and Microsoft are members of the standard setting organisations Institute of
Electrical and Electronics Engineers ("IEEE") and the International
Telecommunication Union ("ITU"). Motorola owns numerous patents that
are essential to the IEEE 802.11 wireless local area network ("WLAN")
Standard ("802.11 Standard") and the ITU H.264 advanced video coding
technology standard ("H.264 Standard").
The Patent Holder will grant [or is prepared to grant] a license under reasonable rates to an unrestricted number of applicants on a worldwide, non-discriminatory basis with reasonable terms and conditions to comply with the [Proposed] IEEE Standard.Similar letters were issued to ITU in connection with the H.264 Standard. Microsoft makes use these standards in some of its products, notably the XBox.
Subsequently the District Court, and the 9th Circuit Court on appeal, held that Motorola’s letters of assurance constituted a contract with the standard setting organizations that barred Motorola from seeking injunctive relief based on its standard essential patents. Microsoft was a third party beneficiary entitled to rely on these contracts (Microsoft Corp. v Motorola, Inc.,Motorola Mobility, Inc., and Gen. Instrument Corp, 696 F.3d 872 ).