Microsoft Vs Motorola 11.04.09

Microsoft
versus
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The patent R
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battlefield N
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as of
09 Apr 11 9 7 5 2
The next 12
pages show
how this
conflict has
escalated.
Move by
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US International
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of Washington
Southern District
of Wisconsin
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of Florida
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version 11.04.09.100 A L I
© 2010, 2011 by Florian Mueller
http://fosspatents.blogspot.com
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Twitter: @FOSSpatents
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Move #1
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Microsoft
files two
Move #1:
complaints Microsoft files two complaints
against 9 against Motorola: one in the
Western District of Washington,
Motorola another with the ITC. Both relate
(with a to the same 9 patents.
federal
court and
the ITC)
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Motorola
Move #2
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Microsoft R
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In a second complaint against Motorola
in the Western District of Washington,
files N
D Microsoft alleges Motorola's failure to comply
another with RAND (reasonable and non-discriminatory)
licensing commitments Motorola made to
complaint 9
certain standard-setting organizations
against (IEEE-SA and ITU) and their members.
Motorola,
over
RAND
licensing
obligations
W
Trade Commission
-- I
US International
Western District
of Washington
motion to D
stay first T Move #2, step 2/2:
W Since Microsoft asserted the same patents
suit C in its original infringement suit in Washington
A as in its ITC complaint, the parties jointly
move to stay the original infringement suit
© 2010, 2011 by Florian Mueller for the duration of the ITC investigation.
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+RAND
Motorola
Move #3
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Motorola R
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files N
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three
complaints 9
against
Microsoft
in two
federal
courts
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Move #3:
Motorola files three complaints
9 against Microsoft:
one over 7 patents in the
7 3 6
Southern District of Florida,
and two suits in the
Western District of Wisconsin
9 9 (one over 3 patents, another
+RAND 8 8 0 3 1 5 3 3 3 3 5 7 5 9 5 0 over 6 patents).
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Move #4
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Motorola R
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files N
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ITC
complaint, 9
amends
one
Wisconsin
complaint
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Move #4:
Motorola files an ITC complaint
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67 against Microsoft over 5 patents
10 that the Xbox 360 allegedly
7 3 5 infringes: 4 of those patents
Nothing changed were previously asserted
about the '516 in one of the two suits in the
and '931 patents Western District of Wisconsin,
9 9 at this stage. the 5th one is new and it's
+RAND 8 8 The0 3new 1 lines
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simultaneously added to that
Motorola 3
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9just0 separate
9from
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4 0 4 5 6 6 2 1 1 6 4 6 Wisconsin suit by way of an
amended complaint.
that are asserted in At this point, only the '516 and '931
the ITC complaint patents are part of that Wisconsin
as well. suit but not of the ITC complaint.
Move #5
23 Dec 10 5 1 3 5 0 7 7 9 3
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files N
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a third
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complaint
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9 12
Move #5:
Motorola files a third Wisconsin
76 complaint, asserting three patents
10 3 against Kinect and Xbox.
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7 3 5 Those three patents include
two new ones and the '931 patent
previously asserted in another
Wisconsin suit. Motorola says it will
9 9 "seek dismissal without prejudice
+RAND 8 8 0 3 1 5 3 3 3 3 5 7 5 9 5 0 8 5 3 relating to" the '931 patent in that other
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suit. This chart reflects Motorola's
announcement (on 18 January 2011,
Motorola indeed acted accordingly).
On that basis, only 1 of the 6 patents
remaining in that other suit (the '516
