Wednesday, March 20, 2013

Microsoft and Intel back Apple, support Judge Posner's FRAND patent ruling in amicus briefs

Apple and Google are appealing Judge Posner's dismissal of a two-way Apple-Motorola patent infringement case. Last week Google filed its opening brief, on which I commented in two posts. Google is arguing that Apple is an unwilling licensee and that Judge Posner was wrong to rule out injunctive relief over FRAND-pledged standard-essential patents (SEPs). It also says his ruling devalues SEPs by determining the FRAND value of SEPs based on the intrinsic value of the claimed inventions rather than post-standardization hold-up value.

The first amicus curiae brief filed in support of Apple --- i.e., advocating affirmation of the FRAND part of Judge Posner's ruling -- has just been submitted by Intel. For now the document is sealed, but the headline has appeared on the electronic document system of the United States Court of Appeals for the Federal Circuit:


Intel also filed a public interest statement last year in support of Microsoft's defense against Google's (Motorola's) pursuit of an import ban. Here are a couple of passages from Intel's filing with the ITC in the Xbox case:

"An Exclusion Order [i.e., import ban] is unnecessary to protect intellectual-property rights in this case, because Motorola has agreed to license those rights to all comers. Moreover, an Exclusion Order here would harm the public interest and U.S. consumers by facilitating the unfair exploitation of market power that was created by an industry standard. This market power, which Motorola agreed to forego in favor of a RAND royalty, would not have existed absent Motorola’s RAND commitment because the standard-setting organizations ('SSOs') that promulgated the standards at issue condition the incorporation of a patent into a standard on the receipt of a RAND commitment.


The adoption of a standard enables the SEP holder to exert leverage over the entire industry by demanding excessive royalties and threatening to enjoin the sale of standard-compliant products. Unlike with ordinary patents--which an infringer can often design around to produce a materially similar product-- it is commercially infeasible for an individual manufacturer to decline to incorporate a commercially accepted standard (and hence the SEPs) into a new product. Indeed, the very purpose of interoperability standards is to incorporate identical standard-compliant features into products so that different manufacturers’ products will work together."

Shortly after publication of this post, Microsoft also filed an amicus brief in support of Apple. (The original version of this post already noted the appearance of five lawyers on Microsoft's behalf.) The brief itself is sealed, but Microsoft's motion for leave to submit an amicus brief is public. Interestingly, Microsoft's motion for leave says that some of the issues Google wants the Federal Circuit to address are "not properly before it" (but at any rate, Microsoft disagrees with Google on substance):

"Certain of the issues that Motorola asks this Court to address--including the proper method for valuing standard-essential patents and the availability of injunctive relief for infringement of such patents--although presented in other cases involving Motorola patents, including cases involving Microsoft, are not in fact presented in this appeal. Beyond that, the positions Motorola asks this Court to adopt are contrary to law and inimical to sound public policy. Microsoft, therefore, has a direct interest in ensuring that this Court not accept Motorola's invitation both to address matters not properly before it and to do so in a misguided, and potentially harmful, manner."

Here's the original document of Microsoft's motion:

13-03-20 Microsoft Motion for Leave to File Amicus Brief in Support of Judge Posner

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: