Today Judge Robart issued an Order certifying a Rule 54(b) judgment in the Microsoft v. Motorola case where he had issued a first of its kind RAND rate ruling on Motorola H.264 and 802.11 standard essential patents (SEPs) and sustained the jury verdict that Motorola breached its RAND obligations in offering a license to Microsoft. Motorola promptly filed a notice of appeal of the Rule 54(b) judgment to the Federal Circuit (recall questions about whether the Ninth Circuit or Federal Circuit has appellate jurisdiction).
A Rule 54(b) judgment is one entered on some, but not all, claims in a case. This case involved multiple claims and counterclaims in two consolidated actions:
- Microsoft’s “contract action” against Motorola filed in W.D. Wash. on November 9, 2010
- Motorola’s “patent action” against Microsoft filed in W.D. Wis. the next day, November 10, 2010.
Motorola’s “patent action” was later transferred to W.D. Wash. in July 2011 and consolidated with Microsoft’s “contract action”. That consolidation probably vested appellate jurisdiction in the Federal Circuit over both the “patent action” and the “contract action” even though, standing alone, the “contract action” otherwise probably would have been appealable to the Ninth Circuit.
Judge Robart entered Rule 54(b) judgment on three claims:
- Microsoft’s breach of contract claim, where judgment is entered in favor of Microsoft based on the jury verdict that Motorola breached its RAND obligations.
- Judge Robart’s prior RAND ruling entered as part of the breach of contract claim relied on by the jury in reaching its breach verdict (this ruling probably is subsumed in the breach of contract judgment, but was made an explicit part of the judgment out of an abundance of caution to ensure appellate review).
- Motorola’s claim for a declaration that Microsoft repudiated any rights it had arising from Motorola’s RAND obligation by not accepting/negotiating the offered license, where judgment is entered against Motorola based on the court’s prior summary judgment ruling that rejected this claim.
This Rule 54(b) judgment leaves several claims still pending in abeyance with the prospect that many may be mooted or otherwise resolved following appeal of the judgment. For example, the parties agreed to stay their patent infringement claims– e.g., Motorola’s claim that Microsoft infringes three SEPs (at issue in the breach of contract case) and Microsoft’s claims that Motorola infringes two Microsoft patents. And Microsoft’s promissory estoppel claim may be mooted by the judgment that Motorola breached its RAND obligation as a contractual matter.
Accordingly, the next steps in this action appears to be briefing and argument at the Federal Circuit. Will keep you posted.