Motorola Mobility won’t be able to block the import and sale of Xbox or Windows, a federal judge in Seattle has ruled — siding with Microsoft on one of the key issues in its patent dispute with the Google-owned mobile phone maker.
The ruling was made by U.S. District Judge James Robart, who will separately be determining a reasonable royalty rate for Microsoft to pay Motorola to license the H.264 video and 802.11 wireless patents at issue in the case. The judge presided over a recent trial in the case, with a decision on the royalty rates expected to come next year.
In the meantime, in a Nov. 20 ruling, Robart found that Motorola hadn’t proven the “irreparable harm” that would be required to place an injunction on import and sales of the Xbox 360 or Windows for their implementation of the technology covered by the patents. Here’s an excerpt from the judge’s ruling.
“As Microsoft has committed to accept a license on RAND terms for Motorola’s entire H.264 standard essential patent portfolio, and the litigation is continuing to determine the details of such a license, it is now clear that at some point in the future (either by agreement of the parties or by court adjudication) a license agreement for the Motorola Asserted Patents will become a reality. Because Microsoft will pay royalties under any license agreement from the time of infringement within the statute of limitations, this license agreement will constitute Motorola’s remedy for Microsoft’s use of Motorola’s H.264 standard essential patent portfolio to include the Motorola Asserted Patents. Accordingly, Motorola cannot demonstrate that it has been irreparably harmed.”
In the larger case, Motorola argues that Microsoft should pay royalties for current and future products, including the Microsoft Surface tablet.
Microsoft says it’s willing to pay royalties but argues that Motorola’s original offer to license patents to Microsoft for 2.25 percent of the end product price was outrageous — potentially totaling $4 billion a year — considering Motorola’s promise to standards bodies to offer access to the “standard essential” patents on fair and reasonable terms.
Motorola contends that Microsoft gave up its right to a reasonable royalty by filing the lawsuit in response to Motorola’s initial royalty demand.