Microsoft and Motorola are currently hurtling toward an August 26 jury trial in their RAND breach of contract dispute in Seattle.  But it looks like the SEP disputes between the parties are not limited to the United States, however.  In a letter filed with Judge James L. Robart’s court yesterday, Microsoft claims that it was recently served with a complaint in a lawsuit filed in Mannheim, Germany by Motorola, a lawsuit in which Motorola is seeking to recover royalties for past infringement of two H.264-essential patents.  Microsoft also claims that this lawsuit is improper, and in light of it, now asks Judge Robart for permission to file a motion “to renew and expand” the anti-suit injunction previously entered against Motorola, which prevented Motorola from enforcing an injunction in Germany on these very same H.264 patents.

[2013.08.08 Microsoft Request for Permission to File Anti-Suit Injunction Motion]

As noted above, the prior anti-suit injunction entered by Judge Robart (which was subsequently replaced by his summary judgment ruling on injunctive relief) was focused on prohibiting Motorola from enforcing an injunction on its H.264 SEPs — which Judge Robart found was generally improper when Microsoft had committed to pay a RAND rate determined in Judge Robart’s court.  But here, Microsoft apparently wants to bring a motion to prevent Motorola from seek monetary damages in Germany that might be in excess of the H.264-related RAND rate set in Judge Robart’s April 25 RAND-setting order.

Specifically, Microsoft claims that:

In the new action, Motorola is seeking to circumvent and undercut the Court’s RAND royalty determination, to distract and burden Microsoft on the eve of the breach trial set to begin at the end of August and to further run up Microsoft’s legal costs in defending those unnecessary actions. In these proceedings Motorola is seeking to collect
royalties for Microsoft’s German H.264 SEPs at amounts much higher than the world-wide royalty this Court has now set. [i.e., Motorola is seeking damages for past infringement]


Microsoft says that this is improper in light of the court’s RAND determination, because:

The Court has ruled that Motorola is obligated to provide Microsoft worldwide RAND licenses to Motorola’s 802.11 and H.264 SEPs, and has determined the RAND royalties for those SEPs. As the Court is aware, Microsoft has offered to tender payment in full to Motorola for sums currently due based on the 802.11 and H.264 royalties that the Court established. Motorola has not responded to Microsoft’s tender. Microsoft remains willing to pay the royalty adjudicated by the Court.

If Judge Robart grants permission for Microsoft to file its motion, we’ll be sure to let you know.  The ensuing dispute could be an interesting one — it’s unclear whether adjudicated RAND royalties necessarily need to be the same in both (1) cases of adjudicated infringement, such as in the German case; and (2) cases where no finding of infringement has been made, such as in the Washington action.  And this doesn’t even get into issues of adding extra damages for willful infringement, which some claim is a sufficient incentive (as opposed to the availability of injunctive relief) to bring FRAND licensees “to the the table” in negotiations (although as we understand it, willfulness is not a legal concept used in Germany).