Microsoft Corporation v. Motorola, Inc, et al

Filing 32

Filed (ECF) Appellants General Instrument Corporation and Motorola Mobility, Inc. Motion to expedite case. Date of service: 07/25/2012. [8263856] (KMS)

NO. 12-35352
IN THE

FOR THE NINTH CIRCUIT

MICROSOFT CORPORATION, a Washington Corporation
Plaintiff-Appellee,
v.
MOTOROLA, INC., MOTOROLA MOBILITY, INC., and GENERAL
INSTRUMENT CORPORATION
Defendants-Appellants.
On Appeal From The United States District Court
For The Western District Of Washington At Seattle
DEFENDANTS-APPELLANTS’ MOTION FOR FURTHER EXPEDITION
OF APPEAL OF PRELIMINARY INJUNCTION, BY WAIVING ORAL
ARGUMENT AND REQUESTING IMMEDIATE SUBMISSION FOR
DISPOSITION ON THE MERITS
Derek L. Shaffer
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
1299 Pennsylvania Avenue, NW
Suite 825
Washington, DC 20004
[phone]

Kathleen M. Sullivan
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue
22nd Floor
New York, NY 10010
[phone]
continued on following page

Ralph H. Palumbo
Philip S. McCune
Lynn M. Engel
SUMMIT LAW GROUP PLLC
315 Fifth Avenue South
Suite 1000
Seattle, WA 98104-2682
[phone] (Telephone)
[phone] (Facsimile)

K. McNeill Taylor, Jr.
MOTOROLA MOBILITY, INC.
600 North U.S. Highway 45
Libertyville, IL 60048-1286
[phone] (Telephone)
[phone] (Facsimile)

Steven Pepe
Jesse J. Jenner
Stuart W. Yothers
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036-8704
[phone] (Telephone)

Douglas Hallward-Driemeier
Paul M. Schoenhard
Kevin J. Post
ROPES & GRAY LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005-3948
[phone] (Telephone)

July 25, 2012

Attorneys for Defendants-Appellants

TABLE OF CONTENTS
Page
INTRODUCTION ..................................................................................................... 2
STATEMENT OF THE CASE .................................................................................. 4
A.

Factual Background............................................................................... 5

B.

Anti-Suit Injunction Below ................................................................... 8

ARGUMENT ........................................................................................................... 10
A.

Motorola Is Suffering Irreparable Harm. ............................................ 11

B.

The Anti-Suit Injunction Poses Intolerable Offense To Comity . ...... 13

C.

This Appeal May Arguably Be Mooted Absent Expedition. .............. 18

CONCLUSION ........................................................................................................ 20

i

TABLE OF AUTHORITIES
Page
Cases
A&M Records, Inc. v. Napster, Inc.,
Nos. 00-16401, 00-16403, 2000 WL 1055915 (9th Cir. July 28, 2000) ............ 10
Applied Med. Distrib. Corp. v. Surgical Co. BV,
587 F.3d 909 (9th Cir. 2009) .............................................................................. 13
Canadian Filters (Harwich) Ltd. v. Lear-Siegler, Inc.,
412 F.2d 577 (1st Cir. 1969) ............................................................................... 16
Cal. Pharm. Ass’n v. Maxwell-Jolly,
563 F.3d 847 (9th Cir. 2009................................................................................ 12
Chevron Corp. v. Naranjo,
667 F.3d 232 (2d Cir. 2012) ............................................................................... 16
Douglas v. Indep. Living Ctr. of S. Cal., Inc.,
132 S. Ct. 1204 (Feb. 22, 2012) .......................................................................... 13
E. & J. Gallo Winery v. Andina Licores S.A.,
446 F.3d 984 (9th Cir. 2006) ........................................................................13, 14
Gau Shan Co., Ltd. v. Bankers Trust Co.,
956 F.2d 1349 (6th Cir. 1992) ............................................................3, 14, 15, 16
Gen. Elec. Co. v. Deutz AG,
270 F.3d 144 (3d Cir. 2001) ............................................................................... 15
Goss Int’l Corp. v. Man Roland Druckmaschinen Aktiengesellschaft,
491 F.3d 355 (8th Cir. 2007) .............................................................................. 14
Laker Airways Ltd. v. Sabena, Belgian World Airlines,
731 F.2d 909 (D.C. Cir. 1984) ......................................................................14, 17
Quaak v. Klynveld Peat Marwick Goerdeler Bedrijfsrevisoren,
361 F.3d 11 (1st Cir. 2004) ................................................................................. 14
Zynga, Inc. v. Vostu USA, Inc.,
816 F. Supp. 2d 824 (N.D. Cal. 2011) ..........................................................11, 15
Statutes and Rules
Ninth Circuit Rule 3-3.......................................................................................... 2, 10
Ninth Circuit Rule 27-12 ...........................................................................1, 3, 10, 18

