This morning Judge James L. Robart, the federal judge presiding over a Microsoft v. Motorola FRAND contract case (with infringement counterclaims brought by the Google subsidiary) in the Western District of Washington, granted a 10-month-old Microsoft motion for summary judgment and held that thirteen of the patent claims asserted by Motorola against Microsoft in this action are invalid for indefiniteness of means-plus-function claims. The non-contract part of the case has been substantially narrowed by this decision. Here's the order:
The three relevant patents have all been declared essential to the H.264 video codec standard. They all share the same title ("macroblock level adaptive frame/field coding for digital video content") and have consecutive numbers (7,310,374, 7,310,375, and 7,310,376). Here's a summary of the asserted claims, the ones that have just been invalidated and the ones that have not been thrown out (yet):
'374 patent: Motorola asserted claims 8-18; claims 14-18 have been invalidated, while asserted claims 8-13 survived for now.
'375 patent: Motorola asserted claims 6-11, 13, 14, 16 and 17; claims 13, 14 and 16 have been invalidated, while asserted claims 6-11 and 17 survived for now.
'376 patent: Motorola asserted claims 14-15, 18-20, 22, 23, 26-28, and 30; claims 14-15, 18-20 and 30 have been invalidated, while claims 22, 23 and 26-28 survived for now.
The claims that survived for now could still be invalidated for other reasons than indefiniteness. Most patent claims are actually invalidated for anticipation (lack of novelty) or obviousness (lack of inventive step over the prior art). Such questions can be decided on summary judgment but most of the time are put before a jury, while indefiniteness is for a judge to decide.
Even if any ultimately-surviving claims were found infringed, Microsoft would be entitled to a license on FRAND terms. A rate-setting decision could come down anytime now. For H.264 declared-essential patents, patent pool firm MPEG LA agrees with Microsoft that it's entitled to a grant-back license from Google at the pool rate, which would amount to a couple hundred thousand dollars a year.
There was no dispute between the parties over whether the invalidated claims had means-plus-function elements. The language was clear enough: wordings like "means for using" or "means for decoding" couldn't be any clearer. Means-plus-function elements aren't necessarily invalid, but they are considered indefinite if the specifications of the patent don't provide clarity, which for computer-implemented inventions means (among other things) that particular algorithms must be specified. The judge found that the requisite particularity was missing, and on that basis courts must invalidate all patent claims containing such elements because otherwise patent holders would be able to acquire excessively broad monopoly rights and to create an enormous degree of legal uncertainty.
In November the court had already entered summary judgment against Motorola's request for injunctive relief against Microsoft over these and other standard-essential patents. If it had not, Google would now have to withdraw such requests anyway, under a (non-final) antitrust settlement with the Federal Trade Commission, as it did at the ITC last month.
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