Microsoft-Motorola patent-infringement case to go to trial

Software giant accuses Motorola of seeking excessive royalties for patents covering video streaming and Wi-Fi technology and used in Windows and the Xbox.

Steven Musil Night Editor / News
Steven Musil is the night news editor at CNET News. He's been hooked on tech since learning BASIC in the late '70s. When not cleaning up after his daughter and son, Steven can be found pedaling around the San Francisco Bay Area. Before joining CNET in 2000, Steven spent 10 years at various Bay Area newspapers.
Expertise I have more than 30 years' experience in journalism in the heart of the Silicon Valley.
Steven Musil
3 min read

The patent-infringement dispute between Microsoft and Motorola Mobility is expected to go to trial after a federal judge today rejected motions for summary dissolution filed by both companies.

The case, in which Microsoft accuses Motorola of unfairly seeking excessive royalty payments for patents used in several of the software giant's products, is now scheduled to go to trial in November, according to a Seattle Times report. The Motorola patents in question cover video streaming and Wi-Fi technology that Microsoft uses in Windows and the Xbox.

Today's ruling was in line with comments made in May by U.S. District Judge James Robart, in which he indicated he was inclined to deny both Microsoft and Motorola's motions for summary judgment. Microsoft has asked the court to find that Motorola is seeking unreasonable fees for technology that has become an industry standard. Motorola had requested a judgment that Microsoft forfeited rights to license the patents at reasonable rates when it rejected Motorola's terms without trying to negotiate a better deal.

"While the court will not at this time set forth a legal standard with respect to Motorola's duty to offer its patents in good faith, it is likely that any analysis of Motorola's duty will involve, at least in part, an examination of the intent behind Motorola's offers," Robart said in his 28-page ruling (see below). "Microsoft has only offered testimony tending to show that Motorola understood the financial impact of its offers."

Microsoft, which has contended that royalty payments could amount to as much as $4 billion a year, offered this statement after the ruling:

"This case is about Motorola breaking its promise to make its standard essential patents available on reasonable terms and putting the price and availability of consumer technology in jeopardy," David Howard, Microsoft's deputy general counsel, said in an e-mailed statement. "Today's decision underscores that Motorola made a promise to the industry, which it now must keep, and we look forward to the November trial to determine the appropriate licensing royalty."

Motorola said it welcomed the chance to prove its case at trial.

"Motorola Mobility has acted in good faith and we will prove that at trial," spokeswoman Jennifer Erickson said in an e-mailed statement. "We are pleased that the court is holding Microsoft to its word -- to license our essential patents just as the vast majority of the industry has done."

The ruling is just the latest episode in a patent battle between the two companies dating back to November 2010 when Microsoft sued Motorola over wireless and video coding patents it used in the Xbox and its smartphones. Microsoft claimed that Motorola is charging excessive royalties for licensing on those patents. Motorola retaliated with its own countersuit, claiming infringement of 16 of its patents by Microsoft's PC and server software, Windows Mobile and Xbox products.

Microsoft has criticized Motorola's desire to sue companies over the H.264 patent, which, as an industry standard, must be offered on FRAND (fair, reasonable, and nondiscriminatory) basis.

Robart granted Microsoft an injunction and temporary restraining order in April that prevented Motorola from blocking imports of Microsoft in Germany until U.S. courts have made a decision about whether Motorola is failing to offer licenses for its H.264 video patent at a reasonable rate.

Microsoft Motorola