Ropes client Google drops claims against Microsoft after FTC agreement

Google subsidiary Motorola has asked the US International Trade Commission to drop two patent infringement claims from its complaint against Microsoft, putting to rest part of a case that has pitted Motorola counsel Ropes & Gray against Sidley Austin.

The motion comes days after the search engine reached an antitrust settlement with the US Federal Trade Commission (FTC), a deal that saw the internet giant promise not to seek injunctions against companies using patents that are essential to key technologies (7 January 2013).

The two patents being dropped from the complaint, which began in November 2010, are understood to be essential to the H.264 standard patent used in products such as the Xbox 360 games console.

“Hundreds of Motorola Mobility (MMI) patents are essential to industry standards used to provide wireless connectivity and for internet-related technologies,” the FTC stated in its complaint. “These standards are essential for smartphones, tablets, gaming systems, operating systems, and the increasing number of devices offering wireless connectivity or high definition video. Development and use of these types of standards is a cornerstone for many high-tech markets.”

Google acquired a hefty portfolio of patents after it paid $12.5bn to acquire MMI in 2012, a package that included over 24,000 of the smartphone maker’s patents and patent applications.

Although the agreement will loosen Google’s grip on standard-essential patents, the filing will have no impact on two similar cases taking place between the two companies – one in the US District Court of Western Washington, where Motorola is claiming Microsoft should pay up to $4bn a year for using the H.264 patent without prior permission, and the other in the Western District of Wisconsin.

“Motorola intends to enforce its rights for past damages in the district court lawsuits,” the motion reads.

According to the filing, Washington-based Ropes partner Stephen Rosenman, who specialises in representing clients before the US International Trade Commission, is leading for Motorola.

The motion names Brian Nester, a Washington-based partner at Sidley Austin who also has extensive experience with the US International Trade Commission, as lead counsel for Microsoft. The two firms have long been working against each other in similar cases for the two technology rivals.

Ropes was rated highly in The Lawyer’s latest Top 50 litigation firms leaderboard (3 December 2012). According to the firm, Motorola and Microsoft are involved in over 40 patent disputes in the US District Court, the International Trade Commission and Germany involving nearly every current product the pair own.