''Motorola Mobility v. Apple Inc.'' was one of a series of lawsuits between technology companies Motorola Mobility and

Apple Inc. Apple Inc. is an American multinational technology company headquartered in Cupertino, California, United States. Apple is the largest technology company by revenue (totaling in 2021) and, as of June 2022, is the world's biggest company ...

In the year before Apple and Samsung began suing each other on most continents, and while Apple and High Tech Computer Corp. (HTC) were already embroiled in a patent fight, Motorola Mobility and Apple started a period of intense

patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A ...

litigation. The Motorola-Apple patent imbroglio commenced with claims and cross-claims between the companies for patent infringement, and encompassed multiple

venue Venue is the location at which an event takes place. It may refer to: Locations * Venue (law), the place a case is heard * Financial trading venue, a place or system where financial transactions can occur * Music venue, place used for a concer ...

s in multiple countries as each party sought friendly forums for litigating its respective claims; the fight also included

administrative law Administrative law is the division of law that governs the activities of executive branch agencies of government. Administrative law concerns executive branch rule making (executive branch rules are generally referred to as "regulations"), ad ...

rulings as well as

United States International Trade Commission The United States International Trade Commission (USITC or I.T.C.) is an agency of the United States federal government that advises the legislative and executive branches on matters of trade. It is an independent, bipartisan entity that analyze ...

(ITC) and

European Commission The European Commission (EC) is the executive of the European Union (EU). It operates as a cabinet government, with 27 members of the Commission (informally known as "Commissioners") headed by a President. It includes an administrative body ...

involvement. In April 2012, the controversy centered on whether a

FRAND Reasonable and non-discriminatory (RAND) terms, also known as fair, reasonable, and non-discriminatory (FRAND) terms, denote a voluntary licensing commitment that standards organizations often request from the owner of an intellectual property r ...

license to a components manufacturer carries over to an equipment manufacturer incorporating the component into equipment, an issue not addressed in the Supreme Court's default analysis using the

exhaustion doctrine The exhaustion of intellectual property rights constitutes one of the limits of intellectual property (IP) rights. Once a given product has been sold under the authorization of the IP owner, the reselling, rental, lending and other third party comme ...

in '' Quanta v. LG Electronics''.Stern, Richard
Standardization Skullduggery Never Ends: Apple v. Motorola
, IEEE Micro, ipv6.ppk.itb.ac.id, 2012-3/4, B2-9mmi2012020003.3d 10/3/012 16:48 p. 3. Accessed 2012-4-13. Stern cites
Quanta Computer, Inc. v. LG Electronics, Inc.
', 128 S. Ct. 2109, 2008; accessed 2012-4-13. The ''Quanta'' case cited the 150-year-old doctrine of patent exhaustion which limits patent rights that survive the initial authorized sale of a patented item. In June 2012, appellate judge

Richard Posner Richard Allen Posner (; born January 11, 1939) is an American jurist and legal scholar who served as a federal appellate judge on the U.S. Court of Appeals for the Seventh Circuit from 1981 to 2017. A senior lecturer at the University of Chic ...

dismissed the U.S. case with

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and the parties appealed the decision a month later.

Motorola Mobility's suits

In early October 2010, Motorola Mobility filed a complaint with the ITC against Apple alleging patent infringement.''Motorola Mobility, Inc. v. Apple Inc.'', ''In the Matter of Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof'', ITC Inv. No. 337-TA-745, 2010-10-6. The complaint allegations concerned six Motorola patents, and sought remedies of a court-ordered bar on U.S. imports of infringing products, and an injunction prohibiting Apple from importing, marketing and distributing infringing products. The ITC instituted its investigation a month later and Motorola subsequently dropped its patent claims with respect to two of the six patents at issue.Form 10-K Annual Report
Motorola Mobility, Inc., 2012-2-17, pp 37-38. Motorola also filed two complaints for patent infringement against Apple in the U.S. District Court for the Northern District of Illinois (Illinois Complaints), and another complaint for patent infringement against Apple in the

U.S. District Court for the Southern District of Florida The United States District Court for the Southern District of Florida (in case citations, S.D. Fla. or S.D. Fl.) is the federal United States district court with territorial jurisdiction over the southern part of the state of Florida.. Appeal ...

