Motorola Mobility started the week off on a high note, winning separate rulings at the U.S. International Trade Commission that both Apple’s iPhone and iPad and Microsoft’s XBox infringe Motorola patents. The decisions are preliminary, but they augur well for the cases–and for Google’s decision to acquire IP-rich Motorola Mobility in defense of Android.
On Monday Motorola moved one step closer to blocking U.S. imports of Microsoft’s XBox 360 video game console when ITC administrative law judge David Shaw ruled that Microsoft had infringed four of Motorola’s patents involving Wi-Fi technology, video decoding, and methods of communication between the XBox and its accessories. In a one-page order, Shaw found that a fifth patent, also involving Wi-Fi technology, was not infringed, and that a claim in one of the video decoding patents was invalid.
The two companies have been sparring over these and other patents all over the country, including Wisconsin litigation that parallels the ITC case (that case has been stayed pending an ITC determination.) The two also have open cases in Seattle federal district court involving the XBox Kinect video game console, as well as Microsoft products Windows 7 and Windows Vista. A judge in Seattle ruled April 13 that Motorola can’t seek an injunction against Microsoft in Germany.
Microsoft also sued Motorola in October 2010 before the ITC; last December an ITC judge found that Motorola had infringed a Microsoft patent related to electronic scheduling. According to Bloomberg, the full ITC is scheduled to issue its ruling on the Microsoft patent in May.
Ropes & Gray partner Jesse Jenner, who represented Motorola against Microsoft before the ITC along with Steptoe & Johnson, said the ruling vindicates his client’s position. “We certainly know that four of five patents were valid and infringed,” said Jenner, who cautioned against drawing any larger conclusions until Shaw’s full decision was available. “The judge was clearly persuaded by Motorola’s proof.”
Microsoft vowed to fight on. “We remain confident the commission will ultimately rule in Microsoft’s favor,” said a Microsoft spokesperson in an email. Microsoft lawyer Brian Nester of Sidley Austin did not respond to a request for comment.
In the Apple case, meanwhile, ITC administrative law judge Thomas Pender held Tuesday that Apple’s iPad and iPhone had infringed one of Motorola’s patents for eliminating noise while speaking or transmitting data. Motorola has also demanded that Apple iPads and iPhones be banned from importation into the United States.
It wasn’t all good news for Motorola, however. In a one-page order, Pender found that one other Motorola patent was invalid, while two patents were not infringed by Apple.
The full commission is expected to issue final orders on both matters in August.
Apple counsel Mark Davis of Weil Gotshal & Manges referred us to his client, which provided this statement: “We’re glad the court ruled in our favor on three of four patents patents being considered. The fourth covers industry-standard technology which Motorola has refused to license to Apple on reasonable terms. A court in Germany has already ruled that Apple did not infringe on this patent, so we believe we will have a very strong case on appeal.”
Motorola is represented by Steptoe & Johnson and Quinn Emanuel Urquhart & Sullivan in the Apple case; Steptoe’s Charles Schill didn’t respond to a request for comment.
This article originally appeared in The Am Law Litigation Daily.
