Microsoft has committed to accept a license on RAND terms for Motorola's entire H.264 standard essential patent portfolio, and the litigation is continuing to determine the details of such a license, the Judge said on Friday. The license agreement will constitute Motorola's remedy for Microsoft's use of Motorola's H.264 standard essential patent portfolio to include the Motorola asserted patents, he added.
A judicially-determined RAND license covering all of Motorola's H.264 essential patents would also dispose of its request for an injunction in Germany based on Motorola-owned, H.264 standard essential patents, the Judge wrote. The court had earlier issued an order enjoining Motorola from enforcing any injunctive relief it may receive through the German lawsuit initiated in July.
A license agreement will also result between Microsoft and Motorola for Motorola's 802.11 standard-essential patents, Judge Robart wrote. "Thus, the effect of this court's decision would also bar an injunction for the assertion of any Motorola-owned 802.11 standard essential patents against Microsoft," he added.
The use of standards-essential patents covered under FRAND terms in patent disputes has come under scrutiny recently. In June, the U.S. Federal Trade Commission said in a statement in the public interest before the U.S. International Trade Commission that ITC's ban orders in matters involving implementation of standards-essential patents, that were committed to be licensed on FRAND (fair, reasonable and non-discriminatory) terms, has the potential to cause substantial harm to U.S. competition, consumers and innovation.
FTC was commenting on ITC investigations into complaints by Motorola against Microsoft and Apple. The ITC last month decided to review an earlier decision that Apple did not infringe four patents of Samsung Electronics in its mobile devices including the iPhone and iPad, and said it plans to discuss in the review issues relating to standards-essential patents, including whether an undertaking to license a patent on FRAND terms precludes a ban on a product if it infringes the patent.