Google's Reply Brief in EcoFactor Is In

I was planning to blog about the HMD Global Oy v. VoiceAge EMS decision today, but I understand that the decision has been pushed back once again, this time to March 20 (four weeks from today).  So we will wait and see what the Munich Higher Regional Court’s response to the EC’s Amicus Brief looks like then.  Meanwhile, Google has filed its reply brief for the en banc rehearing in EcoFactor, Inc. v. Google LLC, which is scheduled for March 13 (three weeks from today).  The reply brief focuses heavily on the question of whether EcoFactor’s expert’s methodology was sufficiently reliable to satisfy Federal Rule of Evidence 702, arguing inter alia that EcoFactor conflates relevance with reliability, and that reliability is a question reserved for the judge in the exercise of the judge’s gatekeeping function.  Almost makes me feel like I’m back teaching evidence law, something I last did in 2001.  It also drives home how much time and effort we are compelled to devote to patent infringement litigation in the United States, compared to every other country on the planet, because of the constitutional right to trial by jury.

Some Recent Scholarship on FRAND, IP Remedies

1. Wentong Zheng has published an article titled Jurisdictional Competition on Standard-Essential Patents, 14 NYU J. Intell. Prop. & Enter. L. 1 (2024).  Here is a link to the article, and here is the abstract:

This Article offers a systematic examination of jurisdictional competition on standard-essential patents (“SEPs”). SEPs are patents essential to technology standards developed by standard-setting organizations (“SSOs”). To reduce potential patent holdup, SSOs generally require SEP holders to commit to licensing SEPs on “fair, reasonable, and nondiscriminatory” (“FRAND”) terms. During the last decade, jurisdictions around the world have been engaged in fierce competition to set the ground rules on FRAND and other requirements for SEP licensing. This Article traces the legal landscape of this jurisdictional competition and examines how three major jurisdictions, the United States, Europe, and China, have developed divergent stances towards the most important legal issues affecting SEP licensing under patent law, contract law, and antitrust law.

 

This Article further challenges the prevailing scholarly assumption that jurisdictional competition on SEPs is socially undesirable. Drawing upon a historical analogy from maritime law in the post-industrial revolution era, this Article argues that jurisdictional competition on SEPs plays a positive role in facilitating compromises between innovator interests and implementer interests. Viewed in this light, jurisdictional competition on SEPs enhances social welfare by producing a “race to the middle” in which competing societal interests are calibrated and balanced.

2. Deming Liu has published an article titled Reflections on Damages for Infringing the Moral Right of Integrity, 2 J. Bus. L. 144 (2025).  The article is available on Westlaw, in the U.K. section.  Here is the abstract:

The article shows that the current court largely ignores the existence of the word honour in assessing infringement for the moral right of integrity; and that the court, in applying the objective test, also ignores the gist of the right and the requirement and spirit of the Berne Convention. It advocates that the court overhauls its stance toward the right of integrity, not only taking on board the issue of honour but also giving the author's own view due consideration. Then, in assessing damages for infringement, the court ought to base its judgment on whether it is a case of prejudice to honour or a case of prejudice to reputation. The article further proposes that additional damages be awarded where justice demands.

3.  Rafał Sikorski has published an article in 47 EIPR 134 (2025), titled Realising the potential of proportionality in patent enforcement: A case for amending IPRED.  This article also is available on Westlaw, in the EU section.  Here is the abstract:

The design of enforcement mechanisms, including remedies, determines the intensity of intellectual property protection. It holds true for patents as well. This article is an attempt to show how to ensure greater role for proportionality in patent enforcement, especially with respect to permanent injunctive relief. Firstly, it examines the growing recognition of proportionality for the enforcement of IP rights in both primary and secondary EU law. Secondly, the author analyses current patent laws and practice of respective national courts in patent infringement disputes. Thirdly, it looks at how proportionality is embraced by legal scholars. In this section the author also shows that there is emerging consensus around the need to apply injunctions in a more flexible manner. The cases of complex products and patent assertion entities are particularly evident examples where application of proportionality is needed. Fourthly, the author proposes revision of the directive on enforcement of intellectual property rights (IPRED) that would ensure that proportionality is properly considered by both national courts as well as the UPC, whose role as the main EU forum for resolving patent infringement disputes is likely to grow. The EU legislator has a number of possible options to ensure greater role for proportionality. These will be analyzed respectively and a proposal that is optimal—in this author’s opinion—shall be presented. Fifthly, the author will discuss implications of modernisation on the UPC. Finally, conclusions will be presented.

