On February 6, 2013, U.S. District Court Judge James L. Robart (Western District of Washington) granted Microsoft’s motion for partial summary judgment, invalidating 13 claims in 3 patents relating to Motorola’s patent infringement lawsuit against the software giant.
Motorola Mobility, Inc., et al., v. Microsoft Corporation is a consolidation of two actions in which Microsoft is the plaintiff in one action and Motorola the plaintiff in the other. The cases were consolidated on June 1, 2011. This most recent ruling, however, concerns 3 of 16 patents asserted by Motorola in the dispute. The 3 Motorola patents disclose systems and methods for encoding and decoding a “bitstream” or sequence of digital video data. Motorola alleged that the Microsoft Windows 7 operating system and Microsoft Internet Explorer 9 software made, used, sold, or offered for sale in the United States or imported into the United States infringed the Motorola patents.
Microsoft and Motorola agreed that the “means for decoding” and “means for using” elements constituted “means-plus-function” claim limitations. The parties also agreed that the corresponding structure for the “means for decoding” and “means for using” is a “decoder.” The parties disagreed, however, on the adequacy of the decoder disclosure. The court sided with Microsoft in finding the disclosure inadequate, holding that when a disclosed structure corresponding to a means-plus-function element is a computer-implemented algorithm, the algorithmic structure must also be disclosed. The court could find no such algorithm in the specification. The “means for decoding” limitations claimed an overbroad definition of the structure (basically anything that decodes digital data), and this overbroad definition rendered the limitation invalid for indefiniteness. Accordingly, the court granted Microsoft’s motion for partial summary judgment that the “means for decoding” limitations of the 3 patents were invalid as indefinite, and invalidated 13 corresponding claims arising out of the 3 patents.
Motorola’s 19 other claims related to the 3 patents survive for now, but are not immune from being invalidated in the future. Should any of the remaining claims survive, Microsoft should be able to negotiate a license on FRAND terms.