854 F. Supp. 2d 993
W.D. Wash.2012Background
- Microsoft moves for partial summary judgment on RAND licensing obligations tied to IEEE 802.11 and ITU H.264 standards.
- Motorola owns declared-essential patents and submitted RAND letters to IEEE and ITU; IEEE/ITU policies govern licensing.
- IEEE Policy defines Essential Patent Claims and requires Letters of Assurance with RAND or non-enforcement language; RAND terms must be offered.
- ITU Policy requires patent holders to negotiate licenses RAND on nondiscriminatory terms; negotiations occur outside ITU.
- Microsoft seeks ruling that Motorola bound to RAND terms and that Microsoft is a third-party beneficiary.
- Court grants in part and denies in part; first two issues resolved in Microsoft’s favor, others remain for later proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Motorola bound by RAND commitments to SSOs | Microsoft asserts binding RAND licensing commitments exist. | Motorola contends policies contemplate bilateral negotiation; initial offer may be non-RAND. | Motorola bound to RAND commitments; Microsoft third-party beneficiary. |
| Whether Microsoft is a third-party beneficiary of Motorola's commitments | Microsoft benefits from Motorola’s RAND pledges to IEEE/ITU. | Motorola disputes third-party beneficiary status of Microsoft. | Microsoft is a proper third-party beneficiary. |
| Whether Motorola must offer RAND terms when licensing to a third-party beneficiary | Initial offers must be on RAND terms; otherwise RAND obligations are violated. | TERMS are determined through bilateral negotiation; initial offer may be non-RAND. | Denies summary judgment on this issue; unresolved under current briefing. |
| Whether Motorola's offers to Microsoft breached RAND obligations | Offers were non-RAND; royalty tied to end-product price, not contribution. | No established rule that such royalty structure is inherently non-RAND; facts matter. | Denied summary judgment; genuine disputes exist on RAND-terms compliance. |
Key Cases Cited
- Research In Motion Ltd. v. Motorola, Inc., 644 F.Supp.2d 788 (N.D. Tex. 2008) (licensing obligations under SSOs can be contractual and binding)
- Wm. Dickson Co. v. Pierce Cnty., 116 P.3d 409 (Wash. App. 2005) (ambiguous contracts may require fact-finder interpretation at trial)