13-08-02 Google's Opposition to Microsoft's Motion for Preliminary Injunction

8/22/2019 13-08-02 Google's Opposition to Microsoft's Motion for Preliminary Injunction

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLUMBIA

MICROSOFT CORPORATION

Plaintiff,

v.

UNITED STATES, U.S. DEPARTMENT OFHOMELAND SECURITY, et al.

Defendants,

and

MOTOROLA MOBILITY LLC

Proposed Intervenor-Defendant.

Case No. 1:13-cv-01063-RWR

OPPOSITION OF MOTOROLA MOBILITY LLC

TO MICROSOFTS MOTION FOR A PRELIMINARY INJUNCTION

August 2, 2013

Case 1:13-cv-01063-RWR Document 23 Filed 08/02/13 Page 1 of 48


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TABLE OF CONTENTS

page

I. INTRODUCTION ...............................................................................................................1II. FACTUAL BACKGROUND ..............................................................................................3III. ARGUMENT .......................................................................................................................9

A. Microsoft Has No Likelihood of Success ..............................................................101. Microsofts Claims Should Be Dismissed at the Threshold ......................11

(a) Microsoft Has Other Remedies ......................................................11(b) Microsofts Claims Are Not Ripe for Adjudication ......................15

2. Microsofts Claims Are Also Doomed On Their Substantive Merits ........16(a) Customs Decision That Microsoft Abandoned Its

Infringement Allegations Against The Use Of GooglesSynchronization Protocol Is Not Arbitrary And Capricious ..........17

(b) Microsofts Specific Indictments of CustomsDecisionmaking Are Off Base .......................................................21(i) ITC Infringement Evidence ...............................................21(ii) Burden of Proof..................................................................24(iii) Notice to Microsoft ............................................................25(iv) The Transition Period ........................................................26

B. Microsoft Faces No Prospect Of Irreparable Harm ...............................................281. There Is No Presumption of Irreparable Harm, Conclusive or

Otherwise ...................................................................................................292. Microsoft Remains Free to Seek Patent Infringement Damages

From Motorola ...........................................................................................323. An Injunction Is Not Necessary to Prevent Harm Because

Microsoft Can Seek Interim Relief from the ITC ......................................344. Microsofts Delay Rebuts Any Claim of Irreparable Harm .......................35

C. The Balance of Harms and Public Interest Favor Denying an Injunction .............36



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IV. CONCLUSION ..................................................................................................................39



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TABLE OF AUTHORITIES

Page

Cases

Am. Beverage Corp. v. Diageo N. Am., Inc.,No. 12-601, 2013 WL 1314598 (W.D. Pa. Mar. 28, 2013) .....................................................30

Am. Petroleum Inst. v. E.P.A.,683 F.3d 382 (D.C. Cir. 2012) .................................................................................................15

Am. Road & Transp. Builders Assn v. E.P.A.,865 F. Supp. 2d 72 (D.D.C. 2012) ...........................................................................................13

Ammex, Inc. v. United States,62 F. Supp. 2d 1148 (Ct. Intl Trade 1999) .............................................................................26

Amoco Production Co. v. Village of Gambell, AK,480 U.S. 531 (1987) .................................................................................................................30

Apple, Inc. v. Motorola, Inc.,869 F. Supp. 2d 901 (N.D. Ill. 2012) .......................................................................................36

Apple, Inc. v. Samsung Elecs. Co., Ltd.,678 F.3d 1314 (Fed. Cir. 2012)..........................................................................................33, 35

Apple Inc. v. Samsung Elecs. Co., Ltd.,695 F.3d 1370 (Fed. Cir. 2012)................................................................................................33

Beamon v. Brown,

125 F.3d 995 (6th Cir. 1997) ...................................................................................................14Biovail Corp. v. FDA,

519 F. Supp. 2d 39 (D.D.C. 2007) ...........................................................................................28

Block v. SEC,50 F.3d 1078 (D.C. Cir. 1995) .................................................................................................15

Bowen v. Massachusetts,487 U.S. 879 (1988) .................................................................................................................13

Brown v. Dist. of Columbia,888 F. Supp. 2d 28 (D.D.C. 2012) ...........................................................................................29

Chaplaincy of Full Gospel Churches v. England,454 F.3d 290 (D.C. Cir. 2006) .....................................................................................28, 29, 34

