Motorola wins German ban on Windows 7, Xbox 360

Motorola has won a permanent injunction against the sale and marketing of Windows 7, the Xbox 360, Internet Explorer 7 and Windows Media Player in Germany, but Microsoft says the products will remain on sale while it launches an appeal.

Motorola has won an injunction against the sale and marketing of Windows 7, the Xbox 360, Internet Explorer 7 and Windows Media Player in Germany, but Microsoft will appeal. Image credit: CNET News

The ruling in Mannheim regional court on Wednesday morning dealt with two Motorola patents that are essential to the widely-used H.264 video compression technology. Both patents are supposed to be licensed under fair, reasonable and non-discriminatory (FRAND) terms, and a US court has pre-emptively granted Microsoft a restraining order against Motorola's enforcement of the German decision, while it examines Motorola's tactics around those patents.

"This is one step in a long process, and we are confident that Motorola will eventually be held to its promise to make its standard essential patents available on fair and reasonable terms for the benefit of consumers who enjoy video on the web," Microsoft said in a statement on Wednesday.

"Motorola is prohibited from acting on today's decision, and our business in Germany will continue as usual while we appeal this decision and pursue the fundamental issue of Motorola's broken promise," it added.

Our business in Germany will continue as usual while we appeal this decision and pursue the fundamental issue of Motorola's broken promise.

– Microsoft

The ruling found in Motorola's favour in four separate cases that all dealt with the same patents. They were only separate because Motorola had chosen to divide the suits against Microsoft Germany, Microsoft Corp and Microsoft Ireland.

Microsoft had anticipated the ruling, leading it to move its European distribution centre from Germany to the Netherlands a month ago.

Motorola welcomed the court's decision

"We are pleased that the Mannheim Court found that Microsoft products infringe Motorola Mobility's intellectual property," it said in a statement. "As a path forward, we remain open to resolving this matter. Fair compensation is all that we have been seeking for our intellectual property." 

ZDNet UK has asked Motorola whether it will enforce the ruling despite the US restraining order and injunction, but the company had not responded at the time of writing.

Enforcing the injunction

There are several factors that could stop Motorola from enforcing the injunction. The company would have to pay a significant bond to start enforcement — between €20m (£16m) and €120m depending on the case — and it would lose that money if Microsoft won its appeal.

According to a spokesman for the Mannheim court, judge Holger Kircher did not mention the US court's intervention in his verdict. That injunction and temporary restraining order barred Motorola from enforcing the anticipated Mannheim verdict until the battle between the two companies in the US courts has reached a resolution.

In the US case, prompted by a Microsoft suit, the courts are trying to establish whether Motorola is right to try to extract heavy royalties for FRAND patents. The video patents are essential to the H.264 codec but, as with all its FRAND-protected patents, Motorola wants 2.25 percent of the full sale price of any product that uses them. Potential licensees of Motorola patents, such as Microsoft and Apple, have said this is excessive.

Google, which is set to buy Motorola, has defended the company's tactics around FRAND patents. However, Motorola is the subject of an EU antitrust investigation over the matter.

German courts are more likely than most to allow injunctions based on the infringement of FRAND patents, as was demonstrated last year when Motorola managed to get models of the iPhone and iPad briefly removed from sale in that country. That injunction was based on cellular technology patents that are also subject to FRAND terms.

The two patents that Kircher decided had been infringed by Microsoft were EP 0538667, covering "adaptive motion compensation using a plurality of motion compensators", and EP 0615384, which deals with "adaptive compression of digital video data".

The Mannheim court has not published its ruling because it contains confidential information that, if redacted, would make it impossible to understand the document, a spokesman for the court told ZDNet UK.