I would have to blog about Google's procedural gamesmanship in patent infringement cases at least once a month if I reported on all the initiatives I see as I watch various cases. For example, there's a lot of that going on in the Skyhook v. Google case in the District of Massachusetts, which I haven't discussed here in a while. I did, however, talk about a recent development in the Rockstar litigation and Google's argument that Apple's appeal of the dismissal of a FRAND determination case in the Western District of Wisconsin should be transferred from the Federal Circuit to the Seventh Circuit, while Google is arguing at the same time that its appeal of Microsoft's FRAND determination case in the Western District of Washington should be heard by the Federal Circuit, not the Ninth Circuit, the very appeals court Google chose in 2012 for a preliminary injunction matter stemming from the same litigation.
Against Microsoft, Google's tactics haven't played out well so far, and the search giant suffered another setback on Friday (January 3, 2014) when the Federal Circuit threw out a Google (Motorola Mobility) motion to dismiss -- after an appellate opinion in Microsoft's favor had already come down and Google's petition for a rehearing had been denied -- Microsoft's appeal of the part of an ITC ruling that related to Microsoft's U.S. Patent No, 5,664,133 on a "context sensitive menu system/menu behavior".
The Federal Circuit held last year that the ITC had construed (interpreted) the patent too narrowly in its 2012 decision. (That ruling wasn't all bad news for Microsoft, which did win an import ban -- recently affirmed by the Federal Circuit -- against Motorola's Android-based devices over a meeting scheduler patent, but was denied such relief with respect to some other patents including the '133 context menu patent.)
After its unsuccessful petition for a long-shot rehearing, Google tried a new trick: it filed a motion with the Federal Circuit, asking that the appeals court dismiss Microsoft's appeal with respect to the '133 patent for mootness, and vacate the related part of its appellate opinion. Due to the delay caused by Google's petition for a rehearing, the patent had meanwhile expired, and Google argued that as long as the Federal Circuit had not issued its formal mandate to the ITC, there was a possibility to dismiss the appeal for mootness since the ITC has only one type of remedy available (an import ban, possibly combined with a cease-and-desist order), a remedy that is a non-option for expired patents.
But Microsoft is still going to pursue damages in the Western District of Washington, where it filed a mirror (companion) lawsuit simultaneously with its ITC complaint. That mirror action was stayed pending the ITC investigation and any related appeals. It can resume as soon as the ITC case is closed, which will happen pretty quickly now because the Federal Circuit denied Google's motion and, also on Friday, issued the formal mandate to the ITC. The ITC now gets jurisdiction back and has only one thing to determine: that the patent has expired, which means the ITC can't order an import ban. Then the federal lawsuit can resume, and federal courts can award damages.
The Federal Circuit decision was made by a panel including the appeals court's Chief Judge Rader. The order denying Google's motion makes very clear that Google was legally wrong for several independent reasons, any single one of which would have been sufficient on its own to support the denial of its motion.
With the Federal Circuit's claim construction now being final, Microsoft is very likely to prevail on liability in district court. Google just wanted the opportunity to re-argue claim construction in district court. The Federal Circuit's opinion had been published and would have had some weight anyway; but it would not have been formally binding on a district court had Google's motion succeeded. And a district court decision could then also have been appealed again to the Federal Circuit. That's one of the various reasons for which the Federal Circuit decided to issue the mandate to the ITC and deny Google's motion.
At least 20 industry players are known to pay Microsoft patent royalties relating to their distribution of Android (and many of the announcements also involved Chrome). This is a strategic issue for Google, which is adamant about its claim that Android is "free". Microsoft has won several court rulings against Google's Motorola Mobility, and the '133 context menu patent will most likely be yet another Microsoft patent found to have been infringed by Android devices, lending further legitimacy to Microsoft's licensing efforts. If Google can't fend off all of Microsoft's claims against Motorola Mobility, it can't credibly tell Android device makers that they shouldn't pay up.
If you're interested in all the grounds on which the Federal Circuit disagreed with Google, here's the order:
14-01-03 Microsoft v. Motorola Order Denying Dismissal and Vacatur by Florian Mueller
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