Motorola Patent Claims Against Microsoft Invalid: Says US Judge
February 8, 2013

Motorola Patent Claims Against Microsoft Invalid: Says US Judge

Michael Harper for — Your Universe Online

Yesterday, US Judge James Robart found that more than a dozen patent claims being lobbied against Microsoft by Motorola are invalid. This decision now narrows the lawsuit between these 2 tech titans and earns a slight win in the overall battle for Redmond, Washington-based software giant.

Judge Robart´s decision leaves only 3 valid patent claims in the case, each of which pertains to the H.264 video codec and bears the consecutive numbers: 7,310,374, 7,310,375 and 7,310,376.

These patents have been invalidated due to the indefiniteness of the means-plus-function claims. Microsoft had argued that the phrases “means for decoding” and “means for using” in the patent descriptions mean different things and, therefore, these patents should be deemed as invalid.

Judge Robart, ruling from the Western District Court in the state of Washington, agreed with Microsoft.

“Finally, as stated, decoding and encoding are entirely different functions. Thus, even were a person of ordinary skill in the art able to devise an algorithm for decoding the function from the disclosed encoding description, that alone does not rescue the disputed means limitations from indefiniteness by an expert's testimony that he or she could have written computer code to perform the recited function based on unrelated disclosures in the specification,” wrote Judge Robart in his ruling, according to Cnet.

“Instead, the "means for decoding" limitations claim all corresponding structure under the sun by expansively defining the function in the specification as anything that decodes digital data. This definition renders the "means for decoding" limitation invalid for indefiniteness,” Judge Robart wrote.

According to FOSS Patents Blog writer Florian Mueller, neither Microsoft nor Motorola disputed Judge Robart´s ruling that these claims had “means-plus-function” elements. According to Mueller, these patents are considered indefinite if the patent descriptions don´t provide enough clarity to distinguish the two.

In other words, in each of these suits involving computer- and tech-related patents, these descriptions need to offer up specific algorithms used in order to be clear on what the patents cover. Judge Robart didn't find these specific algorithms mentioned and, therefore, ruled them as invalid.

Mueller also believes that the remaining 3 patents concerning the H.264 video codec are also at risk of becoming invalidated for reasons other than indefiniteness.

“Most patent claims are actually invalidated for anticipation (lack of novelty) or obviousness (lack of inventive step over the prior art),” writes Mueller. “Such questions can be decided on summary judgment but most of the time are put before a jury, while indefiniteness is for a judge to decide.”

The two companies are currently squabbling over patents involving the H.264 video codec, Wi-Fi connectivity and a syncing technology.

Microsoft started the fight, claiming that Google´s Motorola had been violating their ActiveSync Technology. Motorola returned fire, claiming the Microsoft´s Xbox 360 unfairly uses their H.264 codecs and Wi-Fi patents. Currently, the two companies are stuck in a battle to decide how much they should pay one another in royalties to use these patents.

Judge John Robart will preside over this case and will become the first federal judge to determine a royalty rate to be paid to other companies.