(Florida Complaint). Both complaints alleged Apple infringed 18 Motorola patents. In November 2010, Motorola voluntarily dismissed the Illinois Complaints, (asserted as

counterclaim In a court of law, a party's claim is a counterclaim if one party asserts claims in response to the claims of another. In other words, if a plaintiff initiates a lawsuit and a defendant responds to the lawsuit with claims of their own against th ...

s in the actions brought by Apple on October 29, 2010 in the U.S. District Court for the Western District of Wisconsin). Later that November, Apple also filed counterclaims in the Southern District of Florida, alleging Motorola infringed six Apple patents in manufacturing and selling

mobile device A mobile device (or handheld computer) is a computer small enough to hold and operate in the hand. Mobile devices typically have a flat LCD or OLED screen, a touchscreen interface, and digital or physical buttons. They may also have a physica ...

set-top box A set-top box (STB), also colloquially known as a cable box and historically television decoder, is an information appliance device that generally contains a TV-tuner input and displays output to a television set and an external source of sign ...

es and digital video recorders. Additionally, in October 2010, Motorola filed a complaint for a

declaratory judgment A declaratory judgment, also called a declaration, is the legal determination of a court that resolves legal uncertainty for the litigants. It is a form of legally binding preventive by which a party involved in an actual or possible legal ma ...

against Apple and

NeXT Next may refer to: Arts and entertainment Film * ''Next'' (1990 film), an animated short about William Shakespeare * ''Next'' (2007 film), a sci-fi film starring Nicolas Cage * '' Next: A Primer on Urban Painting'', a 2005 documentary film Lit ...

Software, Inc. in the U.S. District Court in Delaware, seeking a ruling that Motorola did not infringe any claim of twelve patents owned by Apple and NeXT. In response, in early December 2010, Apple asserted these twelve patents against

Motorola, Inc. Motorola, Inc. () was an American multinational telecommunications company based in Schaumburg, Illinois, United States. After having lost $4.3 billion from 2007 to 2009, the company split into two independent public companies, Motorola ...

and Motorola Mobility, Inc. in the Western District of Wisconsin and moved for a change of venue from Delaware to Wisconsin. Ultimately, both parties' patent assertions were subsequently transferred to the Northern District of Illinois. This led the way for Apple to take charge over Motorola, Samsung, LG, and many other cellular communications companies.

Apple's counter-suits

In late October 2010, Apple filed two complaints in the Western District of Wisconsin for patent infringement against Motorola, Inc. and Motorola Mobility, Inc. The complaints alleged Motorola infringed six patents and sought money damages and an injunction. In early November 2010, Motorola filed counterclaims against Apple alleging Apple infringed twelve Motorola patents which Motorola originally asserted in the Northern District of Illinois. The Western District of Wisconsin transferred the actions to the Northern District of Illinois and trial was scheduled for June 2012 on six Apple patents and three Motorola Mobility patents. Also in late October 2010, Apple filed a complaint with the ITC for patent infringement against Motorola, Inc. and Motorola Mobility, Inc. Apple's complaint alleged Motorola infringed three Apple patents with Motorola's mobile devices offered in the U.S.. Apple's complaint sought a court order barring imports of those devices and sought an injunction prohibiting Motorola from engaging in further activities related to the same mobile devices. The ITC began investigation in late November 2010; in mid-January 2012, the

Administrative Law Judge An administrative law judge (ALJ) in the United States is a judge and trier of fact who both presides over trials and adjudicates claims or disputes involving administrative law. ALJs can administer oaths, take testimony, rule on questions of evi ...

