Wednesday, January 9, 2013

Google's pursuit of Xbox import ban down to one non-standard-essential patent after withdrawal

Google's Motorola Mobility has withdrawn two patents declared essential to the H.264 video codec standard from its ITC complaint against Microsoft's Xbox gaming console. In October 2012 Google had already withdrawn from this action two patents declared essential to the IEEE 802.11 (WiFi, or WLAN) standard, leaving only one of the five originally-asserted patents in the game: U.S. Patent No. 6,069,896 on a "capability addressable network and method therefor". This patent has not been declared essential to any particular industry standard. A preliminary ruling by an Administrative Law Judge sided with Motorola on this patent (and three others), but the Commission, the six-member decision-making body at the top of the U.S. trade agency, remanded the case with instructions that made an infringement finding with respect to method patents less likely.

Google's motion for partial termination was given to the press before it showed up on the ITC's electronic filing system (by the time of publication of this post, it still hadn't appeared in the public record). The first two reports I saw were published by AllThingsD and CNET.

On Friday a Microsoft filing suggested to the ITC not to waste resources on patent claims that would have to be withdrawn soon as a result of Google's agreement with the Federal Trade Commission (FTC). According to Google's motion, the parties were in contact about this on Friday and Microsoft indicated that it would (obviously) not oppose this motion for partial termination. In a reaction quoted by the media, Microsoft welcomes this withdrawal and now expects Google to withdraw injunction requests in other venues and jurisdictions. Google says in its filing that it "intends to enforce its rights for past damages in the District Court lawsuits", which is explicitly not prohibited by the FTC consent order. But Google can and must nevertheless withdraw any prayers for injunctive relief. By the time of publication of this post, Google had not yet made a related filing in the FRAND action in the Western District of Washington, which is not only a rate-setting action but also involves offensive claims, involving injunction requests, by Google. In late November Judge James Robart issued a summary judgment order against Google's injunction requests, but Google could still appeal this decision.

If Google had kept pursuing its SEP-based import ban requests, the FTC would have had a major credibility problem because its chairman said at last week's press conference that he expected such withdrawals to happen. But one such withdrawal, or even the series of withdrawals that I believe we are now going to see in various cases targeting Apple and Microsoft, can't validate the FTC consent order. This is a marathon, not a sprint, as there are many other SEP cases pending and many more that will be filed in the future, by Google and others. The proposed FTC-Google agreement has its shortcomings that could still be fixed, and I'll talk about that some more in a subsequent blog post. If the measure of suitability-to-task of the proposed FTC-Google deal was a bunch of withdrawals, the FTC could simply have entered into an agreement with Google listing the cases/claims to be withdrawn, which could have been done on two pages (but the proposed order has 29 pages including appendices).

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