The United States District Court for the Western District of Washington held a Microsoft v. Motorola Mobility FRAND rate-setting trial on November 13-21. On Thursday, Judge James L. Robart granted a summary judgment motion by Microsoft that had been pending for almost a year. The decision entered the public electronic record on Friday afternoon local time. The successful motion asked the court to hold that the wholly-owned Google subsidiary is not entitled to injunctive relief against Microsoft over any patents essential to the H.264 (video codec) or IEEE 802.11 (WiFi, or WLAN) standards.
This order also dissolves an anti-enforcement injunction barring Motorola from seeking sales bans against Microsoft based on a couple of German H.264 rulings (an injunction that was affirmed by the Ninth Circuit), but not in the sense that Google is now free to do what it wanted to do all along. Instead, the latest order "takes the place of the court's prior anti-suit injunction that enjoined Motorola from enforcing an injunction in the German action". Given that "litigation in this matter has progressed to the point that it is now clear that a license agreement will result for all of Motorola's H.264 [and, as a footnote clarifies, IEEE 802.11] standard essential patents", and considering the worldwide scope of that future agreement as well as the worldwide scope of the summary judgment decision ruling out sales bans, Judge Robart has concluded that his lawsuit has been dispositive of the issues in the related German litigation.
The injunctive-relief analysis under U.S. law is consistent with the FRAND part of Judge Posner's Apple v. Motorola ruling, but linked more specifically to the four criteria for injunctive relief, also known as the eBay factors. Of those four criteria, the court only had to address two. Once it was held that Google's Motorola, even with all of the effort it made at the recent trial, "has not shown it has suffered an irreparable injury or that remedies available at law are inadequate to compensate for its injury", there wasn't even a need to reach the questions of the balance of hardships and of the public interest. There's a difference in the decisions by Judges Posner and Robart that relates only to the circumstances of the two lawsuits. The Chicago case in which Judge Posner essentially determined that someone who makes a FRAND promise can never ask for more than monetary compensation wasn't going to result in a license agreement (that's what a case in the Western District of Wisconsin could have accomplished, and could still accomplish on remand if Apple succeeds on appeal). But the Seattle action is going to result in a license agreement, and Judge Robart therefore held that "as a matter of logic, the impending license agreement will adequately remedy Motorola as a matter of law". There is no irreparable harm either "[b]ecause Microsoft will pay royalties under any license agreement from the time of infringement within the statute of limitations", which "will constitute Motorola's remedy for Microsoft's use of Motorola's H.264 standard essential patent portfolio to include the Motorola Asserted Patents".
As the aforementioned Wisconsin case just showed, the question of prejudice is key. In the Seattle FRAND case, the dismissal of injunctive relief is also "without prejudice", but Google (Motorola) would only be able to seek injunctive relief if "the specific circumstances and rulings that have developed in this litigation" were to "change in a manner to warrant injunctive relief", which is only a theoretical possibility because the normal course of business is now going to be that a license agreement is created and that Microsoft pays court-determined royalties. The way I see it, Google (Motorola) would need a successful appeal to open the door to injunctive relief.
In light of the court's previous decisions, this summary judgment order does not come as a surprise, but the court took its time (almost a year) and gave Google (Motorola) the opportunity to make its case at the recent rate-setting trial (a rate-setting decision may come down in late December but some observers believe it will happen in early 2013).
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