When Judge Robart issued his summary judgment order last week in the Microsoft-Motorola case, we noted that he ordered the parties to submit further briefing on Microsoft’s allegation that Motorola breached its RAND obligations to Microsoft (at least in part) by failing to offer a RAND license to Microsoft’s WiFi chip supplier, Marvell Semiconductor:

As the court understands it, Microsoft will argue to the jury that Motorola failed to grant a license to Marvell, and if Motorola had granted such a license, Motorola would then be precluded from seeking a license from Microsoft for the SEPs at issue. This argument requires a legal basis. The argument is premised on the notion that, legally, Motorola’s ability to seek a license from Microsoft would be exhausted by granting a license to Marvell. This issue is not explored in the parties’ summary judgment briefing. Thus, the parties may provide three-page letter briefs no later than August 16, 2013, on the legal grounds for Microsoft’s assertion that a Motorola-Marvell license would preclude Motorola from seeking a license from Microsoft. Additionally, no later than August 16, 2013, the parties may propose jury instructions on this issue.

On Friday, the parties submitted letter briefs in response to this order (links below).  As we alluded to in last week’s post, this issue raises some interesting questions on what types of behavior and licensing restrictions are proper during FRAND licensing negotiations — questions that we’ll get into after the jump.

Continue Reading FRAND licensing, chip suppliers, and the interplay of patent exhaustion / defensive suspension clauses

A month ago, we discussed how Microsoft and Motorola filed dueling summary judgment motions in an attempt to eliminate some of the issues from the upcoming RAND breach of contract jury trial in Seattle (currently set to begin August 26).  Judge James L. Robart held an oral argument on July 31, and this morning, his order hit the docket (the order is actually dated yesterday — Judge Robart is apparently not taking Sundays off).

[2013.08.11 Order on Microsoft-Motorola SJ Motions]

As you can tell from the title of this post, Judge Robart granted summary judgment on some — but not nearly all — of the issues briefed by the parties.  Both Microsoft and Motorola prevailed on some issues and lost on others.  The bottom line is that the jury will still have a lot to decide in this case.  After the jump, we’ll take a look at how Judge Robart ruled — starting with the motions that he denied.


Continue Reading Two weeks ahead of Microsoft-Motorola jury trial, summary judgment ruling reduces the issues (but only a little bit)

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

The world of standard-essential patent litigation has seen some significant upheaval over the past few months, particularly with the Microsoft-Motorola RAND-setting ruling and the ITC’s exclusion order in Samsung-Apple (and the USTR’s subsequent veto).  Today there will be a complimentary webinar in conjunction with the American Intellectual Property Law Association’s (AIPLA) Standards & Open

As we told you last week, there will be a free upcoming webinar in conjunction with the AIPLA Standards and Open Source Committee.  The webinar will feature a panel of attorneys and industry professionals discussing the consequences that may stem from decisions in some recent standard-essential patent cases of note, including the RAND breach

Earlier this week, we caught up on summary judgment motions filed by both Microsoft and Motorola in advance of next month’s breach of contract jury trial, set to take place in Seattle.  Yesterday, both parties filed reply briefs in support of these motions:

It’s July (and brutally hot on the East Coast), so you’ll have to excuse us if we’re moving a little slower than normal catching up on all the SEP litigation going around.  Earlier this month we posted about submissions by Microsoft and Motorola concerning the meaning of the “duty of good faith and fair dealing,” specifically as it applies in RAND-encumbered standard-essential patent licensing.  Not surprisingly, the parties followed up these briefs with dueling summary judgment motions, seeking to narrow issues or even potentially completely eliminate the need for the breach of contract jury trial set to take place next month in Seattle.  Last week, the parties also filed their respective oppositions to these motions.  You can take a look at the parties’ motions and oppositions below — and after the jump, we’ll give a brief synopsis of the arguments that each is making.

13.07.03 (D.E. 727) Microsoft Motion for Partial SJ and 13.07.15 (D.E. 758) Motorola Response to MS Partial SJ Motion

13.07.03 (D.E. 720) Motorola Motion for SJ and 13.07.12 (D.E. 740) MS Response to Motorola SJ MotionContinue Reading With dueling summary judgment motions, Microsoft and Motorola seek to eliminate issues from next month’s RAND trial

Later this summer, the second phase of the Microsoft v. Motorola RAND breach of contract trial will take place in Judge James L. Robart’s courtroom in Seattle, WA.  A jury will decide whether Motorola breached its SSO-related RAND licensing obligations by offering what Microsoft deems “blatantly unreasonable” licensing terms for its 802.11- and H.264-essential patents, and then following up with patent infringement suits.

In a prior summary judgment order, Judge Robart already concluded that in order to be permissible under its RAND obligations, Motorola’s license offers “must comport with the implied duty of good faith and fair dealing inherent in every contract.”  He noted that this inquiry is heavily fact-intensive, and best left to the jury to decide.  To this end, Judge Robart recently requested that both Microsoft and Motorola present background briefing on the parameters of what is required by the duty of good faith and fair dealing in contractual disputes.  This week, the parties complied with this request:

Both parties acknowledge that the issue of good faith and fair dealing is complicated — but understandably, the parties also differ quite a bit in their views on what should be considered.  After the jump, we’ll take a brief look at the filings.


Continue Reading In Microsoft-Motorola RAND dispute, “good faith and fair dealing” is in the eye of the beholder

This past Tuesday, Judge James L. Robart held a telephonic hearing in the Microsoft-Motorola RAND breach of contract dispute taking place in his W.D. Wash. court.  As we discussed last week, the hearing centered on Microsoft’s request that the court release a previously-ordered $100 million bond — a bond that it had required Microsoft to

Yesterday we noted that Microsoft and Motorola are arguing over a couple of issues in the lead-up to the August breach of contract jury trial taking place in Judge Robart’s court in Seattle.  The two issues are only tangentially related: Microsoft would like Judge Robart to release the $100 million bond that he previously required Microsoft to post as security for the preliminary injunction that prevented Motorola from enforcing a German standard-essential patent injunction; Motorola argues that Microsoft has failed to produce discovery that supports its claim for RAND breach-related damages that stems from measures Microsoft took to move its German distribution center, in case Motorola did obtain and enforce an injunction.

Judge Robart set an expedited “letter-briefing” schedule on these issues and will hold a telephonic oral argument next week.  After the jump, we’ll take a quick look at the parties’ briefs and arguments.


Continue Reading Microsoft-Motorola update part two: “Bond. $100M Bond.”