ii

Other Authorities
Daniel Tan, Anti-Suit Injunctions and the Vexing Problem of Comity,
45 Va. J. Int’l L. 283, 338 (2005) ....................................................................... 15

iii

Pursuant to Ninth Circuit Rule 27-12, Movants-Defendants-Appellants
Motorola Mobility, Inc. and General Instrument Corporation (collectively,
“Motorola”) hereby respectfully move for further expedition of the appeal of the
district court’s preliminary injunction, an extraordinary anti-suit injunction that
prevents Motorola from enforcing a German injunction against Microsoft in
Germany under German law for its continuing infringement of Motorola’s German
patents in Germany. Because this appeal stands to be mooted, at least in part,
when one of Motorola’s German patents expires this October 6, 2012, and
Motorola is facing irreparable harm from its inability to enforce its German patents
in the face of continuing infringement by Microsoft, Motorola respectfully requests
that this appeal, already fully briefed, be submitted to a merits panel for disposition
as soon as practicable, potentially via summary disposition with opinion to follow.
Such expedited disposition would serve to restore the status quo between the
parties, to ensure that this Court is able to resolve the merits while the dispute
remains live, and to prevent ongoing harm to Motorola’s patent rights, to
international comity, and to the global framework whereby sister nations each
adjudicate and enforce their respective patents in harmony, all as identified in the
briefing.1 In order to facilitate this request, Motorola is willing to waive oral
1

Motorola has apprised Microsoft of this submission and is providing
immediate service of it via electronic mail as well as ECF. Microsoft has yet to
convey its position with respect to this request.

argument, unless this Court deems oral argument desirable and can schedule the
argument on the Court’s September calendar notwithstanding that that calendar has
already been released.
INTRODUCTION
Motorola respectfully seeks expedited disposition of the district court’s entry
of an unprecedented anti-suit injunction that—in direct contravention of principles
of international comity—enjoins enforcement in Germany of a German court’s
order concerning conduct and patents in Germany.

This appeal already has

proceeded on an expedited basis pursuant to Circuit Rule 3-3, with all briefing
completed on July 16, 2012.

Motorola respectfully submits that the briefing

furnishes a full and fair account from both parties, and now makes clear that the
district court has erred as a matter of law and caused undue affront to the German
courts. Absent further expedition of this appeal enabling decision before October,
however, this Court may not be able to provide timely cure; indeed, the appeal may
become moot to the extent that a German patent at issue expires and/or larger
business considerations may moot other aspects of the current dispute.
The District Court for the Western District of Washington has in effect
asserted exclusive jurisdiction worldwide over Motorola’s licensing to Microsoft
of its global portfolio of standard-essential patents at issue, even to the point of
ousting foreign courts otherwise positioned to enforce their own nations’ patents.

2

This assertion of extraterritorial patent authority is unprecedented and
unwarranted, and cannot be justified based simply on Microsoft’s claim that an
initial licensing offer by Motorola on its standard-essential patents was
unreasonable. Claiming exclusive jurisdiction to adjudicate terms on which
Motorola must license patents to Microsoft around the world, the district court has
enjoined enforcement of a judgment issued by a German court granting Motorola
an injunction against Microsoft’s continuing infringement of Motorola’s German
patents. Instead of seeking relief through the German court system, Microsoft
asked the court in Seattle to block Motorola’s orderly enforcement of the German
judgment within Germany. The district court granted Microsoft’s request and, in
doing so, exceeded the permissible bounds of its authority.