(ALJ) found no violation by Motorola for the three asserted Apple patents; Apple filed a petition to review the ALJ's findings but the ALJ ultimately ruled for Motorola and against Apple in mid-March 2012.Campbell, Mikey
Final ITC ruling clears Motorola of Apple patent infringement
appleinsider.com, 2012-3-17. See also th
ITC's ruling
in the case ''Apple v. Motorola'', 337-TA-750, 2012-3-16. In mid-March 2011, Apple filed counterclaims against Motorola in the ITC proceeding (which was subsequently removed to the Western District of Wisconsin court), and instituted a new action in the Western District of Wisconsin, ''Apple Inc. v. Motorola Mobility, Inc.'', alleging that Motorola breached standards commitments (see Context, below), with counterclaims including

equitable estoppel Estoppel is a judicial device in common law legal systems whereby a court may prevent or "estop" a person from making assertions or from going back on his or her word; the person being sanctioned is "estopped". Estoppel may prevent someone from b ...

, waiver, breach of contract, violation of Section 2 of the

Sherman Antitrust Act The Sherman Antitrust Act of 1890 (, ) is a United States antitrust law which prescribes the rule of free competition among those engaged in commerce. It was passed by Congress and is named for Senator John Sherman, its principal author. ...

unfair competition Unfair may refer to: * Double Taz and Double LeBron James in multiverses ''fair''; unfairness or injustice Injustice is a quality relating to unfairness or undeserved outcomes. The term may be applied in reference to a particular event or situ ...

and interference with contract. Apple sought declaratory judgments that Motorola's license terms involving standards-essential patents were unreasonable and discriminatory, that Motorola was not entitled to injunctive relief, and that Motorola committed

patent misuse In United States patent law, patent misuse is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained patent provides. If a court finds that a patent holder committed patent misuse, the ...

. This led the way for Motorola to take over Apple in the military industry, because they were hired to work for the US government.

Context

Components manufacturers and major patent holders such as Motorola and

Samsung The Samsung Group (or simply Samsung) ( ko, 삼성 ) is a South Korean multinational manufacturing conglomerate headquartered in Samsung Town, Seoul, South Korea. It comprises numerous affiliated businesses, most of them united under the ...

commit to licensing their standards essential patents to other industry participants through their participation in standard-setting organizations (SSOs), while other industry participants negotiate licenses to use those patents, including manufactures and sellers of

smartphone A smartphone is a portable computer device that combines mobile telephone and computing functions into one unit. They are distinguished from feature phones by their stronger hardware capabilities and extensive mobile operating systems, whic ...

s and tablets. North American technology companies' treatment in the marketplace of their respective products and mobile

operating system An operating system (OS) is system software that manages computer hardware, software resources, and provides common services for computer programs. Time-sharing operating systems schedule tasks for efficient use of the system and may also i ...

s (OSs) spans the spectrum from completely proprietary systems to

open-source license An open-source license is a type of license for computer software and other products that allows the source code, blueprint or design to be used, modified and/or shared under defined terms and conditions. This allows end users and commercial compa ...

systems: Apple and RIM manufacture and sell products that run on only their respective proprietary mobile OSs;

Microsoft Microsoft Corporation is an American multinational technology corporation producing computer software, consumer electronics, personal computers, and related services headquartered at the Microsoft Redmond campus located in Redmond, Washin ...

licenses its proprietary mobile OSs, (

Windows Phone Windows Phone (WP) is a discontinued family of mobile operating systems developed by Microsoft for smartphones as the replacement successor to Windows Mobile and Zune. Windows Phone featured a new user interface derived from the Metro design l ...

and

Windows Mobile Windows Mobile is a discontinued family of mobile operating systems developed by Microsoft for smartphones and personal digital assistants. Its origin dated back to Windows CE in 1996, though Windows Mobile itself first appeared in 2000 as Pock ...