patent) is not simultaneously
part of Motorola's ITC complaint.
Move #6
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Move #6:
makes N
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On the same day on which Motorola
counter- filed its third Wisconsin suit,
Microsoft makes counterclaims
claims in 9 7
in the Southern Florida case,
Southern asserting 7 patents:
Florida, 5 of them against Motorola's
Android smartphones, and 2
asserting against Motorola set-top boxes
7 patents with DVR functionality.
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Move #7
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The parties N
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stipulate to
stay the 9 7
2nd
Wisconsin
case,
Motorola
drops
one patent
W S W
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from it I
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of Washington
Southern District
of Wisconsin
Move #7, part 1/2:
D Dparties stipulate D
of Florida
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to stay the 2nd
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for the duration
of ITC investigation
I
no. 337-TA-752.
On 21 January 2011,
9 the judge orders 12
to stay that case.
6
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7 3 5 Move #7, part 1/2:
Motorola files a second
amended complaint,
drops (as previously
9 9 7 announced) the 931 patent
+RAND 8 8 0 3 1 5 3 3 3 3 5 7 5 9 5 0 8 5 3 it had meanwhile asserted
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in the 3rd Wisconsin case.
Move #8
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Microsoft R
A 7 12 5 Move #8:
Microsoft counterclaims
counter- N
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claims in asserts five patents.
the 3rd 9 7 5
Wisconsin
suit,
asserts
5 patents
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Move #9
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Microsoft R
A 7 12 5 Move #9:
Microsoft counterclaims
counter- N
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claims in asserts two patents.
the 1st 9 7 5 2
Wisconsin 7
suit,
asserts
2 patents
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Move #10
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amends N
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suit, adds 7
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3 2 Motorola
amends its 3rd
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adds two patents.
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Move #11
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Feb 11 Microsoft 1
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R
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The first N
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Wisconsin Microsoft's counterclaims
suit is 9 7 5 2
in that case are also
transferred 75 transferred.
to
Washing-
ton
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Move5 #11. part 1/2:
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On 18 February 2011,
the Wisconsin
3 2 court agrees
with Microsoft and orders
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the transfer of the first of
the three Wisconsin suits
(case no. 3:10-cv-00699)
9 11 9 7 75 to Washington.
+RAND 8 8 0 3 1 5 3 3 3 3 5 7 5 9 5 0 8 5 3 2 5
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Move #12
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Another N
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Wisconsin
suit is 9 7 5 2
transferred
to
Washing- Move #12:
ton The Wisconsin-based
court grants Microsoft's
motion for transfer of
another case (the third one
W S W
Trade Commission
filed there by Motorola)
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Western District
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Western District
of Washington
Southern District
of Wisconsin
to Washington.
D D D
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W F W three Wisconsin suits
C have been transferred,
A L I and the third one is
stayed for the duration of
an ITC investigation and
may subsequently be
6 11 6 transferred as well.
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Reference United States International Trade Commission
material Investigation no. 337-TA-744 on "certain mobile devices, associated software, and components thereof"
-- complaint filed on 01 October 2010
as per
Microsoft Corporation (of Redmond, WA 98052)
09 Apr 11 vs. Motorola, Inc. (of Schaumburg, IL 60196)
page R-1 Microsoft simultaneously filed a suit against Motorola over the same matter in the Western District of Washington (case 2:10-cv-01577).
FOSS Patents reacted to this ITC complaint and the equivalent suit on the same day and two days later discussed the patents-in-suit.
Allegedly infringing products

