A US judge has invalidated parts of three video technology patents held by Google-owned Motorola Mobility, narrowing its lawsuit with Microsoft.
The case is linked to a continuing dispute between the companies over FRAND contracts – which require patents to be licensed on fair, reasonable and non-discriminatory grounds. Microsoft sued Motorola in 2010 amid a dispute about royalty payments.
Motorola Mobility, a subsidiary, then sued Microsoft over 32 claims within three of the patents asserted in the FRAND row. Microsoft sought to invalidate the patents, which disclose systems and methods for encoding and decoding a bit stream (or sequence) of digital video data.
In a ruling on February 6, Judge James Robert invalidated 13 of the 32 claims at the US District Court Western District of Washington. The judge ruled that claims covering ‘means for decoding’ the data were indefinite, meaning Motorola’s patent language did not distinctly articulate the inventions.
The judge could still invalidate the remaining claims for other reasons such as obviousness.
In the tandem FRAND dispute, Microsoft does not dispute having to pay for using standards-essential patents but claims Motorola deserves only $1 million in annual royalties for their use. Motorola wants $4 billion a year.
That case’s most recent development, in November last year, saw Judge Robert refuse to impose a US injunction on Microsoft’s products that incorporated the disputed patents. Motorola had tried to stop Microsoft from selling products such as the Xbox.
The ruling meant Motorola was unable to implement a sales ban in Germany, where a court had previously ruled to the contrary, pending a decision on the FRAND case in the US.
Florian Müller, a German patent consultant, said yesterday’s invalidation of such a broad swath of claims might make it more difficult for Motorola to charge Microsoft large sums for using standards-essential patents under their FRAND arrangement:
“[Their invalidation] certainly doesn't enhance the commercial value of Motorola's asserted patents,” he said.
He added that the ruling would also affect Motorola's ability to seek royalties from Apple, which uses technologies incorporating the invalidated parts of the standards-essential patents.
He added: “In the greater scheme of things, this is part of a positive trend toward higher patent quality. Unclear patents create legal uncertainty and harm the economy.”
Google bought Motorola Mobility for $12.5 billion in May 2012.
Microsoft declined to comment, while Motorola could not be reached.
The ruling is available here.
This article was first published on 08 February 2013 in World IP Review
motorola mobility, google, microsoft, frand , florian mueller