4. Also in the current edition of EIPR, Giuseppe Colangelo has published The politicisation of IP protection: the case of standard essential patents, 47 EIPR 121 (2025).  Here is the abstract:

Standard essential patents (SEPs) exemplify the tension between the dual nature of intellectual property, which is both national and international. While standards have a global dimension, patents confer territorial rights, making the implementation of standards geographically constrained. As technical standards are a strategic tool, countries have developed national standards strategies that prioritise securing technological leadership. Unsurprisingly, SEPs have become a geopolitical issue and a significant factor in international tensions. In this context, China’s growing role in international standardisation has further politicised the process of standard-setting. This paper argues, however, that the approaches taken by EU and US courts and policymakers regarding SEPs have inadvertently aided China in effectively implementing its strategy. The paper identifies the root of the problem in the uncertainty surrounding the economic and legal interpretation of fair, reasonable, and non-discriminatory (FRAND) licensing terms, as well as in the willingness of national courts to act as global licensing tribunals. Additionally, the paper investigates whether the ongoing strategies of the US and the EU align with their stated goal of achieving technological leadership.

SEP Developments in the E.U., Germany, and the U.K.

I am now back from Munich, after having spent several days conducting research at the Max Planck Institute for Intellectual Property and Competition Law in connection with my two pending book projects.  I also had a very enjoyable time speaking at Ludwig-Maximilians-Universität last week on the topic of extraterritorial damages, and spending time with professional colleagues and friends, including some new ones.

The big news from the world of patent law, of course, was announced just as I was departing, namely that the European Commission was withdrawing its draft SEP Regulation.  I’m not sure that’s a huge surprise, given all the criticism that had been leveled against the draft over the past (nearly) two years—though to be fair, there were many defenders as well, including some who hoped that the Commission would succeed in establishing its proposed nonbinding FRAND determination procedure, as a tool for assisting courts in deciding what terms may or may not be FRAND.  Anyway, there has been a range of opinion on the matter over the past few days, including posts on JUVE Patent, IAM, IP Watchdog, and ip fray; and OxFirst will be putting on a webinar addressing this topic among others on February 27, with Nokia’s Clemens Heusch and Xiaomi’s Le Chen scheduled to speak (registration information here). 

Big news expected for next week includes the decision of the OLG Munich in HMD Global Oy v. VoiceAge EMS, which is expected to address the EC amicus brief’s interpretation of Huawei v. ZTE.  Indications at the preliminary hearing in late October were that the OLG was receptive to the EC’s arguments; two UPC panels, by contrast, were not so enthusiastic, to put it mildly, so this should be interesting.  I will plan to read and blog about the decision as soon as it is available.  In addition, SEP mavens will be awaiting Tuesday's hearing of the EWCA concerning whether Lenovo may be entitled to an interim license in its dispute with Ericsson.  The hearing will be live streamed, here.  

Meier-Beck on Judicial Determinations of FRAND Terms

Peter Meier-Beck, the prominent, now-retired presiding judge of Germany’s Bundesgerichtshof, has made available an article, forthcoming in GRUR Int., titled Should the Unified Patent Court Set FRAND Terms?  (Spoiler alert:  Judge Meier-Beck’s answer is, unsurprisingly, “no.”)   Here is a link to the paper, and here is the abstract:

Matthias Leistner recently addressed the question of how the Unified Patent Court should implement the decision of the Court of Justice of the European Union (CJEU) in Huawei v. ZTE in patent infringement proceedings involving a FRAND defence (GRUR Patent 2024, 327). In this context, he takes the view that the Unified Patent Court could and should – like the English courts – determine the terms of a FRAND licence agreement in the case of mutually ‘willing’ parties who are neither able to agree on the terms of such an agreement nor willing to accept a binding provision and its modalities by an arbitration tribunal or a third party. This article attempts to shed light on the prerequisites and limits of such a judicial FRAND determination.

Whether one agrees with Judge Meier-Beck or not, this is certainly an important article for anyone interested in FRAND issues.  The first part of the article presents Judge Meier-Beck’s legal analysis, of why he believes neither the German courts nor the UPC have jurisdiction to set FRAND terms.  The last few pages set forth his policy analysis of why this is a good thing.  These latter arguments will be familiar to anyone who’s read Calabresi and Melamed, i.e., that the parties have better information than a court, that the administrative costs of having courts determine FRAND licenses would be enormous and the resulting rates subject to error, that it’s better for courts to follow the German model of fostering negotiations among the parties than providing perverse incentives by setting the rates or them, etc.  (On the other hand, there is no mention of the counterargument that patent owners sometimes can use the threat of injunctive relief against locked-in implementers to extract royalties that reflect holdup value.)  Judge Meier-Beck takes issue with the EC amicus brief’s view that courts should apply the Huawei v. ZGE steps in strict sequence, which he views as formalistic, and he’s not enthusiastic about the draft SEP Regulation authorizing panels to make nonbinding FRAND determinations, either, see p.7 n.49.  He also seems a bit suspicious, in my reading, of what might motivate some of the courts that might undertake the setting of global FRAND terms.  See p.9 (stating that if courts determine global FRAND terms, it is possible that those “decisions may also be determined by aspects other than the fair, reasonable and non-discriminatory terms or the worldwide use of standard-essential patents”; p.6 n.38 (stating that “in the global context in which conflicts of interest in question can be played out, it cannot be assumed that every state or judicial price fixing for licences to standard-essential patents worldwide is exclusively committed to the goal of finding a price that is analogous to competition”).   

