Lawyers sometimes have to take extreme positions, but whatever they say must be at least somewhat justifiable. Three weeks ago I was thoroughly disappointed that Samsung's lawyers had told Judge Koh in the Northern District of California that Apple had no more options let to salvage a patent but to file a notice of appeal, which was plain wrong: the official communication by the USPTO that Samsung submitted to the court stated clearly that Apple did have other options. The same law firm also does a lot of work for Google, especially (but not only) against Apple and Microsoft. Today I've become aware of another ridiculously untrue assertion that is almost as bad as what happened in that Apple v. Samsung case.
Some background first. In November, Judge James Robart (Western District of Washington) certified Microsoft's FRAND victory over Google's Motorola Mobility, which immediately appealed this matter to the Federal Circuit, though it had previously appealed a preliminary injunction in this case to the Ninth Circuit. About a week later, Microsoft filed a motion to terminate the appeal and transfer it to the Ninth Circuit, which Microsoft said has jurisdiction over this appeal because it's about a complaint based in contract (not patent) law. On December 5, Google (Motorola) defended its strikingly obvious forum shopping (it believed that the Ninth Circuit had jurisdiction until it lost there big time last year; and, even more inconsistently, it's still trying to move a rather similar Apple appeal out of the Federal Circuit to the Seventh Circuit).
In their opposition to Microsoft's motion, Google's (Motorola's) lawyers told the Federal Circuit that "neither party [to a Microsoft v. Motorola dispute] addressed the consolidated patent infringement lawsuit" during the course of appellate proceedings before the Ninth Circuit last year, but anyone can listen to an official recording the appeals court made available on the Internet, which contains the following discussion between Ninth Circuit Judge Marsha Berzon and Microsoft counsel Carter Phillips (Sidley & Austin) at a September 11, 2012 hearing (unofficial transcript attached to a Microsoft filing made today):
JUDGE BERZON: That's some degree going on here because there also is a United States patent suit consolidated here.
MR. PHILLIPS: But the place where this entirely changes from parallel proceedings is at the point that you identified at the outset, which is the agreement that Motorola entered into, which was to provide a license across the board globally.
So how can there be any doubt that the question of the consolidated patent case -- which Google now claims puts the entire consolidated case under Federal Circuit appellate jurisdiction -- was indeed addressed by at least one party in the Ninth Circuit proceedings last year? Google obviously knows that the "law of the case" doctrine (the Ninth Circuit declared itself responsible last time) is a strong argument in Microsoft's favor. To the extent that Google says the Ninth Circuit didn't explicitly address the jurisdictional implications of the fact that the appeal relates to a contract part of a consolidated case that also has a patent infringement part, that's true, though the fact that the Ninth Circuit, despite being aware of consolidation (as the transcript proves), didn't address this may also be indicative of how little relevance it (and both parties) attached to that circumstance.
In my analysis of this venue dispute, based on Microsoft's motion and Motorola's opposition, I said that there are basically three kinds of issues: law of the case (and this appears to be an even stronger point in Microsoft's favor in light of that hearing transcript); consolidation (this, too, appears even weaker now because it apparently didn't persuade, or dissuade, the Ninth Circuit); and the fact that Judge Robart applied certain principles of patent damages law (he used a modified set of Georgia-Pacific factors) in his FRAND rate-setting opinion and assessments (though not determinations) of validity and essentiality. I said that the third part, which Google's Motorola described as a fact it didn't know and couldn't anticipate when it filed its Ninth Circuit appeal last year, was more interesting than the first two parts. But even with respect to the third part, Microsoft has now presented some pretty significant evidence: well ahead of the Ninth Circuit decision, Motorola served two expert reports that proposed a modified set of Georgia-Pacific factors.
It remains to be seen what the Federal Circuit will decide, but Google and its lawyers certainly haven't enhanced their credibility with some of their arguments against a venue transfer...
Here's Microsoft's reply brief, including the exhibits I mentioned (transcript and Motorola expert reports):
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