Microsoft Corp. v. Motorola, Inc., No. 14-35393 (9th Cir. July 30, 2015).
If you take an American-designed cell phone to Europe, it will be able to use the telecommunications infrastructure in Europe. That’s because technology has been standardized across the world under standards set by international organizations like the International Telecommunication Union. Before these organizations will incorporate certain technology in their standards, though, they demand that the patent owners of that technology promise to license their patents at reasonable and nondiscriminatory rates (also called “RAND” terms) to others.
Some of Motorola’s patents have been incorporated into international standards. Microsoft, as a third-party beneficiary of the commitments Motorola had made to standards organizations, sued Motorola for breach of its obligation to offer licenses on RAND terms.
The Ninth Circuit now affirms a jury’s $14.5 million dollar judgment in favor of Microsoft. In the process, the court has the opportunity to address a host of fascinating issues—not just the finding that Motorola breached its RAND obligation, but many other issues too. Does the Noerr-Pennington doctrine apply to breaches of contract? Of course not. Can Microsoft recover the attorneys’ fees it had to incur when Motorola sought an injunction against it in a separate lawsuit? Of course it can. Judge Berzon’s opinion for the court is intelligent, clearly written, and worth a read.