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Microsoft Sues Motorola for Patent Infringement Over Droid 2


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: October 5, 2010 @ 11:33 am
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On Friday, October 1, 2010, Microsoft Corporation brought a patent infringement lawsuit against Motorola in the United States Federal District Court for the Western District of Washington, which is located in Microsoft’s backyard in Seattle, Washington.  The complaint filed by Microsoft alleges that the smartphones made by Motorola that include the Android operating system are infringing upon nine Microsoft patents.  Simultaneously with filing in the Western District of Washington, Microsoft also filed a companion lawsuit in the International Trade Commission, which will seek an order to prohibit the importation into the United States of infringing smartphones.  Damages are not available at the ITC, which is why an ITC complaint filed simultaneously with a federal district court action is becoming the en vogue thing to do these days.  The ITC can and does typically wrap up its cases far quicker than most federal district courts, and that proceeding can also significantly influence a federal district court judge given that validity and infringement will already have been litigated.

Infringement of the following nine patents is alleged by Microsoft: U.S. Patent No. 5,579,517, U.S. Patent No. 5,758,352, U.S. Patent No. 6,621,746, U.S. Patent No. 6,826,762, U.S. Patent No. 6,909,910, U.S. Patent No. 7,644,376, U.S. Patent No. 5,664,133, U.S. Patent No. 6,578,054, and U.S. Patent No. 6,370,566.

There are nine Counts, or causes of action, in the Microsoft lawsuit against Motorola. Each of them are pretty much completely devoid of any useful factual information and only barely provide any meaningful insight. Count I, which is made up of three paragraphs, one that incorporates by reference the previous paragraphs, substantively says:

11. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 5,579,517 (“the ’517 patent”), entitled “Common Name Space for Long and Short File Names,” duly and properly issued by the U.S. Patent and Trademark Office on November 26, 1996 (a reexamination certificate for the ’517 issued on November 28, 2006). A copy of the ’517 patent is attached as Exhibit A.

12. The Defendant has been and/or is directly infringing and/or inducing infringement of and/or is contributorily infringing the ’517 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’517 patent, including, by way of example and not limitation, the Motorola Droid 2.

The remainder of the Counts in the complaint mirror this one, and all that can be said is that Microsoft claims they own these nine patents and they are of the belief, for unspecified reasons, that the Motorola Droid 2 is infringing one or more claims, which are not identified at this time.

I am not going to say that Microsoft is a patent troll, but this kind of ridiculous federal complaint is the type of complaint that one would normally see being filed by a patent troll that is trying to hold up one of the tech companies for ransom.  Complaint by ambush has become the rule in patent infringement litigation it seems, and that is wholly unacceptable.  How can any defendant begin to defend themselves when the complaint files says: “we own a patent, you make something, therefore we think you are directly infringing and/or inducing infringement and/or contributorily infringing one or more unspecified claims for one or more unspecified reasons.”

It is long past time for the federal court system to take a stand on embarrassing and inappropriate federal complaints.  Plaintiffs that file complaints like this should not even be given the opportunity to file an amended complaint, but rather they should have their lawsuits dismissed with prejudice.  I realize that will not happen because district court judges liberally allow for at least one amended complaint, which is probably a good rule, but when the complaint that is filed is such a joke and so obviously inadequate on its face why should the plaintiff be given even one chance to amend?  In the Eastern District of Texas these types of complaints are likely to be given four, five or even six opportunities to be amended and that is a joke.

The filing of the first action in a patent infringement context is critically important, which is why these types of ridiculous complaints are so offensive.  Plaintiffs have a right to pick the jurisdiction they want to litigate in, but the rule is really about who files first.  The first filed action dictates where the litigation will be fought.  In the patent arena that is almost always the plaintiff any more because if someone is thinking about suing you they don’t let you know for fear that you will file a Declaratory Judgment Action in a district court convenient to you, inconvenient to them and sympathetic to your cause.  That, after all, is why Microsoft chose Seattle, right?

