Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 90 PTCJ 3215, 09/18/2015.
Copyright 姝2015 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
PATENTS
The author contends that Judge James L. Robart’s framework for determining a royalty
rate for infringement of a standard essential patent ‘‘is now on the cusp of changing the
patent litigation landscape.’’
The Effect of Microsoft v. Motorola
BYMAURICIO URIBE
Throughout U.S. patent law jurisprudence, a select
number of cases have made significant changes to
fundamental aspects of the process of patent litiga-
tion. Such milestone cases often eclipse the more spe-
cific details of the parties involved in the litigation, the
technology and technical industries encompassed by
the litigated patents, and even the era of the litigation.
For example, a little less than 20 years after the publi-
cation of the opinion, there is simply no patent litigation
in today’s era in which a Markman hearing
1
does not
play a significant role in the strategy and execution of
patent litigation.
With the Ninth Circuit’s panel affirmance of the dis-
trict court’s judgment on July 30, 2015, Judge James L.
Robart’s opinion in Microsoft v. Motorola has the po-
tential to make a similar effect on patent litigation for
complex technology.
The First RAND Framework—Microsoft v.
Motorola
In Microsoft Corp. v. Motorola, Inc., Microsoft sued
Motorola on the basis of breach of a reasonable and
non-discriminatory (RAND) licensing commitment re-
lated to patents declared as essential to two technical
standards.
2
Based solely on two licensing letters sent by
Motorola to Microsoft which included Motorola’s pro-
posed royalty rates for Microsoft to take an essential
patent license, Microsoft sued Motorola in the U.S. Dis-
trict Court for the Western District of Washington for
breach of contract. In filing the lawsuit, Microsoft al-
leged that it was entitled to enforce Motorola’s RAND
commitment to the relative standard setting organiza-
tions and that Motorola had breached its RAND com-
1
Originating from the holding in Markman v. Westview In-
struments Inc., 517 U.S. 370, 38 U.S.P.Q.2d 1461 (1996).
2
Microsoft Corp. v. Motorola, Inc., 854 F. Supp. 2d 993,
2012 BL 62310, 103 U.S.P.Q.2d 1235 (W.D. Wash. 2012) (83
PTCJ 622, 3/2/12). Motorola asserted a 2.25 percent net royalty
rate for any device implementing either the 802.11 wireless air
interface specification adopted by the Institute of Electrical
and Electronic Engineers or the H.264 video encoding stan-
dard adopted by the International Telecommunications Union
(ITU).
Mauricio Uribe is a partner in the Seattle
office of Knobbe, Martens, Olson & Bear, LLP
who has been very active in complex, global
patent and technology licensing, including
standards-essential patents. Mr. Uribe is also
active in the prosecution of patent applica-
tions in both the electrical, telecommunication
and computer software fields and has wide-
ranging experience in developing patent port-
folios and intellectual property assets.
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