Thursday, November 11, 2010

No surprise here: Motorola countersues Microsoft over alleged patent infringement

[Updated with a complete list of the patents asserted in the complaints -- three of those patents were previously asserted by Motorola Mobility against Apple]

Motorola announced that it has done what everyone watching the smartphone patent disputes knew was going to happen: it countersues Microsoft over allegations of patent infringement.

In the patent suits involving Android, everyone with the exception of Google has already countersued. Even HTC with its tiny patent portfolio countersued Apple (with a complaint to the ITC that related to 5 patents and counterclaims before the US District Court for the District of Delaware relating to 3 other patents).

It's a safe assumption that all of the parties who made the first move in a dispute carefully evaluated the other side's portfolio and decided to go ahead at any rate. Those countersuits are common and, consequently, expected.

Six weeks ago, Microsoft lodged complaints with the ITC and the US District Court for the Western District of Wisconsin, asserting the infringement of nine of its patents by Motorola's Android-based smartphones. And just a day before Motorola's expected countersuit, Microsoft filed another suit against Motorola for allegedly failing to honor its commitments to make certain patents related to standards available on the reasonable and non-discriminatory (RAND) terms required by the relevant standards-setting organizations.

Patents-in-suit and fora

Motorola Mobility, a subsidiary of Motorola, filed a total of three suits against Microsoft: one complaint (over 7 patents) with the US District Courts for the Southern District of Florida (where it previously sued Apple over 6 patents) and two complaints (one over 3 patents and another over 6 patents) with the Western District of Wisconsin (where Apple sued Motorola over 6 patents, including one that it previously asserted against HTC before the US District Court for the District of Delaware).

Motorola Mobility now claims that "Microsoft’s PC and Server software, Windows mobile software and Xbox products" infringe those 16 patents. Motorola says in the press release that the patents relate to technologies in the fields of operating systems, video codecs, email, instant messaging, object-oriented software architectures, WiFi, and graphical passwords.

That broad description suggests potential overlaps with the patents to which Microsoft's RAND complaint related. Also, I have looked at the complaints and found that 3 of the patents Motorola asserts against Microsoft have previously been asserted against Apple:

  • US Patent No. 6,272,333 on a "method and apparatus in a wireless communication system for controlling a delivery of data" appears in Motorola Mobility's complaint filed against Microsoft in the Southern District of Florida as well as in one filed against Apple in the Northern District of Illinois. That patent appears to relate to a way of sending to "subscribers" (this would include mobile device users) only data that can be processed by the applications they have actually installed, also taking into account the particular versions of those applications, so as to save the costs of transferring data that wouldn't be useful on the local device for lack of software capable of processing such data. The patent application was filed in 1998. The patent was granted in 2001, and its validity will be presumably be challenged now by Apple and Microsoft.

  • US Patent No. 5,311,516 (on a "paging system using message fragmentation to redistribute traffic") and US Patent No. 5,319,712 (on a "method and apparatus for providing cryptographic protection of a data stream in a communication system") appear in one of Motorola Mobility's two complaints filed against Microsoft in the Western District of Illinois (the one relating to 6 patents) as well as one filed against Apple in the Northern District of Illinois. Those two patents are old. The applications were filed in 1992 and 1993, so they are only a couple of years away from inevitable expiration. However, they may never get there since I believe Apple and Microsoft will challenge their validity now.

Motorola Mobility's Southern Florida complaint relates to six other patents than the '333 patent mentioned above:

  • No. 5,502,839 (an "object-oriented software architecture supporting input/output device independence")

  • No. 5,764,899 (a "method and apparatus for communicating an optimized reply")

  • No. 5,784,001 (on a "method and apparatus for presenting graphic messages in a data communication receiver")

  • No. 6,408,176 (on a "method and apparatus for initiating a communication in a communication system")

  • No. 6,757,544 (on a "system and method for determining a location relevant to a communication device and/or its associated user")

  • No. 6,983,370 (on a "system for providing continuity between messaging clients and method therefor")

The first of Motorola Mobility's two complaints filed against Microsoft in the Western District of Wisconsin relates to the following three patents:

All of those three patents relate to a "macroblock level adaptive frame/field coding for digital video content" and were obtained by General Instrument (GI), a Motorola subsidiary. Motorola completed its acquisition of GI in January 2000, and those three patents were applied for in 2004.

Motorola's other Western District of Wisconsin complaint relates to four patents in addition to the '516 and '712 patents mentioned above:

  • No. 5,357,571 (on a "method for point-to-point communications within secure communication systems")

  • No. 6,686,931 (on a "graphical password methodology for a microprocessor device accepting non-alphanumeric user input")

  • No. 6,980,596 (on a "macroblock level adaptive frame/field coding for digital video content"; this is another General Instrument codec patent in addition to the three that bear the same title and are subject to the other complaint filed with the same court)

  • No. 7,162,094 (on "frequency coefficient scanning paths for coding digital video content"; another GI codec patent)

Motorola's General Instrument subsidiary joins Motorola Mobility as plaintiff in both complaints filed in the Western District of Wisconsin (one of them relates to 3 GI patents and the other to 6 patents including 2 GI patents).

Strength vs. numbers

One thing that's important to consider when looking at all of the suits and countersuits is that the quantities of patents asserted are a factor of limited importance. What really matters is whether those patents are chosen from a strong portfolio (strong in terms of breadth and depth), whether they are valid, and whether they are actually infringed (and if so, whether a defendant could, should the need arise, easily work around them or just drop some functionality that customers won't miss).

The conflicts between Apple and Android phone makers HTC and Motorola have shown that such conflicts can escalate with parties adding more patents during the process. That is a possibility in all these disputes.

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