City of Houston, Tex. v. Dept of Hous. & Urban Dev.,24 F.3d 1421 (D.C. Cir. 1994) .................................................................................................15

Dist. Hosp. Partners, L.P. v. Sebelius,No. 11-1717(GK), 2013 U.S. Dist. LEXIS 42186 (D.D.C. Mar. 23, 2013) ................17, 19, 21



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Drake v. FAA,291 F.3d 59 (D.C. Cir. 2002) ...................................................................................................15

Dresser v. Meba Med. & Benefits Plan,628 F.3d 705 (5th Cir. 2010) ...................................................................................................14

Eaton Corp. v. United States,395 F. Supp. 2d 1314 (Ct. Intl Trade 2005) ...........................................................................30

eBay Inc. v. Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006) .................................................................................................................30

Elk Associates Funding Corp. v. U.S. Small Business Admin.,858 F. Supp. 2d 1 (D.D.C. 2012) .............................................................................................31

Feinerman v. Bernardi,558 F. Supp. 2d 36 (D.D.C. 2008) ...............................................................................33, 34, 35

Fomaro v. James,

416 F.3d 63 (D.C. Cir. 2005) ...................................................................................................14

Friends of the Earth v. U.S. E.P.A.,No. 12-363, 2013 WL 1226822, -- . Supp. 2d -- (D.D.C. Mar. 27, 2013) ...............................13

Garcia v. Vilsack,563 F.3d 519 (D.C. Cir. 2009) .................................................................................................13

Gen. Textile Printing v. Expromtorg Intl,862 F. Supp. 1070 (S.D.N.Y. 1994).........................................................................................29

Hecht Co. v. Bowles,321 U.S. 321 (1944) ...........................................................................................................30, 31

High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc.,49 F.3d 1551 (Fed. Cir. 1995)............................................................................................32, 35

Himmelman v. MCI Communications Corp.,104 F. Supp. 2d 1 (D.D.C. 2000) .............................................................................................15

Implicit Networks Inc. v. F5 Networks Inc.,Nos. C10-3365 SI, C 10-4234 SI, 2013 WL 1007250 (N.D. Cal. Mar. 13, 2013) ..................23

K-V Pharm. Co. v. U.S. Food & Drug Admin.,889 F. Supp. 2d 119 (D.D.C. 2012) .........................................................................................14

Kisser v. Cisneros,14 F.3d 615 (D.C. Cir. 1994) ...................................................................................................15

LG Elecs. U.S.A., Inc. v. Dept. of Energy,679 F. Supp. 2d 18 (D.D.C. 2010) ...........................................................................................38

L & W, Inc. v. Shertech, Inc.,471 F.3d 1311 (Fed. Cir. 2006)................................................................................................22



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Mazurek v. Armstrong,520 U.S. 968 (1997) ...................................................................................................................9

Miniter v. Moon,684 F. Supp. 2d 13 (D.D.C. 2010) .............................................................................................9

Mississippi Valley Gas Co. v. F.E.R.C.,68 F.3d 503 (D.C. Cir. 1995) ...................................................................................................16

Mylan Pharms., Inc. v. Shalala,81 F. Supp. 2d 30 (D.D.C. 2000) .............................................................................................10

Nevada v. Dept of Energy,457 F.3d 78 (D.C. Cir. 2006) ...................................................................................................16

Northern Air Cargo v. U.S. Postal Service,756 F. Supp. 2d 116 (D.D.C. 2010) .........................................................................................34

Rambus Inc. v. Hynix Semiconductor Inc.,

642 F. Supp. 2d 970 (N.D. Cal. 2008) .....................................................................................22

Roberts v. Napolitano,792 F. Supp. 2d 67 (D.D.C. 2011) ...........................................................................................14

Rohm & Haas Co. v. Brotech Corp.,127 F.3d 1089 (Fed. Cir. 1997)................................................................................................22

In re Russell,155 F.3d 1012 (8th Cir. 1998) .................................................................................................14

Secy of Labor v. Twentymile Coal Co.,456 F.3d 151 (D.C. Cir. 2006) .................................................................................................15

Sherley v. Sebelius,644 F.3d 388 (D.C. Cir. 2011) .............................................................................................9, 10

