In an unexpected move, Google’s Motorola Mobility withdrew its second ITC complaint against Apple Tuesday, FOSS Patents reported. Motorola’s decision to withdraw comes just two weeks after the ITC announced that it would formally investigate Motorola’s complaints against the Cupertino device maker.
Under 19 C.F.R. § 210.21(a), Complainants Motorola Mobility LLC, Motorola Mobility Ireland, and Motorola Mobility International Limited (collectively, 'Motorola') hereby move to terminate all claims in this investigation without prejudice based on Motorola's withdrawal of the complaint, with Motorola and Apple each bearing their own costs and attorneys' fees. There are no agreements between Motorola and Apple, written or oral, express or implied, concerning the subject matter of this investigation. Respondent Apple Inc. and the Office of Unfair Import Investigations Staff Attorney have confirmed that they do not oppose this motion.
The withdrawn ITC complaint, Motorola’s second against Apple this year, concerned Motorola patents on voice control, location-based reminders, mobile video, and email notifications. Motorola asked the ITC to ban imports of all Apple products that use the allegedly infringing technologies, namely iPhones, iPads, and Macs.
On September 18, the ITC announced that it would formally investigate Motorola’s charges. The bar for initiating an investigation is relatively low, and the ITC’s decision to do so did not indicate that Motorola was heading for a victory, but it did suggest that Motorola’s allegations were not outside the realm of possibility.
It was therefore surprising to see Motorola withdraw its complaint Tuesday. As explained by FOSS Patents’ Florian Mueller, withdrawing a complaint is not unusual, but doing so without prejudice and in the absence of an outside settlement is indeed odd:
The simplest explanation for a motion like the above would be a global settlement deal between the parties. But dismissals in such situation are usually with prejudice. Also, note the passage saying that “there are no agreements between Motorola and Apple, written or oral, express or implied, concerning the subject matter of this investigation". The ITC has strict requirements that settlements must be disclosed to it in full detail. The ITC requires parties to make truthful representations in that regard.
Judge Theodore Essex (via GW Law)
Another explanation for Motorola’s decision to withdraw its complaint is the appointment of Administrative Law Judge Theodore Essex to oversee the investigation. Judge Essex, who is also handling Microsoft’s ITC complaint against Motorola, is known for being hard on complainants. It is therefore possible that Motorola weighed the chances and benefits of victory against a drawn out and difficult investigation and decided to drop the matter entirely.
Motorola was also having difficulty acquiring all the documents related to its patents, and may not have been able to find and certify all necessary documentation. In the event of this possibility, Motorola could refile its complaint once its paperwork is in order.
Finally, there is a remote possibility that Motorola’s withdrawal is a sign of good faith as Google and Apple attempt to approach a rumored settlement. As Mr. Mueller suggests, however, this is not a likely reason: “I think it’s more likely than not that Google identified some reasons for which this complaint was unlikely to succeed at the ITC, and that its overall fight with Apple is continuing as usual.”
As of now, there is no clear explanation for Motorola’s unusual decision. We will continue to monitor the situation and report on any developments.