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Google withdraws standard-essential patent claims in Xbox complaint

Microsoft told the U.S. ITC it was an expected consequence of Google's settlement with the FTC

By John Ribeiro
January 9, 2013 12:20 PM ET

IDG News Service - Motorola Mobility has withdrawn its claims with regard to its standard-essential patents in its complaint against Microsoft's Xbox before the U.S. International Trade Commission.

The move comes after Microsoft told the ITC in a filing that it expects Motorola to withdraw claims relating to two patents it says are essential to the H.264 standard, in view of a settlement last week between Google and the Federal Trade Commission.

Confirming the new motion before the ITC, a Google spokeswoman, however, declined further comment.

Motorola Mobility was acquired by Google last year for $12.5 billion, to strengthen its patent portfolio in an industry that has become very litigious. But there has been controversy on the extent to which companies should be able to use standard-essential patents to seek injunctions against competitors' products.

Microsoft cited in its filing various documents including a statement last week from the FTC that Google's settlement requires it to withdraw its claims for injunctive relief on standard-essential patents covered under FRAND (fair, reasonable and non-discriminatory) terms, and to offer a FRAND license to any company that wants to license Google's standard-essential patents in the future.

FTC chairman Jon Leibowitz said at a news conference that his understanding was that "they're going to stop trying to seek the injunction or the exclusion order at the ITC," when asked if by the terms of the settlement Google would have to withdraw current cases before the ITC.

But there still appears to be considerable ambiguity on whether Google is required under the settlement to withdraw existing injunction actions before the ITC and courts, with persons close to the situation holding that Google was not required under its settlement with the FTC to withdraw the claims against Microsoft.

Were pleased that Google has finally withdrawn these claims for exclusion orders against Microsoft, and hope that it will now withdraw similar claims pending in other jurisdictions as required by the FTC Consent Order, Microsoft's corporate vice president and deputy general counsel David Howard said in an emailed statement.

After the claims on the patents related to H.264 are dismissed, only one more patent will be the subject of investigation, Microsoft said in the filing.

A policy paper released on Tuesday by the U.S. Department of Justice and the U.S. Patent and Trademark Office stated that a patent owner's voluntary F/RAND commitments may also affect the appropriate choice of remedy for infringement of a valid and enforceable standard- essential patent.

"In some circumstances, the remedy of an injunction or exclusion order may be inconsistent with the public interest," according to the paper. An exclusion order may still be an appropriate remedy in certain situations, such as where the putative licensee is unable or refuses to take a F/RAND license and is acting outside the scope of the patent holder's commitment to license on F/RAND terms, or if the putative licensee is not subject to the jurisdiction of a court that could award damages, it added.

John Ribeiro covers outsourcing and general technology breaking news from India for The IDG News Service. Follow John on Twitter at @Johnribeiro. John's e-mail address is john_ribeiro@idg.com

Reprinted with permission from IDG.net. Story copyright 2014 International Data Group. All rights reserved.
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