Shoshone-Bannock Tribes v. Reno,56 F.3d 1476 (D.C. Cir. 1995) .................................................................................................15

Sweis v. U.S. Foreign Claims Settlement Commn,No. 13-366(GK), 2013 WL 2986252 (D.D.C. June 15, 2013) ......................................9, 10, 31

T.J. Smith & Nephew Ltd. v. Consol. Med. Equip., Inc.,821 F.2d 646 (Fed. Cir. 1987)..................................................................................................33

Tindal v. McHugh,No. 10-237 (BAH) 2013 U.S. Dist. LEXIS 73106 (D.D.C. May 23, 2013) ............................17

Total Telecomms. Servs., Inc. v. AT&T,919 F. Supp. 472 (D.D.C. 1996) ..............................................................................................15

United States v. Mead Corp.,533 U.S. 218 (2001) .................................................................................................................26



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Univ. of Tex. v. Camenisch,451 U.S. 390 (1981) ...................................................................................................................9

Veitch v. Danzig,135 F. Supp. 2d 32 ...................................................................................................................10

ViroPharma, Inc. v. Hamburg,898 F. Supp. 2d 1 (D.D.C. 2012) ...........................................................................28, 29, 31, 34

Wagner v. Fed. Election Commn,854 F. Supp. 2d 83 (D.D.C. 2012) .............................................................................................9

Winter v. Natural Res. Def. Council, Inc.,555 U.S. 7 (2008) .................................................................................................................9, 29

Statutes

5 U.S.C. 554 ................................................................................................................................26

5 U.S.C. 557 ................................................................................................................................26

5 U.S.C. 704 ...................................................................................................................11, 12, 13

5 U.S.C. 706 ..........................................................................................................................16, 25

28 U.S.C. 1254 ............................................................................................................................13

28 U.S.C. 1295 ............................................................................................................................13

19 C.F.R. 210.75 .............................................................................................................11, 12, 38

19 C.F.R. 210.76 ...................................................................................................................11, 12

19 C.F.R. 210.77 .........................................................................................................................12



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Proposed Intervenor-Defendant Motorola Mobility, LLC (Motorola) hereby

respectfully opposes Microsoft Corporations (Microsoft) motion for preliminary injunction

(Dkt. 7). Microsoft is urging this Court to grant preliminary relief that would interfere with an

administrative process already in place between Customs and Border Protection (Customs) and

the International Trade Commission (ITC). Specifically, Microsoft would have this Court

direct Customs to enforce instanteran exclusion order from the ITC, as interpreted by Microsoft

(but not by Customs or by the ITC), such that certain of Motorolas smartphones must be turned

back at the borders and recalled from store shelves.

I.

INTRODUCTION

Microsofts motion is unprecedented before any federal court; it asks this Court to

countermand Customs best judgment about how an ITC exclusion order should be enforced in

accordance with its proper scope, and for this Court to intercede without benefit of further

proceedings otherwise available before the ITC. What is more, Microsoft is urging this Court to

issue a preliminary injunction on behalf of Microsoft before the merits have been fully heard and

considered.

The underlying merits, if they are reached, tip overwhelmingly against Microsoft.

Important procedural obstacles block Microsofts suit at the threshold; simply put, the instant

challenge does not belong before this Court in its present posture. Even setting those obstacles

aside, this Court can see for itself that Customs decision at issue despite Microsofts caricature

of it as lawless and unreasoned was in fact careful, conscientious and altogether beyond

reproach under the Administrative Procedures Act (APA). Over the course of a well-reasoned

and detailed letter, Customs set out and analyzed Microsofts request for exclusion relative to the

ITC exclusion order Microsoft was invoking, analyzing the relevant facts and law at considerable



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length in explaining why Microsofts exclusion request ventures beyond the issues actually

advanced and resolved before the ITC. (See Dkt. 7-2.) To be clear, this is not a case in which

Customs refused to enforce an exclusion order from the ITC; quite the contrary, Customs had

been enforcing an exclusion order from the ITC against the Motorola products that Microsoft had

accused before the ITC, per the infringement allegations that Microsoft had advanced before the

ITC. When Microsoft (after waiting a year before complaining) then urged Customs to adopt an

expandedview of the ITCs exclusion order, Customs pointed to multiple aspects of the record

of the ITC proceedings (including testimony by Motorola, testimony by Microsofts expert,

Microsofts own briefing, and the ITCs actual opinion) that contradicted Microsofts after-the-

fact account of the supposed reach of the ITCs exclusion order. (Seeid. at 10.)