So long as this

unprecedented anti-suit injunction stands, it continues to “convey[] the message,
intended or not, that the [U.S.] court has so little confidence in the [German]
court’s ability to adjudicate a given dispute fairly and efficiently that it is unwilling
even to allow the possibility.” Gau Shan Co., Ltd. v. Bankers Trust Co., 956 F.2d
1349, 1355 (6th Cir. 1992).
Under Circuit Rule 27-12, a motion to expedite may be granted for “good
cause.” “Good cause” specifically exists in instances where “irreparable harm may
occur or the appeal may become moot.” Cir. R. 27-12. Here, such good cause
stems from (i) the irreparable harm Motorola will continue to suffer so long as

3

Microsoft is permitted to continue infringing Motorola’s German patents without
secure redress; (ii) the institutional injury that is being inflicted on international
comity and the German courts; and (iii) the risk that the appeal may otherwise fall
moot before it is decided.
Several intervening events since the Court initially ordered expedited
briefing heighten these risks: First, the district court earlier this month threatened
“heavy monetary sanctions” against Motorola and its counsel in the face of what it
appears to deem “bad faith or abusive conduct” reflected in Motorola’s suggestion
that the court lacks authority on the record here to impose RAND licensing terms
to be determined ab initio by the court. Tr. 10:11-15, No. 10-1823, ECF No. 359
(W.D. Wash. July 9, 2012).

Second, Google Inc.’s acquisition of Motorola

(completed on May 22, 2012) has raised larger business considerations that could
moot the appeal before decision. An expedited merits ruling by this Court may
assist in correcting the course of proceedings below and eliminating a precedent
that, unless superseded, may wreak similar havoc in future standard-essential
patent cases involving licensing disputes with international dimension.
STATEMENT OF THE CASE
Because the merits of this case have been fully briefed, Motorola simply
summarizes the main issues on appeal here.

4

A.

Factual Background

The preliminary injunction at issue was granted in the context of ongoing
litigation between Microsoft and Motorola over the licensing of Motorola’s
“essential patents,” which are standard patents that facilitate compatibility between
products manufactured by different companies.

Non-governmental standards-

setting organizations (“SSOs”) establish technical standards; members of the SSO
that hold essential patents generally must agree to license their essential patents on
“reasonable and non-discriminatory” (“RAND”) terms to any interested party. The
actual RAND terms are left for the parties to negotiate.
The dispute here concerns two essential patents that Motorola holds and
Microsoft uses in certain of its products.

Motorola sent Microsoft letters in

October 2010, offering to license its entire 802.11 and H.264 patent portfolios,
consisting of more than 400 patents in more than 30 countries (Excerpts of Record
(“ER”) 375-96, ER 398-421)2 on the same standard terms on which Motorola had
licensed other portfolios to other licensees. Three weeks later, without engaging in
good-faith license negotiations, Microsoft filed the suit below alleging breach of
contract and related state-law claims against Motorola.
Microsoft’s complaint, later amended, alleged that Motorola breached an
obligation to license at RAND rates the patents mentioned in the letters. ER 4712

Citations to “ER” refer to the Excerpts of Record that have been filed
with this Court in connection with the already completed merits briefing.
5

72 (Compl. ¶ 1); ER 434-35 (Am. Compl. ¶ 1). In both versions of its complaint,
Microsoft sought a declaration that it was entitled to licenses for essential patents
from Motorola and that Motorola’s opening offer was not RAND. ER 457-58, ER
492. Microsoft sought damages, but never requested the district court set a RAND
rate or establish the terms for a license. ER 16 n.12.
While suit proceeded below, Microsoft continued to sell products that
infringed Motorola’s patents without benefit of any license. As a result, in July
2011, Motorola sued Microsoft in Germany for Microsoft’s continuing
infringement of certain of Motorola’s German patents.

