''Motorola Mobility v. Apple Inc.'' was one of a series of

lawsuit A lawsuit is a proceeding by one or more parties (the plaintiff or claimant) against one or more parties (the defendant) in a civil court of law. The archaic term "suit in law" is found in only a small number of laws still in effect today ...

s between technology companies

Motorola Mobility Motorola Mobility LLC, marketing as Motorola, is an American consumer electronics manufacturer primarily producing smartphones and other mobile devices running Android (operating system), Android. It is a wholly owned subsidiary of the Chinese te ...

and Apple Inc. In the year before Apple and Samsung began suing each other on most continents, and while Apple and High Tech Computer Corp. (HTC) were already embroiled in a patent fight, Motorola Mobility and Apple started a period of intense

patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an sufficiency of disclosure, enabling discl ...

litigation. The Motorola-Apple patent imbroglio commenced with claims and cross-claims between the companies for

patent infringement A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A ...

, and encompassed multiple venues in multiple countries as each party sought friendly forums for litigating its respective claims; the fight also included

administrative law Administrative law is a division of law governing the activities of government agency, executive branch agencies of government. Administrative law includes executive branch rulemaking (executive branch rules are generally referred to as "regul ...

rulings as well as United States International Trade Commission (ITC) and

European Commission The European Commission (EC) is the primary Executive (government), executive arm of the European Union (EU). It operates as a cabinet government, with a number of European Commissioner, members of the Commission (directorial system, informall ...

involvement. In April 2012, the controversy centered on whether a FRAND license to a components manufacturer carries over to an equipment manufacturer incorporating the component into equipment, an issue not addressed in the Supreme Court's default analysis using the exhaustion doctrine in '' Quanta v. LG Electronics''.Stern, Richard
Standardization Skullduggery Never Ends: Apple v. Motorola
, IEEE Micro, ipv6.ppk.itb.ac.id, 2012-3/4, B2-9mmi2012020003.3d 10/3/012 16:48 p. 3. Accessed 2012-4-13. Stern cites
Quanta Computer, Inc. v. LG Electronics, Inc.
', 128 S. Ct. 2109, 2008; accessed 2012-4-13. The ''Quanta'' case cited the 150-year-old doctrine of patent exhaustion which limits patent rights that survive the initial authorized sale of a patented item. In June 2012, appellate judge

Richard Posner Richard Allen Posner (; born January 11, 1939) is an American legal scholar and retired United States circuit judge who served on the U.S. Court of Appeals for the Seventh Circuit from 1981 to 2017. A senior lecturer at the University of Chicag ...

dismissed the U.S. case with

prejudice Prejudice can be an affect (psychology), affective feeling towards a person based on their perceived In-group and out-group, social group membership. The word is often used to refer to a preconceived (usually unfavourable) evaluation or classifi ...

and the parties appealed the decision a month later.

Motorola Mobility's suits

In early October 2010, Motorola Mobility filed a

complaint In legal terminology, a complaint is any formal legal document that sets out the facts and legal reasons (see: cause of action) that the filing party or parties (the plaintiff(s)) believes are sufficient to support a claim against the party ...

with the ITC against Apple alleging patent infringement.''Motorola Mobility, Inc. v. Apple Inc.'', ''In the Matter of Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof'', ITC Inv. No. 337-TA-745, 2010-10-6. The complaint allegations concerned six Motorola patents, and sought remedies of a court-ordered bar on U.S. imports of infringing products, and an

injunction An injunction is an equitable remedy in the form of a special court order compelling a party to do or refrain from doing certain acts. It was developed by the English courts of equity but its origins go back to Roman law and the equitable rem ...

prohibiting Apple from importing, marketing and distributing infringing products. The ITC instituted its investigation a month later and Motorola subsequently dropped its patent claims with respect to two of the six patents at issue.Form 10-K Annual Report
Motorola Mobility, Inc., 2012-2-17, pp 37-38. Motorola also filed two complaints for patent infringement against Apple in the U.S. District Court for the Northern District of Illinois (Illinois Complaints), and another complaint for patent infringement against Apple in the U.S. District Court for the Southern District of Florida (Florida Complaint). Both complaints alleged Apple infringed 18 Motorola patents. In November 2010, Motorola voluntarily dismissed the Illinois Complaints, (asserted as

counterclaim In a court of law, a party's claim is a counterclaim if one party asserts claims in response to the claims of another. In other words, if a plaintiff initiates a lawsuit and a defendant responds to the lawsuit with claims of their own against t ...

s in the actions brought by Apple on October 29, 2010, in the U.S. District Court for the Western District of Wisconsin). Later that November, Apple also filed counterclaims in the Southern District of Florida, alleging Motorola infringed six Apple patents in manufacturing and selling

mobile device A mobile device or handheld device is a computer small enough to hold and operate in hand. Mobile devices are typically battery-powered and possess a flat-panel display and one or more built-in input devices, such as a touchscreen or keypad. ...

set-top box A set-top box (STB), also known as a cable converter box, cable box, receiver, or simply box, and historically television decoder or a converter, is an information appliance device that generally contains a Tuner (radio)#Television, TV tuner inpu ...

es and digital video recorders. Additionally, in October 2010, Motorola filed a complaint for a

declaratory judgment A declaratory judgment, also called a declaration, is the legal determination of a court that resolves legal uncertainty for the litigants. It is a form of legally binding preventive by which a party involved in an actual or possible legal ma ...

against Apple and

NeXT NeXT, Inc. (later NeXT Computer, Inc. and NeXT Software, Inc.) was an American technology company headquartered in Redwood City, California that specialized in computer workstations for higher education and business markets, and later develope ...

