A federal judge in Seattle issued a ruling today preventing Motorola, at least for now, from enforcing a ban in Germany on the sales of Windows, Internet Explorer, the Xbox and other Microsoft products implementing the H.264 codec standard. The judge's decision is in response to a motion Microsoft filed at the end of March asking the US court to issue a a temporary restraining order to prevent Motorola from enforcing a potential, future German injunction. If you think that's confusing, don't feel bad — it is.
There are a couple of unusual things going on here: a US court is attempting to control Motorola's actions outside of the US, relating to the enforcement of a German sales ban that hasn't yet been issued by a German court. That's not something you see everyday. In fact, it's likely most patent litigators will go their entire career without seeing it. It's a clever tactical move by Microsoft, so let's take a look at what actually happened, and what it means going forward.
What does this say about the speed and efficiency of the US legal system?
The backstory in this case is once again about a patent owner's obligation to license standards-essential patents (e.g., on H.264 technology) under fair, reasonable and non-discriminatory (FRAND) terms. Motorola is under investigation by the European Union for its use of these essential patents as offensive weapons in litigation, but that isn't Microsoft's primary concern with this particular motion. Microsoft is concerned that even though it filed this US case before Motorola filed its case in Germany, an injunction may be issued in Germany on April 17th, before the US court has a chance to fully address the FRAND issue. Hence the unusual circumstances before us.
Microsoft believes the German court will indeed grant the injunction, potentially allowing Motorola to enforce an obviously devastating ban on fundamental Microsoft products — and they want to slow things down. Whether that's an indictment on the speed and efficiency of the US legal system is a separate issue. In the meantime, Motorola, a US company, apparently just received an order preventing it from exercising its enforcement rights under a foreign country's jurisdiction. With that said, we haven't seen the US judge's order, which may provide some important clarifications. We'll ponder what the German court might think of all of this while we wait for that.