Last week, Judge James L. Robart briefly reopened the trial record in the Microsoft-Motorola RAND breach of contract case, in order to allow the parties to submit additional evidence regarding the RAND rate for Motorola’s patents.  Yesterday, Judge Robart issued another short minute order, this time allowing additional briefing on a different issue.  Yesterday’s order concerns the terms of Google’s license with the MPEG LA AVC/H.264 patent pool, which Microsoft claims are dispositive of the appropriate RAND rate for Motorola’s H.264 patents.  (For more background on this particular issue, see our earlier post on the parties’  briefing leading up to oral arguments.).  Judge Robart has now allowed the parties to submit letter briefs of up to six pages by March 1 in light of certain “novel arguments” regarding the MPEG LA agreement that were apparently raised by the parties at the January 28 oral argument.
Continue Reading Microsoft-Motorola judge orders additional briefing on how Google-MPEG LA license agreement may affect RAND terms for Motorola’s H.264 patents

Yesterday Apple filed its opposition to Motorola’s motion to dismiss or transfer for lack of jurisdiction in Federal Circuit appeal No. 2013-1150.  This is Apple’s appeal of Judge Crabb’s dismissal of the Apple-Motorola FRAND/antitrust action (W.D. Wis. No. 3:10-cv-00178)).  Apple contends that the Federal Circuit has jurisdiction over Apple’s appeal of the dismissal of its declaratory judgment claims because (1) the hypothetical Motorola complaint at which Apple’s declaratory judgment claim was directed would be for patent infringement, and (2) the district’s court’s decision to dismiss the patent-specific DJ claims without prejudice does not deprive the Federal Circuit of jurisdiction.  As we anticipated in our post on Motorola’s motion to dismiss/transfer, some of Apple’s arguments in its opposition raise some interesting questions about whether jurisdiction over this appeal will be consistent with past and potential future appeals of orders in the Microsoft-Motorola RAND case.
Continue Reading Apple: Federal Circuit has exclusive jurisdiction over Apple-Motorola FRAND/antitrust appeal

gavelIn an order issued yesterday by the U.S. District Court for the Western District of Washington (that just hit the docket this afternoon), Judge James L. Robart granted Microsoft’s long-pending motion for partial summary judgment and invalidated thirteen claims of three patents Motorola alleged as essential to the AVC/H.264 video coding standard.  Although this ruling stems from the infringement portion of the case, and the major issues between the parties involve the RAND breach of contract claims brought by Microsoft over Motorola’s entire 802.11 and H.264-essential patent portfolios, it’s possible that Judge Robart’s ruling could have some future effect on these RAND claims as well.
Continue Reading Microsoft-Motorola (W.D. Wash.) update: Court invalidates several claims of Motorola H.264-essential patents

[UPDATE]  Since this post was originally published on January 22, the deadline passed for the parties to submit extrinsic evidence and additional arguments supporting their respective interpretations of the Google-MPEG LA AVC/H.264 license agreement.  Microsoft submitted both a brief and a supporting Declaration of Lawrence A. Horn, who is the President and CEO of MPEG LA, LLC.  Mr. Horn’s declaration supports Microsoft’s argument (as detailed in our original post below) that the scope of the grant-back under the MPEG LA license agreement extends to all Affiliates of Google, not just to those specifically identified.  For its part, Motorola argues that the “scope” language of the MPEG LA agreement remains ambiguous, and that Mr. Horn’s declaration represents inadmissible hearsay because Motorola was unable to cross-examine him.

The parties’s respective briefs and Mr. Horn’s declaration may be accessed from the links below:


Judge Robart’s forthcoming opinion in the Microsoft v. Motorola RAND breach of contract case in the Western District of Washington is highly anticipated by those who pay attention to standard-essential patent disputes, as it will likely provide a judicially-sanctioned roadmap for how to determine RAND terms and conditions in a given licensing situation.  But before he issues a written decision, a hearing is scheduled for January 28, during which Judge Robart will hear oral argument from Microsoft and Motorola regarding the implications that Google’s AVC/H.264 patent pool license agreement with MPEG-LA may have on the appropriate RAND terms for Motorola Mobility’s H.264-essential patent portfolio. (Google, of course, being the parent company of Motorola Mobility since it acquired Motorola in May 2012).