Software, Inc. in the U.S. District Court in Delaware, seeking a ruling that Motorola did not infringe any claim of twelve patents owned by Apple and NeXT. In response, in early December 2010, Apple asserted these twelve patents against Motorola, Inc. and Motorola Mobility, Inc. in the Western District of Wisconsin and moved for a change of venue from Delaware to Wisconsin. Ultimately, both parties' patent assertions were subsequently transferred to the Northern District of Illinois. This led the way for Apple to take charge over Motorola, Samsung, LG, and many other cellular communications companies.

Apple's counter-suits

In late October 2010, Apple filed two complaints in the Western District of Wisconsin for patent infringement against Motorola, Inc. and Motorola Mobility, Inc. The complaints alleged Motorola infringed six patents and sought money damages and an injunction. In early November 2010, Motorola filed counterclaims against Apple alleging Apple infringed twelve Motorola patents which Motorola originally asserted in the Northern District of Illinois. The Western District of Wisconsin transferred the actions to the Northern District of Illinois and trial was scheduled for June 2012 on six Apple patents and three Motorola Mobility patents. Also in late October 2010, Apple filed a complaint with the ITC for patent infringement against Motorola, Inc. and Motorola Mobility, Inc. Apple's complaint alleged Motorola infringed three Apple patents with Motorola's mobile devices offered in the U.S.. Apple's complaint sought a court order barring imports of those devices and sought an injunction prohibiting Motorola from engaging in further activities related to the same mobile devices. The ITC began investigation in late November 2010; in mid-January 2012, the

Administrative Law Judge An administrative law judge (ALJ) in the United States is a judge and trier of fact who both presides over trials and adjudicates claims or disputes involving administrative law, thus involving administrative units of the executive branch of go ...

(ALJ) found no violation by Motorola for the three asserted Apple patents; Apple filed a petition to review the ALJ's findings but the ALJ ultimately ruled for Motorola and against Apple in mid-March 2012.Campbell, Mikey
Final ITC ruling clears Motorola of Apple patent infringement
appleinsider.com, 2012-3-17. See also th
ITC's ruling
in the case ''Apple v. Motorola'', 337-TA-750, 2012-3-16. In mid-March 2011, Apple filed counterclaims against Motorola in the ITC proceeding (which was subsequently removed to the Western District of Wisconsin court), and instituted a new action in the Western District of Wisconsin, ''Apple Inc. v. Motorola Mobility, Inc.'', alleging that Motorola breached standards commitments (see Context, below), with counterclaims including equitable estoppel, waiver, breach of contract, violation of Section 2 of the Sherman Antitrust Act,

unfair competition Anti-competitive practices are business or government practices that prevent or reduce competition in a market. Antitrust laws ensure businesses do not engage in competitive practices that harm other, usually smaller, businesses or consumers. ...

and interference with contract. Apple sought declaratory judgments that Motorola's license terms involving standards-essential patents were unreasonable and discriminatory, that Motorola was not entitled to injunctive relief, and that Motorola committed patent misuse. This led the way for Motorola to take over Apple in the military industry, because they were hired to work for the US government.

Context

Components manufacturers and major patent holders such as Motorola and

Samsung Samsung Group (; stylised as SΛMSUNG) is a South Korean Multinational corporation, multinational manufacturing Conglomerate (company), conglomerate headquartered in the Samsung Town office complex in Seoul. The group consists of numerous a ...

commit to licensing their standards essential patents to other industry participants through their participation in standard-setting organizations (SSOs), while other industry participants negotiate licenses to use those patents, including manufactures and sellers of

smartphone A smartphone is a mobile phone with advanced computing capabilities. It typically has a touchscreen interface, allowing users to access a wide range of applications and services, such as web browsing, email, and social media, as well as multi ...

s and tablets. North American technology companies' treatment in the marketplace of their respective products and mobile

operating system An operating system (OS) is system software that manages computer hardware and software resources, and provides common daemon (computing), services for computer programs. Time-sharing operating systems scheduler (computing), schedule tasks for ...

s (OSs) spans the spectrum from completely proprietary systems to

open-source license Open-source licenses are software licenses that allow content to be used, modified, and shared. They facilitate free and open-source software (FOSS) development. Intellectual property (IP) laws restrict the modification and sharing of creative ...

