(This story is running in the print edition of The Seattle Times May 3, 2012. – Janet I. Tu)
A judge in a regional court in Germany ruled Wednesday that Microsoft’s Xbox and Windows infringe on some of Motorola’s patents.
The judge in Mannheim, Germany, granted Motorola’s request for an injunction against the sales of Windows 7, Xbox 360, Internet Explorer and Windows Media Player 12 in that country.
But Motorola won’t be able to enforce that injunction — at least for now — because a judge in Seattle last month granted Microsoft’s request to prevent Motorola from enforcing any such injunction.
The patents in question involve standards for viewing videos over the Internet. The two companies have fought over patents for years, and the German judge’s ruling is certainly far from the last round of wrangling between the two companies.
Microsoft has indicated it would appeal the judge’s decision.
And both parties are awaiting a May 7 hearing at a federal court in Seattle over whether Motorola breached its duties to provide standards-essential patents — patents that have become standard use in the industry — on fair, reasonable and nondiscriminatory (FRAND) terms.
(Typically, companies that own patents involving technologies that have become standard use agree, as part of joining international standards groups, to license those standards-essential patents under fair and reasonable terms.)
Motorola had asked Microsoft for royalties of 2.25 percent on the price of each Xbox and Windows PC sold, saying some of the technologies used in those products infringe on Motorola’s patents.
Microsoft characterized that royalty rate as outrageous, saying it would amount to $4 billion annually, and in November 2010, filed a lawsuit in a U.S. federal court in Seattle.
On Wednesday, Microsoft issued a statement about the Mannheim judge’s decision, saying: “This is one step in a long process, and we are confident that Motorola will eventually be held to its promise to make its standard essential patents available on fair and reasonable terms for the benefit of consumers who enjoy video on the Web.”
Motorola, which is in the process of being acquired by Google, issued a statement, too, saying: “We are pleased that the Mannheim Court found that Microsoft products infringe Motorola Mobility’s intellectual property. As a path forward, we remain open to resolving this matter. Fair compensation is all that we have been seeking for our intellectual property.”
The two companies’ patent battles have been fought in courtrooms from Seattle to Washington, D.C., to Germany.
This latest round has its roots in a case Microsoft filed in November 2010 in U.S. District Court in Seattle.
That lawsuit claimed Motorola had breached an agreement to provide, at reasonable rates, use of its patented technologies that have become standard in online video viewing and wireless usage.
The Seattle judge in the case issued a temporary restraining order last month, preventing Motorola from enforcing any injunction that could stop Microsoft from selling Windows and Xbox in Germany, should the German judge decide that Microsoft infringes on Motorola’s patents.
That temporary restraining order is in effect at least through the May 7 hearing in Seattle.
Microsoft and Motorola are also battling over patents related to Google’s Android, used as the operating system on many manufacturers’ smartphones and tablets.
That’s mostly a separate fight, but it may have spurred the standards-essential patents fight.
Microsoft’s legal dispute with Motorola over Android is part of a larger battle in which Microsoft claims Android infringes on some of Microsoft’s patents. The company has either negotiated licensing deals, whereby manufacturers pay Microsoft royalties on each Android device, or has taken some companies to court.
Earlier this week, Microsoft and Barnes & Noble announced that they had settled their patent fight over the bookseller’s Nook e-reader and tablet, which run on a version of Android.
That leaves Motorola as the only company left fighting Microsoft over Android-related patents.