[Ip-health] Recent compulsory licenses for Toyota and Microsoft

[James Love]

Earlier I posted a note about the recent DirectTV compulsory
licensing case. (http://lists.essential.org/pipermail/ip-health/2006-
November/010193.html)  Here are two more recent US compulsory
licenses on patents, one involving Toyota and another involving
Microsoft.  All three cases involve implementation of the new
standard for granting injunctions injunctive under the eBay case
(eBay Inc. v. MercExchange,
L.L.C., 126 S. Ct. 1837, 1839-1841 (U.S. 2006))

    Jamie

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The Toyota compulsory license of three Paice patents

Paice LLC v. Toyota Motor Corp.
Order:  http://www.fr.com/news/2006/Oct/Paice%20LLC%20v.%20Toyota%
20Motor%20Corp.pdf
16 August 2006

This case involves three patents owned by Paice LLC, which were
infringed by Toyota, in its hybrid vehicles, such as the Prius or
Highlander.   US District Court Judge David Folsom (Easter District
of Texas Marshall Division) denied a request for an injunction, in
lieu of a compulsory license equal to $25 per vehicle.

 From the order:

"Plaintiff's losses from Defendant's sales of infringing products can
be remedied via monetary damages in accordance with the reasonable
royalty set by the jury."
...
"The infringed claims relate to the hybrid transmissions of the
accused vehicles, but form only a small aspect of the overall
vehicles. The jury's damages award also indicates that the infringed
claims constitute a very small part of the value of the overall
vehicles. The jury, based on the entire record, determined an
appropriate reasonable royalty rate that can be easily calculated on
future sales of the accused devices thereby removing uncertainty from
future damages calculations."

**********************
Microsoft's compulsory license to two z4 patents

Z4 Techs., Inc. v. Microsoft Corp.
June 14, 2006
Order:  http://www.fr.com/news/2006/Oct/z4_Denial-of-Permanent-
Injunction.pdf

 From the Order:

"z4 can be compensated for any harm it suffers in the way of future
infringement at the hands of Microsoft by calculating a reasonable
royalty for Microsoft's continued use of the product activation
technology.

"The Public Interest
"Microsoft's Windows and Office software products are likely the most
popular software products in the world. The vast majority of
computers sold, whether to individuals, businesses, governments, or
educational institutions, run on the Microsoft Windows operating
system and employ the Microsoft Office suite of software.

"Microsoft argues that the redesign of its Windows and Office
products would undoubtedly effect certain sectors of the public.
Microsoft suggests that smaller computer manufacturers (called system
builders), retail sellers, and the consumers of both would be
effected if z4's proposed injunction were granted.

"Microsoft contends that the system builders would be harmed because
of the time, testing, and expense required for these manufacturers to
integrate a new release or re-release of Windows and Office products
to be used with their computer systems. Although it is likely that
changes to Windows or Office would not be significant enough to have
as dramatic of an effect on the system builders as Microsoft
proposes, such a re-release of the Microsoft products would likely
create a burden for these manufacturers.

"Furthermore, Microsoft contends that a redesign of its products
could result in the products being taken off the market for a short
period of time. Microsoft urges that such an absence from the market,
even if for only a week, would have a detrimental effect on the
retail sellers of its products as well as the retail consumers.

Commentary:
http://www.fr.com/news/articledetail.cfm?articleid=607


---------------------------------
James Love, CPTech / www.cptech.org / mailto:james.love@cptech.org /
tel. +1.202.332.2670 / mobile +1.202.361.3040

"If everyone thinks the same: No one thinks."  Bill Walton"