10-Cv-01823-Ord United States District

10-CV-01823-ORD UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE MICROSOFT CORPORATION, CASENO.C10-1823JLR Plaintiff, FINDINGS OF FACT AND CONCLUSIONS OF LAW v. MOTOROLA, INC., et ah, Defendants. MOTOROLA MOBILITY, INC., et al., Plaintiffs, v. MICROSOFT CORPORATION, Defendant. // // ORDER-1 1 This is a breach of contract case between Microsoft Corporation ("Microsoft") and 2 Motorola, Inc., Motorola Mobility, Inc., and General Instrument Corporation 3 (collectively, "Motorola"). Microsoft claims that Motorola has an obligation to license 4 patents to Microsoft at a reasonable and non-discriminatory ("RAND") rate, and that 5 Motorola breached its RAND obligations through two offer letters. (See generally Am. 6 Compl. (Dkt. # 53).) Microsoft sued Motorola for breach of contract in this court in 7 November, 2010. (See id) 8 At this stage of the case, Microsoft and Motorola are attempting to decipher the 9 meaning of Motorola's RAND licensing obligation.1 Without a clear understanding of 10 what RAND means, it would be difficult or impossible to figure out if Motorola breached 11 its obligation to license its patents on RAND terms. The parties disagree substantially 12 about the meaning of RAND. Thus, to resolve the dispute, the court held a bench trial 13 from November 13-20,2012, with the aim of determining a RAND licensing rate and a 14 RAND royalty range for Motorola's patents. 15 These findings of fact and conclusions of law represent the culmination of the 16 court's and the parties' efforts to calculate a RAND rate and range. To establish a 17 context for these findings and conclusions, the court will briefly outline the details of 18 Motorola's RAND obligation, the patents at issue in this case, and the nature of the 19 dispute between Microsoft and Motorola. 20 1 This matter has a complex procedural history involving several patent infringement 21 claims as well as claims and counter claims relating to Microsoft's breach of contract claim. The court's February, 27, 2012, order provides a more complete procedural history of the case, (See 22 generally 2/27/12 Order (Dkt. # 188).) ORDER-2 1 Motorola's RAND commitment arises out of its and Microsoft's relationship with 2 two international standard-setting organizations ("SSOs"), the Institute of Electrical 3 Electronics Engineers ("IEEE") and the International Telecommunication Union ("ITU"). 4 These organizations create standards for use in designing and manufacturing technology 5 products. These and other SSOs play a significant role in the technology market by 6 allowing companies to agree on common technological protocols so that products 7 complying with the standards will work together. 8 The standards at issue in this case involve wireless communications, commonly 9 known as "WiFi," and video coding technology. More specifically, this case involves 10 two standards: an IEEE wireless local area network ("WLAN") standard called the 11 "802J1 Standard" and an ITU2 advanced video coding technology standard called the 12 "H.264 Standard." 13 Both of these standards incorporate patented technology. Thus, in order for a 14 company to practice the standard, it is necessary for that company to utilize technology 15 that is covered by one or more patents. Patents that are essential to the standard (in that 16 they must be practiced to accomplish the standard) are called standard essential patents, 17 or "SEPs." The existence of SEPs is a common problem in the world of technology 18 standards. To deal with this problem, SSOs have devised a solution. To make it easier 19 for companies to practice their standards, SSOs seek commitments from the owners of 20 21 As detailed below, the ITU developed the H.264 Standard jointly with two other SSOs—the International Organization for Standardization and the International Electrotechnical 22 Commission. ORDER- 3 SEPs to license their patents to standard-users on RAND terms. Motorola owns patents that are essential to the 802.11 and H.264 Standards and has committed to license them on RAND terms. Microsoft claims that Motorola breached its RAND obligation by making an unreasonable offer in a negotiation to license Motorola's 802.11 and H.264 SEPs. On October 21,2010, Motorola sent Microsoft a letter offering to license Motorola's 802.11 SEPs. Motorola offered to license its patents at what it considered the RAND rate of 2.25 % of the price of the end product: This letter is to confirm Motorola's offer to grant Microsoft a worldwide non-exclusive license under Motorola's portfolio of patents and pending applications having claims that may be or become Essential Patent Claims (as defined