Apple files to put Motorola suits on hold until Google completes acquisition
As noted by Florian Mueller of FOSS Patents, Apple filed motions to stay for a lawsuit brought by Motorola against it in the southern District of Florida and for a separate suit that the company filed against Motorola in the Western District of Wisconsin.
Apple's lawyers argue that Motorola has ceded control over its patents to Google in its merger agreement. As such, the company argues that Motorola lacks the standing to sue.
The Cupertino, Calif., company asserts that it shouldn't have to spend resources litigating claims against a party that is no longer able to enforce its patents. "Apple should not have to face the threat of an injunction based on the claims of a party that now has no standing to bring those claims," the filing reads.
Even if Apple to successfully defended itself in Motorola's case against it before the acquisition goes through, the case could potentially be reopened by Google after the merger. Thus, Apple argues that it "should not be required to litigate this case only to reach a result that may well be overturned on appeal due to the absence of prudential standing," which refers to court-dictated criteria that establishes the right to sue.
"[W]ere Apple to prevail in this case, it risks an attack on its victory on appeal by a third party, whether Google or another Android smartphone manufacturer, contending that the judgment should be overturned due to a lack of prudential standing."
The filing pointed to Google's acquisition of Motorola, announced in August, as "one of the most significant transactions in the technology industry," referring specifically to comments by company executives that described the deal as an effort to "protect" the Android ecosystem.
"To further its pending acquisition by Google, Motorola has surrendered critical rights in the patents-in-suit, such that Motorola no longer has prudential standing to pursue this action. According to the publicly-filed Merger Agreement, Motorola has ceded control of the most basic rights regarding the patents-in-suit," Apple wrote.
The document went on to note that Motorola cannot, without Google's consent, sue for infringement of its patents in any new action, settle pending litigation that would require a license to any of its patents, license or sublicense is patents except in limited circumstances relating to the sale of Motorola's products, assign its rights in its patents and/or grant a covenant not to sue for infringement of its patents.
Motorola's response to the motion is due shortly. If the motion were successful, it would only put a hold on the two aforementioned cases between the companies. A second case in Wisconsin is currently stayed while awaiting the results from ITC investigations from both parties.
Meanwhile, Apple is hoping for a third case in Wisconsin to continue because it relates to claims that Motorola is not providing fair, reasonable and non-discriminatory licenses to standards-related agents. Mueller notes that Apple's efforts to pause its other cases with Motorola could be an attempt to buy time for this FRAND case, which could affect the other cases.
Motorola's complaint against Apple with the ITC is currently stayed because the Administrative Law Judge in charge of the investigation recently retired. Finally, hearings for Apple's ITC case against Motorola are set to begin in two weeks, with an initial determination scheduled for the end of November.
The cases involve numerous patents being asserted against each other, mainly centering around wireless and smartphone technologies.