Continue Reading Preview: Motorola, Microsoft set to debate relevance of Google’s MPEG LA license agreement to RAND terms next week

In a not-so-surprising development in light of the FTC-Google/Motorola settlement announced last week, Google subsidiary Motorola Mobility asked the ITC yesterday to drop its two remaining standard-essential patents from its Xbox infringement dispute with Microsoft (Inv. No. 337-TA-752).  The two patents dropped from the case — U.S. Pat. Nos. 6,980,596 and 7,162,094 — are alleged by Motorola to be essential to the ITU-T H.264 video coding standard.  Given that the only relief that the ITC may grant is of an injunctive nature (whether an exclusion order or a cease & desist order), Motorola’s action appears to be consistent with the principles set forth in the FTC settlement, in which Google and Motorola agreed to forego seeking injunctive relief for SEPs except in certain extraordinary circumstances.
Continue Reading Motorola drops remaining SEPs from Microsoft Xbox ITC action

Lost in the all of the publicity surrounding the FTC’s consent decree that ended its investigation of Google and Motorola Mobility yesterday is the fact that while the FTC’s decision not to proceed with action against Google for its search practices was unanimous, its decision to issue a complaint and order relating to Google’s enforcement of its SEPs was not — Commissioner Maureen K. Olhausen submitted a dissenting statement.  (Commissioner J. Thomas Rosch issued a separate statement, but voted in favor of issuing the complaint).  The mere fact that the decision was not unanimous isn’t that remarkable in and of itself, as the five-member Commission often reaches split decisions.  However, Commissioner Olhausen’s dissent raises some issues about the FTC’s action that warrant mentioning here.
Continue Reading A dissenting voice from the FTC/Google consent agreement

On November 29, Judge James L. Robart of the U.S. District Court for the Western District of Washington issued an order granting Microsoft’s motion for partial summary judgment and dismissing Motorola’s claims for injunctive relief. Judge Robart found that under the circumstances of the case – where the patents-in-suit were subject to a RAND licensing promise from Motorola, and where Microsoft sought enforcement of that promise in Judge Robart’s court – Motorola could not satisfy either the irreparable harm or inadequate remedies at law prongs of the eBay test. But the court’s order is even broader, barring any claims of injunctive relief that Motorola might seek against Microsoft with respect to any patents essential to the ITU H.264 video coding or 802.11 wireless networking standards.
Continue Reading Injunctive Relief Precluded for Motorola’s SEP Infringement Claims

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more important occurrences with a brief post.  The recent bench trial before Judge James L. Robart of the Western District of Washington between Microsoft and Motorola a may yield a groundbreaking opinion in the area of standard-essential patents, so this is a case that warrants a review.

The dispute between the parties originated back in the fall of 2010.  Microsoft sued Motorola in the U.S. District Court for the Western District of Washington and the U.S. International Trade Commission, accusing Motorola Android devices of infringing several Microsoft patents.  Motorola in turn sent two letters to Microsoft, offered Microsoft licenses to two of Motorola’s standard-essential patent portfolio – for the 802.11 WiFi standard and the H.264 video coding standard – at a rate of 2.25% of the net selling price of the end products that practice those standards.  Microsoft then filed a complaint in the W.D. Wash. against Motorola for breach of contract – specifically, Microsoft alleged that Motorola’s offers to Microsoft breached Motorola’s prior promises to the IEEE and the ITU to offer licenses to its 802.11 and H.264-essential patents on RAND terms.

Continue Reading Catching up on…Microsoft v. Motorola