Monday, April 30, 2012

Apple and Motorola move for summary judgment in Wisconsin litigation over FRAND issues

Microsoft's U.S. lawsuit to enforce Motorola's FRAND licensing promises and obligations is pretty well-known by now, at least since the temporary restraining order that Judge James L. Robart recently entered against Motorola Mobility's near-term enforcement of a German patent injunction it may win the day after tomorrow (May 2). For a long time, only a few people were interested in that case. So far, there's also been little interest by third parties in Apple's similar lawsuit against Motorola Mobility. While Microsoft filed its FRAND enforcement action in the Western District of Washington (back in November 2010), Apple brought its comparable lawsuit (filed in March 2011) in the Western District of Wisconsin, which at some point used to be the center of gravity for the dispute between these two parties. Even though three FRAND-pledged Motorola patents are in play in the case over which Judge Posner is presiding in the Northern District of Illinois, which was pending in Wisconsin for some time, the FRAND case wasn't transferred to Chicago. In my opinion, Apple's proposal for a transfer was a good idea, but it was denied. Judges enjoy significant discretion in this regard.

The Apple-Moto Wisconsin FRAND case is now entering a stage at which it's getting really interesting. On Friday, Motorola Mobility filed a motion for summary judgment that would do away with most of Apple's claims if granted, and Apple moved for partial summary judgment on some elements of its claims that it believes are ripe for being decided as a matter of law. Judge Barbara B. Crabb today set a briefing schedule: opposition briefs are due by May 30, 2012, and then the parties get to reply in support of their motions until June 11, 2012. Thereafter there will almost certainly be a summary judgment hearing, and then a decision. The Chicago action will go to trial in June, but Apple's FRAND defenses will be resolved after the infringement and invalidity issues, so Judge Crabb's decisions on the parties' summary judgment motions may still come down in time to have an impact on the Chicago case. The transfer of the large infringement case (originally 15 Apple and 6 Motorola patents) from Wisconsin to Illinois was the result of close coordination between Judge Posner and Judge Crabb, so I guess they will again try to keep things efficient for both courts.

At this stage, pretty much everything concerning these motions, except for lists of the claims addressed by them, is sealed. Different courts and different judges have different rules. Judge Alsup, who is presiding over Oracle v. Google in the Northern District of California, definitely would have objected to such extensive sealing.

This is the list of all of the issues Motorola's summary lists:

  • Count I - Equitable Estoppel

  • Count II - Breach of Contract - ETSI/3GPP

  • Count III - Breach of Contract to Which Apple is a Third Party Beneficiary – ETSI/3GPP

  • Count IV – Breach of Contract to Which Apple is a Third Party Beneficiary – IEEE

  • Count V – False F/RAND Commitments and Deceptive Acts in Violation of Section 2 of the Sherman Act

  • Count VI – Unfair Competition and Unlawful Business Practices in Violation of Cal. Bus. & Prof Code para. 17200, et seq.

  • Count VII – Declaratory Judgment That Motorola's Offers have not been on F/RAND Terms

  • Count XI – Declaratory Judgment of No Entitlement to Injunctive Relief

  • Count XII – Declaratory Judgment of Patent Misuse

  • Count XIII – Interference with Contract

If some of the terms or acronyms weren't familiar to you, let me just sum it all up by saying that this is a mix of contract, equitable and antitrust claims, and all of this is about Motorola's FRAND obligations, its alleged breach, and the effect this has on Motorola's patent enforcement. Some of these claims would also entitle Apple to damages from Motorola for its alleged conduct. ETSI/3GPP refers to the standard-setting organizations in charge of 3G/UMTS and some other wireless standards. IEEE is a standard-setting organization in the United States. The IEEE standard at issue between these parties is 802.11 (WLAN, or WiFi).

Apple's summary says that the company "moves for partial summary judgment to establish elements of its breach of contract, antitrust, unfair competition, and patent misuse claims". That's a subset of the number of issues Motorola tries to do away with. Apple has generally shown a lot of focus in its patent litigations recently, such as by quickly dropping claims that weren't too promising or by suing two Android device makers, Motorola and HTC, simultaneously in the same Miami-based court over a set of six patents. By raising fewer issues in its partial summary judgment motion than Motorola does in its summary judgment motion, Apple will get to discuss each item in more detail in its pleadings.

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