On Sept. 27, Manny Caixeiro was quoted in Law360’s article, “Full Fed. Circ. Looks To Clarify Damages In Google Case.” The case at issue comes from a Texas federal jury finding Google owed EcoFactor $20 million for infringing its smart thermostat patent.
The following is an excerpt:
The Federal Circuit's decision to discuss damages en banc is a relief to many in the legal community, who say conflicting rulings have left both parties and judges in a bad spot.
To figure out whether a royalty is reasonable, courts rely on a 15-factor test from a 1970 decision out of New York, referred to as Georgia-Pacific. The factors include comparing the nature and scope of similar licenses.
"One problem with the Georgia-Pacific factors that people have noted for many years is that there are so many of these factors that the analysis can be very unpredictable," Cotter said. "It depends on how much weight you get to one factor over another."
That confusion is compounded by uncertainty over what expert work is admissible, said Venable LLP partner Manny J. Caixeiro. For example, he said a Federal Circuit panel in 2022 rejected an expert's damages methodology to apportion a portfolio-based license, but then approved that same methodology by the same expert with EcoFactor.
"We had literally two different panels on the Federal Circuit come to different conclusions about whether what this expert was doing was okay," Caixeiro said.
Click here to access the article.