ER 335 (Redacted

Declaration of Dr. Marcus Grosch, No. 10-1823, ECF No. 245, at ¶ 14 (W.D.
Wash. Apr. 6, 2012) (“Grosch Decl.”)). Motorola’s German suit pertains only to
the German versions of its patents and seeks relief only as to the German market.
No cause of action would be available for Motorola to enforce its German patents
in the United States.
Germany has its own distinctive procedures for resolving RAND disputes, as
set forth in the German Supreme Court’s Orange Book decision. ER 330-35
(Grosch Decl. ¶¶ 3-13). Under Orange Book procedures, the accused infringer can
avoid an injunction by making a binding offer on RAND terms and by acting as if
licensed (including by paying the RAND royalty into an escrow account). ER 33233 (Grosch Decl. ¶¶ 7-8). If a German court determines that the infringer’s offer

6

was such that the patent holder could not reject it without violating its RAND
assurances, the patent holder’s action for injunctive relief is dismissed. If the
patent holder accepts the offer, then a license agreement is established, again
precluding injunctive relief.

ER 332-33 (Grosch Decl. ¶¶ 7-8). Under Orange

Book, the defendant need not commit to an unduly high rate in order to avoid a
circumstance where the patent holder permissibly rejects the offer and pursues its
right to injunctive relief. ER 338-39 (Grosch Decl. ¶ 26). Rather, Orange Book
procedure allows an accused infringer to commit to enter into a license at a rate to
be set by the patent holder, subject to review by the German court. ER 332-33
(Grosch Decl. ¶ 8). There was therefore no risk of Microsoft being forced to pay
an above-RAND rate in Germany.
Microsoft declined to take this second option, in which it would have agreed
to enter a license at a rate specified by Motorola and subject to the German court’s
review. Instead, Microsoft took the first option, proposing a licensing rate for
Motorola’s German patents in December 2011 and facing the risk that Motorola
might permissibly reject the offer and pursue its right to injunctive relief.
Motorola deemed Microsoft’s offer far too low to be RAND (ER 336-39 (Grosch
Decl. ¶¶ 20, 26); see also ER 259, 261) and exercised its right to reject Microsoft’s
offer—thereby risking that a German court would dismiss its infringement action if
the court deemed Microsoft’s offered rate to be RAND, in which case Motorola

7

could also face potential sanctions for anticompetitive conduct.

ER 332-33

(Grosch Decl. ¶ 8). In fact, however, the German court determined that Motorola
was within its rights in rejecting Microsoft’s proposed terms as too low. ER 163217 (German court decision); see also ER 234-71 (Microsoft’s English translation
of German decision).
B.

Anti-Suit Injunction Below

Just as the German court was nearing a decision on Motorola’s claims,
Microsoft for the first time asked the district court in Seattle to enjoin Motorola
from enforcing the German court’s expected ruling that Microsoft’s products in
Germany infringe Motorola’s German patents. Mot. for Temporary Restraining
Order and Prelim. Inj., No. 10-1823, ECF No. 210 (W.D. Wash. Mar. 28, 2012).
The district court issued a temporary restraining order of indefinite duration on
April 12, 2012 (ER 26-28), which it then converted to a preliminary injunction on
May 14, 2012 (ER 25). In the meantime, on May 2, 2012, the German court issued
its expected injunction against Microsoft, which cannot go into effect unless and
until Motorola takes additional steps to enforce it. But those steps have been
forbidden by the anti-suit injunction at issue.
Central to the district court’s decision were (i) its commitment to setting the
terms for a worldwide RAND license between Motorola and Microsoft for
Motorola’s standard-essential patents; and (ii) its perception that enforcement of

8

the German injunction would be in tension with its supposed authority to bestow
that worldwide RAND license upon Microsoft. ER 16, 38-39. The district court
reached this conclusion even though it acknowledged that Microsoft’s complaint
nowhere sought a license from the court (ER 16 n.12) and despite the absence of
authority for the court to draft a license ab initio. Microsoft’s claimed charter for
this judicial intervention is simply Motorola’s initial offer letter proposing to
license its global portfolio of essential patents on standard terms—an offer that
Microsoft deemed too high. ER 20; see also ER 38 (“[T]he offer letter from
Motorola sent to Microsoft in the United States covers both the U.S. and foreign
patents, and it is this offer letter which Microsoft alleges breaches the ITU
agreement”); ER 38-39 (“[I]f Motorola did not want its foreign patent subject to
this court’s jurisdiction, then it would not have provided them as part of the offer
letter to Microsoft.”).
Since briefing has concluded, the court has invoked the prospect of imposing
“heavy monetary sanctions” upon “the law firms and the parties” for what it
perceives to be “bad faith or abusive conduct” surrounding licensing of “the
industry standard patents.” Tr. 10:11-15, No. 10-1823, ECF No. 359 (W.D. Wash.
July 9, 2012).

