Microsoft v. Motorola, Inc. and Motorola Mobility, Inc.


  • Case Number: 2:10-cv-01823

Next Event:  Trial has concluded.  Awaiting Final Judgment.

Summary:  This case includes the transfer of a case from the Western District of Wisconsin.  It is primarily a FRAND lawsuit between Microsoft and Motorola.  Microsoft initiated litigation alleging breach of contract and promissory estoppel concerning Motorola’s self-declared standard essential patents.  Motorola seeks to declare that Microsoft has infringed its valid patents, and has done so without accepting a license.  The dispute largely rests on what is a FRAND rate, with Microsoft asserting the appropriate calculation of FRAND is a comparable to patent pools or an assessment of the value of the patents before being included in a standard.  Motorola contends that the correct FRAND rate is the result of a hypothetical bilateral negotiation between the two companies.

Timeline of Important Events:

  • November 9, 2010 – Microsoft files Complaint against Motorola alleging breach of contract, promissory estoppel, waiver, and declaratory judgment that Motorola failed to comply with its commitment to the standard setting organizations IEEE-SA and the ITU (W.D. Washington Filing #1). Microsoft asks the court to find that Motorola failed to offer licenses on FRAND terms, and further enjoin Motorola from withholding patents from Microsoft or demanding excessive royalties. Microsoft asserts that Motorola has identified twenty-eight patents that are essential for compliance with the 802.11 (WLAN) IEEE standard.
  • November 10, 2010 – Motorola (and its wholly-owned subsidiary General Instrument Corporation) files Complaint against Microsoft in the Western District of Wisconsin Case No. 3:10-cv-699 (W.D. Wis. Filing #1) alleging patent infringement of three utility patents.
  • December 21, 2010 – Microsoft files Motion to Dismiss or, in the alternative, Motion to Transfer Venue in Wisconsin (Wisconsin Filing #25).
  • January 25, 2011 – Microsoft files Answer and Counterclaim against Motorola (Filing #37 in W.D. Wis.). Microsoft asserts affirmative defenses, including non-infringement, equitable estoppel, and lack of irreparable harm. Microsoft includes counterclaims of patent infringement, but contends that the claims can be properly addressed only by first-filed case – the Western District of Washington. Microsoft assets Motorola infringement of two utility patents and breach of RAND licensing agreements, and requests declaratory judgments of promissory estoppel and wavier.
  • February 18, 2011 – Judge Crabb of W.D. Wisconsin grants Microsoft’s Motion to Transfer Venue to W.D. Washington.
  • June 15, 2011 – Motorola files its Answer to the Complaint and the allegations from Microsoft’s Counterclaim from the Western District of Wisconsin (Filings #67 and #68). This contains a long narration of Motorola’s position regarding SEPs. Motorola also filed a Counterclaim requesting the court declare that Motorola has complied with its FRAND requirements, and that Microsoft has repudiated and rejected any right to a license under FRAND terms.
  • March 9, 2012 – Microsoft files its Answer to the Counterclaims asserted by Motorola in Filings #67 and 68 (Filings # 192 and 193).
  • March 28, 2012 – Microsoft files for preliminary injunction and temporary restraining order (Filing #210).
  • April 11, 2012 – Court Grants Microsoft’s Motion for a Temporary Restraining Order to stop Motorola from enforcing any injunctive relief it obtains in Germany (Filing #261).
  • May 14, 2012 – Court Grants Microsoft’s Motion for Preliminary Injunction (Filing #310). This preliminary injunction shall remain in effect until this court is able to determine whether injunctive relief is an appropriate remedy for Motorola to seek with respect to Microsoft’s alleged infringement of Motorola’s standard essential patents.
  • July 16, 2012 – Court grants Joint Order by the parties to stay all patent infringement related claims (Filing #360). This includes case numbers 10-cv-1823; 11-cv-595; and 11-cv-1408.
  • October 10, 2012 – Court Denies Motorola Motion for Partial Summary Judgment on Microsoft’s request for a RAND license (Filing #465).
  • November 13, 2012 – Trial Begins.
  • November 20, 2012 – Trial Completed.
  • December 14, 2012 – Microsoft files Post Trial Brief regarding Google’s AVC Patent Portfolio License with MPEG LA (Filing #614).
  • December 17, 2012 – Post Trial briefs and Proposed Findings of Fact and Conclusions of Law filed by both parties. Motorola reiterates that the appropriate FRAND rate should be set by a hypothetical bilateral negotiation, and maintains that its offer letters to Microsoft were made in good faith. Microsoft contends that the court should look to appropriate comparables when determining the FRAND rate, such as the MPEG LA license, the VIA license, and bilateral ex-post agreements.
    • Filing #622 – Motorola brief on Google MPEG LA License Agreement
    • Filing #623 – Defendants Motorola et al Post Trial Brief
    • Filing #624 – Defendants Proposed Findings of Fact
    • Filing #625 – Microsoft Proposed Findings of Fact and Conclusions of Law
    • Filing #626 – Microsoft Post Trial Brief
  • December 31, 2012 – Judge Robart orders hearing and oral arguments on the Google-MPEG LA license agreement for January 28, 2013 (Filing #637).
  • January 23, 2013 – Microsoft and Motorola both submit briefs in response to Judge Robart’s December 31, 2012 Order in which they both address whether the court should consider extrinsic evidence in evaluating the impact of the MPEG LA license (Filings #640 (Microsoft) and #642 (Motorola)).