February 28, 2013, by Mandour & Associates, APC

San Diego – Qualcomm, Inc. and Microsoft Corp. told the Federal Trade Commission that Google is seeking injunctions to prevent competitors from selling goods that infringe its stand-essential patents, even though Google made an agreement with the FTC that it would not seek injunctions against companies that are willing to license the patented technology.

Qualcomm, Microsoft, Ericsson and  Apple all made public comments last week saying that Google is not living up to the promises it made in its deal with the FTC regarding how it handles the standard-essential patents it obtained when it bought Motorola Mobility Inc.

Google’s settlement with the FTC included a provision that prohibits Google from pursuing injunctions against companies that are willing to license the patents.  Apple and Microsoft, both of which have been in patent licensing wars with Google, said that Google is still seeking injunctions against them and using the threat of injunctions as a tool in negotiating past licensing fees.

“Google continues to pursue injunctive relief against Apple in federal court and seeks to exploit the injunction it obtained and enforced against Apple in Germany,” Apple said.

Microsoft requested the FTC clarify the pending consent decree to demand Google to abandon all injunctive relief actions that have already been filed.

“We assume that Google’s refusal to withdraw its pending claims for injunctive relief means that it interprets the proposed order to permit it to continue its existing claims for injunctive relief, notwithstanding the commission’s public statement to the contrary,” Microsoft said.  “Clarification of the decree in this regard would be appropriate.”

The companies expressed concern that if the consent decree were to be adopted for all standard-essential patent owners there would be far-reaching consequences and the companies urged the FTC to limit the proposed consent decree just to Google’s case.

“Ericsson believes that the specific procedures described in the order, if widely adopted, may cause unintended and undesirable consequences,” Ericsson said.  “Unnecessary restrictions on the availability of injunctive relief against unwilling licensees may discourage companies such as Ericsson from contributing to open standards.”

Trade groups such as the American Intellectual Property Law Association and the Intellectual Property Owners Association also opposed the consent decree.  The groups expressed concern that the consent decree limits the patent owners’ First Amendment right to seek injunctive relief from the courts in the case of infringement.

November 13, 2012, by Mandour & Associates, APC

San Diego – For the first time, a federal judge will determine what constitutes a reasonable royalty rate for patents that have become an industry standard.  The case, which begins Tuesday in the U.S. District Court in Seattle, started when Microsoft filed a lawsuit against Motorola in November 2012 claiming that Motorola breached its contract to provide use of its patents at a reasonable rate.  The technology relates to online-video viewing and wireless usage.

Private companies that hold industry-standard patents may be required to license them under FRAND or “fair, reasonable, and nondiscriminatory” terms as part of joining international-standards groups.  Microsoft claims that Motorola Mobility, a subsidiary of Google, demanded excessive royalties for the use of its industry-standard patented technologies.  Microsoft claims that Motorola required 2.25 percent of the sale price of every Xbox and Windows sale, which it claims would amount to Microsoft paying Motorola $4 billion annually.

Motorola disputes the $4 billion figure and claims that the 2.25 percent royalty rate was simply an opening figure for negotiations.  Judge Robart is expected to give an opinion about what constitutes a reasonable royalty fee for all industry-specific patents.  A jury trial, planned for the spring, will then compare the reasonable rate determined by Judge Robart with Motorola’s rate.

The decision will have an impact on other cases between the two companies in Washington, D.C. and in Germany.  Motorola is currently seeking an import ban on Xbox consoles from the U.S. International Trade Commission (ITC), as they contain some of the industry-standard patents being disputed in the Seattle trial.  Motorola has already won an injunction from a German court that bans the sale of certain Windows and Xbox products in those countries.  Judge Robart has barred Motorola from enforcing the injunction until the Seattle case is settled.

Microsoft has already said that it will pay Motorola whatever the court decides is a reasonable royalty rate.  If Motorola agrees, the cases before the ITC and the injunction in Germany will likely go away.