9

C.

Procedural Posture

As of this date, briefing of this appeal of the preliminary injunction below
has been completed on an expedited basis pursuant to Circuit Rule 3-3. This case
is now ready for submission on the merits pending only oral argument, which has
yet to be scheduled and apparently would not be scheduled until November at the
earliest. Because oral argument would delay decision by many months, Motorola
hereby waives it unless the Court deems argument desirable and capable of being
scheduled on the September calendar. This would enable the appeal to be resolved
on the merits before October 6, 2012, when one of Motorola’s German patents
otherwise slated to be duly enforced through a German court’s injunction expires.
ARGUMENT
Expedition “will be granted upon a showing of good cause.” Cir. R. 27-12.
Good cause encompasses, e.g., circumstances where, absent expedition, (a)
irreparable injury “may occur”; or (b) “the appeal may become moot.” Id.; see
also A&M Records, Inc. v. Napster, Inc., Nos. 00-16401, 00-16403, 2000 WL
1055915, at *1 (9th Cir. July 28, 2000) (granting motion to expedite because
appellant “raised substantial questions of first impression going to both the merits
and the form of the injunction”). Such cause abounds here.

10

A.

Motorola Is Suffering Irreparable Harm.

Motorola faces irreparable harm absent relief from this Court. The district
court’s anti-suit injunction permits infringement of Motorola’s patents to continue
in Germany unabated in the absence of any secure means for Motorola ultimately
to obtain monetary redress. The district court’s exertion of power also chills
Motorola’s ability to obtain fair licensing terms in Germany.
To date, Microsoft has declined to license Motorola’s German patents either
on terms negotiated between the parties or available through German Orange Book
procedure; thus, it is undisputed that Microsoft holds no license and is paying
nothing as to Motorola’s patents it is infringing. A German court has held that
Microsoft is infringing in Germany and that Motorola properly rejected
Microsoft’s offer as too low to be RAND.

Accordingly, the German court

concluded that injunctive relief is appropriate. Under principles of international
comity, these findings—made by a German court, applying German law to the
infringement of German patents in Germany—should be determinative.
Patent law is determined nation by nation, and does not extend
extraterritorially. Thus, “federal courts around the country have considered antisuit injunctions of parallel proceedings in a variety [of] intellectual property
contexts and have uniformly concluded that such injunctions are improper.”
Zynga, Inc. v. Vostu USA, Inc., 816 F. Supp. 2d 824, 829 (N.D. Cal. 2011). The

11

district court has turned things upside down, however, by equating orderly
progression of German patent adjudication with irreparable injury to Microsoft.
The upshot is that Microsoft continues to infringe Motorola’s German patents with
impunity even as the applicable German remedy, an injunction, is enjoined below.
The injunction at issue specifically denies any secure redress for Microsoft’s
infringement so long as the injunction remains in place. According to the German
courts, an injunction is the appropriate remedy for Microsoft’s infringement;
according to the court below, no injunction may be enforced. And Microsoft has
eschewed Orange Book procedure available under German law that would ensure
appropriate monetary payment from Microsoft to Motorola for the former’s use of
the latter’s patents in Germany. No other secure mechanism exists for Motorola
ultimately to obtain monetary recompense for Microsoft’s continuing infringement
in Germany. Although the district court contemplates imposing licensing terms
(with prospect of retrospective licensing payments by Microsoft), its ultimate
authority to do so, particularly with the benefit of this Court’s review, will remain
unresolved so long as this case is pending. To the extent monetary relief would
later elude Motorola, monetary harm from Microsoft’s continued infringement in
Germany amounts to irreparable harm. Cf. Cal. Pharm. Ass’n v. Maxwell-Jolly,
563 F.3d 847, 852 (9th Cir. 2009) (“[B]ecause the Hospital Plaintiffs and their
members will be unable to recover damages against the Department even if they