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As I mentioned the other day, I will be spending some time in Munich the next two weeks.  I plan to resume blogging the week of February 17.

 

My Lecture Next Week in Munich on Extraterritorial Damages

This coming weekend I leave for a 10-day trip to Munich.  The primary purpose of the trip is to do some research at the Max Planck Institute in connection with my two pending book projects (Wrongful Patent Assertion:  A Comparative Law and Economics Analysis, under contract with OUP, and Remedies in Intellectual Property Law, under contract with Elgar).  I also am looking forward to catching up with several friends, acquaintances, and colleagues from the world of German IP law.  In addition, I will be giving a lecture at Ludwig-Maximilians-Universität next Wednesday, February 5, at 6:30 p.m. titled “Extraterritorial Damages.”  Here is a brief description:

As a general rule, intellectual property (IP) rights are territorial in nature. Subject to some possible exceptions, acts committed abroad do not violate domestic IP laws. In recent years, however, global commerce has brought to the forefront the question of whether the territoriality principle altogether precludes domestic courts from awarding damages for extraterritorial losses.

 

Professor Cotter will explore this issue based on decisions from the US, the UK, Canada, Japan, and Germany and review the evolving law, as well as some yet-to-be-resolved questions, concerning awards of extraterritorial damages for patent, copyright, trademark, and trade secret infringement. He will conclude with some thoughts on the related issue of whether courts should award global FRAND royalties in disputes involving SEPs.

More information can be found on the website of CIPLITEC (The Center for Law, Information and Technology), here.  

During the duration of my stay in Germany, I probably will take a break from blogging, unless something extremely important happens that I simply have to write about.  I expect to publish at least one more post this week, however, before leaving.   

Amicus Briefs in Support of EcoFactor; Two Cert. Petitions in Cases Involving Questions of Extraterritorial Damages

As previously noted, the Federal Circuit will be rehearing en banc EcoFactor, Inc. v. Google LLC, on the question of “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 EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.”  An earlier post linked to Google’s brief and the amicus briefs filed in support of Google (one of which I joined).  EcoFactor’s corrected brief and three amicus briefs in support of EcoFactor are now available on Pacer as well.  Here they are, below.  If any more come in, or if any of the below are replaced with corrected copies, I will add them to the list:

PLAINTIFF-APPELLEE ECOFACTOR, INC.’S CORRECTED NON-CONFIDENTIAL EN BANC RESPONSE BRIEF

EN BANC REHEARING BRIEF OF AMICUS CURIAE ALLIANCE OF U.S. STARTUPS & INVENTORS FOR JOBS (“USIJ”) IN SUPPORT OF APPELLEE, ECOFACTOR

BRIEF OF THE NEW CIVIL LIBERTIES ALLIANCE AS AMICUS CURIAE IN SUPPORT OF PLAINTIFF-APPELLEE

BRIEF FOR PROFESSOR MICHAEL RISCH AND THE GROUP OF INTERESTED PRACTITIONERS AS AMICUS CURIAE IN SUPPORT OF ECOFACTOR

The New Civil Liberties Alliance brief is limited to arguing that Judge Pauline Newman should be part of the en banc panel.

While on the topic of briefs, I should note as well that the plaintiff in Brumfield v. IBG has filed a cert. petition with the U.S. Supreme Court.  Brumfield is a case in which the Federal Circuit concluded that U.S. courts may award damages for losses suffered abroad by reason of conduct occurring within the United States in violation of 35 U.S.C. § 271(a)—but on the facts of the case, concluded that the plaintiff hadn’t proven any such damages (see discussion here).  The cert. petition mostly focuses on other issues, however, though it does argue that “after ruling in [original plaintiff] TT’s favor that TT could obtain damages based on foreign conduct for infringement under 35 U.S.C. § 271(a), the Federal Circuit raised and decided the issue of causation (i.e., whether there was a 'casual connection' between infringement under § 271(a) and the 'foreign conduct for which proposal seeks royalty damages.' (Pet. App. 52a). This issue was never argued by the parties or decided by the district court below. (CAFC App. 18-20). By deciding it for the first time on appeal, the Federal Circuit denied TT’s due process rights to be heard” (p.39).  The responsive brief is due on March 20.  And while on the topic of extraterritorial damages and cert. petitions, Hytera has filed a cert. petition in a case in which the Seventh Circuit held that the federal Defend Trade Secrets Act (DTSA) extends civil liability for extraterritorial trade secret misappropriation, where "an act in furtherance of the offense was committed in the United States."  Hytera disagrees with the lower court’s interpretation of the quoted language, arguing that the statutory term “offense” means “criminal offense,” not “civil offense,” such that extraterritorial liability extends only to criminal trade secret misappropriation in violation of the Economic Espionage Act.  The question presented is “Does the private right of action for trade secret misappropriation created by the Defend Trade Secrets Act of 2016 rebut the presumption against extraterritorial application of U.S. law?"  A response is due February 10. 

I will be discussing both Brumfield and Hytera in my lecture at Ludwig Maximillians University in Munich next week.  More information forthcoming tomorrow.