The first thing I did was to create a table of contents because that's helpful when reading a 207-page document that's the length of a book. Motorola begins what is likely to be a lengthy and interesting appeals process. Robart, the federal judge presiding over this contract litigation. Motorola also filed the injunction suits after Microsoft filed the instant suit. The Committee on Patent Law and Practice, chaired by Alexander C. The problem occurs when a standard incorporates several patents held by distinct right holders.
That said, the 9th Circuit did agree that the Georgia-Pacific factors are helpful in guiding the analysis. For patent damages there's plenty of precedential decisions -- not so for rate-setting. Similarly, other judges may disagree that the comparables that Robart used for determining the market value of Essential Claims should in fact be used at all, or at least not in all circumstances. I find 2 more problematic from an artificial forced constraint point of view. Microsoft's proposed framework wouldn't have allowed this to happen -- but Judge Robart's threading of the needle has the very same effect in this case.
Many standards setting organizations, in an effort to reduce the possibility of patent and increase competition, asked that the holders of any standards-essential patents agree to license these patents on a fair, non-restrictive basis. The whole point is to force the prior agreement in order to obtain a standard in the first place. When this situation arises, there can to two resulting negative impacts that could potentially prevent a new standard from becoming widely adopted. Data-tracking is an acceptable tradeoff for greater home security. Royalties paid by others,as long as not obtained under threat of legal action, are a guide.
The arguments Apple made against Motorola are similar to Microsoft's: Apple also alleged that Motorola abused its standard-essential patents by demanding 2. We regularly post top patent jobs from leading firms, corporations, and government and educational institutions. I was met by incredulity by none other than Random who contended that showing entitlement by comparing the claims to the provisional disclosure was not only not necessary, but not the law. Motorola points out that the Federal Circuit has exercised jurisdiction in some breach-of-contract cases. Microsoft contended that the 2. The point is what Microsoft will pay under the license Google's Motorola now has to extend. Broad Industry Benefits from Standardization — Judge Robarts is explicit about the potential benefits that standards can confer on the overall economy through increased production and price competition Para.
Should the value of each Essential Claim be devalued, lest the aggregate licensing fees exceed the maximum that the market could bear? The problem is, those patents are standard essential patents, if you want to stay in the market, you have to make your products in compliance with such standard. However, presumably this was in front of the jury and taken into account in determining that Motorola, not Microsoft, was bargaining in bad faith. The established profitability of the product made under the patent The court applied the same considerations it applied to factor 6 above. This is a historic decision by Judge James L. The requirement is to engage in reasonable negotiations. Page 15 of the opinion references the district court determination that a reasonable royalty was.
Motorola declined to comment on the ruling but defended its patent-licensing track record. Unfortunately for Motorola, filing a suit for injunctive relief is a pretty clear cut violation of the Standards Setting Agreement even if the license negotiation has bogged down. There's always something in a 207-page decision on a complex matter that someone can disagree with in some cases even a reasonable person , but as a fact finder Judge Robart gets considerably more deference than as a developer or modifier of legal theories. He wouldn't have written a 207-page document and developed fairly complex theories for example, footnote 23, starting on page 171, outlines the calculation performed by the court for a small and unimportant case. In that opinion, Robart sought to determine what, under all relevant circumstances, Google could fairly and reasonably charge Microsoft to infringe upon the Essential Claims in question when for example it builds and sells an Xbox. Naturally, such are rare and will be the exception that proves the rule.
It is not that hard. Does anybody count that how many essential patents in total for just one standard. It is no so outrageous since it is possible that the patents-in-suit would have no value if not incorporated in the standards by the Standards Setting Organizations. This case was decided by the Ninth Circuit only because the complaint did not plead a patent infringement cause of action only contract. Court of Appeals for the Ninth Circuit would normally hear the appeal, but because it centers on patent issues, it could end up at the U. It must be conducted, and reviewed, with these public benefits in mind. The harm the patent owner suffers is the violation of his exclusive right, not any harm to his business of selling products or whatever.
Microsoft was willing to pay a royalty, but not at the 2. The forced assumption that the sum of the parts cannot be greater than the whole has an unthinking appeal. Robart failed to take stock of what Microsoft actually did and the reasons why Motorola did what it did. Both of these rates are significantly lower than the ones Motorola urged. Continue Reading This Article From Control Risk Control Risks presents a selection of critical insights for today's general counsel, their internal support teams and external legal counsel. His findings of fact and conclusions of law are 207 pages long and contain some very sophisticated calculations.
It is, at best, complex and time consuming. Even if a court, in interpreting a contract and assessing damages, deems it appropriate to apply the law of patent infringement, that of itself does not change the complaint into one arising under the patent law. Guilfoyle to the Board of Directors of our firm. Not if you understand patents. Specialist advice should be sought about your specific circumstances. Microsoft includes counterclaims of patent infringement, but contends that the claims can be properly addressed only by first-filed case — the Western District of Washington. Once a patent is adopted as a standard and achieves commercial acceptance, it becomes 'locked-in'.