Google withdraws ITC patent claims against Microsoft

Google's Motorola Mobility filed a motion today with the U.S. International Trade Commission to drop two patents from its patent infringement complaint against Microsoft.

The motion (see below) puts to rest part of the ITC patent battle between the two companies, which began in November 2010 when Motorola sued Microsoft over wireless and video coding patents used in Xbox and its smartphones. Microsoft countered that Motorola was unfairly seeking excessive royalty payments for the H.264 video patents, which are an industry essential standard and as such must be offered on FRAND (fair, reasonable, and nondiscriminatory) basis.

An ITC judge ruled last May that Microsoft's Xbox 360 S video game consoles should be banned from import into the U.S. because they infringe on Motorola patents. The ITC had been expected to release a decision on the proposed ban in August but instead sent the case back to the judge for reconsideration.

A similar case between the two companies is currently winding its way through the U.S. District Court of Western Washington. Motorola demanded Microsoft pay royalties that could reach $4 billion for its use of the technology. Google said today's filing will have no impact on that case.

"Motorola intends to enforce its rights for past damages in the District Court lawsuits," according to the motion filed today by Google, which bought Motorola Mobility last May for $12.5 billion. Closing arguments wrapped up in December and a decision is expected this spring.

While two patents were dropped from Google's claim, a third (U.S. Patent No. 6,069,896) relating to a wireless peer-to-peer network was left in the complaint, presumably because it doesn't qualify as an industry essential standard.

Microsoft welcomed Google's motion, which was filed a week after the U.S. Federal Trade Commission ruled that Google must stop blocking the use of standard essential patents by competitors. The FTC said in June that such bans on imports could cause "substantial harm" to consumers, competition, and innovation.

"We're pleased that Google has finally withdrawn these claims for exclusion orders against Microsoft, and hope that it will now withdraw similar claims pending in other jurisdictions as required by the FTC Consent Order," David Howard, Microsoft's deputy general counsel, said in a statement.

CNET has also contacted Google for comment and will update this report when we learn more.

Motion to Terminate Re H 264 Patents by steven_musil