12

are successful on the merits of their case, they will suffer irreparable harm [absent]
the requested injunction.”), vacated on other grounds sub nom. by Douglas v.
Indep. Living Ctr. of S. Cal., Inc., 132 S. Ct. 1204 (Feb. 22, 2012).
Finally, as a practical matter, the proceedings below cast a long shadow over
licensing negotiations between the parties. The lower court’s extraordinary antisuit injunction has served to insulate Microsoft from the natural consequence of its
continuing infringement in Germany. To the extent the injunction is destined to be
reversed, it is in the meantime affording Microsoft undue leverage in larger
licensing negotiations. That leverage is further bolstered by the district court’s
announced commitment to force Motorola to terms that otherwise stand to be filled
in by the court ab initio.
B.

The Anti-Suit Injunction Poses Intolerable Offense To Comity.

The interests of sister courts and international comity also would be served
by maximum expedition.

While this Court’s precedents dictate that anti-suit

injunctions should be used “sparingly,” see Applied Med. Distrib. Corp. v. Surgical
Co. BV, 587 F.3d 909, 920 (9th Cir. 2009); E. & J. Gallo Winery v. Andina Licores
S.A., 446 F.3d 984, 989 (9th Cir. 2006), the district court issued an anti-suit
injunction in circumstances that specially foreclose it: In particular, the injunction
prevents a sister court of a foreign sovereign from enforcing its own judgment

13

about how to enforce its own patents within its own borders. The resulting offense
to comity is unprecedented and intolerable.
As the D.C. Circuit explained several decades ago in the seminal case of
Laker Airways Ltd. v. Sabena, Belgian World Airlines, 731 F.2d 909 (D.C. Cir.
1984), “comity serves our international system like the mortar which cements
together a brick house. No one would willingly permit the mortar to crumble or be
chipped away for fear of compromising the entire structure.” 731 F.2d at 937; see
also Gallo, 446 F.3d at 995 (quoting same).

To be sure, where exceptional

circumstances admit of no other recourse, the impact of an anti-suit injunction on
comity may be tolerable. Yet an anti-suit injunction that has issued improperly, as
this one has, “can have unintended, widespread effects.” Gau Shan, 956 F.2d at
1355. Whenever a U.S. court enters an injunction that intrudes upon a foreign
court’s ability to exercise proper jurisdiction over the matters before it, the order
compromises the cooperation and reciprocity between sister courts that facilitate
international trade and commerce. See id.; see also Goss Int’l Corp. v. Man
Roland Druckmaschinen Aktiengesellschaft, 491 F.3d 355, 360 (8th Cir. 2007)
(The “importance [of comity] in our globalized economy cannot be overstated.”);
Quaak v. Klynveld Peat Marwick Goerdeler Bedrijfsrevisoren, 361 F.3d 11, 19 (1st
Cir. 2004) (explaining that international commerce “depends on cooperation,
reciprocity, and respect among nations” that anti-suit injunctions can undermine).

14

Furthermore, anti-suit injunctions, unless carefully circumscribed and specially
justified, “invite[] similar disrespect for our judicial proceedings.” Gen. Elec. Co.
v. Deutz AG, 270 F.3d 144, 160 (3d Cir. 2001); Gau Shan, 956 F.2d at 1355
(“[A]ntisuit injunctions are . . . destructive of international comity . . . . Foreign
courts can be expected to reciprocate such disrespect.”).
Factors unique to this anti-suit injunction make its affront to international
comity especially intolerable and warrant prompt attention from this Court. First,
it is intruding upon another country’s enforcement of its own intellectual property
within its own borders. See, e.g., Zynga, Inc., 816 F. Supp. 2d at 829 (“[F]ederal
courts around the country have considered anti-suit injunctions of parallel
proceedings in a variety [of] intellectual property contexts and have uniformly
concluded that such injunctions are improper.”); see also Daniel Tan, Anti-Suit
Injunctions and the Vexing Problem of Comity, 45 VA. J. INT’L L. 283, 338 (2005).
(“[T]he policy of preserving comity make[s] it difficult to think of any
circumstances under which the courts should issue an anti-suit injunction to
restrain foreign patent and trademark proceedings.”). The briefs recite a string of
precedents that call for reversal of this injunction on this basis, and none that
supports it. See Opening Br. of Defs.-Appellants, No. 12-35352, ECF No. 14, at
26-29 (9th Cir. May 30, 2012); Reply Br. of Defs.-Appellans, No. 12-35352, ECF
No. 29, at 3-6 (9th Cir. July 16, 2012).

