updated 05:27 pm EST, Thu February 7, 2013
Parts of three patents involved are 'indefinite' and unenforceable
Juge James Robart has greatly cut down a patent lawsuit brought by Motorola Mobility against Microsoft. The judge found this afternoon that 13 Motorola claims encompassing three of its H.264 video playback patents are invalid -- greatly weakening Google's case. Motorola had been seeking as much as $4 billion per year for its patents, while Microsoft believed that Motorola Mobile and Google were ignoring previous commitments to license the patents on a fair, reasonable, and nondiscriminatory (FRAND) basis, and says that it only owes $1 million per year for use of the patents.
Microsoft claims that Google agreed to grant a worldwide license as part of the MPEG-LA AVC essential-patent rules, under the standard rate agreement, rather than the exorbitant rates Motorola wishes to charge the console maker. Motorola refused to license to Microsoft before it was sold to Google -- and while independent, Motorola wasn't subject to MPEG-LA's licensing requirements, being neither a licensee or licensor.
At the end of June, Motorola refused Microsoft's FRAND-friendly MPEG-LA rate while, at the same time, offering to pay only a FRAND rate for Microsoft's patents that it infringes. Subsequently, judges and government agencies in the US and abroad have taken a dim view of Motorola's practices.
Motorola's status as a Google subsidiary following the search engine's purchase of the manufacturer makes it subject to licensing agreements previously negotiated by the search company, along with any licensing deals established after the acquisition, Horn said. Google's primary goal in paying $12.5 billion for Motorola was the acquisition of the manufacturer's patent portfolio to gain leverage over other companies such as Microsoft and Apple. They and others continue to sue Android phone manufacturers over infringement and FRAND-eligible patent abuse in a number of cases.
Google believes that its license has a different scope than the license Microsoft demands for its products, and its license applies "only to Affiliates identified to MPEG-LA by Google in writing." Google's stance is inconsistent with any standards-essential license practice. The search giant so far has failed to provide Judge Robart's court with any testimony from industry experts supporting its position.
The order found that parts of Motorola's patents are "indefinite" and not well defined. A final ruling on the pared-down case is expected in the next several weeks.