In an abundance of caution, Customs even went so far as to consult the ITC itself and

confirmed that the ITC took no position on the matter beyond suggest[ing] an approach for

additional consideration, which would be for Microsoft to return to the ITC for the expanded

exclusion it seeks. (Id. at 11.) On the strength of that examination and reasoning, Customs

found that the administrative record does not support a finding that Microsoft specifically

accused the ability in the legacy Motorola devices of using Googles servers and Googles

synchronization protocols of infringing, and noted that there is no dispute that these features

were present on the devices before the ITC during the investigation. Customs accordingly

denied Microsofts request on the specific facts set forth herein, while still leaving the door

open for Microsoft to return seeking additional guidance from the ITC. (Id.) No matter how

hard Microsoft tries to second guess Customs decision, it has no prospect of transforming this

case into one involving the sort of arbitrary and capricious agency action that might be suspect

under the APA.



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Moreover, in submitting its extraordinary request, Microsoft makes no attempt at

showing irreparable harm beyond claiming such harm ought to be conclusively presumed.

(Dkt. 7-1 at 29.) For that reason, too, Microsofts request for preliminary injunctive relief comes

up short. This Court should therefore deny Microsofts request on the distinct but related

grounds that Microsofts case is doomed on the merits (both because it does not belong here and

also because it targets Customs decision and Motorola devices that are beyond reproach); that

Microsoft faces no prospect of irreparable harm; and that the interests of Motorola, third parties,

and the public generally in maintaining status quo importation of Motorolas smartphones at

issue would far outweigh the limited interests Microsoft raises.

II. FACTUAL BACKGROUND1The preliminary injunction Microsoft seeks would command the United States

Department of Homeland Security, the Bureau of Customs and Border Protection, the Secretary

of the Department of Homeland Security, and the Deputy Commissioner of the Bureau of

Customs and Border Protection to adopt Microsofts preferred interpretation of an exclusion

order issued by the ITC and to upset the status quo by enforcing that order against all Motorola

smartphones. As matters presently stand, Customs has determined, in consultation with the ITC,

that Motorolas re-designed products are not covered by the ITCs exclusion order at issue and

can continue entering the United States and its stream of commerce. (Dkt. 1. 1.)

1 Microsoft has indicated that it intends to supplement its submissions to this Court withaspects of the ITC record that have been designated as confidential before the ITC. (Dkt. 7-1 at

7 nn.4&5.) Although Motorola does not believe that this Court needs to delve so deep into theadministrative record in order to dispose of Microsofts instant submissions, Motorola isprepared, in response to any such submissions by Microsoft, to promptly supplement the recordfor the sake of completeness. Toward that end, Motorola and Microsoft have submitted a jointstipulation that would permit both parties to use confidential materials from the ITC proceedingsfor purposes of this proceeding pursuant to entry of an appropriate protective order by this Court.At present, Motorola is limiting its instant submissions to material that has not itself beendesignated as confidential.



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The ITCs exclusion order arose out of a complaint pursuant to Section 337 of the Tariff

Act of 1930, as amended, 19 U.S.C. 1337 (Section 337) that Microsoft filed in the ITC

against Motorola in October, 2010. In its complaint to the ITC, Microsoft alleged that certain

smartphones and tablet computers that Motorola was importing infringed nine Microsoft patents.

(Dkt. 1. 4.) After Microsoft dropped its allegations with respect to two of the asserted patents,

presiding Administrative Law Judge Theodore R. Essex held a ten-day evidentiary hearing.

Following that hearing, Judge Essex issued a 220-page opinion concluding that Motorolas

accused smartphones infringed one of Microsofts seven asserted patents and recommending that

the ITC issue an exclusion order barring importation of infringing Motorola products. (Dkt. 7-

3.) After reviewing Judge Essexs initial determination, the full Commission issued its own 36-

page opinion affirming the ALJs finding that Motorola infringed a single Microsoft patent.

