Even if these licenses used the $X rate, Mr. Kennedy’s

analysis has another significant problem: the $X rate does

not reflect the ’327 patent’s value; rather, it includes the

value of other patents. Our law is clear that this basic fail-

ure requires a new trial.

“When relying on comparable licenses to prove a rea-

sonable royalty, we require a party to account for differ-

ences in the technologies and economic circumstances of

the contracting parties.” Apple Inc. v. Wi-LAN Inc., 25

F.4th 960, 971 (Fed. Cir. 2022) (cleaned up). This

Case: 23-1101 Document: 18 Page: 27 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 7

accounting, although not overly rigid and involving approx-

imation, requires apportioning to just the value of patent(s)

in the hypothetical negotiation. Omega Pats., LLC v.

CalAmp Corp., 13 F.4th 1361, 1380–81 (Fed. Cir. 2021).

This apportionment must be tied to the facts of each case.

Id. at 1379–80.

The licenses here have a broad scope. Each license is

to “all patents and patent applications (along with patents

issuing thereon) . . . that are now, or ever come to be, as-

signed to, owned by, or controlled by EcoFactor.”

J.A. 10390; J.A. 10401; J.A. 10412. Because each license

reflects a settlement, they also list the patents asserted in

each underlying litigation. The Schneider and Daikin li-

censes list seven asserted patents, including the ’327 pa-

tent. J.A. 10398, 10409. The Johnson license lists four

asserted patents; none are the ’327 patent. J.A. 10411.

When calculating the ’327 patent’s value, Mr. Kennedy

relied on EcoFactor’s technical expert, Mr. de la Iglesia,

who compared the asserted patents in each license to the

’327 patent and concluded that the asserted patents and

the ’327 patent were technologically comparable. J.A.

5578–82 (442:14–446:10). But EcoFactor’s technical expert

didn’t discuss the remaining patents in each license—the

non-asserted patents in EcoFactor’s portfolio. 5 Rather, Mr.

Kennedy explained that since, “in the real world,” “the rest

of the patents are thrown in usually either for nothing or

very little additional value,” the presence of these non-as-

serted patents would place “downward pressure on the roy-

alty rate” in a hypothetical negotiation over the ’327

5 Although we don’t know the exact size of EcoFac-

tor’s portfolio, at least one document suggests that EcoFac-

tor’s portfolio is over three times larger than the seven

asserted patents in the Schneider and Daikin licenses.

Case: 23-1101 Document: 18 Page: 28 Filed: 06/03/2024

8 ECOFACTOR, INC. v. GOOGLE LLC

patent. J.A. 5767–68 (631:22–632:2); see also J.A. 5771–72

(635:19–636:3).

Mr. Kennedy’s opinion is “untethered to the facts of

this case.” Apple, 25 F.4th at 973. His generic testimony

about “the real world,” general industry practice, and

“downward pressure” does not account for the impact of

EcoFactor’s specific non-asserted patents, and we don’t

know whether any non-asserted patent in EcoFactor’s port-

folio covers the same technological areas as the asserted

patents. Mr. Kennedy did not ask the necessary question

under our law—what effect the specific non-asserted pa-

tents in EcoFactor’s portfolio would have on the hypothet-

ical negotiation. 6 Even worse, other evidence in the record

indicates that the specific non-asserted patents were not

considered at all. Mr. Habib testified that the remaining

patents in EcoFactor’s portfolio had no effect on the rate

used in these licenses because the $X rate was EcoFactor’s

baseline policy. J.A. 5671 (535:12–24).

In the end, Mr. Kennedy’s circumstance-agnostic anal-

ysis is insufficient under our law. Apple, 25 F.4th at 973

(vacating a verdict where the same expert as in this case,

Mr. Kennedy, testified that excluding the non-asserted pa-

tents in a portfolio license would reduce the royalty rate by

25 percent as a matter of industry practice); Omega Pats.,

13 F.4th at 1379 (vacating a verdict where the proposed

$5.00 royalty rate was the same for any number of patents);

MLC Intell. Prop., 10 F.4th at 1375 (vacating a verdict

6 It would not be difficult for EcoFactor to offer an

answer. For example, Mr. de la Iglesia could have deter-

mined that the non-asserted patents in the Schneider, Dai-

kin, and Johnson licenses have no technological overlap

with the ’327 patent and concluded that the non-asserted

patents added only nominal value to the license.

Case: 23-1101 Document: 18 Page: 29 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 9

where no evidence or explanation supported using the roy-

alty rate in a forty-one-patent license for a single patent).

