US Courts Reject German Injunction Order in Microsoft v. Google Patent Battle

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.


14 thoughts on “US Courts Reject German Injunction Order in Microsoft v. Google Patent Battle

  1. 13

    The LG Mannheim lawsuit was filed in GI’s name. The Motorola statement as reported in the US decision appears to be something of a shortcut.

  2. 12

    The decision mentions:

    Appended to the letter was a “non-exhaustive list” of the U.S. and international patents that Motorola declares that it owns

    Is this statement correct? Proper registration of ownership is quite important in Europe. In the national registers GI (in one incarnation or the other) is apparently still listed as the owner, as can be seen in the national databases linked from the EPO’s register.

    (Ownership transfers are recorded at the EPO until the patent issues. Afterwards all changes must be recorded individually at the national level).

    Eg: France, Germany, Great Britain.

    I’d ask to see proof of title before I’d pull out my checkbook, a bit like those CDO-mortgaged US homeowners threatened with foreclosure by some guy out of the wood. The tax man might probably be interested too.

    GI listed as a co-defendant, but is not otherwise referred to in the decision.

  3. 11

    Of course, Google now owns Motorola and is operating as puppet master behind the scenes.

    Both patents mentioned were initially filed by General Instrument, which underwent a couple of name changes and reorganizations before being acquired by Motorola in 2007, which itself went through a similar process before landing in Google’s pocket.

    To put this in other words: “Do no evil” deals in second hand shotguns.

  4. 10

    My thoughts? None worth troubling you with. After the Ryder Cup yesterday, there’s nothing in this thread that excites me enough. Suggest you ask Paul Cole.

  5. 9

    From reading the district court case, the issue seems to be whether Motorola (Google) can attempt to begin negotiations on a RAND item with a position that does not meet RAND.

    This seems duplicitous to me, as the possibility of an acceptance of a first offer would then require the party offering the first offer to not accept that acceptance in order to meet its legal obligations.

    The foreign jurisdiction drama is interesting and appears that the invocation of the relief in the German courts was done after the action in the US courts was started, and appears to be merely an end run around the true contract issue which are at the heart of this suit (in other words, this is not a patent dispute, per se – see page 21).

    Perhaps the question of comity should be put to those German courts?

    This thread seems ideal for MaxDrei to weigh in.

    MaxDrei, your thoughts?

  6. 8

    Is there no burden on Microsoft to show a likelihood of irreparable harm? Isn’t the deposit required for Motorola to enforce the injunction pretty strong evidence that any harm caused by enforcement would be eminently reparable?

  7. 4

    To be clear, the German lawsuit was filed in the name of a German Subsidiary of Motorola (General Instrument Corporation). That did appear to help Motorola (i.e., Google) in any way.

  8. 3

    I find it somewhat comical that the 9th circuit believes it can judge for itself whether it is overstepping its jurisdiction. The fact is that they try to circumvent their lack of jurisdiction on the German subsidiary by strongarming the parent. This sets a dangerous precedent which in the end renders German law meaningless for US companies.

  9. 2

    What does this tell us? Get the ownership of patents into non US entities not controlled by a US company. Otherwise the US courts still control the outcome.

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