A month ago I reported on a Microsoft letter to the United States District Court for the Western District of Washington, asking Judge James Robart for permission to bring a motion to "renew and expand" an anti-suit injunction so as to bar Google's Motorola Mobility from suing Microsoft in Mannheim, Germany, for royalties on patents declared essential to the H.264 video codec standard. This morning the court granted Microsoft leave to file such a motion. the deadline for the motion is September 16, 2013 (next Monday), and Motorola can (and I'm sure will) respond a week later. Either party gets to submit 10 pages.
The fact that the court allows Microsoft to bring a motion doesn't mean that it will necessarily be granted, but this was the first hurdle. After last week's guilty verdict against Google/Motorola, Microsoft is in an even stronger position than it was at the time of its letter.
The anti-suit injunction Microsoft would like renewed and expanded was ordered last year to prevent enforcement of German H.264 SEP injunctions, affirmed by the Ninth Circuit, and replaced in November 2012 with a summary judgment ruling. The anti-suit injunction and the summary judgment ruling focused on injunctive relief, but arguably it's also inconsistent with their spirit to press on with foreign litigation over monetary relief instead of having the dispute resolved in the United States. The U.S. dispute started long before any German filings and had worldwide scope from the beginning because Motorola had sent demand letters to Microsoft (from one U.S. company to another) referring to worldwide standard-essential patent (SEP) licenses and even specifically listing the patents at issue in Germany.
Not only has Google's Motorola recently brought the aforementioned royalty-collection lawsuit, in defiance of Judge Robart's FRAND rate-setting opinion, but it's also preparing a SEP damages lawsuit in Germany.
Yesterday I found out that Microsoft and Google stipulated last month to the vacation of the dates for their appellate hearings in Germany (two of which would otherwise have taken place tomorrow) on the merits of four Motorola v. Microsoft H.264-related cases (two different patents, asserted against different Microsoft legal entities in parallel cases). As I explained then, the parties agree and disagree at the same time. For disparate reasons, either party believes that Microsoft is now licensed. Microsoft's theory is consistent with the positions Judge Robart has taken so far, while Motorola disagrees with Judge Robart and argues that there is a license agreement in place in Germany (and only there), which Microsoft disputes. The Karlsruhe-based appeals court (which hears all appeals of Mannheim rulings) would have had to sort out the licensing question first and would have reached the merits of these patent infringement cases only if it had disagreed with both parties at the same time. In practical terms, the German court would probably have awaited the outcome of the U.S. proceedings to find out whether there is a license agreement of worldwide scope in place under U.S. law.
As always, international anti-suit injunctions raise foreign policy issues ("comity of nations"), but judicial efficiency clearly weighs in favor of Microsoft's upcoming motion. And with all the debate raging over "patent trolling" and ways to curb patent litigation, it would also make sense from a policy angle to put the kibosh on any attempts to religitate issues in Germany that have been resolved in the U.S. (those decisions can and will be appealed, but since the original anti-suit injunction was, as I mentioned above, affirmed on appeal, the most likely outcome is that the U.S. litigation will take care of licensing issues on a global basis).
Also, I doubt that the Mannheim court views Google's new royalty-collection lawsuit (and will view the apparently-upcoming damages lawsuit) too favorably when there's actually a pretty good chance that another jurisdiction will take care of all of this. Comity was a concern last year in the injunction context, and at that stage I suspect that the Mannheim judges didn't necessarily like the notion of a foreign court preventing a prevailing Mannheim plaintiff from enforcing an injunction. This time around comity should be much less of a concern because even without a renewed and expanded U.S. anti-suit injunction the Mannheim court would probably be inclined to stay its case until all appeals have been exhausted in the U.S., knowing that most likely Microsoft will hold a worldwide license, at a royalty rate determined in the U.S., to Motorola's H.264 SEPs.
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