Microsoft's complaint relates to Motorola's Android smartphones and states specifically accused products only as examples. Named
accused products include the following devices: Devour, Droid 2, Droid X, i1, Cliq, Cliq XT, Charm, and Back Flip. Microsoft also accuses
"the associated software loaded onto these phones by Motorola or its suppliers" (item 16 of the complaint).
Asserted patents (in order of appearance in documents filed with the ITC)
asserted by Microsoft in original (as well as first amended) complaint

5,579,517 ("517") Common name space for long and short file names
5,758,352 ("352") Common name space for long and short file names
6,621,746 ("746") Monitoring entropic conditions of a flash memory device as an indicator for invoking erasure operations
6,826,762 ("762") Radio interface layer in a cell phone with a set of APIs having a hardware-independent proxy layer
and a hardware-specific driver layer
6,909,910 ("910") Method and system for managing changes to a contact database
© 2010, 2011 by Florian Mueller 7,644,376 ("376") Flexible architecture for notifying applications of state changes
http://fosspatents.blogspot.com 5,664,133 ("133") Context sensitive menu system/menu behavior
Twitter: @FOSSpatents 6,578,054 ("054") Method and system for supporting off-line mode of operation and synchronization
using resource state information
6,370,566 ("566") Generating meeting requests and group scheduling from a mobile device
United States District Court for the Western District of Washington

Case no. 2:10-cv-01577 -- complaint filed on 01 October 2010
Microsoft Corporation (of Redmond, WA 98052)
vs. Motorola, Inc. (of Schaumburg, IL 60196)
This suit relates to the same matter as the ITC complaint Microsoft filed on the same day. After the ITC instituted an investigation based
on that complaint, the parties filed a joint stipulation on 09 November 2010 to stay the case for the duration of the ITC investigation.
FOSS Patents reacted to this suit and the equivalent ITC complaint on the same day and two days later discussed the patents-in-suit.
Reference United States District Court for the Western District of Washington
material Case no. 2:10-cv-01823 -- complaint filed on 09 November 2010
as per Microsoft Corporation (of Redmond, WA 98052)

vs. Motorola, Inc. (of Schaumburg, IL 60196) and Motorola Mobility, Inc. (of Libertyville, IL 60048)
09 Apr 11
This is not an infringement suit. Instead, Microsoft brought this suit against the two Motorola entities for Motorola's alleged "breach of its
commitments to the Institute of Electrical and Electronics Engineers Standards Association ('IEEE-SA'), International Telecommuni-
page R-2 cations Union ('ITU'), and their members and affiliates", which include Microsoft. The complaint alleges that Motorola demanded
"excessive and discriminatory royalties from Microsoft", disregarding its alleged obligations for reasonable and non-discriminatory
(RAND) licensing. Microsoft asks the court for related judicial declarations and for "a judicial accounting of what constitutes a royalty rate
in allr espects consistent with Motorola's promises for WLAN patents identified as 'essential' by Motorola and for H.264 [video codec]
patents identified by Motorola", and ultimately, "a judicial determination of and compensation for Motorola's breach."
FOSS Patents commented on this RAND enforcement suit on the following day.
United States District Court for the Southern District of Florida

Case no. 1:10-cv-24063 -- complaint filed on 10 November 2010
Motorola Mobility, Inc. (of Libertyville, IL 60048)
vs. Microsoft Corporation (of Redmond, WA 98052)
On the same day, Motorola also filed two complaints against Microsoft with the US District Court for the Western District of Wisconsin
© 2010, 2011 by Florian Mueller (cases 3:10-cv-00699 and 3:10-cv-00700). FOSS Patents commented on Motorola's expected countersuits on the following day.
Twitter: @FOSSpatents Allegedly infringing products
For each of the patents, Motorola broadly accuses "operating systems, office software, server software, and/or communications and
messaging software", but the specifically accused products then tend to be more limited in scope. A matrix on the next page shows the
relationship between the patents-in-suit and the accused products.
Asserted patents (in order of appearance in documents filed with the court)
asserted by Motorola in original complaint

5,502,839 ("839") Object-oriented software architecture supporting input/output device independence
5,764,899 ("899") Method and apparatus for communicating an optimized reply
5,784,001 ("001") Method and apparatus for presenting graphic messages in a data communication receiver
6,272,333 ("333") Method and apparatus in a wireless communication system for controlling a delivery of data
6,408,176 ("176") Method and system for initiating a communication in a communication system
6,757,544 ("544") System and method for determining a location relevant to a communication device and/or its associated user
6,983,370 ("370") System for providing continuity between messaging clients and method therefor
Reference United States District Court for the Southern District of Florida
material Case no. 1:10-cv-24063 -- complaint filed on 10 November 2010 -- continued from previous page
as per 03 07 10 ing 1 ail

