Motorola wins Apple wireless patent fight in Germany

A German court has ruled in Motorola Mobility's favour in a patents dispute with Apple.

The Android smartphone maker had complained that Apple failed to license one of its wireless intellectual properties.

Apple uses the technology in its iPhones and 3G iPads.

Although this may not be the final ruling in the case, Motorola could now demand Apple remove the feature from its devices or halt sales in Germany.

Motorola said the ruling validated its "efforts to enforce its patents against Apple's infringement".

Apple has not commented on the news, but company watchers said it was likely to appeal and ask that any injunction be delayed pending the verdict.

The case is set to result in a legal clash between Android's maker, Google, and Apple since Motorola's shareholders have approved the search giant's takeover of their company.

The case relates to Motorola's patent for a "method for performing a countdown function during a mobile-originated transfer for a packet radio system".

Motorola licenses this patent to others on Frand (fair, reasonable and non-discriminatory) terms.

The owner of a Frand-type patent is obligated to license out its technology to third-parties because the invention has been declared to be essential to an industry standard.

Apple had offered to pay a Frand-set fee going forward and was willing to pay a similar rate for past infringements. But it lost the case because it tried to retain the right to contest the validity of the patent with a view to past damages.

It tried to do this because Motorola had defended its right to charge an above-Frand rate for Apple's use of its technology over the past four years. This could have been many times higher than the rate Apple was willing to pay and potentially very expensive.

Motorola will have to post a 100m euro (£85m; $133m) bond if it wishes to enforce a sales injunction against Apple. The cash would cover compensation to Apple if the ruling was later overturned.

Motorola welcomed the ruling.

"We will continue to take all necessary steps to protect our intellectual property, as the company's patent portfolio and licensing agreements with companies both in the US and around the world are critical to our business," said Scott Offer, senior vice-president and general counsel of Motorola Mobility.

"We have been negotiating with Apple and offering them a reasonable royalty rate since 2007, and hope to resolve our global patent dispute as soon as practicable."

Apple could not be reached for comment.

Patent watchers says this will not be the end of the affair.

"This is really a given between such large players in high stakes disputes," said Florian Mueller, a patent consultant who revealed the court's verdict on his blog.

"In Germany you get a first ruling by a regional court rather quickly - this litigation started in April this year. Usually between companies of this stature the disputes go to the higher regional court and that could take a couple of years," Mr Mueller told the BBC.

Mr Mueller advises Microsoft and others and has campaigned for patent reform in Europe.

He said Apple could try to revise its products, but noted that Frand-type patents were, by their nature, hard to work around. He added that doing so could run the risk of causing communication problems with the mobile networks' equipment.

Although Apple is on the receiving end of this lawsuit it has also been very active in the courts suing HTC, Samsung and Motorola among others for claimed patent infringements.

It temporarily managed to have Samsung's tablets banned from sale in Australia, although the restriction was overturned earlier today.

The US International Trade Commission is expected to rule on its dispute with Taiwanese smartphone maker HTC on 14 December. The judgement could lead to shipments of HTC's products being blocked in the US.

Although the targets of Apple's lawsuits are often firms which use Google's Android software, the two firms have avoided suing each other. That is set to change when Google's takeover of Motorola Mobility is completed early next year.

"Google with its pending acquisition will be watching this case with great interest as any victory is an endorsement of Motorola's patent portfolio that it is seeking to acquire," said Ben Cross, director of research at the telecoms consultancy CCS Insight.