Last month Judge James Robart of the United States District Court for the Western District of Washington certified Microsoft's FRAND contract win over Google's Motorola Mobility, which Google immediately appealed to the Federal Circuit despite previously having appealed a preliminary injunction decision in the same case to the Ninth Circuit. Two weeks ago, Microsoft brought a motion to transfer Google's appeal, which it described as forum shopping, out of the Federal Circuit and over to the Ninth Circuit. For formal reasons, the original motion was rejected because it was styled as a motion to transfer similar to such motions in district court, but a clerk's notice indicated that under applicable procedural rules such a motion must seek termination of an appeal, with a subsequent transfer. Microsoft refiled accordingly, which did not change the substance of the motion.
In my post on Microsoft's motion I already outlined the three key issues on which the parties appeared to disagree: law of the case (i.e., whether the Ninth Circuit's previous determination that it had jurisdiction over this matter was dispositive of this question except under rare circumstances), consolidation (the appealed rulings relate to Microsoft's FRAND contract complaint, not the patent infringement action Motorola filed elsewhere and which was transferred to Seattle and consolidated with the FRAND contract case), and the fact that Judge Robart's FRAND rate determination involved a modified set of Georgia-Pacific factors (a framework usually applied to patent damages calculations) and assessments of how the parties to a hypothetical negotiation would have assessed the validity and essentiality/infringement of Motorola's standard-essential patents (SEPs).
Google's opposition brief was filed late on Thursday and confirms that those are indeed the issues. Here's Google's filing (this post continues below the document):
Now that both parties have briefed their positions, I have developed a preliminary opinion, though I'm not an expert in questions of appellate jurisdiction. I don't feel that this is a case that really must be put before the Federal Circuit in order to ensure the uniformity of patent law across the United States, but it might be a case that the Federal Circuit can claim to have jurisdiction over if it insists. And if it did, I don't think it would be too bad for Microsoft. Obviously Microsoft would prefer to keep this matter in the circuit in which it already has a favorable interlocutory decision in place -- which is the whole reason for Google's forum-shopping. But Microsoft can defend Judge Robart's ruling (at least the largest part of it) either way, and if the Federal Circuit then declared itself the appellate forum for all FRAND rate determinations, the impact would be even greater than that of a Ninth Circuit decision.
Google argues with respect to "law of the case" -- and consolidation -- that the Ninth Circuit declared itself responsible only for the contract complaint, and did not say clearly in its decision that it thought it had jurisdiction despite the fact that a patent infringement complaint had been consolidated with that one. This point seems weak to me. Consolidation had happened, and Google itself nevertheless brought its appeal there. It didn't speak out on it, which may actually confirm that Microsoft is right and the scope of the complaint matters more than the effects of consolidation. So I'm skeptical of Google's position on this, but it's also important to note that "law of the case" is not an absolute principle.
The part that I consider far more interesting, though I'm not sold on Google's position on that one either, is where Google argues that Judge Robart performed some analysis under patent law in his effort to simulate a negotiation that Microsoft and Motorola could have had years ago. I'm not convinced of this position because the whole idea of having the Federal Circuit and ensuring uniformity in patent law is about actual patent infringement and validity rulings. Assuming that this appeal gets transferred to the Ninth Circuit and the Ninth Circuit affirms (or reverses, for that matter) Judge Robart's reasoning with respect to whether certain patents were valid and actually used by Microsoft, it will still just be a finding with respect to a hypothetical FRAND negotiation and wouldn't bind courts in the Ninth Circuit (much less elsewhere) with respect to actual infringement and validity determinations.
Google mentions that Judge Robart based his FRAND determination in part (and we're talking about a rather limited part) on a February 2013 summary judgment holding 13 Motorola patent claims invalid for indefiniteness of means-plus-function claims. That summary judgment ruling was made in the patent infringement part of the consolidated case; it had nothing to do with Microsoft's FRAND contract complaint other than that Judge Robart made use of this information. The Federal Circuit doesn't have to hear Google's appeal of the FRAND contract case for this reason either. Motorola can still appeal the patent infringement and validity decisions to the Federal Circuit. If it then turned out that Judge Robart's invalidation decision was wrong, it would change a fact that he took into account in the hypothetical FRAND negotiation context, but that would also apply if, for example, a patent was rejected as a result of a USPTO reexamination proceeding or due to a decision by whatever judge in whatever district. That said, it is a possibility that the Federal Circuit will look at terms like Georgia-Pacific and means-plus-function indefiniteness and, on that basis, may prefer to acquire control over this case. That's what Google is apparentyl hoping for. But the Federal Circuit is also an extremely busy appeals court, and the America Invents Act contributed hugely to its caseload.
Microsoft prevailed on every single one of its motions to transfer Motorola's infringement cases out of a couple of different districts. Now Motorola is pushing for a transfer, and it may take some time before we know the outcome. It's possible that the Federal Circuit will hear the appeal and address jurisdiction only in its decision.
So far the Federal Circuit has held only one case involving Motorola's SEPs, and Chief Judge Rader called Motorola's royalty demands (from Apple, in that case) "crazy". He said so more than once, in fact.
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