A couple weeks ago, Apple directed the Federal Circuit’s attention to the Microsoft-Motorola RAND-setting opinion.  Apple claimed that in a variety of ways, Judge Robart’s decision supported Apple’s arguments on appeal.  This past Friday, Motorola filed a brief response to Apple’s citation of supplemental authority — and in it, Motorola claims that the reasoning of Judge Robart’s decision shows that Motorola — not Apple — should prevail on appeal.

[2013.05.24 Moto Response to Apple Citation of Supplemental Authority]

Motorola first argues that the situations in Apple-Motorola and Microsoft-Motorola are different, because Microsoft was seeking a contractually-based RAND determination for entire portfolios of patents related to software and video gaming devices, while Judge Posner’s decision related to remedies for infringement of a small number of individual standard-essential patents mostly related to cellular/mobile devices.

But Motorola then points to several portions of Judge Robart’s decision that, in its view, support its arguments that Judge Posner’s decision should be reversed.  These include Judge Robart’s views that:

  • The “ex ante” incremental value of the patent is but one factor in the determination of a FRAND rate (not the sole factor, as implied by Judge Posner);
  • The Georgia-Pacific framework for simulating a hypothetical negotiation between the parties is the proper way to determine a FRAND rate, and the negotiation should take place at the time of first infringement — although the G-P analysis should be modified, and only certain factors will be relevant; and
  • Unlike the patent portfolios at issue in Microsoft-Motorola (802.11 Wi-Fi and H.264 video coding), Motorola’s cellular-related standard-essential patent portfolio is “extremely strong” (which is relevant because some of the SEPs at issue in Apple-Motorola are cellular-essential).

The Federal Circuit now has a good juxtaposition of the views of two well-respected judges on the issue of determination FRAND terms — we’ll see whose side (if either) the appeals court will take.