Last week Microsoft filed a reply supporting its motion to transfer to the Ninth Circuit Motorola’s appeal of Judge Robart’s RAND ruling (see our prior posts on Microsoft’s motion and Motorola’s opposition). Microsoft argues that the Ninth Circuit has appellate jurisdiction under law of the case, because issues of the contract action being consolidated with a patent action and the district court assessing a RAND royalty rate were considered by the Ninth Circuit when it accepted jurisdiction of Motorola’s prior appeal of Judge Robart’s order that precluded Motorola from seeking any injunction on its standard essential patents at issue in the case.
RAND Not Patent Damages. Microsoft also argues that the RAND determination was deciding contract damages, not patent damages under Section 284, stating:
Nor does a supposed need for “[u]niformity among courts in different circuits as to how to calculate the royalty rate for standard-essential patents’ give rise to jurisdiction. A contractual RAND royalty does not reflect “damages adequate to compensate” a standard-essential patent holder for any “use made” of an invention by implementers of the standard, 35 U.S.C. S 284–it is determined rather by the patentee’s particular contractual commitment (which may be, as here, worldwide and involve non-U.S. patents), to a particular standard-setting organization, as part of a particular technical standard.
Claim Scope. Microsoft also challenges whether Judge Robart used patent law to determine the claim scope in determining the RAND rate, because “the RAND order itself … treats Motorola’s patents as essential to the standards even though ‘none of the terms comprising the claims … have been construed by the court.'”