updated 04:45 pm EST, Fri February 10, 2012
Apple uses patent exhaustion versus Motorola in US
Apple's lawsuit retaliation continued on Friday after it sued Motorola in the US over 3G patent issues. The iPhone designer sought to block Motorola from making patent violation accusations based on its use of Qualcomm's MDM6610 cellular chipset as well as any others it might use. It came after Qualcomm confirmed to Apple that it was already paying for a license to Motorola's 3G patents, which Apple took to mean that it was exempt from paying itself.
The response jabbed Motorola and claimed that Apple took a different approach to standards. Apple was supposedly more consistent about licensing standards based on fair, reasonable, and non-discriminatory (FRAND) terms, and wouldn't try to sue companies or otherwise act out of proportion.
"When Apple makes a promise to license its standards essential patents under FRAND terms, Apple will not waiver," the complaint read. "Apple will keep its commitment and, should it transfer any such patents to a third party, will take best efforts to ensure that the third party adheres to Apple's FRAND obligations. If parties are interested in licensing these patents, Apple will offer to make the patents available on FRAND terms, as long as those terms are reciprocal, and will do so without requiring others to license back to Apple anything more than their similarly held standards essential patents. Apple also commits not to seek an injunction or exclusion order on the basis of its standards essential patents that are subject to a FRAND licensing commitment. Despite owning scores of standards essential patents, Apple has never asserted a standard essential patent in litigation and, therefore -- unlike some in the technology industry -- has never used a patent subject to a FRAND commitment to deny market access to a rival."
Apple characterized the American lawsuit as a direct response to Motorola's lawsuits in Germany and the US, which it saw as Motorola abusing its 3G standards patents. The firm also went into detail on Motorola's attempts to keep its licensing deal with Qualcomm out of the court. Motorola was allegedly breaching its contract with Qualcomm by suing a firm just for using Qualcomm's chips.
The new lawsuit could stand a strong chance of success based on Apple's recent experiences in Europe. Multiple Samsung attempts at preliminary bans in Europe have been shot down with judges often at least partly considering patent exhaustion, or the idea of a limit on who can be charged royalties, as a factor. A US court won't necessarily act on European precedent, but it illustrates a common legal point of view and is being referenced in the US case.
Apple has often been the one to launch patent offensives out of its belief that Android inherently copies iOS. However, many of the countering lawsuits have been based on standards-based patents, and the common pattern has led to an EU investigation of Samsung that could loom over Motorola. A successful verdict in the new Apple lawsuit could effectively shut down Motorola's main counterattack and force it either to focus on defense or to reach for a settlement.