What Motorola should do is file a motion to dismiss with prejudice.  These types of complaints are an embarrassment and must be stopped.  They should simultaneously file a Declaratory Judgment Action seeking a determination of noninfringement and invalidity in a federal district court of their choosing, perhaps in Chicago, which is close to their headquarters.  They will lose the motion to dismiss with prejudice in Seattle, and likely have the DJ action kicked out in Chicago, but they will have preserved the matter for appeal to the Federal Circuit.  It is high time that the Federal Circuit weigh in on what is undoubtedly the biggest problem facing patent litigation defendants, which is bogus, crappy, non-informing complaints that clearly violated the Rules of Civil Procedure.

Defendants… stand up and fight like you mean it for crying out loud!  Being a target is not a strategy!

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Posted in: Companies We Follow, Gene Quinn, International Trade Commission, IP News, IPWatchdog.com Articles, Microsoft, Patent Litigation, Patents

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

20 comments
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  1. This is odd. Unless the the droid2 is using it’s own filesystem, which is extremely unlikely, Microsoft should be going after Google, the creator and maintainer of the Android phone OS, not the user of the technology. This is reminiscent of… Santa Cruz Operations (then current owner of the rights of the original AT&T UNIX kernel rights) going after IBM for installing and supporting Linux on it’s hardware instead of going after Red Hat Linux and SuSE Linux. I belive that suit went nowhere except scared users of the systems that they would be sued by SCO.

    Regardless, the common namespace issues were also resolved by the RockRidge extensions to the ISO9660 (CD-ROM) standard. And linking multiple names to inodes in UNIX has been around since the 70’s and was most likely the inspiration for the VFAT common name space. Microsoft’s solution isn’t that groundbreaking in the first place and shouldn’t even have been issued a patent as it’s too encompassing. That’s my rant…

  2. Notice pleading is all that is required under FRCP

  3. “including, by way of example and not limitation, the Motorola Droid 2″ saves this complaint. until congress acts on this issuse any MTD is effectively just a stall tactic.

  4. The ITC complaint lists the claims that infringement is claimed for (but doesn’t give any additional information).
    A quick look at the pantents makes you wonder why Mircosoft hasn’t been suing everybody in the mobile space who is doing anything with calendaring, notifications and a few other things. The claims are amazingly broad.
    I for one can’t remember a phone I’ve had that doesn’t seem to have been infringing on US 6,909,910. That should probably include a lot of past Motorola models for at least the past decade. Maybe laches would be a defense at least for this one?

  5. Kudos for your candor that patent infringement complaints should be more specific (although dismissal with prejudice does seem a bit harsh…;-) The issue here is in singling-out patent infringement cases under the current FRCP 8 – the general rules of pleading under FRCP 8(a)(ii) only require “a short and plain statement of the claim showing that the pleader is entitled to relief” consistent with the notice requirement of due process. The federal courts (especially the Eastern District of Texas) provide substantial latitude for amendment and seem to rely upon the fact that the citation of the the patents at issue is enough to place the defendant(s) upon notice of the claim. As a result, I don’t think any appeal to the Federal Circuit on this issue will yield the result you hope to obtain – I think they would deem the factual basis sufficient to state the claim rather than make an exception for patent infringement cases. Like you, I would strongly prefer greater specificity; however, I remain skeptical of the Federal Circuit revising the FRCP from the bench…

  6. @IP3456
    I would think that this hasn’t been bought against other parties because they have patents that MS is infringing and that MS doesn’t see them as a big threat. They would probably have attacked Google directly, but that would likely result in OIN counterattacking MS and patent Armageddon occurring, so they limit themselves to proxy warfare hoping for a chilling effect on OEMs considering adoption of Android.

  7. Tom-

    The trouble is that these patent infringement complaints simply do not satisfy the rule. There is no information sufficient to show any entitlement to relief even if the facts alleged are true. There is not even mention of claims or what activity is or even might be infringing.

