Not a Lexis Advance subscriber? Try it out for free.

Microsoft Corp. v. Motorola, Inc.

United States Court of Appeals for the Ninth Circuit

April 8, 2015, Argued and Submitted, San Francisco, California; July 30, 2015, Filed

No. 14-35393


 [***1005]  [*1029]   BERZON, Circuit Judge:

We live in an age in which the interconnectivity of a wide range of modern technological products is vital. To achieve that interconnection, patent-holders often join together in compacts requiring licensing certain patents on reasonable and non-discriminatory  [*1030]  ("RAND") terms. Such contracts are subject to the common-law obligations of good faith and fair dealing.

At issue in this appeal are two patent portfolios, formerly owned by Appellants Motorola, Inc., Motorola Mobility, Inc., and General Instrument Corp., ("Motorola"), both of which are subject to RAND agreements.2 Appellee Microsoft, a third-party beneficiary to Motorola's RAND commitments, sued Motorola for breach of its obligation to offer RAND licenses to its patents in good faith. Motorola, meanwhile, brought infringement actions in a variety of fora to enjoin [**8]  Microsoft from using its patents without a license.

We previously upheld, in an interlocutory appeal, an anti-suit injunction preventing Motorola from enforcing in a German action any injunction it might obtain against Microsoft's use of certain contested patents. Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012) ("Microsoft I"). We did so after determining that there was, in the "sweeping promise" of Motorola's RAND agreements, "at least arguably[] a guarantee that the patent-holder will not take steps to keep would-be users from using the patented material, such as seeking an injunction, but will instead proffer licenses consistent with the commitment made." Id. at 884.

After our decision, a jury determined that Motorola had indeed breached its RAND good faith and fair dealing obligations in its dealings with Microsoft. In this appeal, we address (1) whether the district court overstepped its bounds by determining, at a bench trial preceding the jury trial on breach of contract, a reasonable and non-discriminatory rate, as well as a range of rates, for Motorola's patents; (2) whether the court [**9]  erred in denying Motorola's motions for judgment as a matter of law on the breach of contract issue; (3) whether the court erred in awarding Microsoft attorneys' fees as damages in connection with Motorola's pursuit of injunctions against infringement; and (4) whether the district court abused its discretion in two contested evidentiary rulings.


Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

795 F.3d 1024 *; 2015 U.S. App. LEXIS 13275 **; 116 U.S.P.Q.2D (BNA) 1001 ***

MICROSOFT CORPORATION, a Washington corporation, Plaintiff-Appellee, v. MOTOROLA, INC.; MOTOROLA MOBILITY, INC.; GENERAL INSTRUMENT CORPORATION, Defendants-Appellants.

Prior History:  [**1] Appeal from the United States District Court for the Western District of Washington. D.C. Nos. 2:10-cv-01823-JLR, 2:11-cv-00343-JLR. James L. Robart, District Judge, Presiding.

Microsoft Corp. v. Motorola, Inc., 2013 U.S. Dist. LEXIS 161762 (W.D. Wash., Nov. 12, 2013)


patents, license, district court, bench trial, damages, injunction, FTC, attorney's fees, cases, pool, breach of contract, parties, royalty rate, terms, injunction action, infringement, technology, portfolio, royalty, rates, courts, fair dealing, circumstances, good faith, jury trial, hypothetical, products, holder, negotiation, defending

Civil Procedure, Appeals, Appellate Jurisdiction, General Overview, Judgments, Preclusion of Judgments, Law of the Case, Contracts Law, Breach, Breach of Contract Actions, Patent Law, Infringement Actions, Standards of Review, Clearly Erroneous Review, De Novo Review, Remedies, Damages, Measurement of Damages, Infringer's Profits, Trials, Judgment as Matter of Law, Constitutional Law, Bill of Rights, Fundamental Freedoms, Freedom to Petition, Business & Corporate Compliance, Ownership, Conveyances, Licenses, Attorney Fees & Expenses, Basis of Recovery, American Rule, Bad Faith Awards, Costs & Attorney Fees, Costs, Types of Damages, Compensatory Damages, Abuse of Discretion, Bench Trials, Fundamental Rights, Trial by Jury in Civil Actions, Evidence, Admissibility, Statements as Evidence, Compromise & Settlement Negotiations, Procedural Matters, Curative Admissibility, Relevance, Exclusion of Relevant Evidence, Confusion, Prejudice & Waste of Time