In an order issued yesterday by the U.S. District Court for the Western District of Washington (that just hit the docket this afternoon), Judge James L. Robart granted Microsoft’s long-pending motion for partial summary judgment and invalidated thirteen claims of three patents Motorola alleged as essential to the AVC/H.264 video coding standard. Although this ruling stems from the infringement portion of the case, and the major issues between the parties involve the RAND breach of contract claims brought by Microsoft over Motorola’s entire 802.11 and H.264-essential patent portfolios, it’s possible that Judge Robart’s ruling could have some future effect on these RAND claims as well.
A bit of background on Microsoft’s motion is in order: the three patents at issue in Microsoft’s motion (U.S. Patent Nos. 7,310,374; 7,310,375; and 7,310,376) were originally asserted by Motorola in an infringement case brought in the Western District of Wisconsin; that case was subsequently transferred to Washington and consolidated with the RAND case (for more background on the complex procedural posture of the dispute, please see our January 2, 2013 post). Microsoft claimed in its motion that the “means plus function” claims of these patents were invalid as indefinite under 35 U.S.C. § 102, ¶ 2 for failure to properly describe the corresponding structure of the “means for using” and “means for decoding” elements. Both Microsoft and Motorola agreed that the corresponding structure for each of these terms was a “decoder,” but disagreed about the adequacy of how the patents described such a “decoder” – Motorola claimed that a decoder is a structure known to one of ordinary skill in the art, while Microsoft argued that more information (e.g., an algorithm for performing the decoding) was required.
Judge Robart agreed with Microsoft and invalidated the asserted means plus function claims. He held that the “decoder” disclosed in the Motorola patents amounted to a general purpose device programmed to perform the claimed functions, similar to the general purpose devices in the notable means plus function indefiniteness cases of Aristocrat Techs. v. Int’l Game Tech. and WMS Gaming v. Int’l Game Tech. Thus, in order to satisfy the definiteness requirement, the patents were required to disclose an algorithm for performing the claimed functions. According to the court, none of the algorithms, descriptions, or figure identified by Motorola sufficed, and the claims were held to be indefinite.
It’s unclear what effect — if any — this ruling will have on the Microsoft-Motorola dispute. (Although obviously, if Motorola was planning to assert these claims in future litigation, this ruling is unwelcome.) Given the fact that Microsoft has already committed to the court that it will take a license to these patents as part of Motorola’s entire H.264 portfolio, and that Judge Robart already issued an order preventing Motorola from seeking injunctive relief on these patents, the only thing this ruling might prevent is enhanced damages for willful infringement (in the event the litigation even got to that point). It’s also possible that Judge Robart could take his invalidity finding into account as he determines the RAND rate for Motorola’s H.264-essential portfolio, on the theory that invalid claims may reduce the value of any given patent — but it’s worth pointing out that this ruling does not invalidate any of these patents in whole, but only in part (a handful of means plus function claims in each). It’s hard to imagine his RAND-setting opinion getting down to that granular level, but I guess we will just have to wait for Judge Robart’s upcoming RAND ruling to find out.