    Allowing 4, 5, 6 or more amended complaints is ridiculous. Patent infringement litigation is turning into a fishing expedition where the defendants are essentially required to show cause (through discovery) why they should not be presumed to be infringing. That seems to me to be uncalled for and I do hope that the Federal Circuit will clamp down.

    Thanks for the comment though. I know “with prejudice” is a big stick, but that would seem to be the only way to resolve this.

    -Gene

  8. Gene,

    I’m surprised you think that the complaint is “undoubtedly the biggest problem facing patent litigation defendants.” I’d say a bigger problem is getting sued on crappy patents.

    I agree that these complaints are insufficient, but I just don’t think that it’s a big problem. The reason for my opinion is that majority of districts have local patent rules which require pretty details infringement analysis to be provided early in the case. In Washington, for example, they must be provided “Within 15 days of the Scheduling Conference or, if there is no Scheduling Conference, entry of the case schedule”

    See e.g. http://www.wawd.uscourts.gov/documents/HomePageAnnouncements/2009%20Local%20Rules/Patent%20Rules%20-%20final.pdf

    Simply put, the inadequacy of the complaint is cured by the local rules. I’m not saying there’s absolutely no problem, but, in light of the local rules, I don’t really understand why you make such a huge deal out of the complaint.

  9. Gene,

    You and others may not like Microsoft’s complaint, but it’ll pass muster under FRCP 8. Basically, Microsoft alleges that it owns each of the asserted patents, alleges at least one basis for infringement (the assumption would be that if no specific claim is alleged to be infringed, at least the broadest claim is), and alleges at least one product that is infringing; that’s enough under Notice Pleading to make out a patent infringement case if the alleged facts in the complaint are true.

    What the accused infringers will eventually do is “focus” the case by asking Microsoft through discovery requests the exact basis for the alleged infringement, including what claims in each patent are infringed. I don’t disagree that this is a “roundabout” and expensive way to run a patent infringement suit, but the FRCP permits this to happen and until the FRCP is changed (including FRCP 26 which permits almost limitless discovery), nothing is going to change in how patent infringment is normally alleged in a complaint.

  10. EG-

    I don’t disagree with you, but that is definitely a sad commentary. Patent infringement litigation is becoming a fishing expedition where the burden is placed on the defendant. That is repugnant to me, particularly given the amount of money that needs to be expended to defend a suit. It might not be such a big deal when Motorola is the defendant, but patent trolls sue everyone. Parallel Networks is suing about 150 companies in the Eastern District of Texas, some of whom are rather small companies. Same type of crappy complaint that makes the defendants prove they are not infringing.

    I can’t believe that asserting the title of an invention and then listing a product or service that relates to the title is enough notice to start a 4 or 5 year multi-million dollar patent battle.

    Oh well…

    -Gene

  11. IP Fan-

    Not all district courts have a local rule like that. In the Eastern District of Texas they bend the rules considerably. They allow upwards of 4 to 6 amended complaints, and if the same patent is at issue they say that there as a matter of law exists the same nucleus of operative facts so all the cases remain joined. They essentially ignore the FRCP and do what they want. Good for the Western District of Washington, but I still think more should be required to initiate a lawsuit.

    -Gene

  12. Being local to MS and having watched how they have behaved over decades, this sounds like their usual megalomania attitude to me. Perhaps by being as non-specific as possible, they are just giving Motorola and their stakeholders the blink test. Pull out the big guns and see who blinks first. Motorola has lots of customers who depend on their products, which tends to put them in the hot seat in this case. I agree with Gene that it is a pretty deceptive approach, designed to leave them guessing, which would put most mid size or small companies right out of business, and it doesn’t seem fair that MS can *buy* whatever they want with their obscenely large IP budget. They would seem to be threatening to drag the case out for many years and millions, basically putting a freeze on the validity of Motorola’s products. If they really want to stop them here in the US, why wouldn’t the ITC route alone serve to do so? It sounds like they just want to bleed and humiliate them, and seriously damage their business prospects. Perhaps they are afraid they wouldn’t pass the blink test with Google, so are going after Motorola instead. I am not an attorney, but that is my take on it in this case.