The majority, in excusing Mr. Kennedy’s failure to

properly apportion, ignores our law’s requirements. It

merely states that Mr. Kennedy “acknowledged that the

three licenses also covered patents not in EcoFactor’s port-

folio.” Maj. 16. But the majority ignores the key fail-

ure—Mr. Kennedy failed to account for the impact of the

specific remaining patents in EcoFactor’s portfolio, other

than by referencing a generic “downward pressure.” Nei-

ther Mr. Kennedy nor Mr. de la Iglesia tied this “downward

pressure” to the specific non-asserted patents, and Mr.

Habib affirmatively testified that EcoFactor’s practice was

to use the same $X rate regardless of the number of pa-

tents. In these circumstances, I “fail to see how this pa-

tent/claim-independent approach accounts for

apportionment.” Omega Pats., 13 F.4th at 1379.

The majority also relies on ActiveVideo Networks, Inc.

v. Verizon Communications, Inc., 694 F.3d 1312 (Fed. Cir.

2012), for its conclusion. But in ActiveVideo, we concluded

that “disagreements . . . with the conclusions reached by

ActiveVideo’s experts and the factual assumptions and con-

siderations underlying those conclusions” were “factual is-

sues best addressed by cross examination and not

exclusion.” Id. at 1333. Our conclusion presupposed that

“the methodology is sound” and that “the evidence relied

upon [is] sufficiently related to the case at hand.” i4i Ltd.

P’Ship v. Microsoft Corp., 598 F.3d 831, 852 (Fed. Cir.

2010), aff’d, 564 U.S. 91 (2011). As I explained above,

that’s far from the case here. And to the extent the major-

ity relies on one party’s characterization in ActiveVideo of

the expert’s opinion as failing to “disaggregate the value of

the patent license from the value of the services,” Maj. 18,

we did not adopt that characterization of the expert’s opin-

ion, see ActiveVideo, 694 F.3d at 1333. Additionally, any

suggestion that disaggregating the value of the patented

technology from the overall value of a license is not

Case: 23-1101 Document: 18 Page: 30 Filed: 06/03/2024

10 ECOFACTOR, INC. v. GOOGLE LLC

required is flatly inconsistent with our law and 140 years

of Supreme Court precedent. See VirnetX, Inc. v. Cisco

Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir. 2014) (“[A] pa-

tentee ‘must in every case give evidence tending to sepa-

rate or apportion the defendant’s profits and the patentee’s

damages between the patented feature and the unpatented

features.’” (quoting Garretson v. Clark, 111 U.S. 120, 121

(1884))).

To establish a purportedly independent basis for Mr.

Kennedy’s conclusion, the majority asserts that he demon-

strated the reasonableness of his $X rate by analyzing

Google’s profits. Maj. 17. Mr. Kennedy determined what

profits on Google’s accused Nest thermostats came from

features that he maintained were attributable to the ’327

patent. He then split the profits between Google and Eco-

Factor, using the $X rate as a reasonable basis. See J.A.

5778 (642:13–17). His methodology isn’t reasonable. Ra-

ther than offering a cross-check, Mr. Kennedy’s circular

profit analysis begins and ends with the same “fundamen-

tally flawed premise”—the $X rate. Uniloc USA, Inc. v.

Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011).

Ultimately, the majority’s real concern is that, “[i]f the

standard for admissibility is raised too high, then the trial

judge no longer acts as the gatekeeper but assumes the role

of the jury.” Maj. 19. But we must pay close attention to

the reliability of the methodology underlying expert testi-

mony to ensure that the jury can fulfill its proper role as

the factfinder. See Gen. Elec. Co. v. Joiner, 522 U.S. 136,

142 (1997) (emphasizing the district court’s “gatekeeper”

role in “screening” expert testimony). As the Supreme

Court has recognized, “the expert’s testimony often will

rest upon an experience confessedly foreign in kind to the

jury’s own.” Kumho Tire Co. v. Carmichael, 526 U.S. 137,

149 (1999) (cleaned up). Thus, an “effort to assure that the

specialized testimony is reliable and relevant can help the

jury evaluate that foreign experience.” Id. Our damages

law ensures that an expert asks the right questions. Many

Case: 23-1101 Document: 18 Page: 31 Filed: 06/03/2024

ECOFACTOR, INC. v. GOOGLE LLC 11

admissible answers to these questions are possible, and it

is those answers that are subject to the crucible of cross-

examination. Mr. Kennedy failed to ask the right ques-

tions at multiple junctures. The majority’s decision to over-

look the prejudicial impact of his unreliable testimony

abdicates its responsibility as a gatekeeper and contradicts

our precedent.

III

Mr. Kennedy’s analysis is unreliable. His $X rate has

no basis in the record, and his $X rate does not reflect the

’327 patent’s value alone but instead includes the value of

other patents. Mr. Kennedy’s testimony did not meet the

baseline standards of admissibility, and therefore the dis-

trict court abused its discretion by not granting a new trial

on damages. The majority’s conclusion otherwise departs

from our law. I respectfully dissent.