(Dkt. 7-8.) Based upon its infringement finding, the ITC issued an exclusion order instructing

Customs to exclude Motorola products that infringe Microsofts patent from entry into the

United States (Dkt 7-9.) The scope of the ITCs order, however, does not extend to non-

infringing or licensed products. (Id.)

The relevant patent, U.S. Patent No. 6,370,566 (the 566 patent), relates to a mobile

device, typically a smartphone, that includes a calendar application on the mobile device that can

generate both meeting objects (calendar events) and electronic mail scheduling request

objects (meeting requests). The 566 patent requires a synchronization component that allows

calendar events stored on the mobile device to be synchronized with calendar events stored on a

server or desktop computer. From at least the filing date of Microsofts complaint through the

present, Motorolas smartphones have been capable of synchronizing their calendar applications

with either of two distinct types of remote calendar applications: Microsoft Outlook and Google



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Calendar. (See Dkt. 7-2 at 7.) When synchronizing with a Microsoft Outlook account (typically

used in a corporate or business setting), Motorolas phones communicate with a Microsoft

Exchange server using Microsoft Exchange ActiveSync protocols. When synchronizing with a

Google Calendar account, Motorolas phones communicate with Googles servers using

Googles proprietary synchronization protocol which operates in a manner that fundamentally

differentiates it from both the 566 patent claims and the Exchange ActiveSync protocol. (See

Dkt. 7-2 at 7.)

Although Microsoft initially accused Motorolas products of infringement based upon

their use of both the Exchange ActiveSync protocolsandthe Google Calendar synchronization

protocols, Microsoft subsequently abandoned its allegations against the use of Googles

synchronization protocols during the ITCs investigation. Specifically, after the June 29, 2011

close of discovery, Microsoft submitted its Pre-Hearing Brief and the written witness statement

of its infringement expert, Dr. Hugh Smith. (See Dkt. 7-2 ). In both of these documents,

Microsofts infringement allegations related solely to the use of the Exchange ActiveSync

protocols.2 Because the ALJs Ground Rule 8(f) mandates that [a]ny contentions not set forth

in [the pre-hearing brief] shall be deemed abandoned, or withdrawn, Microsofts infringement

allegations against the use of the Google Calendar synchronization protocol were waived as of

the August 8, 2011 filing date of Microsofts Pre-Hearing Brief. (Ex. 1, Ground Rules, at 18.)3

2 Notably, in Motorolas appeal to the Federal Circuit with respect to the 566 patent,Microsoft concedes that, [i]n fact, Dr. Smiths original element-by-element analysis of MMIsinfringement relied on the ActiveSync protocol itself. Brief for Intervenor MicrosoftCorporation at 54,Motorola Mobility, LLC v. ITC and Microsoft Corp., No. 2012-1535 (Fed.Cir. Feb. 27, 2013), ECF No. 53.

3Ex. __ refers to the exhibits attached to the Declaration of Edward J. DeFranco,

submitted in support of this Memorandum.



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Microsofts decision to abandon its infringement contentions against the Google Calendar

synchronization protocols was no mere happenstance. Discovery that Microsoft obtained from

Google conclusively demonstrated that, when using the Google Calendar synchronization

protocol, Motorolas phones do notinfringe for the fundamental reason that the phones do not

generate an electronic mail scheduling request object as required by asserted claim 1 of the

566 patent. (566 Patent (Dkt. 7-4) at 23:47-48.) As with many other aspects of todays cloud

computing the electronic mail scheduling request object is not generated on the phone, as

required by the asserted patent, but is instead generated by Googles servers under Googles

Calendar synchronization protocols.

4

(Dkt. 7-2 at 7, 10.)

Following issuance of the ITCs exclusion order, Motorola promptly took steps to

comply with the exclusion order. For certain phones, Motorola changed the accused

functionality to avoid infringing Microsofts patent. (See Dkt. 7-14 at 6-9.) Specifically,

Motorola re-designed its smartphones so that they could no longer generate an email meeting

request when using the ActiveSync protocol. (Dkt. 7-14 at 6-7.) Consistent with the ITCs

limited infringing findings, Motorola made no changes to the way its phones operate when using

Googles synchronization protocols. Motorola presented its re-designed phones to Customs in a

request pursuant to 19 C.F.R. Part 177 in a letter dated May 25, 2012. (See Dkt. 7-14 at 1.)

