Most of the media attention may be focused on the Apple vs. Samsung trial right now, but Samsung is not the only company feeling Apple’s wrath at the moment. Apple has also scored a minor victory in their case against Motorola for seeking excessive royalty payments for industry essential patents thanks to a district judge in Wisconsin who issued some pretrial summary judgments that support Apple’s claim.
Apple sued Motorola Mobility in March 2011 after Motorola attempted to collect 2.25 percent of all net sales on iOS products that use essential industry standard patents. However, companies that hold these essential patents are expected to offer them to companies that need them under licensing terms that are considered fair, reasonable and nondiscriminatory (FRAND), and Apple didn’t believe that percentage fell within those requirements.
U.S. District Judge Barbara B. Crabb for the Western District of Wisconsin has ruled in a pretrial summary judgment that the patents in question, which include video streaming and Wi-Fi technology, were in fact FRAND and that Motorola was contractually obligated with ETSI and IEEE to license them on FRAND terms. Apple is considered a third-party beneficiary of that contract. Crabb also found that when submitting the patents to ETSI, Motorola did not identify essential intellectual property rights it held that might be required by the patent proposal before its adoption as industry standard.
Despite the minor victory, Apple still has their work cut out for them to provide proof that Motorola’s 2.25 percent royalty demand is inconsistent with FRAND, but the issue has been narrowed down considerably thanks to the summary judgment. The case is set to go to trial November 5.
This is an important victory for those advocating that FRAND promises must be enforceable, and has implications not only for Apple-Motorola cases, but also for Microsoft’s FRAND enforcement dispute with Motorola Mobility and even the ongoing Apple vs. Samsung trial, where two of Samsung’s patents-in-suit raise the same issues.