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Microsoft counterclaims (23 December 2010 answer to original complaint)

http://fosspatents.blogspot.com Allegedly infringing products
Twitter: @FOSSpatents The first five patents are claimed to read on "Android smartphones including, e.g., the Motorola Droid X and Motorola Droid 2."
The last two patents are claimed to read on "set-top boxes that contain digital video recorder (DVR) functionality". Specific DVR
examples are (for the '904 patent) the Motorola DCH6416 and (for the '901 patent) the Motorola BMC9012.
Asserted patents (in order of appearance in the court filing)
asserted by Microsoft in counterclaims (part of answer to original complaint, dated 23 December 2010)
6,791,536 ("536") Simulating gestures of a pointing device using a stylus and providing feedback thereto
6,897,853 ("853") Highlevel active pen matrix
7,024,214 ("214") Synchronizing over a number of synchronization mechanisms using flexible rules
7,493,130 ("130") Synchronizing over a number of synchronization mechanisms using flexible rules
7,383,460 ("460") Method and system for configuring a timer
6,897,904 ("904") Method and system for selecting among multiple tuners
6,785,901 ("901") Altering locks on programming content
Reference United States District Court for the Western District of Wisconsin
material Case no. 3:10-cv-00699 -- complaint filed on 10 November 2010 --
transferred in February 2011 to the United States District Court for the Western District of Washington --
as per Case no. 2:11-cv-00343
09 Apr 11
Motorola Mobility, Inc. (of Libertyville, IL 60048) and General Instrument Corporation (of Horsham, PE 19044)
page R-4 vs. Microsoft Corporation (of Redmond, WA 98052)
On the same day, Motorola also filed another complaint against Microsoft with the US District Court for the Western District of Wisconsin
(case 3:10-cv-00700) and one with the US District Court for the Southern District of Florida (case 1:10-cv-24063). FOSS Patents
commented on Motorola's expected countersuits on the following day.
On 18 February 2011, the Wisconsin court ordered the transfer of this case to Washington, where it was entered into the court filing
system on 28 February 2011.

For each of its patents, Motorola accuses "the Windows 7 operating systems for personal computers".
In its counterclaims, Microsoft accuses "products such as Android smartphones including, e.g., at least one or more of the following: [...]"
The specifically named products include the Droid X and Droid 2 for both patents; the Devour and Charm for the '780 patent; and the
Cliq XT and i1 for the '582 patent.
Asserted patents (in order of appearance in documents filed with the court)
© 2010 by Florian Mueller asserted by Motorola in original complaint
http://fosspatents.blogspot.com 7,310,374 ("374") Macroblock level adaptive frame/field coding for digital video content
Twitter: @FOSSpatents 7,310,375 ("375") Macroblock level adaptive frame/field coding for digital video content
7,310,376 ("376") Macroblock level adaptive frame/field coding for digital video content
asserted by Microsoft on 25 January 2011 as part of counterclaims in answer to amended complaint

6,339,780 ("780") Loading status in a hypermedia browser having a limited available display area
7,411,582 ("582") Soft input panel system and method
material Case no. 3:10-cv-00700 -- complaint filed on 10 November 2010
as per Motorola Mobility, Inc. (of Libertyville, IL 60048) and General Instrument Corporation (of Horsham, PE 19044)
09 Apr 11
On the same day, Motorola also filed another complaint against Microsoft with the US District Court for the Western District of Wisconsin
(case 3:10-cv-00699) and one with the US District Court for the Southern District of Florida (case 1:10-cv-24063).
page R-5 FOSS Patents commented on Motorola's expected countersuits on the following day.
On 17 January 2011, the parties filed a stipulation to stay the case for the duration of the ITC investigation no. 337-TA-752. The parties
agreed that Motorola would file a 2nd amended complaint dropping one patent. On 21 January 2011, the court ordered accordingly.

