Motorola denied injunction over standards patents on Microsoft products

Motorola could however be entitled to monetary damages for the standards-essential patents Microsoft allegedly infringed

A District Judge in Seattle denied Motorola Mobility an injunction on Microsoft's products that allegedly infringe its H.264 and 802.11 standards-essential patents.

The order of Judge James L. Robart on Friday applies not only to patents in the suit, but also to H.264 European patents at issue in a lawsuit in Germany between Microsoft and the Google company.

Disputes over standards-essential patents have become common in the U.S. and Europe, and both industry and government bodies have weighed in against letting the patents be grounds for an injunction

As Motorola cannot show irreparable harm or that monetary damages would be inadequate, the court agrees with Microsoft that injunctive relief is improper in this matter, the Judge wrote in an 18-page order.

The order not only dismisses injunctive relief for the Motorola asserted patents, but also for Motorola's entire H.264 standard-essential patent portfolio including the European patents at issue in the lawsuit in Germany, he added.

The lawsuit in Seattle involves two standards-- Institute of Electrical and Electronics Engineers' 802.11 wireless local area network standard and the International Telecommunication Union's H.264 advanced video coding technology standard.

The U.S. District Court for the Western District of Washington at Seattle had earlier ruled that as a third-party beneficiary of Motorola's commitments to the ITU and the IEEE, Microsoft is entitled to a RAND (reasonable and non-discriminatory) license agreement for Motorola's H.264 and 802.11 standards-essential patents.

"The Motorola Asserted Patents, at issue in this litigation, are standard essential patents of the H.264 Standard and are included in Motorola's H.264 standard essential patent portfolio," Judge Robart wrote in his order. Thus, Microsoft is entitled to a license to the Motorola asserted patents on RAND terms, he added.

Microsoft had filed a motion for partial summary judgment dismissing an injunction sought by Motorola for patent infringement of Motorola-owned H.264 standard-essential patents subject to RAND commitments.

The two companies have disputed before the court the royalty rate, with Microsoft alleging that Motorola seeks to charge too much. The Judge is to decide the royalty rate, thus perhaps laying a framework for resolving similar disputes over royalty for standards patents.

Microsoft has committed to accept a license on RAND terms for Motorola's entire H.264 standard essential patent portfolio, and the litigation is continuing to determine the details of such a license, the Judge said on Friday. The license agreement will constitute Motorola's remedy for Microsoft's use of Motorola's H.264 standard essential patent portfolio to include the Motorola asserted patents, he added.

A judicially-determined RAND license covering all of Motorola's H.264 essential patents would also dispose of its request for an injunction in Germany based on Motorola-owned, H.264 standard essential patents, the Judge wrote. The court had earlier issued an order enjoining Motorola from enforcing any injunctive relief it may receive through the German lawsuit initiated in July.

A license agreement will also result between Microsoft and Motorola for Motorola's 802.11 standard-essential patents, Judge Robart wrote. "Thus, the effect of this court's decision would also bar an injunction for the assertion of any Motorola-owned 802.11 standard essential patents against Microsoft," he added.

The use of standards-essential patents covered under FRAND terms in patent disputes has come under scrutiny recently. In June, the U.S. Federal Trade Commission said in a statement in the public interest before the U.S. International Trade Commission that ITC's ban orders in matters involving implementation of standards-essential patents, that were committed to be licensed on FRAND (fair, reasonable and non-discriminatory) terms, has the potential to cause substantial harm to U.S. competition, consumers and innovation.

FTC was commenting on ITC investigations into complaints by Motorola against Microsoft and Apple. The ITC last month decided to review an earlier decision that Apple did not infringe four patents of Samsung Electronics in its mobile devices including the iPhone and iPad, and said it plans to discuss in the review issues relating to standards-essential patents, including whether an undertaking to license a patent on FRAND terms precludes a ban on a product if it infringes the patent.

John Ribeiro covers outsourcing and general technology breaking news from India for The IDG News Service. Follow John on Twitter at @Johnribeiro. John's e-mail address is john_ribeiro@idg.com

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