Microsoft Corporation v. Motorola, Inc, 696 F.3d 872

Background

Motorola appeals a district court order granting a foreign anti-suit injunction enjoining Motorola from enforcing a German injunction against Microsoft.
The dispute centers on RAND/FRAND commitments Motorola allegedly made to ITU and IEEE regarding standard-essential patents for H.264 and related technologies, and whether those commitments create enforceable contract rights in U.S. courts.
Microsoft asserts it is a third-party beneficiary to Motorola’s RAND commitments; the U.S. contract litigation involves Washington state contract claims and potential remedies related to RAND.
Motorola’s German action in Mannheim sought injunctions against Microsoft’s sale and use of hardware and software allegedly infringing German-designated patents (‘667’ and ‘384’).
The district court found Motorola’s RAND declarations created a contract enforceable by Microsoft and that such contract could govern injunctive relief concerning the German patents; it issued a TRO and then a narrowly tailored preliminary anti-suit injunction.
On appeal, the panel reviews whether the district court properly applied the Gallo/Unterweser framework and whether the injunction’s scope and comity impact were appropriate.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the district court properly issued a foreign anti-suit injunction	Microsoft argues the court should enjoin German relief to prevent forum-shopping and protect the U.S. contract claim.	Motorola contends the German action is a valid independent action and comity-wise should not be restrained.	Yes; district court did not abuse discretion under Gallo framework.
Whether Motorola’s RAND declarations create a contract enforceable by Microsoft	Microsoft contends RAND declarations create a contract beneficiary right permitting enforcement by Microsoft.	Motorola argues RAND commitments are non-binding in that manner under ITU policy and German law.	Yes; RAND declarations created a contract enforceable by Microsoft as a third-party beneficiary.
Whether at least two Unterweser factors justify the injunction	Microsoft argues the foreign action is vexatious and prejudicial to equitable considerations and U.S. forum.	Motorola maintains the German suit has merit and comity concerns do not support injunction.	Yes; at least two Unterweser factors apply (vexatious/oppressive and prejudicial to equitable considerations).
Whether the injunction’s impact on comity is tolerable	Microsoft argues injunction is narrowly tailored to avoid broader interference with German sovereignty.	Motorola contends comity is seriously harmed by blocking German enforcement of its patents.	Tolerable; court's tailoring and private-party nature reduce comity concerns.
Whether the threshold similarity of the U.S. contract action and the German patent action supports injunction	Microsoft argues the U.S. contract action can resolve issues in the German action.	Motorola contends patent law is territorial and cannot be disposed of by U.S. contract claims.	Yes; contract action can resolve the issues relating to RAND and its injunctive implications.

Key Cases Cited

Gallo v. Andina Licores S.A., 446 F.3d 984 (9th Cir. 2006) (three-part framework for anti-suit injunctions; comity considerations)
Applied Medical Distrib. Corp. v. Surgical Co., 587 F.3d 909 (9th Cir. 2009) (comity and threshold similarity; emphasis on private contract context)
M/S Bremen v. Zapata Off-Shore Co., 407 U.S. 1 (U.S. 1972) (strong comity principles; private international agreement enforcement)
Seattle Totems Hockey Club, Inc. v. Nat’l Hockey League, 652 F.2d 852 (9th Cir. 1981) (comity and anti-suit injunction principles)
Laker Airways Ltd. v. Sabena, Belgian World Airlines, 731 F.2d 909 (D.C. Cir. 1984) (scope of injunction relative to comity)
Stein Assocs., Inc. v. Heat & Control, Inc., 748 F.2d 653 (Fed. Cir. 1984) (patent-related anti-suit considerations (circuit briefing flavor))
Medtronic, Inc. v. Catalyst Research Corp., 518 F. Supp. 946 (D. Minn. 1981) (foreign injunctions when contract governs relief)
Ibeto Petrochemical Indus. Ltd. v. M/T Beffen, 475 F.3d 56 (2d Cir. 2007) (comity and tailored injunctions in complex international disputes)
Paramedics Electromedicina Comercial, Ltda. v. GE Med. Sys. Info Tech., Inc., 369 F.3d 645 (2d Cir. 2004) (parallel actions and contract-based injunctive relief)
Applied Med. Distrib. Corp. v. Surgical Co. (duplicate citation for emphasis), 587 F.3d 909 (9th Cir. 2009) (see above)