Microsoft blocks Motorola in trademark spat

Microsoft has prevented Motorola from enforcing a German injunction based on a couple of patents allegedly essential to the H.264 video codec standard.

The United States District Court for the Western District of Washington granted a Microsoft motion for a temporary restraining order and preliminary injunction against Motorola Mobility.

Microsoft’s David Howard, Microsoft Deputy General Counsel, told the world and its dog that Motorola promised to make its patents available to Microsoft and other companies on fair and reasonable terms.

The court ruling means Motorola can’t prevent Microsoft from selling products until the court decides whether Motorola has lived up to its promise.

It is not surprising that Motorola opposed Microsoft’s motion as it effectively stuffs up Motorola’s attempt to get around the US litigation which has been less favourable.

Microsoft had complained to the court about Motorola’s alleged breach of FRAND licensing eight months before Motorola started to win in the German courts.

Germany is more likely to grant injunctive relief against implementers of industry standards. This has resulted in the Vole abandoning Germany and setting up shop in the Netherlands.

According to patent expert Florian Mueller, the German injunctions aren’t binding on a defendant until the prevailing plaintiff formally demands compliance with the injunction and meets other requirements.

Motorola does not have to withdraw any of its German lawsuits, and the Mannheim court is free to make whatever it deems the right decision under German law.

However, if it wins, Motorola can’t use the injunction it may win to disrupt Microsoft’s business in any way.

It might seem odd that a US court trumps a European one, and Motorola had argued that Microsoft should meet whatever requirements under German law to protect itself against sales bans. Vole managed to convince the US court that the Seattle action was to enforce Motorola’s FRAND licensing promises worldwide. Motorola could not then balkanise the whole process and undermine it.

The FRAND case before the Seattle court will be decided later this year. If it goes against Microsoft, which seems unlikely, then it will mean that Vole will have to cope with a banning of its products worldwide.

At least it will not have the next few months of sitting and watching its products sit on the shelves.

Motorola Mobility and its future owner Google have a few other problems to worry about. The court will have to take into account the two ongoing antitrust investigations of Motorola’s suspected abuse of standard-essential patents launched by the European Commission .