Microsoft Corporation v. Motorola, Inc, et al

Filing 40

Filed (ECF) Appellants General Instrument Corporation and Motorola Mobility, Inc. citation of supplemental authorities. Date of service: 08/16/2012. [8288978] (KMS)

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August 16, 2012
VIA ECF
Molly C. Dwyer
Clerk of the Court
U.S. Court of Appeals for the Ninth Circuit
James R. Browning Courthouse
95 7th Street
San Francisco, CA 94103
Re:

Microsoft Corp. v. Motorola, Inc. et al., No. 12-35352
Argument Scheduled for September 11, 2012

Dear Ms. Dwyer:
Defendants-Appellants (“Motorola”) hereby respond to Microsoft’s 28(j) letter of August 6,
2012, which quoted Motorola’s motion for partial summary judgment below. Contrary to
Microsoft’s interpretation, Motorola did not there concede that the district court properly enjoined
Motorola from enforcing its German patents in German courts. Motorola argued below, as here, that
no injunction may issue absent a finding that Motorola breached its RAND licensing obligations.
No such breach has been found, nor can one be found based simply on what Microsoft contends was
too high a preliminary offer by Motorola. Motorola Br. 29-32; Reply Br. 9-12.
Moreover, nothing in the motion below concedes the district court’s authority to enjoin the
enforcement of a foreign patent infringement judgment, now or later. The German proceedings
concern Microsoft’s current and continuing patent infringement absent a license, a problem that will
persist unless and until the proceedings below determine that Microsoft is entitled to a license.
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Motorola Br. 26-29; Reply Br. 12-14. And any permanent injunction would be limited to Motorola’s
U.S. patents, as foreign patents are subject exclusively to the laws and courts of the issuing country.
Reply Br. 24-25. Motorola’s position on this point is of record below. See Dist Ct. Dkt No. 248 at
16 (“[E]ven if the Court were to find for Microsoft on the merits and determine it was proper to issue
an Order enjoining Motorola from refusing to license sales in the United States at particular rates[,]
... Microsoft points to nothing to rebut the strong presumption against courts projecting their
authority extraterritorially ....”).
Finally, even if an injunction after trial might square with comity, the preliminary injunction
here does not, for it bases its finding of irreparable harm to Microsoft on its denigration of
Germany’s Orange Book procedures. Motorola Br. 37-41; Reply Br. 18-19. Nor would this
injunction be occasioned after trial: if Microsoft secures a license, that would itself constitute a
complete defense before the German court. Motorola Br. 7-9.
For these reasons and consistent with its positions here, Motorola does not concede any basis
for enjoining enforcement of the German patents.
Respectfully submitted,

Kathleen M. Sullivan
cc: Counsel for Microsoft Corp. via ECF

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