These briefly mostly set out to rebut arguments offered in the responsive briefs (linked to in our prior post), so we won’t get too much into the weeds here — Microsoft says Motorola’s motion should fail, and Motorola argues that Microsoft isn’t entitled to summary judgment. But that being said, Microsoft’s brief raises one issue that we thought warranted mentioning.
As noted by Florian Mueller of FOSS Patents, footnote 1 of the brief notes that Motorola is moving in Germany for an accounting of past damages related to two German H.264-essential patents that Microsoft was found to have infringed. Both Florian and Microsoft contend that this is improper and disregards Judge Robart’s ruling that set a worldwide RAND rate for all of Motorola’s H.264-essential patents. One possibility for Motorola’s action is that Motorola may expect Judge Robart to be reversed on appeal, which would nullify the H.264 RAND rate and necessitate a damages claim for Motorola to recover any royalties.
Additionally — and this is an open question — there may be differences between a RAND royalty calculated in a breach of contract action (the W.D. Wash. case) and RAND-constrained damages calculated in a patent infringement action. This is because in an infringement damages context, the patent is presumed to be both valid and infringed, and Judge Robart’s RAND ruling discounted the RAND rate because no determinations on validity and infringement (i.e., essentiality) had been made. As pointed out in a recent presentation by Professor Thomas F. Cotter (author of the excellent Comparative Patent Remedies blog), this difference means that there’s a plausible argument to be made that RAND royalties determined in a breach of contract action would be lower than those determined in an infringement action.
The parties’ summary judgment motions are noted for July 31; it’s probable (but not clear) that Judge Robart will hold oral argument. If so, we’ll have to see if Judge Robart rules from the bench or if he waits to issue a written opinion in advance of the jury trial.
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.
Recently Apple explained to the ITC that many of the standard-essential patents asserted by Samsung against Apple have failed under the scrutiny of litigation, resulting in a finding of non-infringement or invalidity. Well, Apple can now chalk up another SEP win on the board, although one that has nothing to do with Samsung. Yesterday, Judge Sue Robinson of the U.S. District Court for the District of Delaware ruled on summary judgment that Apple does not infringe two patents alleged by Golden Bridge Technology to be essential to the 3G W-CDMA wireless telecommunications standard.
In 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.
On November 29, 2012, 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 – 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 injunction 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.