Judge James L. Robart of the U.S. District Court for the Western District of Washington in Seattle, recently sided with Microsoft concerning more than a handful of patent claims. The case, between Microsoft and Google owned Motorola Mobility, involved a series of patents that all have to do with the encoding and decoding of digital video content.
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In case you’re into this kind of thing, the specific patents affected by this ruling are the following:
Microsoft effectively petitioned that the patents in question be overlooked because of a specific U.S. law specification. The specification calls for the classification of patents to be presented in a “full, clear, and concise” manner. Microsoft argued that the “means for decoding” and the “means for using” certain aspects of the patent were uncertain.
Robart made his decision on Wednesday, February 6th, naturally after hearing Microsoft’s case. His decision is clearly in Microsoft’s favor, and invalidates 13 separate patent claims that Motorola brought forth.
To better understand Robart’s decision, we’ve snatched up a portion of his order and included it below. If you would like to see the full copy of Judge Robart’s order, check out the source link.
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. Were that the case, any means-plus-function limitation could be saved 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. The specification needs to provide a decoding algorithm from which to base the understanding of one skilled in the art, and the court can find no such algorithm within the specification. 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.
As it would turn out, there are still more patent claims waiting to see a ruling, which incorporate these same three digital media patents. Perhaps, Motorola got a little out of control when filing for patent claim injunctions?
Oh, such is the beauty of the legal world. That was complete sarcasm of course, there really isn’t any beauty in this kind of thing.
Florian Mueller, of FOSS Patents’, predicted early Thursday, just after the latest ruling, that these additional claims will be denied too.
Most patent claims are actually invalidated for anticipation (lack of novelty) or obviousness (lack of inventive step over the prior art). 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.
According to Mueller, even if the court rules in Motorola’s favor and actually agrees that Microsoft infringed on the related patents, the latter company can still license the patents under FRAND terms. Essentially, these are fair, reasonable and nondiscriminatory terms that require the involved parties to agree on licensing for the affected patents.