Google won't be able to address Android's wide-scale patent infringement issues through litigation over Motorola's patents, which have given it no real leverage so far and probably never will. The fact that 20 royalty-bearing Android-related patent license deals have been announced (most recently, Microsoft's agreement with Foxconn parent company Hon Hai) is reflective of the complete loss of faith of the wider Android ecosystem in Google's ability to deter third-party patent holders such as Apple, Microsoft and Nokia from enforcing their rights. Android device makers have had zero benefit -- precisely zero -- from Google's $12.5 billion Motorola deal. Just like Google's shareholders. Google mistakenly thought that anybody who owns tens of thousands of patents in this industry would be able to settle any infringement issues, no matter their scale, through cross-license agreements that involve little or no money. This doesn't work. Licensing, however, does work.
This morning Google suffered another setback, which I predicted. The Mannheim Regional Court just announced its finding that Google's Motorola Mobility is not entitled to an injunction against Microsoft over its push notification patent because Google owes Microsoft a license under an ActiveSync license agreement. If Google can get anything out of this litigation, it may be able to claim damages for past infringement (for the period prior to Google's acquisition of Motorola Mobility), but the case is now stayed pending a parallel nullity proceeding at the Bundespatentgericht (Federal Patent Court). Apple, against which Motorola won and enforced an injunction that an appeals court will most likely lift next week, and Microsoft are challenging the validity of EP0847654 on a "multiple pager status synchronization system and method". German courts usually stay infringement actions only if there is, in their assessment, a high probability of invalidation, but in this particular Motorola v. Microsoft case the hurdle was lowered substantially by the fact that Microsoft prevailed on its contractual defense against Google under an ActiveSync license agreement that comes with a grant-back obligation, as Judge Andreas Voss ("Voß" in German) indicated at the trial in February.
Not only was the hurdle lower than it usually is but Motorola's patent-in-suit was pretty much dead in the water after Judge Richard Arnold of the England and Wales High Court of Justice declared it invalid for multiple reasons, with the key claim being found invalid for four independent reasons. The London-based court had also found in Microsoft's favor on its license-based defense.
In February I already criticized Google for its repeated failure to honor its grant-back obligations under the license agreements it once concluded with Microsoft and, in another context, MPEG LA. Licensing is key to open innovation, and pacta sunt servanda.
Today's Mannheim holding that Google owes Microsoft a license to its push notification patent demonstrates the diligence and foresight with which Microsoft has been managing its intellectual property licensing for many years. Last month Managing Intellectual Property ("ManagingIP") magazine named Microsoft's licensing department the best licensing team in the world.
The license-based defense that carried the day for Microsoft shouldn't even have been necessary. This patent doesn't withstand even a modicum of scrutiny. It's hard to see how it will survive in any commercially valuable form the nullity proceedings before the Federal Patent Court. Also, this patent will expire in little more than two years, so even if Google surprisingly salvaged this patent and (equally surprisingly) overcame Microsoft's license-based defense on appeal, there wouldn't be much time left, if any, for enforcement prior to expiration.
The Mannheim judges were presumably aware of the position of their appeals court, the Karlsruhe Higher Regional Court, which is particularly skeptical of the validity of this patent in light of verion 4 of the IMAP protocol, an Internet standard Google itself has implemented. The law firm of Freshfields Bruckhaus Deringer is representing Apple (at the appellate stage) as well as Microsoft in the push patent cases. Microsoft's lead counsel in the Mannheim case was Professor Peter Chrocziel. Apple's lead counsel before the Karlsruhe-based appeals court is Dr. Markus Gampp, who worked on both cases like his colleague, Matthias Beer. Boehmert & Boehmert's Christian Appelt is the lead patent attorney challenging the push notification patent on Microsoft's behalf. Google is represented by Quinn Emanuel.
Google really wanted to win this one. Its chief litigator flew over all the way from California for the February trial.
Google cannot currently enforce, and isn't going to be able to enforce anytime soon, an injunction against Microsoft. But Microsoft has already won a U.S. import ban and three German injunctions against Motorola's Android-based devices (1, 2, 3), and is likely to win a fourth one, relating to Google Maps, on June 3. In November Google's lawyers told an appeals court that their client lost four months of German sales as a result of Microsoft's patent enforcement (and, which they didn't say, Google's unwillingness to join the likes of Samsung, HTC, LG and Acer in taking a royalty-bearing Android patent license).
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