15

Second, the anti-suit injunction here was issued only as the foreign court was
poised to issue its judgment. And it was obtained below at Microsoft’s behest
without Microsoft having dignified the German courts with any request for stay
there. Such circumvention of the German court is especially egregious considering
that Microsoft did not even request a stay from the foreign court whose
proceedings are being enjoined. See Canadian Filters (Harwich) Ltd. v. LearSiegler, Inc., 412 F.2d 577, 579 (1st Cir. 1969) (“Filters sought the wrong relief.
Rather than, in effect, attempt to strong-arm the Canadian court, it should have
asked that court, if it thought it was so entitled, to postpone its proceedings until
the United States court had taken action.”); Gau Shan, 956 F.2d at 1355 (a district
court should not “convey[] the message, intended or not, that the [U.S.] court has
so little confidence in the foreign court’s ability to adjudicate a given dispute fairly
and efficiently that it is unwilling even to allow the possibility”); cf. Chevron Corp.
v. Naranjo, 667 F.3d 232, 244 (2d Cir. 2012) (“It is a particularly weighty matter
for a court in one country to declare that another country’s legal system is so
corrupt or unfair that its judgments are entitled to no respect from the courts of
other nations.”).
Finally, the affront to comity is still more pronounced because the district
court’s ruling disdains Orange Book procedures. In identifying the prospect of
irreparable harm to Microsoft, the district court pointed specifically to Germany’s

16

Orange Book process as entailing “negotiation ... with the threat of an immediate
injunction hanging over [Microsoft’s] head,” which it deemed “substantial harm.”
ER 34; see also ER 24 (describing “the threat of an injunction looming over the
negotiation table”). The district court thus inappropriately denigrated German law
and procedure, while rescuing Microsoft from supposed harm that Microsoft can
itself avoid simply by agreeing to licensure and thereby obviating the German
injunction.
In sum, the district court’s order enjoins wholly extraterritorial conduct,
while the German court’s ruling adjudicates the parties’ rights only with respect to
German patents as practiced within Germany. The German court’s order does not
purport to apply U.S. law or to affect rights within the United States. In contrast,
the injunction at issue trenches upon the natural ability of German courts to apply
their own laws to their own patents within their own borders. Faced with similar
circumstances, the D.C. Circuit found that an anti-suit injunction entered by an
English court that prevented a U.S. court from “apply[ing] its own laws to
corporations doing business in this country” had “usurped” the U.S. courts’ judicial
functions and “destroy[ed] the autonomy of the courts.” Laker Airways, 731 F.2d
at 939. Now the shoe is on the other foot—and the U.S. court is enjoining
enforcement by another country’s courts under that country’s laws—but the
offense remains the same. This Court should expedite this appeal.

17

C.

This Appeal May Arguably Be Mooted Absent Expedition.

Unless this Court expedites merits resolution, there is a real danger that these
critical questions will fall moot. If the appeal becomes moot before this Court
rules, the propriety of the anti-suit injunction may go uncorrected, problematic
precedent may remain on the books, and this Court may not find occasion to
publish its own opinion on the important questions now presented. Important
principles of international comity are at stake. District courts would benefit from
this Court’s instruction on whether and to what extent the existence of concurrent
litigation in other countries warrants the formidable medicine of an anti-suit
injunction, just as the court below, in particular, would benefit from this Court’s
guidance as to how this case should be proceeding. The risk of mootness supplies
additional “good cause” for expediting Motorola’s appeal. See Cir. Rule 27-12.
First, the two patents currently in dispute in Germany will expire in October
2012 and March 2014.3 If one or both of the German patents expires before the
Court rules on Motorola’s appeal, then Motorola will not be able to seek
enforcement of the German injunction even if this Court later lifts the anti-suit

3

In Germany, patents expire twenty years after the patent is filed. See
European Patent Convention, art. 63 § 1, July 4, 1997, available at http://www.
epo.org/law-practice/legal-texts/html/epc/2010/e/ar63.html. One patent at issue in
the German dispute, EP0538667, was filed in Germany on October 6, 1992, such
that it will expire on or around October 6, 2012. The other patent, EP0615384,
was filed on March 10, 1994, such that it will expire on or around March 10, 2014.
18

injunction at issue. In that circumstance, Motorola would be forever deprived of
the process whereby German courts should have been enforcing its patent.
Second, as of May 22, 2012, Google has acquired Motorola.

