795 F.3d 1024 (9th Cir. 2015), 14-35393, Microsoft Corp. v. Motorola, Inc.

Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
Attorney:Kathleen M. Sullivan (argued), Quinn Emanuel Urquhart & Sullivan, LLP, New York, New York; Brian C. Cannon, Quinn Emanuel Urquhart & Sullivan, LLP, Redwood Shores, California, for Defendants-Appellants. Carter G. Phillips (argued), Sidley Austin LLP, Washington, D.C.; David T. Pritikin, Sidley Au...
Judge Panel:Before: Sidney R. Thomas, Chief Judge, and J. Clifford Wallace and Marsha S. Berzon, Circuit Judges.
Opinion Judge:BERZON, Circuit Judge
Party Name:MICROSOFT CORPORATION, a Washington corporation, Plaintiff-Appellee, v. MOTOROLA, INC.; MOTOROLA MOBILITY, INC.; GENERAL INSTRUMENT CORPORATION, Defendants-Appellants
Case Date:July 30, 2015
Citation:795 F.3d 1024
Docket Nº:14-35393
 
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Page 1024

795 F.3d 1024 (9th Cir. 2015)

MICROSOFT CORPORATION, a Washington corporation, Plaintiff-Appellee,

v.

MOTOROLA, INC.; MOTOROLA MOBILITY, INC.; GENERAL INSTRUMENT CORPORATION, Defendants-Appellants

No. 14-35393

United States Court of Appeals, Ninth Circuit

July 30, 2015

         Argued and Submitted, April 8, 2015,  San Francisco, California

          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.

          SUMMARY [**]

         Patent Licensing

         The panel affirmed the district court's judgment in favor of Microsoft Corporation in an action brought by Microsoft, a third-party beneficiary to Motorola, Inc.'s reasonable and non-discriminatory (" RAND" ) commitments, alleging Motorola breached its obligation to offer RAND licenses to certain of its patents in good faith.

         At issue in the appeal were two patent portfolios, formerly owned by Motorola, both of which were subject to RAND agreements. The court 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). Following that prior decision, a jury determined that Motorola had breached its RAND good faith and fair dealing obligations in its dealings with Microsoft.

         The district court conducted a bench trial to determine a RAND rate and range for Motorola's patents. The case then proceeded to a jury trial on the breach of contract claim, and the jury returned a verdict for Microsoft in the amount of $14.52 million. The district court denied Motorola's motions for judgment as a matter of law.

         The panel held that this court had jurisdiction. The panel held that this court's exercise of jurisdiction over the case in the prior interlocutory appeal, and the Federal Circuit's decision to transfer the instant appeal to this court because this court had jurisdiction, were both law of the case. The panel further held that the earlier jurisdictional determinations were not clearly erroneous.

         The panel rejected Motorola's two merits challenges to the RAND bench trial, specifically, that the district court lacked the legal authority to decide the RAND rate issue in a bench trial, and that the RAND rate analysis was contrary to Federal Circuit precedent. First, the panel did not consider whether, absent consent, a jury should have made the RAND determination, because Motorola was aware that the RAND determination was being made to set the stage for the breach of contract jury trial, nor did Motorola ever withdraw its affirmative stipulation to a bench trial for that purpose. Second, the panel held that the district court's RAND analysis did not violate Federal Circuit patent damages law because this was not a patent law action. The panel held, however, that the district court's analysis properly adapted the Federal Circuit's patent law methodology as guidance in this contract case concerning the questions of patent valuation. The panel concluded that the district court's RAND determination was not based on a legal error or on a clearly erroneous view of the facts in light of the evidence.

         Concerning the jury trial and verdict, the panel held that the record provided a substantial basis on which the jury could have based a verdict favoring Microsoft.

