Judge Invalidates 13 Motorola Patent Claims Against Microsoft

Patents related to with encoding and decoding digital video content.

A judge has invalidated 13 patent claims from Google-owned Motorola against software giant Microsoft.

Judge James L. Robart of the U.S. District Court for the Western District of Washington in Seattle issued the decision. The claims referred to three patents (U.S. Patent No. 7,310,374, U.S. Patent No. 7,310,375 and U.S. Patent No. 7,310,376), which all pertain to encoding and decoding digital video content.

Microsoft told the court that the "means for decoding" and the "means for using" elements related to the 13 patents should be ruled as invalid due to a U.S. patent law specification.

"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," said Robart.

"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."

Motorola, which has demanded over $100 million from Microsoft over its patent lawsuits, has previously been refused a ban on the Xbox 360 and Windows in the United States and Germany.

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