Motorola Slaps Microsoft With Retaliatory Lawsuit

Motorola has responded promptly after it was hit by a Microsoft lawsuit, with a patent infringement  lawsuit of its own against Redmond.

The lawsuit from the Motorola Mobility subsidiary was filed with the US District Courts for the Southern District of Florida and the Western District of Wisconsin.

Motorola is complaining that Microsoft’s PC and Server software, Windows Phone software and Xbox products violate 16 of its patents. The patents themselves seem wide-ranging, allegedly involved in everything from Microsoft’s email technology and Bing maps to the Xbox’s digital video coding and WiFi equipment.

Tit For Tat

Motorola’s legal action seems to be a response to Microsoft’s lawsuit filed 9 November against the manufacturer, alleging that it violated agreements to license at “reasonable rates” patents related to H.264 video compression and wireless LAN.

In that lawsuit, Microsoft argued that Motorola had made patent-related commitments to both the IEEE-SA (Institute of Electrical and Electronics Engineers Standards Association) and ITU (International Telecommunications Union).

“Motorola broke its promise to IEEE-SA and its members and affiliates by refusing to offer Microsoft a license that is consistent with Clause 6 of IEEE-SA Standards Board Bylaws, instead demanding royalties that are excessive and discriminatory,” reads a section from Microsoft’s lawsuit, which was filed with the United States District Court for the Western District of Washington at Seattle. “Microsoft broke its promise to ITU and its members and affiliates by refusing to offer Microsoft a license that is consistent with the Common Patent Policy of the ITU, instead demanding royalties that are excessive and discriminatory.”

In the case of the Microsoft lawsuit, the products in question include PCs loaded with Windows 7, Windows Phone 7 smartphones and the Xbox 360 console. Microsoft claims that Motorola wants its patent royalties adjusted to the price of those end products, as opposed to the component software – a demand far too arduous to let stand, argued the company’s attorneys.

Motorola has positioned its newest lawsuit as one of straight-up patent infringement:

“Motorola’s R&D and intellectual property are of great importance to the Company and are renowned worldwide,” Kirk Dailey, corporate vice president of intellectual property at Motorola Mobility, wrote in a 10 November statement posted on Motorola’s corporate website. “We are committed to protecting the interests of our shareholders, customers and other stakeholders and are bringing this action against Microsoft in order to halt its infringement of key Motorola patents.”

Call In the Lawyers

Dailey then alluded to Microsoft’s lawsuit against Motorola: “It is unfortunate … that Microsoft has chosen the litigation path rather than entering into comprehensive licensing negotiations, as Motorola has mutually beneficial licensing relationships with the majority of technology companies industry-wide.”

In October, Microsoft filed an intellectual-property lawsuit against Motorola, alleging that the manufacturer’s line of Google Android smartphones violated nine of its patents. “The patents at issue relate to a range of functionality embodied in Motorola’s Android smartphone devices that are essential to the smartphone user experience,” Horacio Gutierrez, Microsoft’s corporate vice president and deputy general counsel of intellectual property and licensing, wrote in an 1 October statement.

At the time, Motorola co-CEO Sanjay Jha indicated publicly his willingness to continue working with Microsoft. Nonetheless, each new legal salvo threatens to further darken the relationship between the companies.