All of the products specifically accused by Motorola in this suit are from the Xbox product line.
The '596, '094 and '931 patents allegedly read on "various models of the Xbox 360, including without limitation the Xbox 360
Pro/Premium, Xbox 360 Elite, Xbox 360 Arcade, and Xbox 360 S." The '712 and '516 patents allegedly read on "various models of the
Xbox 360, including without limitation: (i) the Xbox 360 S; and (ii) in conjunction with the Xbox 360 Wireless Networking Adapter or
the Xbox 360 Wireless N Networking Adapter, the Xbox 360 Core, Xbox 360 Pro/Premium, Xbox 360 Elite, and Xbox 360 Arcade".
The '571 patent allegedly reads on the same products as the '712 and '516 patents, however, with the difference that the use of certain
models in connection with the Xbox 360 Wireless Networking Adapter is not accused (only with the Wireless N Networking Adapter).
The '896 patent allegedly reads on "various models of the Xbox 360 and associated wireless accessories, including without limitation the
Xbox 360 Pro/Premium, Xbox 360 Elite, Xbox 360 Arcade, and Xbox 360 S."
© 2010, 2011 by Florian Mueller Asserted patents (in order of appearance in documents filed with the court)
Twitter: @FOSSpatents asserted by Motorola in original complaint
6,980,596 ("596") * Macroblock level adaptive frame/field coding for digital video content
7,162,094 ("094") * Frequency coefficient scanning paths for coding digital video content
5,319,712 ("712") * Method and apparatus for providing cryptographic protection of a data stream in a communication system
5,357,571 ("571") * Method for point-to-point communications within secure communication systems
6,686,931 ("931") Graphical password methodology for a microprocessor device accepting non-alphanumeric user input
On 23 December 2010, Motorola asserted this patent in a different complaint filed with the same court
(case 3:10-cv-00826) and announced that it would seek dismissal without prejudice of the related claims here.
On 18 January 2011, Motorola's 2nd amended complaint dropped this patent.
5,311,516 ("516") Paging system using message fragmentation to redistribute traffic
additionally asserted by Motorola in 1st amended complaint

6,069,896 ("896") * Capability addressable network and method therefor
In the list above, an asterisk (*) denotes patents also asserted by Motorola in an ITC complaint (investigation no. 337-TA-752).
By the time this case was stayed for the duration of the ITC proceeding, the '516 patent was the only patent asserted in this case without
being simultaneously asserted before the ITC, and Motorola agreed to stay the related infringement claim nevertheless.
Reference United States International Trade Commission
material Investigation no. 337-TA-752 on "certain gaming and entertainment consoles, related software, and
components thereof" -- complaint filed on 22 November 2010
as per
Motorola Mobility, Inc. (of Libertyville, IL 60048) and General Instrument Corporation (of Horsham, PE 19044)
09 Apr 11 vs. Microsoft Corporation (of Redmond, WA 98052)
page R-6 FOSS Patents reacted to this ITC complaint on the following day and later mentioned the ITC's decision to launch an investigation.

In terms of examples of specifically accused products, the complaint names "the 250 GB Xbox 360 S and the 4 GB Xbox 360 S."
Asserted patents (in order of appearance in documents filed with the ITC)
asserted by Motorola in original complaint

6,980,596 ("596") Macroblock level adaptive frame/field coding for digital video content
7,162,094 ("094") Frequency coefficient scanning paths for coding digital video content
5,319,712 ("712") Method and apparatus for providing cryptographic protection of a data stream in a communication system
5,357,571 ("571") Method for point-to-point communications within secure communication systems
6,069,896 ("896") Capability addressable network and method therefor
The asserted patents were also asserted by Motorola in a complaint in the Western District of Wisconsin (case no. 3:10-cv-00700).

