Microsoft sues Motorola

Microsoft claims Motorola is in breach of commitments to standards organizations and that licensing agreements are not being provided under reasonable and nondiscriminatory conditions. Motorola disagrees and plans to take all necessary steps to protect its intellectual property.

By Suzanne Deffree, Managing editor, news -- EDN, November 10, 2010

Apple isn't the only major tech player that has a beef with Motorola.

The Schaumburg, Ill-based handset company and its subsidiary Motorola Mobility face allegations from Microsoft that Motorola is in "breach of its commitments" to the IEEE-SA (Institute of Electrical and Electronics Engineers Standards Association), the ITU (International Telecommunications Union), and their members and affiliates, including Microsoft, and that Motorola "broke its promises" to license patents related to WLAN and H.264 video compression under reasonable and nondiscriminatory conditions.

Microsoft's suit, filed in the US District Court for the Western district of Washington at Seattle on Tuesday, states:

"In willful disregard of the commitments it made to IEEE and the ITU, Motorola has refused to extend to Microsoft a license consistent with Motorola's promises for any of Motorola's identified patents. Instead, Motorola is demanding royalty payments that are wholly disproportionate to the royalty rate that its patents should command under any reasonable calculus. Motorola has discriminatorily chosen Microsoft's Xbox product line and other multi-function, many-featured products and software, such as Windows 7 and Windows Phone 7 and products incorporating Microsoft software, for the purpose of extracting unreasonable royalties from Microsoft."

Motorola believes its licensing agreements are reasonable and said it will take all necessary steps to protect its intellectual property.

"Consistent with Motorola's normal licensing practices, we worked with Microsoft to reach an agreement that would have allowed Microsoft to use our proprietary technologies without infringing Motorola's patents," the company told EDN over e-mail. "Unfortunately, despite a fair offer from Motorola, Microsoft was unwilling to enter into a licensing agreement."

To be sure, Microsoft does not claim patent infringement of any kind in its suit. However, the company in October filed a separate suit against Motorola alleged patent violations in Android phones.

With this most recent filing, Microsoft is looking for a judicial declaration that Motorola's royalty demands are unreasonable and can no longer be demanded. The company further wants the court to rule that Motorola is obligated to offer what Microsoft believes to be reasonable licensing as part of its commitment to the IEEE-SA and the ITU. Microsoft is also seeking damages.

 In addition to following on the heels of Microsoft's October filing against Motorola, this week's allegations come after Apple in October filed two patent infringement suits against the mobile company covering six patents pertaining to multitouch patents and smartphone user interface elements.

Motorola has also taken legal action with the US International Trade Commission (ITC) claiming that Apple's iPhone, iPad, iTouch, and certain Mac computers infringe its patents.