Motorola has filed its opposition to Microsoft’s motion to transfer the appeal of Judge Robart’s RAND ruling from the Federal Circuit to the Ninth Circuit (see our prior blog on Microsoft’s motion).  Recall that Microsoft argued that the appealed action was a contract action, its nature did not change when that action was consolidated with a patent action and therefore appellate jurisdiction properly lies in the Ninth Circuit.  In its opposition, Motorola argues Federal Circuit case law that consolidation of an action with a patent action vests appellate jurisdiction in the Federal Circuit.  Motorola additionally argues that Microsoft’s Complaint was constructively amended by the district court when (1) it proceeded to determine a royalty rate under patent law and (2) it made rulings about the scope of the patent claims along the way (such as construing means-plus-function patent claim limitations).

More interesting than the otherwise dry appellate jurisdiction procedural issues presented are the underlying undertones.  The battle here implies that a RAND patent licensee would prefer to have a generalist court decide the value of patents whereas the RAND patent licensor would prefer to have the specialist patent court — Federal Circuit — decide the value of patents.  This implication is supported by the Ninth Circuit’s prior affirmation in this case of Judge Robart enjoining Motorola from enforcing an injunction in Germany on standard essential patents and Judge Posner’s decision not to enter an injunction in the Motorola v. Apple case.  What will the Federal Circuit think about allowing another appellate court to determine the value of patents?