by Dennis Crouch
Microsoft Corp. v. Motorola, Inc. (9th Cir. 2012)
The Ninth Circuit Court of Appeals has confirmed a temporary injunction blocking enforcement of Motorola's German patent infringement judgment against Microsoft's Xbox 360. In May 2012, the German court (sited in Mannheim) based its injunction order on three holdings: that (1) a licenses between Microsoft and Motorola did not cover asserted patents; (2) Motorola's commitments of the patents to FRAND agreements were not enforceable by Microsoft; and (3) Microsoft did indeed infringe the two asserted patents. The two Motorola patents asserted in Germany are EP0538667 ("'667") and EP0615384 ("'384"). These patents relate to the H.264 video coding and the 802.11 WLAN standards.
This is a somewhat unique situation because Motorola's patents are part of FRAND licensing commitments; both parties are American companies (although it is a German Motorola subsidiary that is pursuing the German case); and the German patent dispute is being resolved within contract litigation between the parties here in the US. In this vein, the Ninth Circuit decision relied on recent writings by Professor Lemley and Judge Posner that both push-against awarding injunctive relief for patents that have been involved in a FRAND license commitment. The appellate panel also found that US overrunning the German decision did not intolerably violate principles of comity -- especially because the German infringement action was filed after the US contract litigation had already started. One hook on the comity front is that the German injunction requires some additional action by Motorola (posting of a bond) before the Xbox injunction would begin. Thus, the US courts did not need to overturn the German decision but instead only order Motorola not to enforce its injunction.
Of course, Google now owns Motorola and is operating as puppet master behind the scenes.
http://www.ca9.uscourts.gov/datastore/opinions/2012/09/28/1235352.pdf
