Adding to Google's legal woes
due to its acquisition of Motorola Mobility, a coalition of companies consisting of Mitsubishi, Philips, and Thompson have filed suit in the Southern District of Florida over the MPEG-2 video codec standard. The complaint alleges that Motorola Mobility is willfully violating patents licensed through the MPEG-LA
licensing group and is continuing to receive profit through the group despite no longer paying for a license since December 31, 2010.
The trio of companies allege that after Motorola Mobile's exit from the MPEG-LA licensing group for the MPEG-2 patent, that Motorola continued to profit from 12 or more cable set-top boxes. While it was a legitimate licensee of the technology, it ceased to be so when it exited the MPEG-LA group. Each company suing Motorola Mobile says that is a "willing licensee" of the MPEG-2 patents it holds, and spells out in the suit that individual licenses could have been obtained from each company for any of the eight patents in play with the suit, or an omnibus license could have continued to be obtained from the MPEG-LA licensing group.
The court filing claims that "Motorola has advertised, licensed, and/or provided instructions for such products with the specific intent and encouragement that the downstream parties infringe the patents-in-suit. Also,
upon information and belief, Motorola has provided downstream parties with instructions and/or user guides indicating that its products employ the MPEG-2 Standard."
The December 2010 date is notable, as that marks the end of the calendar quarter when Motorola Mobility's legal tussles with Microsoft
over H.264 patents began, and it asked for $4 billion per year. Motorola Mobile has been on the losing end of that struggle. While a judge ruled that Motorola Mobile is entitled to royalties for its standards-essential patent, it will receive single-digits of millions of dollars for the entire period that it is owed a licensing fee, a far cry short of the billions or hundreds of millions it feels it deserves.
Patent analyst Florian Mueller
sees several strategic problems for Google and Motorola Mobile as a result of this suit. He believes that "in order to counter whatever damages claims the three patent holders will present in the course of this litigation, Google might want to leverage Judge Robart's FRAND rate determination in some ways. Google could argue at a high level of abstraction that video codec patents in general aren't as expensive as Mitsubishi, Philips and Thomson may claim, and point to Judge Robart's decision
"But," he continues, "that rate-setting opinion very specifically discusses the reasons for which Motorola Mobility's H.264 declared-essential patents are of limited value. What will, however, almost certainly happen is that the plaintiffs in this new Miami litigation will draw the court's and the future jury's attention to Motorola Mobility's own out-of-this-world royalty demands over video codec patents, and the positions it took on FRAND."