), to non-affiliated wireless handset

original equipment manufacturer An original equipment manufacturer (OEM) is generally perceived as a company that produces non-aftermarket parts and equipment that may be marketed by another manufacturer. It is a common industry term recognized and used by many professional or ...

s (OEMs); and

Google Google LLC () is an American Multinational corporation, multinational technology company focusing on Search Engine, search engine technology, online advertising, cloud computing, software, computer software, quantum computing, e-commerce, ar ...

sponsors Android, an open-source mobile OS it distributes free to OEMs.DOJ
Competitive Landscape
U.S. Dept. of Justice, justice.gov, 2012-2-13. Accessed 2012-4-13. All these OSs provide platforms for software application developers as well as for a variety of products and services offered by competing product manufacturers. Such products in turn rely on, and their patent holders commit to, SSOs' rules for both standards essential patents disclosure and

reasonable and non-discriminatory licensing Reasonable and non-discriminatory (RAND) terms, also known as fair, reasonable, and non-discriminatory (FRAND) terms, denote a voluntary licensing commitment that standards organizations often request from the owner of an intellectual property r ...

(FRAND) grants for compatibility and interoperability of devices. This led the way for Apple to take charge over Motorola, Samsung, LG, and other cellular communications companies.

Further developments

In March and April 2011, Motorola filed patent infringement complaints in the court in

Mannheim Mannheim (; Palatine German: or ), officially the University City of Mannheim (german: Universitätsstadt Mannheim), is the second-largest city in the German state of Baden-Württemberg after the state capital of Stuttgart, and Germany's ...

, Germany, alleging that Apple Retail Germany GmbH, Apple Sales International, and Apple Inc. infringed three of Motorola Mobility's patents, two of which are standards-essential patents. In December 2011 and February 2012, the court in Mannheim, Germany found that Apple products infringed two of the three Motorola Mobility patents, one standards-essential and one non-essential, and granted injunctions. Between May and December 2011, Apple filed patent infringement suits in

Munich Munich ( ; german: München ; bar, Minga ) is the capital and most populous city of the German state of Bavaria. With a population of 1,558,395 inhabitants as of 31 July 2020, it is the third-largest city in Germany, after Berlin and Ha ...

Düsseldorf Düsseldorf ( , , ; often in English sources; Low Franconian and Ripuarian language, Ripuarian: ''Düsseldörp'' ; archaic nl, Dusseldorp ) is the capital city of North Rhine-Westphalia, the most populous state of Germany. It is the second- ...

and Mannheim, Germany alleging that Motorola infringed Apple's utility and design patents. Apple asserted the design patents against Motorola's tablet products. In mid-February 2012, the Munich court found that a Motorola smartphone unlock feature infringed one of the Apple utility patents,Compare

utility model A utility model is a patent-like intellectual property right to protect inventions. This type of right is available in many countries but, notably, not in the United States, United Kingdom or Canada. Although a utility model is similar to a patent ...

to a

utility patent This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights i ...

. and granted an injunction. Five days prior to the Munich court decision, Apple sued Motorola in the

U.S. District Court for the Southern District of California The United States District Court for the Southern District of California (in case citations, S.D. Cal.) is a federal court in the United States Court of Appeals for the Ninth Circuit, Ninth Circuit (except for patent claims and claims against th ...

.''Apple, Inc. and Apple Sales International v. Motorola Mobility, Inc.'', case 12CV0355 JLS BLM, U.S. Dist. Ct., S.D. Cal., 2012-2-10. Apple's complaint sought a declaratory judgment and injunction based on an alleged breach of contract by Motorola, and alleged that Apple is a third party beneficiary under a patent licensing agreement between Motorola Mobility, Inc. and Qualcomm, Inc., and thus in reliance on that contract. Apple alleged that Motorola's rights under two patents it asserted against Apple in Germany were already exhausted under the licensing agreement and asked the court to enjoin Motorola from prosecuting and enforcing its claims against Apple in Germany. In February 2012, the

Directorate-General for Competition The Directorate-General for Competition (DG COMP) is a Directorate-General of the European Commission, located in Brussels. The DG Competition employs around 850 officials, as well as a number of seconded national officials, among other from nation ...

of the

sent Motorola notice that the Commission received a complaint by Apple on the enforcement of Motorola's standards-essential patents against Apple, allegedly in breach of Motorola's FRAND commitments. Apple's complaint sought the Commission's intervention with respect to standards-essential patents.

References

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