systems: Apple and RIM manufacture and sell products that run on only their respective proprietary mobile OSs;

Microsoft Microsoft Corporation is an American multinational corporation and technology company, technology conglomerate headquartered in Redmond, Washington. Founded in 1975, the company became influential in the History of personal computers#The ear ...

licenses its proprietary mobile OSs, (

Windows Phone Windows Phone (WP) is a discontinued mobile operating system developed by Microsoft Mobile for smartphones as the replacement successor to Windows Mobile and Zune. Windows Phone featured a new user interface derived from the Metro design languag ...

and

Windows Mobile Windows Mobile is a discontinued mobile operating system developed by Microsoft for smartphones and personal digital assistants (PDA). Designed to be the portable equivalent of the Windows desktop OS in the emerging Mobile device, mobile/port ...

), to non-affiliated wireless handset original equipment manufacturers (OEMs); and

Google Google LLC (, ) is an American multinational corporation and technology company focusing on online advertising, search engine technology, cloud computing, computer software, quantum computing, e-commerce, consumer electronics, and artificial ...

sponsors Android, an open-source mobile OS it distributes free to OEMs.DOJ
Competitive Landscape
U.S. Dept. of Justice, justice.gov, 2012-2-13. Accessed 2012-4-13. All these OSs provide platforms for software application developers as well as for a variety of products and services offered by competing product manufacturers. Such products in turn rely on, and their patent holders commit to, SSOs' rules for both standards essential patents disclosure and reasonable and non-discriminatory licensing (FRAND) grants for compatibility and interoperability of devices. This led the way for Apple to take charge over Motorola, Samsung, LG, and other cellular communications companies.

Further developments

In March and April 2011, Motorola filed patent infringement complaints in the court in

Mannheim Mannheim (; Palatine German language, Palatine German: or ), officially the University City of Mannheim (), is the List of cities in Baden-Württemberg by population, second-largest city in Baden-Württemberg after Stuttgart, the States of Ger ...

, Germany, alleging that Apple Retail Germany GmbH, Apple Sales International, and Apple Inc. infringed three of Motorola Mobility's patents, two of which are standards-essential patents. In December 2011 and February 2012, the court in Mannheim, Germany found that Apple products infringed two of the three Motorola Mobility patents, one standards-essential and one non-essential, and granted injunctions. Between May and December 2011, Apple filed patent infringement suits in

Munich Munich is the capital and most populous city of Bavaria, Germany. As of 30 November 2024, its population was 1,604,384, making it the third-largest city in Germany after Berlin and Hamburg. Munich is the largest city in Germany that is no ...

Düsseldorf Düsseldorf is the capital city of North Rhine-Westphalia, the most populous state of Germany. It is the second-largest city in the state after Cologne and the List of cities in Germany with more than 100,000 inhabitants, seventh-largest city ...

and Mannheim, Germany alleging that Motorola infringed Apple's utility and design patents. Apple asserted the design patents against Motorola's tablet products. In mid-February 2012, the Munich court found that a Motorola smartphone unlock feature infringed one of the Apple utility patents,Compare

utility model A utility model is a patent-like intellectual property right to protect inventions. This type of right is available in many countries but, notably, not in the United States, United Kingdom or Canada. Although a utility model is similar to a patent ...

to a utility patent. and granted an injunction. Five days prior to the Munich court decision, Apple sued Motorola in the U.S. District Court for the Southern District of California.''Apple, Inc. and Apple Sales International v. Motorola Mobility, Inc.'', case 12CV0355 JLS BLM, U.S. Dist. Ct., S.D. Cal., 2012-2-10. Apple's complaint sought a declaratory judgment and injunction based on an alleged breach of contract by Motorola, and alleged that Apple is a third party beneficiary under a patent licensing agreement between Motorola Mobility, Inc. and

Qualcomm Qualcomm Incorporated () is an American multinational corporation headquartered in San Diego, California, and Delaware General Corporation Law, incorporated in Delaware. It creates semiconductors, software and services related to wireless techn ...

, Inc., and thus in reliance on that contract. Apple alleged that Motorola's rights under two patents it asserted against Apple in Germany were already exhausted under the licensing agreement and asked the court to enjoin Motorola from prosecuting and enforcing its claims against Apple in Germany. In February 2012, the

Directorate-General for Competition Within the European Union (EU), Directorates-General are departments with specific zones of responsibility. Within the European Commission specifically, Directorates-General are the equivalent of national-level ministries. Most are headed by a ...

of the

sent Motorola notice that the commission received a complaint by Apple on the enforcement of Motorola's standards-essential patents against Apple, allegedly in breach of Motorola's FRAND commitments. Apple's complaint sought the commission's intervention with respect to standards-essential patents.

References

{{Improve categories, date=June 2023 Apple Inc. litigation United States administrative case law United States computer case law United States contract case law United States patent case law United States district court cases Smartphone patent wars Motorola Law articles needing an infobox