Apple and Microsoft claim Google ignoring FTC decree
Apple and Microsoft have accused Google of failing to meet the terms of a decree issued by the US Federal Trade Commission (FTC) limiting when it can block access to standard-essential patents (SEPs).
Google signed an agreement with the FTC in January after a 19-month antitrust investigation found the company had been engaging in unfair competition by patent blocking.
The decree prevents Google from seeking injunctions against companies willing to license the company’s SEPs on fair, reasonable and non-discriminatory (FRAND) terms, and states that it must submit to a court or arbitrator in disputes over payment rates.
Under the terms of the agreement, Google must also offer a six-month negotiation period before seeking injunctions at federal courts or the US International Trade Commission.
In the week following the degree, Google withdrew two patent infringement claims against Microsoft over video coding technology used in smartphones and Xbox consoles.
But in a letter published on Friday, February 22, David Heiner, vice president & deputy general counsel at Microsoft’s corporate standards & antitrust group said: “Google has not withdrawn all of its pending injunctive relief actions based on FRAND-encumbered SEPs … even though these actions were filed against “willing licensees.”
Joshua Rosenkranz, partner at Orrick Herrington & Sutcliffe LLP, said on behalf of Apple that “Google's actions and public statements since the issuance of the FTC's complaint raise concerns that it has yet to get the message.”
“Google continues to pursue injunctive relief against Apple in federal court [and] continues to demand royalties … based on past licenses it negotiated while wielding the threat of injunction. Such licenses are the proverbial “fruit of the poisonous tree” and cannot be presumed FRAND,” he added.
Apple has asked the FTC to prohibit Google from seeking injunctive relief against third parties “unless they explicitly refuse to license the SEPs on FRAND terms”, and to ensure that the company uses the same royalty-free terms for all willing licensees.
Microsoft has asked the Commission to remove Google’s ability to invoke a defensive use provision “during ongoing litigation as to whether Google is complying with its FRAND commitment”.
25 letters have been submitted in response to the FTC and Google’s agreement. Earlier this month, Research in Motion and Ericsson urged the FTC to review patent licensing agreements on a case-by-case basis and not to use the Google decree as a template.
"A one-size-fits-all rule barring entities from seeking injunctions on their FRAND-encumbered SEPs would not always promote competition and consumer welfare," said Sarah Guichard, vice president of patents & standards at RIM.
John Moore, vice president and general counsel and John Flan, vice president of IPR & licensing at Ericsson, said the Commission “should carefully consider whether limits on injunctive relief are necessary to remedy actual competitive harm and whether such limits may reduce the value of standard-essential patents to the point that companies can no longer justify long-term investment in developing technology for open standards.”
National IP associations have also been critical of the FTC’s proposals: Geoffrey Manner, executive director of the International Center for Law & Economics said the FTC’s enforcement actions have "no proper grounding in antitrust law,” while Jeffrey Lewis, president of the American IP Law Association, said precluding Google from seeking injunctive relief contradicts patent owners’ First Amendment right to seek relief from the courts.
Google and the FTC did not immediately respond to requests for comment.
