Patent ruling: Motorola can't bar Microsoft from selling Windows, Xbox in Germany

Patent ruling: Motorola can't bar Microsoft from selling Windows, Xbox in Germany

Summary: The latest decision in Microsoft's patent dispute with Motorola Mobility is in Microsoft's favor.


A U.S. District Court judge ruled on April 11 that Motorola Mobility won't be able to stop Microsoft from selling products, including the Windows and the Xbox, in Germany for the time being.

That's the latest episode in the Microsoft vs. Motorola patent battle which has been going on for the past couple of years.

According to today's ruling, handed down late in the day on Wednesday, Microsoft was granted an injunction and temporary restraining order against Motorola, which was seeking to stop Microsoft from selling certain products in Germany. The decision means that  Motorola will not be able to stop Microsoft from shipping products in Germany until after the U.S. courts have made a decision around whether Motorola is breaching its promise to provide at reasonable rates the use of its video patents around H.264. A Microsoft spokesperson said the German court decision will not go into effect until after the ruling in the U.S. court of the November 2010 lawsuit, and that this case will be determined later this year.

The Seattle Times has good backgrounder on the case.

"Motorola promised to make its patents available to Microsoft and other companies on fair and reasonable terms. Today's ruling means Motorola can't prevent Microsoft from selling products until the court decides whether Motorola has lived up to its promise," said David Howard, Deputy General Counsel for Microsoft, in a statement provided by Microsoft.

The legal tit-for-tat between Microsoft and Motorola Mobility has been going on for close to a year and a half. On November 2010, Microsoft sued Motorola again over wireless and video coding patents that are used by the Xbox and smartphones. Microsoft claimed that Motorola is charging excessive royalties for its patents. Motorola retaliated with its own countersuit, claiming infringement of 16 of its patents by Microsoft’s PC and server software, Windows Mobile and Xbox products.

This year, in February, Microsoft filed a formal complaint over Motorola Mobility’s — and parent Google’s — policies around making standard, essential patents available on fair, reasonable and nondiscriminatory (FRAND) terms. Microsoft specifically is targeting the amount Motorola Mobility’s is seeking Microsoft to pay for licensing video patents.

As a preemptive move, Microsoft earlier this month pulled its European distribution center out Germany, and announced plans to establish a new European distribution center in the Netherlands.

Topics: Legal, Microsoft, Mobility, Windows


Mary Jo has covered the tech industry for 30 years for a variety of publications and Web sites, and is a frequent guest on radio, TV and podcasts, speaking about all things Microsoft-related. She is the author of Microsoft 2.0: How Microsoft plans to stay relevant in the post-Gates era (John Wiley & Sons, 2008).

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  • haha Moto is in for a big payday.

    XBox, Server Software... In exchange for a fee on what? Droid X?
    • I agree. The big payday Motorola was hoping for

      looks as though it will come down to receiving a copuple of cents per cell phone, While Microsoft makes billions from the sales of XBox, Server software, ect.

      I imagine there are quite a few upset humans over at Motorola and Google.
      Tim Cook
      • words

        etc. not ect. the word is etcetera
      • Correcting Mister Spock is only logical.

        So do not downvote dhays for it.
  • this is outrageous!

    this clueless judge created an diplomatic incident by disregarding the German justice and international treaties. The judge must be suspended and the verdict overthrown to avoid deteriorarting of the economic realtions with EU and Germany. M$ should pay the piper according the full extent of the German law or settle with Motorola for all the world markets.
    LlNUX Geek
    • Different jurisditions have different laws

      Different countries, states, etc., have different laws.

      Let me be plain: You are an idiot or a delusional person if you think these laws all say basically the same thing or have the same law standard.

      So, one judge in one jurisdiction makes a ruling that differs in some respects from what another judge says in another jurisdiction.

      What do you ("Linux Guru Advocate") say as a result?

      The judge that ruled the way your ideology says shouldn't happen is called (and I quote from your comment) "clueless".

      Further, you demand that the Judge that has ruled against your beliefs "be suspended" and that the verdict must be overthrown just because you don't like it, without regard for the differing laws of the countries involved.

      Folks, is this the way an objective person would take things?
      • Since when is Germany...

        a US District?

        Whilst I am happy about the judgement itself, surely the only court which can decide whether Microsoft is infringing German patents and whether they can continue selling the products is a German court?

