Maureen O'Gara

Google's bid for an injunction halting the sale of Microsoft products based on Motorola Mobility's standard-essential patents (SEPs) has failed.

A federal judge in Seattle last Thursday said the SEPs, which in this case cover video decoding, can't be used for injunctions.

He's the same judge that wouldn't let Motorola enforce its German injunction against Microsoft's Xbox, Windows 7 et al for the same reason. That order - already upheld by a US appeals court - has been reaffirmed in this latest "worldwide" decision.

Judge James Robart said monetary damages for any infringement are enough of a remedy.

His summary judgment found that "Motorola's obligation to grant such a RAND (reasonable and non-discriminatory) license to Microsoft far preceded the onset of this litigation, meaning that at all times during this litigation, the issue was not if, but when and under what terms, a license agreement would be established between Microsoft and Motorola. Thus, because Motorola has always been required to grant Microsoft a RAND license agreement for its H.264 standard essential patents, as a matter of logic, the impending license agreement will adequately remedy Motorola as a matter of law."

The judge also held that Motorola "has not shown it has suffered an irreparable injury or that remedies available at law are inadequate to compensate for its injury" since "Microsoft will pay [court-decided] royalties under any license agreement from the time of infringement within the statute of limitations."

Judge Robart, who is expected to decide the amount of the royalty early next year, came to kind of the same conclusion as Judge Richard Posner in an earlier Apple-Samsung case. Posner basically said that someone who makes a FRAND promise can never ask for more than monetary compensation but that was without a license agreement in the offing.

Google has said it spent $12.5 billion buying Motorola Mobility for its patents and has demanded Microsoft pay a royalty of 2.25% of the retail price of each product, which Microsoft reckons would amount to an over-the-top $4 billion a year.

Like Apple, it has refused to license Motorola's SEPs on terms that aren't FRAND and sued Motorola for breach of contract. Robart has already ruled that Motorola had a contractual obligation to license its SEPs on fair terms.

Judge Robart made his decision "without prejudice" but the only way Google can reopen the issue is if the circumstances change. Presumably Google will appeal.