         Concerning the motion for judgment as a matter of law, the panel rejected Motorola's two challenges to the damages sought for attorneys' fees and litigation costs incurred in defending the injunctive actions. First, Motorola raised the Noerr-Pennington doctrine, which shields individuals from, inter alia, liability for engaging in litigation. The panel noted that the doctrine does not immunize a party from actions that amount to a breach of contract. The panel held that enforcing a contractual commitment to refrain from litigation does not violate the First Amendment. The panel further noted that the jury concluded that seeking injunctive relief violated Motorola's contractual RAND obligations. The panel concluded that the Noerr-Pennington doctrine did not immunize Motorola from liability for that breach of its promise. Second, Motorola alleged that Microsoft was not entitled to attorneys' fees as damages under Washington law. The panel held that where a party's injunctive actions to enforce a RAND-encumbered patent violated the duty of good faith and fair dealing, Washington courts would allow the damages awarded to include the attorneys' fees and costs expended to defend against the injunction action.

         Finally, the panel rejected Motorola's allegations that the district court abused its discretion in making two evidentiary rulings. First, concerning RAND rates and ranges submitted to the jury, the panel held that Motorola consented to admission of the facts underlying the RAND rates and ranges to the jury. The panel agreed with the district court that Motorola's consent to the RAND bench trial encompassed introducing the court's findings of fact to the jury in the breach of contract trial. Second, Motorola objected to the admission of evidence of a Federal Trade Commission investigation into Motorola's enforcement policies, including its seeking of injunctions. The panel held that the district court did not abuse its discretion in admitting the evidence because the danger of prejudice in admitting limited testimony about the FTC investigation did not so manifestly outweigh the testimony's probative value.

         Kathleen M. Sullivan (argued), Quinn Emanuel Urquhart & Sullivan, LLP, New York, New York; Brian C. Cannon, Quinn Emanuel Urquhart & Sullivan, LLP, Redwood Shores, California, for Defendants-Appellants.

         Carter G. Phillips (argued), Sidley Austin LLP, Washington, D.C.; David T. Pritikin, Sidley Austin LLP, Chicago, Illinois; Arthur W. Harrigan, Jr., Calfo Harrigan Leyh & Eykes LLP, Seattle, Washington; T. Andrew Culbert, Microsoft Corporation, Redmond, Washington, for Plaintiff-Appellee.

         Wayne P. Sobon, Arlington, Virginia, and and for Amicus Curiae American Intellectual Property Law Association.

         Richard S. Taffet, Bingham McCutchen LLP, New York, New York; Patrick Strawbridge, Bingham McCutchen LLP, Boston, Massachusetts; Stephanie Schuster, Bingham McCutchen LLP, Washington, D.C., for Amicus Curiae Qaulcomm Incorporated.

         Xavier M. Brandwajn, Alston and Bird LLP, East Palo Alto, California, for Amici Curiae Nokia Corporation and Nokia USA Inc.

         Charles Duan, Washington, D.C., as and for Amicus Curiae Public Knowledge.

         Mark S. Davies, Orrick, Herrington & Sutcliffe LLP, Washington, D.C.; Christopher J. Cariello, Orrick, Herrington & Sutcliffe LLP, New York, New York, for Amicus Curiae Apple Inc.

         Lauren B. Fletcher, William F. Lee, Joseph J. Mueller, Timothy D. Syrett, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, Massachusetts; James L. Quarles III, Brittany Blueitt Amadi, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C.; Matthew R. Hulse, Intel Corporation, Santa Clara, California, for Amici Curiae Intel Corporation, Aruba Networks Inc., Dell Inc., Hewlett-Packard Company, Newegg Inc., SAS Institute Inc., VIZIO, Inc., and Xilinx, Inc.

         Robert F. Krebs, Ronald F. Lopez, Karl Belgum, Nixon Peabody, LLP, San Francisco, California, for Amicus Curiae Sierra Wireless Inc.

         Christy G. Lea, Knobbe, Martens, Olson & Bear, LLP, Irvine, California; Christopher C. Kennedy, Knobbe, Martens, Olson & Bear, LLP, Washington, D.C.; Mauricio A. Uribe, Knobbe, Martens, Olson & Bear, LLP, Seattle, Washington; Alice C. Garber, John J. Murphy, T-Mobile USA, Inc., Bellevue, Washington, for Amicus Curiae T-Mobile USA, Inc.

         Before: Sidney R. Thomas, Chief Judge, and J. Clifford Wallace and Marsha S. Berzon, Circuit Judges.

          OPINION

         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 (" 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.1 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 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...

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