    Stan~

  13. As Patently-O reported a few days ago: “This summer, Microsoft petitioned the Supreme Court to take a fresh look at the case — specifically asking the Court to reject the Federal Circuit’s requirement that invalidity be proven with “clear and convincing evidence” when the invalidity argument is one that was not specifically considered by the Patent Office when granting the patent.”

    I wonder if they want to stand by that position now that they are asserting 8 patents of their own.

  14. Even though the FRCP permits notice pleading, it’s shameful that a behemoth like Microsoft — which has abundant legal resources at its disposal — would file such a bare-bones pleading. It does nothing to improve their corporate image.
    http://www.wired.com/epicenter/2010/10/google-oracle-android/comment-page-1/#ixzz11WHFGiuV

  15. Patent Litigation-
    A major part of the problem would seem to be that Steve Balmer became the main director of MS a few years ago when Bill Gates mostly retired from MS. He has become pretty famous for being somewhat incindiary, but Bill is still a major player on the board of directors. Perhaps their new phone application release will get them to calm down a bit. Perhaps they are just trying to prompt a countersuit, where all the details are not included? That way they could see what the other party was worried about, drop the suit, and then proceed accordingly? Just a few random thoughts….

    Stan~

  16. In terms of service, Does microsoft and motorola users will affect by this issue? Hope not because this will gonna big a huge problem if ever.

  17. Let’s see…what did the author say? Let’s paraphrase…


    “What Motorola should do is file a motion to dismiss with prejudice. These types of complaints are an embarrassment and must be stopped.”

    I guess the author stands corrected in that the lawsuit was with merit. Today, Microsoft (via a court order) secured an import ban on a huge swath of Motorola (now owned by Google) products. That ban will be taking effect starting today, and will continue until April 10, 2018, which is when the patent expires.

  18. Lee-

    You are either (1) a fool; (2) completely uninformed; (3) a self-righteous know-it-all; or (4) unable to understand what you read. Quite possibly you are all 4.

    Really. If you want to comment on IPWatchdog the rule is you keep it intellectually honest. Deceitful, misleading and wholly inaccurate comments like yours are UNACCEPTABLE in this forum. You do not have a right to comment here. Intellectual integrity is required.

    Now, for the substance of your comment. Of course I was correct. I did not say anything about the underlying case whatsoever, and if you actually read and understood the article you would know that to be the case. What I said was the complaint was an embarrassment, which of course it was. the complaint provided absolutely no useful information and this type of complaint clearly violates the requirements of notice pleading set out in the Federal Rules of Civil Procedure and in the relevant Supreme Court decisions.

    Garbage complaints should be dismissed and until they are dismissed with prejudice there will be no reason to file anything other than garbage.

    So paraphrase what I say all you want. I am correct and you are wrong! Your misleading comment is an embarrassment itself.

    -Gene

  19. I agree with Lee–that the complaint was with merit and the judicial system agreed.

  20. Almonzo-

    You can agree with Lee if you like, but that makes you incorrect as well. The trouble here is you obviously don’t understand the article and are trying to twist it into something it does not say or mean, likely out of ignorance. Please re-read the article and see if you can make more sense of it.

    Now that you have re-read the article go and actually look at the complaint. Please provide me a detailed explanation of the plaintiff’s theory based ONLY on the complaint. You won’t be able to, which is why I am correct. The complaint was woefully inadequate under our rules of practice and procedure and wholly inappropriate to initiate a legal proceeding.

    I think the trouble is you and Lee are not attorneys and simply don’t understand the article. You really should only comment on issues you understand. If you want to comment on a legal article for a legal audience it is best not to make lay assumptions. It shows you are not to be taken seriously and don’t comprehend the issues on which you are commenting.

    -Gene