Motorola has violated elements of one Microsoft patent, but it hasn’t infringed on six other Microsoft patents that were the subject of the Redmond company’s suit against the mobile phone maker, an administrative law judge for the U.S. International Trade Commission said today in an initial decision in the case.

It’s a partial victory for Microsoft in a closely watched battle over Google’s Android operating system. Microsoft claims that Android violates its intellectual property, and the Redmond company has succeeded in striking licensing deals and collecting royalties from other Android device makers.

Microsoft and Google haven’t squared off in court over the issue, but Google is in the process of acquiring Motorola, in part for its large collection of mobile-related patents.

“We are pleased with the ITC’s initial determination finding Motorola violated four claims of a Microsoft patent,” said David Howard, a Microsoft corporate vice president and deputy general counsel, in a statement released by the company. “As Samsung, HTC, Acer and other companies have recognized, respecting others’ intellectual property through licensing is the right path forward.”

The Microsoft patent that Motorola was found to infringe, No. 6370566, was issued in 2002. It involves scheduling meetings and appointments from mobile devices, using email addresses and contact information and synchronizing calendars across computers and devices.

Earlier this week Apple won a legal victory in its patent battle vs. Android, winning a ban on the import of some HTC smartphones starting next year.

Update, 3:50 p.m.: Microsoft lawyer and intellectual-property executive Horacio Gutierrez says on Twitter: “At least 18 Motorola products impacted by ITC’s finding of patent infringement by Motorola, including the Atrix, Droid and Xoom tablet.”

Update, 4 p.m.: Motorola general counsel Scott Offer tells’s Ina Fried that the company sees the ruling as “a huge win for us,” pointing out that Microsoft originally sued over nine patents.

At the same time, a violation of one patent could be enough for Microsoft to secure an injunction. The ITC will now review the judge’s ruling and issue a final decision to determine if the import of any Motorola devices will be banned.

Here’s the list of 18 devices that Microsoft says infringe on the patent: Atrix, Backflip, Bravo, Charm, Cliq, Cliq 2, Cliq XT, Defy, Devour, Droid 2, Droid 2 Global, Droid Pro, Droid X, Droid X2, Flipout, Flipside, Spice, Xoom Tablet.

Update, 4:21 p.m.: Here’s the text of a news release issued by Motorola on the decision …

LIBERTYVILLE, Ill., Dec. 20, 2011 — Motorola Mobility Holdings, Inc. (NYSE: MMI) (“Motorola Mobility”) today announced that it has received notice that the Administrative Law Judge (“ALJ”) in the U.S. International Trade Commission (“ITC”) action brought by Microsoft (NASDAQ: MSFT) against Motorola Mobility has issued an initial determination. The ALJ determined that Motorola Mobility does not violate six of the seven Microsoft patents listed in Microsoft’s suit. The Company noted that Microsoft had previously dropped two patents from its original case which included nine patents.

“We are very pleased that the majority of the rulings were favorable to Motorola Mobility,” said Scott Offer, senior vice president and general counsel of Motorola Mobility. “The ALJ’s initial determination may provide clarity on the definition of the Microsoft 566 patent for which a violation was found and will help us avoid infringement of this patent in the U.S. market.”

Microsoft continues to infringe Motorola Mobility’s substantial patent portfolio and Motorola Mobility has active patent infringement litigation and proceedings against Microsoft in a number of jurisdictions, including the ITC. Motorola Mobility remains confident in its position and will continue to move forward with its complaints.

The ALJ’s initial determination is subject to further review by the ITC. The final decision in this case, based on the deliberation of the full ITC, is expected by April 20, 2012. The ITC’s final determination ruling would be subject to a 60-day review period by U.S. President Obama. The Company noted that sales outside the U.S. are not within the focus of the ITC.

Follow-up: Microsoft vs. Motorola: The 13-year-old patent filing in the middle of a smartphone war

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  • Guest

    Courts seems to be throwing out lots of Apple patent claims too, but 1 out of 6 can’t be a result MS was happy with. It’s better than 0, but I presume those 6 were chosen out of thousands specifically because they felt they were strong. And I’m wondering what implication those 5 not being upheld by ITC has on other situations (existing licensees or lawsuit targets)?

    • Todd Bishop

      Just to clarify, the court found a violation of one Microsoft patent, but not six others. So it was one out of seven.

      • Guest

        My bad. 1 out of 7. Any idea what the impact is of not having the other six upheld?

        • Todd Bishop

          Good question. Just posted a couple updates. My understanding is that one patent violation would be enough for an injunction against Motorola, if the ITC upholds the judge’s ruling in its final decision.

          • Guest

            FOSS patents did another article on it that you might want to link to. It has a lot of good information and context. But it doesn’t really answer my question either, which is focused on implications beyond this trial.

            I’m also wondering whether this kind of patent win/loss rate is normal and whether companies like MS and Apple typically lead with their strongest patents or hold those in reserve to call on later if needed? If so, workarounds for the patent upheld don’t solve the problem for the infringing party because MS or Apple can bring further suits with possibly even more important patents.

          • Todd Bishop

            Thanks. I don’t know the answer to your specific question but I’ll try to find out. It certainly is a mixed victory for Microsoft, and it also makes it easier for Motorola to work around the infringement finding, since there’s only one patent at issue in the case now.

            For everyone else, here’s the FOSS Patents article you mentioned.


            I also just did a follow-up on the specific patent. The interesting thing to me is that it dates to 1998, but it also concentrates on what’s primarily on a business scenario (scheduling) which shows where Microsoft was focusing its attention as consumer trends ultimately shook up the industry. 


    • Avatar Roku

      Apple and Microsoft only need one violation to get what they want (a settlement or ban). The whole point of throwing a ton of patents into these suits is to just get one to stick.

  • windows vps

    I took it more like Motorola invalided 6 out of 7 of Microsoft’s
    patents, which goes to show that the vast majority of Microsoft’s
    patents are worthless. The other Android manufacturers should take note
    of this, and whether it helps them to break free from Microsoft’s patent
    fee program or not, it should at least help them pay 6-7 time less
    money on their patents seeing how not too many can be used against them
    when trested in Court.

    for more information visit

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