Microsoft Corp. v. Motorola, Inc., No. 10-cv-1823 (W.D. Wash. May 14, 2012)

Defendant Motorola owns patents which it asserted were essential to the use of two standard technologies used in computers and smartphones.  During the development of the standards, Motorola had disclosed its patents to the relevant standard-setting organizations and committed to license its patents used in the standards on reasonable terms and conditions (“RAND”).  Subsequently, Motorola wrote to Plaintiff Microsoft to enforce these patents, seeking royalties from Microsoft.  Microsoft filed a breach of contract suit in the U.S. District Court for the Western District of Washington, asserting that it was a third-party beneficiary of Motorola’s blanket license agreement with the international standard setting organizations and that Motorola was attempting to extract unreasonable royalty terms from Microsoft in violation of those commitments. 

Subsequently, Motorola filed a patent infringement suit against Microsoft in the Western District of Wisconsin alleging infringement of certain essential U.S. patents and filed another patent infringement suit in the Mannheim Regional Court, Germany, seeking an injunction against continued infringement in Germany of certain European patents.  The Wisconsin action was transferred to Washington and consolidated with the present case.  The German court indicated that it would rule on Motorola’s request for injunctive relief on April 17, 2012.  Thus, on March 28, 2012, Microsoft filed an anti-suit injunction in the Washington district court seeking to restrain Motorola from enforcing any injunctive relief that it might receive from the German court.  On May 2, 2012, the Mannheim Regional Court ruled in favor of Motorola, finding that Microsoft had infringed Motorola's patents and that Microsoft does not have third-party contract rights under German law.

The court granted the anti-suit injunction.  The factors to obtain an anti-suit injunction are: (1) whether or not the parties and the issues are the same, and whether or not the first action is dispositive of the action to be enjoined; (2) whether the foreign litigation would frustrate policy of the forum issuing the injunction; and (3) whether the impact on comity would be tolerable.  Here, the court found that both the U.S. and German actions have the same parties and the U.S. action would be dispositive of the questions before the German court.  Further, it found that continuing the German action would frustrate the U.S. court's policy, and that the timing of filing the German action raises concerns of forum shopping and of duplicative and vexatious litigation.  The Court noted that Motorola filed the German action six months after Microsoft brought the present action in the Washington district court, despite the fact that the Washington court could adjudicate the precise issues raised in the German action.  The court indicated that Motorola may have been "forum shopping" by bringing its suit in Germany.  Finally, the court found that the anti-suit injunction would not have an intolerable impact on comity.  Thus, the court issued the preliminary injunction against Motorola, barring it from enforcing any injunctive relief received in the German action.