Earlier this week, we caught up on summary judgment motions filed by both Microsoft and Motorola in advance of next month’s breach of contract jury trial, set to take place in Seattle.  Yesterday, both parties filed reply briefs in support of these motions:

These briefly mostly set out to rebut arguments offered in the responsive briefs (linked to in our prior post), so we won’t get too much into the weeds here — Microsoft says Motorola’s motion should fail, and Motorola argues that Microsoft isn’t entitled to summary judgment.  But that being said, Microsoft’s brief raises one issue that we thought warranted mentioning.

As noted by Florian Mueller of FOSS Patents, footnote 1 of the brief notes that Motorola is moving in Germany for an accounting of past damages related to two German H.264-essential patents that Microsoft was found to have infringed.  Both Florian and Microsoft contend that this is improper and disregards Judge Robart’s ruling that set a worldwide RAND rate for all of Motorola’s H.264-essential patents.  One possibility for Motorola’s action is that Motorola may expect Judge Robart to be reversed on appeal, which would nullify the H.264 RAND rate and necessitate a damages claim for Motorola to recover any royalties.

Additionally — and this is an open question — there may be differences between a RAND royalty calculated in a breach of contract action (the W.D. Wash. case) and RAND-constrained damages calculated in a patent infringement action.  This is because in an infringement damages context, the patent is presumed to be both valid and infringed, and Judge Robart’s RAND ruling discounted the RAND rate because no determinations on validity and infringement (i.e., essentiality) had been made.  As pointed out in a recent presentation by Professor Thomas F. Cotter (author of the excellent Comparative Patent Remedies blog), this difference means that there’s a plausible argument to be made that RAND royalties determined in a breach of contract action would be lower than those determined in an infringement action.

The parties’ summary judgment motions are noted for July 31; it’s probable (but not clear) that Judge Robart will hold oral argument.  If so, we’ll have to see if Judge Robart rules from the bench or if he waits to issue a written opinion in advance of the jury trial.