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Motorola ITC wins raise stakes in Apple, Microsoft contract cases

4/24/2012 COMMENTS (0)

Google spent lavishly last year to acquire Motorola Mobility and its portfolio of patents, dozens of which were adopted by standard-setting bodies and are thus essential to smart device technology. Right now, that's looking like a great investment. On Monday, Administrative Law Judge David Shaw issued an initial determination that Microsoft's Xbox infringes three Motorola standard-essential patents (and one other, to boot). Tuesday, ITC Administrative Law Judge Thomas Pender piled on with an initial determination that Apple's iPhone also infringes a standard-setting Motorola patent.

It's not terribly surprising that the Xbox and iPhone were found to infringe Motorola IP -- standard-essential patents are, by definition, essential -- and an ALJ initial determination isn't a final ruling by the full ITC. Nevertheless, the rulings raise the stakes in a pair of breach-of-contract cases (known as RAND suits) in which Microsoft and Apple accuse Motorola of failing to live up to promises to license those standard-setting patents on fair and reasonable terms.

Apple's suit, filed in San Diego federal district court in February, is still in such preliminary stages that it's hard to predict how effectively the case can mitigate Motorola's infringement allegations. But Microsoft's contract case is teed up for a summary judgment hearing in Seattle federal court on May 7. Depending on how U.S. District Judge James Robart rules, Motorola could be forced to license to Microsoft three of the four patents Microsoft was found to infringe in the ITC initial determination.

Robart has already shown no reluctance to meddle in other disputes between Microsoft and Motorola. As I reported earlier this month, the judge enjoined Motorola from acting to enforce any relief it's granted in a German infringement suit against Microsoft. After Robart's ruling, Microsoft's counsel at Sidley Austin asked the ITC administrative law judge to postpone his initial determination until the Seattle summary judgment motion is decided. Motorola's lawyers at Ropes & Gray and Steptoe & Johnsoncountered that Microsoft's motion was "untimely, presumptuous, and unnecessary," since, among other things, Microsoft had already asked the ITC judge to consider its unreaso nab le licensing terms defense.

Shaw not only denied Microsoft's motion, but also ruled that Microsoft had "not prevailed on any equitable or RAND defense." Both Microsoft and Motorola told Reuters Monday that they expect ultimately to prevail at the ITC, but the ITC judge's rejection of Microsoft's defense puts a lot of pressure on the company to prevail on its Seattle summary judgment motion.

May 7 is going to be a very important day in the smartphone patent wars.

(Reporting by Alison Frankel)

Follow us on Twitter: @AlisonFrankel, @ReutersLegal 


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