        If the Judge is saying "put all court cases based on the same argument in other jurisdictions on ice until we have settled it here," is one thing, that is reasonable, but he does not have any authority in Germany to stop Motorola Germany from continuing the case against Microsoft Germany. I can see it being a request and he might be able to hold Motorola USA in contempt of his court, if Motorola Germany continue with the case, but it does seem, on the face of it, to exceed his authority.

        If the products came under national secrets or weapons (the old Cocoa Treaty from the Cold War days, for example), where a Z80 or Motorola 6800 CPU were considered "weapons grade" technology and couldn't be sold to the Eastern Block - heck, I had to witness the destruction of nealry 1000 DEC VT100 dumb terminals, which had been hit by a lightning strike, they had to be crushed and pulverised, because in 1989, they were still considered top secret technology by the US Government, but I digress. If the products come under such a treaty, then the US judicial system can say that they can't be sold into a foreign market.
      • This is a pretty international case, and international treaties apply

        "Since when is Germany...
        a US District?"

        Since WWII ;).

        In all seriousness, though: This is an international case, as Microsoft and Motorola are U.S. companies. IANAL, but it's very likely that a good deal of international laws and treaties apply here.
      • @CobraA1

        "Since WWII"

        Yep, I was waiting for your answer! :-D

        Seriously, yes, international treaties etc. probably do apply. But the way the article appears, it seems like it is basically saying the Judge thinks he has jurisdiction over foreign countries and their courts... A little more background is called for.
      • The FRAND terms

        It seems that a lot of companies contributed their technology to the standards, or, in fact had the standards committees adopt their patented technology for 'standard', thereby forcing anyone wishing to use that technology to pay them whatever low licensing fee is expected to be FRAND compliant... So now some of these companies are overly desperate to sue any competitor who uses 'their' technology -- which is practically against the agreement they entered to when their technology was approved as standard.

        Since both Microsoft and Motorola are US companies they will have to settle their argument in an US court. As far as Germany is concerned -- if Germany has adopted that 'standard', they are in no position to decide who pay whom how much. The standard is open to anyone and no company should be able to sue any other company for using it. Not to say, that the EU has special provisions to prevent this kind of abuse.
    • I agree!

      This cannot stand!
      M$ chose litigation over innovation to attack FOSS.
      Motorola should disregard this baseless verdict and enforce its IP rights anyway!
      The Linux Geek
      • Usual garbage from Linux Geek

        Motorola ceded any excessively charged IP rights to a FRAND patent agreement, Motorola gets their standard out there and broadly accepted and they accept a "FRAND" payment from a broad base instead of chasing higher royalties from a narrower user base. Now they lookk to reneg on that agreement and chase a discriminatory fee from Microsoft.
        Microsoft is only protecting their right to use the patent under FRAND terms and not be charged a discriminatory fee.
        But of course in your myopic world view this is wrong because your darling FOSS is on the receiving end. I'd like to see your rant if it was Microsoft seeking a discriminatory fee from one of your FOSS darlings.
  • Perfectly appropriate

    A US Judge is saying that Motorola cannot circumvent the US legal process, where litigation is already pending, by entering into litigation in another jurisdiction in an attempt to pressure the other party to settle. What's so difficult to understand? The US judge is entirely within the limits of his powers to make binding rulings in regards to Motorola's actions, regardless of where Moto might act: It doesn't matter if it's in Germany or the moon, it's still the same US-based company.

    The ruling does not have any relevance or effect on the German courts. As any simpleton can deduce, it stipulates that Motorola may not enforce any injunction against Microsoft, based on the FRAND patents in question in his court.
    • NOT SO Perfectly appropriate

      While your take on the matter is what I believe to be spot on, I still don't think the US courts should be able to wield power over what a company does in other jurisdictions.

      Essentially the judge has said: if I'm suing you here in the US and I win an injunction against you in Germany, I can't uphold that ruling because the US has said I cant. <-- Not really fair to the company! This constitutes both too much power in the US system and a gross overstepping of borders.
      • Yup

        I understand the desire for judicial restraint. However, the facts of this case are clear. Moto and MSFT were in litigation in the US long before Moto chose to use the German courts well-known loose application of injunctions to apply pressure on MSFT to settle in the US. Moto's actions in Germany are clearly tied to their case in the US. So why would the US judge not have the right to intervene? We are talking about FRAND patents here ... those patents are agreed to on a world-wide basis not just in the US, or in GMBH. The very nature of these patents makes the situation unique and I still believe that should trump many other interests.

        What is not fair is to agree to FRAND licensing to get your patents included in standards-essential technology and then turn around use those very same patents to extort massive sums from select licensees across multiple jurisdictions.