Skip Page Banner  
Skip Navigation

Motorola's Infringement of Expired Microsoft Patent at ITC Will Carry Over to District Court

Thursday, January 9, 2014
By Tony Dutra

Jan. 7 — Motorola Mobility LLC will have to live in district court with a patent infringement decision of the U.S. Court of Appeals for the Federal Circuit as to an International Trade Commission litigation, according to a Jan. 3 nonprecedential order (Microsoft Corp. v. Int'l Trade Comm'n, Fed. Cir., No. 2012-1445, 01/03/14).

Microsoft Corp. owns several patents (including U.S. Patent Nos. 5,664,133) generally related to the operating system of a mobile phone. The '133 patent is specifically directed to displaying context- and object-sensitive menus, such as what to present to the end user who clicks on a phone number compared to clicking on a calendar entry.

On Oct. 1, 2010, Microsoft sued Motorola for patent infringement in the U.S. District Court for the Western District of Washington and simultaneously filed an action at the ITC to bar imports by Motorola of Blur mobile phones and Google Experience devices, including the Xoom tablet. The district court action was stayed pending a final determination of the ITC proceeding.

On Oct. 1, 2013, the Federal Circuit ruled on an appeal of the ITC's decision, and as to the '133 patent reversed a finding of no infringement “for the main group of accused products,” however the court “affirm[ed] the non-infringement finding for [Motorola's] accused alternative design.” 731 F.3d 1354, 2013 BL 271317, 108 U.S.P.Q.2d 1443 (Fed. Cir. 2013) (193 PTD, 10/4/13).

Motorola petitioned for rehearing by the panel, which the court denied on Dec. 11. The court said that a mandate would issue on Dec. 18, but the '133 patent expired on Dec. 13. On Dec. 16, Motorola filed a motion for termination of the appeal as to that patent and vacatur of the relevant part of the Oct. 1 opinion.

Washington Case Ongoing
In a per curiam order, the court denied the motion.

First, the court said, the case is not moot because of the ongoing litigation in the Western District of Washington, in which Microsoft is seeking damages, and which will now have the appeals court's ITC-related decision that existing Motorola models infringed the '133 patent before it expired. “Our ruling on the '133 patent has a concrete legal effect on the Microsoft-Motorola dispute over the same issues in the pending Washington litigation,” the court said.

Further, the court said, “even if the present case were moot as to the '133 patent, vacatur would not be warranted.” It rejected Motorola's argument that vacatur should automatically follow a decision of mootness. Rather, the court said, a court's action upon ruling on mootness “is a matter of equitable discretion.”

Judge Sharon Prost wrote a short concurring opinion disagreeing with the court's view that the Washington litigation could affect the mootness of the ITC case, where damages are not at issue. “Although the majority is correct that our ruling ‘addresses an actual controversy between two parties to this case having adverse legal interests in its resolution,' that controversy is no longer present in this case; it exists only in the Washington case,” she said.

She agreed, however, that dismissal and vacatur were at the discretion of the court, and that the court should use that discretion here to deny both.

Chief Judge Randall R. Rader and Judge Richard G. Taranto were the other members of the panel.

Constantine L. Trela Jr. of Sidley Austin LLP, Chicago, represented Microsoft. Charles K. Verhoeven of Quinn Emanuel Urquhart & Sullivan LLP, San Francisco, represented Motorola.

Text is available at

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Naresh Sritharan at

To view additional stories from Bloomberg Law® request a demo now