Thursday, October 11, 2012

Microsoft tells German court it will amend Motorola lawsuit to hold Google Inc. liable

Today the Munich I Regional Court, which has already identified five patent infringements by Android-based devices, held a first hearing on a Microsoft complaint against wholly-owned Google subsidiary Motorola Mobility over EP0845124 on a "computer system for identifying local resources and method therefor", which is the European equivalent of U.S. Patent No. 6,240,360.

Previous German patent rulings in Apple's and Microsoft's favor have already required Google (Motorola) to pull all of its Android-based devices, without any exception, from the German market. The only device that Motorola is currently offering in Germany (as opposed to merely announcing future releases) is the non-Android-based Motorola Gleam, a low-cost basic feature phone. But Microsoft keeps up the pressure and continues to prove Android's wide-ranging infringement of its intellectual property until the Google subsidiary will join Samsung, HTC, LG and others in taking a royalty-bearing license to the numerous Microsoft patents it is currently violating. The German situation validates the decisions of industry leaders like Samsung, HTC and LG to sign up to Microsoft's Android (and Chrome) patent licensing program.

This latest German lawsuit, which was filed in April 2012 targets Android's Google Maps app. At today's three-hour hearing, Motorola Mobility doggedly denied Microsoft's infringement contentions without specifying how Google's server infrastructure operates. Toward the end of the court session, Microsoft's lead counsel, Dr. Tilman Mueller-Stoy ("Müller-Stoy" in German) of the Bardehle Pagenberg firm, the leading German IP firm that has won more injunctions (five) against Android than any other law firm in the world, made a very significant announcement in open court: Microsoft will amend this complaint in order to add Google Inc., Motorola Mobility's parent company and operator of the server infrastructure that powers the Google Maps Android app, as an additional defendant.

Microsoft's German lawyers want to know now whether Dr. Marcus Grosch of Quinn Emanuel, Motorola Mobility's German lead counsel, will accept the forthcoming amendment on behalf of Google Inc. or whether Microsoft will be required to serve the complaint on Google in the United States, which would cause a delay in the German proceeding. If Quinn Emanuel's German office accepts the complaint on Google's behalf, the trial will go forward on March 7, 2013. Dr. Grosch promised the court, without a formal obligation, to clarify this question within two weeks, and probably even sooner.

A direct Microsoft-Google patent infringement action is unprecedented, and it could affect Google Maps way beyond Motorola's gadgets due to the fact that German courts order general "obey the law" injunctions barring a defendant from any infringement of a given patent claim, but there's a simple procedural reason for this. In fact, Microsoft is left with no other rational choice. In Germany, there's no such thing as discovery. If you sue someone for patent infringement, you as the plaintiff bear the burden of proof. A defendant is not allowed to lie in a civil lawsuit (that would be a criminal act), but he doesn't have to put all the cards on the table.

Google has been subpoenaed as a third party in pretty much every Android lawsuit in the United States. In Germany, however, Microsoft would have to name particular persons as witnesses, and it probably doesn't even know which Google employees can testify to this -- even if it did, they would not show up here anytime soon. But by suing Google itself, Microsoft creates a situation in which Google will have to admit or explicitly deny Microsoft's infringement allegations concerning the inner workings of Google Maps.

Microsoft's decision to target Google Inc. directly as a co-defendant is also logical for another reason. At today's hearing, there was no Motorola Mobility employee, though there were Motorola in-house lawyers at almost all of the other German court hearings. Instead, the person representing Motorola (!) today was Karen Robinson, an in-house litigation counsel at Google Inc. from Mountain View, California. This shows how Google not only remote-controls but even micromanages Motorola's litigation, at least when one of Google's key online services is at issue.

Apart from these practical and procedural considerations, Microsoft clearly wants to end this whole Motorola dispute quickly. If Motorola had not been acquired by Google, I'm almost 100% sure it would have taken a royalty-bearing license by now. There's no reason why an independent Motorola Mobility would have forever refused to do what Samsung, HTC, LG and many others elected to do. But with Google in charge, Motorola can't do anymore what would be best for Motorola itself.

At today's hearing, Dr. Matthias Zigann, the judge presiding over this lawsuit, asked the parties about their willingness to settle. Microsoft's counsel said that this whole "theater" could be cut short if Motorola simply accepted to take a license to his client's patents. But Motorola did not give any indication that it is prepared to do so.

I wouldn't rule out that Apple may at some point also decide to target Google Inc. directly in a German lawsuit in which a Google service like Maps plays a major role. For example, if Apple was asserting Siri-related patents against Android devices over here, it might face the same choice. No one is afraid of suing Google: there are other reasons for which patent holders have so far deemed it prudent to enforce their rights against device makers including Google's Motorola Mobility.

The patent-in-suit

Here's the language of claim 1 of the patent-in-suit, which covers the concept of over-the-Internet geotagging:

A method of operating a computer system, the method comprising the steps of:

  • storing on a map server computer map data representative of a map of a geographical area;

  • storing on the map server computer coordinate data indicative of the spatial coordinates of at least one point associated with the geographical area represented by the map, so as to enable correlation of points on the map with their corresponding geographical location;

  • storing on an information server computer information data relating to at least one place of interest within the geographical area, said information data including data representative of the spatial coordinates of the place of interest within the area;

  • transmitting a map request to the map server computer from a client computer, and transmitting from the map server computer to the client computer in response to the map request the map data;

  • utilizing the map data to display an image of the map on a visual display unit associated with the client computer;

  • transmitting an information request to the information server computer from the client computer, and transmitting from the information server computer to the client computer in resposne to the information request the information data relating to at least one place of interest within the geographical area; and, displaying the information data relating to at least one place of interest on the visual display unit.

Microsoft is asserting the above claim as well as the corresponding system claim (claim 14).

I took detailed notes of Microsoft's contentions and Motorola's non-infringement arguments. Since the procedural issue of Google being named as an additional defendant is more interesting, I don't want to go into much more detail now, but I will do so at some point (at the latest I will do so at trial time).

This patent has a 1995 priority date. It's three years older than Google, and still going to be enforceable for almost three years.

Microsoft's patent assertions against Motorola Mobility reflect the diversity of its intellectual property portfolio. The three German injunctions it has already won against Motorola relate to text messaging (SMS), file systems and input methods (virtual keyboards etc.). In the United States, Microsoft has an import ban in place against Motorola that prevents the latter from providing a meeting scheduler feature. And this latest German lawsuit targets Google Maps.

It was actually Motorola's choice last year to take the U.S. dispute between it and Microsoft to Germany. But Motorola isn't enforcing a single patent against Microsoft in Germany at this stage. Yesterday a U.S. district court denied a summary judgment motion with which Motorola sought to keep the door open to the enforcement of standard-essential patents. Google cannot win this patent dispute with Microsoft, but it doesn't want to take a license. And if it loses this lawsuit, then Google Maps may become unavailable in Germany next spring as collateral damage of Google's unwillingness to address Android's massive, court-validated patent infringement issues.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Share with other professionals via LinkedIn: