NCLA Tells Full Federal Circuit It Can’t Rehear EcoFactor v. Google Without Newman
“The Federal Circuit must allow Judge Newman to sit on the bench as part of any en banc rehearing. The Court’s only other lawful option is to reinstate the panel decision previously issued in this case.” – NCLA brief
Judge Pauline Newman’s counsel, the New Civil Liberties Alliance (NCLA), announced yesterday that it has filed an amicus brief with the U.S. Court of Appeals for the Federal Circuit in EcoFactor, Inc. v. Google, Inc., arguing that the en banc case cannot be heard without Newman, who has been suspended by Chief Judge Moore from hearing all cases, including when the court goes en banc.
Newman did not participate in the decision to grant rehearing, which was issued in September 2024. The case involves Google’s appeal of a district court’s denial of its motions for summary judgment of patent ineligibility and non-infringement and its motion for a new trial on damages due to Google’s assertion that EcoFactor’s expert’s (Kennedy) damages opinion “lacked any reliable methodology or underlying calculations”.
In June 2024, the Federal Circuit affirmed the district court on all points. But writing in partial dissent, Judge Prost said Google’s arguments that Kennedy’s analysis was unreliable and did not reflect the value of the ‘327 patent were correct, and Kennedy’s failure to properly apportion met neither the requirements of the law nor “the baseline standards of admissibility.” In September, the court granted en banc rehearing, limiting the issues for briefing to addressing 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 Eco-Factor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.”
But the NCLA is arguing the case cannot be heard at all unless Newman is present. “Because in Judge Newman’s absence the putative en banc court is improperly and deficiently constituted, it cannot lawfully act,” said the NCLA’s brief. “For that reason, the Court should sit with its full complement of judges. Alternatively, rehearing en banc should be vacated as improvidently granted, and the panel’s opinion reinstated.”
Because the statute requires an en banc hearing to include all judges in regular active service who are not recused from the case, and the Supreme Court’s “unambiguous definition” of the phrase “regular active service” is that “an ‘active’ judge is a judge who has not retired ‘from regular active service…,” the NCLA brief contends that Judge Newman remains in regular active service and therefore must be part of any en banc panel. The NCLA explained:
“Hence, as EcoFactor has argued in its own briefing to the Court, the Federal Circuit must allow Judge Newman to sit on the bench as part of any en banc rehearing. The Court’s only other lawful option is to reinstate the panel decision previously issued in this case. Any other approach would violate the governing statute and lead to a judgment by an unlawfully constituted tribunal.”
While the “Federal Circuit exception” permits the Federal Circuit to sit in panels of more than three, the court is required to “determine by rule the number of judges, not less than three, who constitute a panel.” The Federal Circuit’s Rule 47.2 states that “[w]hen not heard en banc, cases and controversies will be heard and determined by a panel consisting of an odd number of at least three judges.” While that may permit a panel of less than all but more than three, it does not apply here, said the NCLA, because it explicitly exempts en banc rehearings.
The Federal Circuit has already heard one case en banc without Newman. In May 2024, the court ruled en banc without Newman or Judge Cunningham when it overruled the so-called Rosen-Durling test for determining design patent obviousness.
The amicus brief was filed by NCLA independently and not on Judge Newman’s behalf.
January 28, 2025
Originally Published in IPWatchdog