http://fosspatents.blogspot.com United States District Court for the Western District of Wisconsin
Twitter: @FOSSpatents Case no. 3:10-cv-00826 -- complaint filed on 23 December 2010 --
transferred in April 2011 to the United States District Court for the Western District of Washington --
Case no. 2:11-cv-00595
Motorola Mobility, Inc. (of Libertyville, IL 60048)
On April 1, the Wisconsin court ordered the transfer to Washington, where it was entered on April 8.
For the '580, '358 and '220 patents, Motorola accuses "the Kinect Gaming System" as well as "the individual components of the Kinect
Gaming System, including without limitation the Kinect sensor device, the Xbox 360 S, Xbox 360 Core, Xbox 360 Pro/Premium, Xbox
360 Elite, Xbox 360 Arcade." For the '931 and '583 patents, Motorola accuses "various models of the Xbox 360, including without
limitation the Xbox 360 Core, Xbox 360 Pro/Premium, Xbox 360 Elite, Xbox 360 Arcade, and Xbox 360 S."
For all five patents asserted in its counterclaims, Microsoft accuses slightly different lists of Android-based smartphones. For the '642
patent, Microsoft additionally accuses "Motorola network router products, including at least the Motorola Mesh Wide Area Network AP
7181 and the Motorola CPEi150." A matrix below the list of asserted patents shows the relationship between Microsoft's patents-in-suit
and the accused products.
material Case no. 3:10-cv-00826 -- complaint filed on 23 December 2010 --
transferred in April 2011 to the United States District Court for the Western District of Washington --
as per Case no. 2:11-cv-00595 -- continued from previous page
09 Apr 11
Asserted patents (each list in order of appearance in documents filed with the court)
page R-7 asserted by Motorola in original complaint

6,992,580 ("580") Portable communication device and corresponding method of operation
7,106,358 ("358") Method, system and apparatus for telepresence communications
6,686,931 ("931") Graphical password methodology for a microprocessor device accepting non-alphanumeric user input
On 09 December 2010, Motorola already asserted this patent in a different complaint filed with the same court
(case 3:10-cv-00700) and announced that it would seek dismissal without prejudice of the related claims there.
On 18 January 2011, Motorola filed a second amended complaint in Wisconsin to drop the patent there.
additionally asserted by Motorola in 1st amended complaint (14 February 2011)

7,088,220 ("220") Method and apparatus using biometric sensors for controlling access to a wireless communication device
5,738,583 ("583") Interactive wireless gaming system
asserted by Microsoft in 19 January 2011 answer to original complaint

6,374,276 ("276") Handheld computing device with external notification system
7,454,718 ("718") Browser navigation for devices with a limited input system
6,822,664 ("664") Browser navigation for devices with a limited input system
© 2010, 2011 by Florian Mueller 7,421,666 ("666") Browser navigation for devices with a limited input system
6,256,642 ("642") Method and system for file system management using a flash-erasable, programmable, read-only memory
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Microsoft Vs Motorola 11.04.09

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Microsoft Vs Motorola 11.04.09

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Microsoft

Allegedly infringing products

asserted by Microsoft in original (as well as first amended) complaint

United States District Court for the Western District of Washington

as per Microsoft Corporation (of Redmond, WA 98052)

United States District Court for the Southern District of Florida

asserted by Motorola in original complaint

as per 03 07 10 ing 1 ail

Microsoft counterclaims (23 December 2010 answer to original complaint)

Asserted patents (in order of appearance in the court filing)

Allegedly infringing products

asserted by Microsoft on 25 January 2011 as part of counterclaims in answer to amended complaint

Allegedly infringing products

additionally asserted by Motorola in 1st amended complaint

Allegedly infringing products

asserted by Motorola in original complaint

© 2010, 2011 by Florian Mueller

Allegedly infringing products

page R-7 asserted by Motorola in original complaint

additionally asserted by Motorola in 1st amended complaint (14 February 2011)

asserted by Microsoft in 19 January 2011 answer to original complaint

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