Last month, the top-level decision makers of the ITC remanded the investigation of Google subsidiary Motorola Mobility's complaint against Microsoft's Xbox gaming console to Administrative Law Judge David Shaw. Motorola was hoping to win an import ban in time for this year's Christmas Selling Season, especially after Judge Shaw's preliminary finding was that the Xbox infringed four presumed-valid Motorola patents. But the Commission, the six-member decision-making body at the top of the ITC, told Judge Shaw to reevaluate his preliminary findings in light of a Microsoft motion related to Google's grant-back obligation under its own license agreement with MPEG LA and an important recent precedent concerning method patent claims (HTC subsidiary S3 Graphics' first ITC case against Apple).
Upon remand, Judge Shaw's first order requested discovery statements from the parties, including proposals for the target date and other key milestones. While Microsoft argued that the issues to be addressed on remand can be decided without any further discovery (since an evidentiary record has already been developed), Google (Motorola) wanted to reopen the record and raise a variety of issues that came up in the S3G csae. Motorola proposed a May 2013 target date. Microsoft suggested August 2013.
In an order issued yesterday that entered the public record today, Judge Shaw came down closer to Microsoft's proposal as far as the target date is concerned. Based on his determination, the target date for the final decision is July 23, 2013 (31 months after institution of the investigation), and the judge will make his post-remand initial determination on March 22, 2013. A hearing has been set for December 5 and 6, 2012.
Judge Shaw agreed with Motorola that "the parties may raise any issue in the remand proceeding as long as it is limited to issues raised under the holdings in the Electronic Devices [S3G v. Apple] opinion". The judge believes this is appropriate because "[t]he Commission's order [remanding the investigation] did not limit the remand proceeding to any particular issue raised under the holdings in the Electronic Devices opinion". The ITC's remand order just told the judge to "apply the Commission's opinion" (i.e., final ruling) in the S3G case. At this point it's not clear to me whether there's anything in the S3G decision that was new caselaw and would help Motorola. The S3G holding that the ITC can't order import bans on the basis of method patent claims that may be infringed post-importation but aren't infringed at the time of importation can only help the defendant (which in this case is Microsoft). Microsoft could appeal this order to the Commission in an effort to limit the scope of the remand.
At any rate, there's no question that the tide has turned in this ITC investigation and a case that was going fairly well for Motorola up to a certain point is now an uphill battle for the Google subsidiary. And time is not on Motorola's side. In the meantime (in November to be precise), there will be a trial in a federal lawsuit that Microsoft brought to enforce Motorola's FRAND licensing obligations. The objective of that action is a license agreement on terms set by the court, which would take care of the standard-essential patents at issue in the Xbox case at the ITC.
On a related note, there will be three decisions by German courts this week on Microsoft v. Motorola Mobility cases: two in Munich tomorrow, and one in Mannheim on Friday.
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