Larger

business considerations may separately overtake and subsume Motorola’s German
patents at issue in this appeal. This appeal can and should be decided in its present
posture, however, while the dispute over Motorola’s established entitlement to the
injunction in Germany remains live.
Third, the district court is indicating that it may enter an order requiring the
parties to enter worldwide licenses for Motorola’s essential patents, on terms set by
the district court, as early as November 2012. In particular, the district court
intends to hold a trial at which the appropriate RAND rate and other terms (if they
remain in dispute) would be determined; in the meantime, it has indicated that the
parties will be made either to agree to or propose “boilerplate” terms covering all
aspects of a global RAND license other than rate. Even now, Motorola is facing
formidable pressures to agree to global licensing on terms as ordered below. When
Motorola earlier this month indicated it would be opposing any efforts below to set
judicially the terms of a RAND license before any RAND breach has even been
found,4 the district court’s response was pointed. Tr. 10:11-15, No. 10-1823, ECF

4

See Motorola Mobility’s and General Instrument’s Mot. for Partial
Summ. J. Dismissing Microsoft’s Claim for a RAND Patent License Agreement
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No. 359 (W.D. Wash. July 9, 2012) (“Both sides have been warned that heavy
monetary sanctions may be imposed on the law firms and the parties bad faith or
abusive conduct in the litigation will be punished by equitable remedies going to
the industry standard patents.”). Only through expedited review can proper merits
resolution be ensured and timely guidance provided.
CONCLUSION
For the foregoing reasons, Motorola respectfully waives oral argument
(except to the extent that this Court may accommodate such argument on its
September calendar), requests that submission and resolution of this appeal on the
merits be expedited such that it can be resolved, if practicable, in advance of
October, and suggests that this Court may wish to issue an initial, summary
disposition with opinion to follow.

To Be Determined Ab Initio By The Court, No. 10-1823, ECF No. 362, at 2-4
(W.D. Wash. July 18, 2012).
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Respectfully submitted,
By: s/ Kathleen M. Sullivan
Kathleen M. Sullivan
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone] (Telephone)
[phone] (Facsimile)
[e-mail]
Derek L. Shaffer
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
1299 Pennsylvania Avenue, NW
Suite 825
Washington, DC 20004
[phone] (Telephone)
[phone] (Facsimile)
[e-mail]
Ralph H. Palumbo
Philip S. McCune
Lynn M. Engel
SUMMIT LAW GROUP PLLC
315 Fifth Avenue South
Suite 1000
Seattle, WA 98104-2682
[phone] (Telephone)
[phone] (Facsimile)

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K. McNeill Taylor, Jr.
MOTOROLA MOBILITY, INC.
600 North U.S. Highway 45
Libertyville, IL 60048-1286
[phone] (Telephone)
[phone] (Facsimile)
Steven Pepe
Jesse J. Jenner
Stuart W. Yothers
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036-8704
[phone] (Telephone)
Douglas Hallward-Driemeier
Paul M. Schoenhard
Kevin J. Post
ROPES & GRAY LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005-3948
[phone] (Telephone)

22

CERTIFICATE OF SERVICE
I, Kathleen M. Sullivan, a member of the Bar of this Court, hereby certify
that on July 25, 2012, I electronically filed the foregoing motion with the Clerk of
the Court for the United States Court of Appeals for the Ninth Circuit by using the
appellate CM/ECF system. I certify that all participants in the case are registered
CM/ECF users and that service will be accomplished by the appellate CM/ECF
system.

s/ Kathleen M. Sullivan
Kathleen M. Sullivan
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
[phone] (telephone)
[phone] (facsimile)

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