in section 6.1 of the IEEE bylaws) for a compliant implementation of the IEEE 802,11 Standards. Motorola offers to license the patents under reasonable and non-discriminatory terms and conditions ("RAND"), including a reasonable royalty of 2.25 % per unit for each 802.11 compliant product, subject to a grant back license under the 802.11 essential patents of Microsoft. As per Motorola's standard terms, the royalty is calculated based on the price of the end product (e.g, each Xbox 360 product) and not on component software (e.g., Windows Mobile Software). (10/21/10 Offer Ltr. (Dkt. # 79-5) at 2.) On October 29,2010, Motorola sent a similar letter offering to license its H.264 SEPs on similar terms. The letter again offered a royalty rate of 2.25 % of the end product price: Motorola offers to license the patents on a non-discriminatory basis on reasonable terms and conditions ("RAND"), including a reasonable royalty, of 2.25 % per unit for each H.264 compliant product, subject to a grant back license under the H.264 patents of Microsoft, and subject to any Motorola commitments made to JVT in connection with an approved H.264 recommendation. As per Motorola's standard terms, the royalty is calculated based on the price of the end product (e.g., each Xbox 360 product, each PC/laptop, each smartphone, etc.) and not on component ORDER-4 software (e.g., Xbox 360 system software, Windows 7 software, Windows 1 Phone 7 software, etc.). 2 (10/29/10 Offer Ltr. (Dkt. # 79-6) at 2.) 3 Eleven days later, on November 9,2010, Microsoft initiated this breach of 4 contract action against Motorola based on Motorola's two offer letters, claiming that the 5 letters breached Motorola's RAND commitments to the IEEE and the ITU. In a previous 6 order, the court held that these RAND commitments create enforceable contracts between 7 Motorola and the respective SSO. (2/27/12 Order (Dkt. # 188).) The court has also held 8 that Microsoft—as a standard-user—can enforce these contracts as a third-party 9 beneficiary. (See id.) In a separate prior order, the court interpreted Motorola's 10 commitments to the ITU and IEEE as requiring initial offers by Motorola to license its 11 SEPs to be made in good faith. (6/6/12 Order (Dkt. # 335) at 25.) However, the court 12 has also held that initial offers do not have to be on RAND terms so long as a RAND 13 license eventually issues. (Id., see also 10/10/12 Order (Dkt. # 465).) 14 To decide whether Motorola's opening offers were in good faith, a fact-finder 15 must be able to compare them with a reasonable RAND royalty rate and, because more 16 than one rate could conceivably be RAND, a reasonable RAND royalty range. However, 17 as the court ruled on October 10,2012, the RAND royalty rate is a heavily disputed, fact- 18 sensitive issue that must be resolved by a finder of fact. (10/10/12 Order at 22.) 19 Accordingly, the court held a bench trial to determine: (1) a RAND royalty range for 20 Motorola's SEPs; and (2) a specific RAND royalty rate for Motorola's SEPs. The 21 purpose of this is to enable a fact-finder in a later trial to determine whether Motorola's 22 ORDER- 5 1 offer letters breached Motorola's RAND obligation to offer a license for its patents in 2 good faith. 3 During the November 13-20,2012, bench trial, the court heard testimony from 4 eighteen witnesses: Mr. John Devaan, Mr. Garrett Glanz, Dr. Kevin M. Murphy, Dr. 5 Gary Sullivan, Ms. Jennifer Ochs, Mr. Leonard Del Castillo, Dr. Jerry Gibson, Dr. 6 Timothy Simcoe, Dr. Matthew Lynde, Dr. Ajay Luthra, Dr. Timothy J. Drabik, Dr. 7 Michael Orchard, Dr. Tim Arthur Williams, Dr. Richard Schmalensee, Dr. Ramairtham 8 Sukumar, Mr. Michael J. Dansky, Mr. Kirk Dailey, and Mr. Charles R. Donohoe. 9 Unless stated herein, the court credits the testimony of each of these witnesses. 10 More often than not, the court found that the testimony of the witnesses was not in 11 conflict. Where conflict exists, the court uses law, reason, and logic to resolve the 12 conflict in an effort to determine a reasonable royalty rate and range for Motorola's 13 802.11 and H.264 SEPs. 14 In these Findings of Fact and Conclusions of Law, the court uses the evidence the 15 parties presented at trial to set forth a methodology for determining a RAND royalty rate 16 and range. The court then applies this methodology to determine a RAND royalty rate 17 and range between Microsoft and Motorola for Motorola's 802.11 and H.264 SEP 18 portfolios. The court's methodology is necessarily dictated by the circumstances of this 19 litigation—a dispute between an SEP owner and a standard-user over a reasonable 20 royalty rate.

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