Motorola has continued to import phones that use the Google Calendar synchronization protocol.

For the phones that did not include the re-design, Motorola instead entered into a supply

agreement with a third party, Emtrace Technologies USA, Inc. (Emtrace), to provide

Microsoft-licensed software to Motorola. In 2009, Emtrace entered into an ActiveSync license

4 Thus, contrary to Microsofts assertions (Dkt. 7-1, at 23-25), neither Motorola norCustoms switched the disputed limitations at issue. For both the ActiveSync protocols and theGoogle Calendar synchronization protocols, Motorolas re-designed phones do not generate anelectronic mail scheduling request object, as required by element (f).



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agreement with Microsoft.5 (See Ex. 2.) Under the terms of the Emtrace/Microsoft agreement,

Emtrace is authorized to provide ActiveSync implementations to third-parties, including

Motorola. (Id. at 3.) Accordingly, Motorola removed the accused ActiveSync software from its

phones and replaced that software with licensed Emtrace ActiveSync software. Under the terms

of the Emtrace/Microsoft agreement, Microsoft received its standard ActiveSync royalty for each

Motorola phone that contained the licensed Emtrace software.

On April 25, 2013, Customs issued a formal response to Motorolas May 25, 2012 ruling

request. In its ruling, Customs found that Motorola had established that its re-designed products

no longer infringed the 566 patent and therefore were not within the scope of the ITCs

exclusion order. (Dkt. 7-14.)

Unhappy with the result of Customs ruling, Microsoft sought revocation on two grounds.

First, Microsoft alleged that the use of Googles synchronization protocol was specifically

accused of infringement and formed part of the ITCs infringement finding, such that the devices

at issue in the ruling letter must be refused entry.6

(Dkt. 7-2 at 2.) Second, Microsoft alleged

that, the redesigned mobile devices, as modified, have not successfully avoided the relevant

claims of the 566 patent and therefore are still infringing. (Id.)

Customs issued two rulings, Headquarters Ruling Letters H242025 and H242026, both

dated June 24, 2013, separately addressing each of Microsofts arguments. Microsoft here

challenges only the first Customs ruling relating to the Google Calendar synchronization

5 Microsofts ActiveSync licensing program is the result of an antitrust investigation bythe European Commission (EC). Because Microsoft has monopoly power in the market forcorporate servers, Microsoft agreed to make the protocols used to communicate with itsExchange servers (including the ActiveSync protocols) available on reasonable, non-discriminatory terms.

6 Because Microsoft did not submit a copy of its ruling request with its complaint ormotion for preliminary injunction, Motorola herein necessarily relies upon Customscharacterization of Microsofts ruling request.



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protocol (H24025); Microsoft has not challenged the second Customs ruling relating to

Motorolas ActiveSync redesign (H242026).

In Headquarters Ruling H242025 (consisting of the twelve-page, single-spaced letter

Microsoft now takes issue with), Customs stated, first, that it would not refuse entry based on

features that were present in the accused products during the ITC investigation but were not

specifically accused by Microsoft and found to be infringing by the ITC. (Dkt. 7-2 at 9.)

Customs observed, second, that Motorolas products used the Google Calendar synchronization

protocol during the ITC investigation. (Dkt. 7-2 at 10-11.) And, finally, after reviewing the

record of the ITC investigation and consulting with the ITC, Customs determined that the

record is insufficient to support a finding that the legacy Motorola devices at the ITC were

specifically accused and proven to infringe based on their ability to use Googles servers and

Googles synchronization protocol. (Dkt. 7-2 at 10.) Indeed, when viewed in its entirety,

Customs found the testimony cited by Microsoft seems to counter Microsofts position more

than support its claim that Googles synchronization protocol was specifically accused. (Dkt. 7-

2 at 10). Accordingly, Customs declined to take enforcement action against Motorolas products

on that basis absent additional guidance from the ITC. (Dkt. 1 at 71-78; Dkt. 7-2 at 11.)

Thus, far from foreclosing Microsofts requested administrative relief, Customs implicitly

invited Microsoft to take its request to the ITC for consideration and ruling in the first instance as

to whether the scope of the exclusion order should encompass Motorolas products use of

Googles synchronization protocol in addition to their use of the ActiveSync protocol. (Id.)

Instead of accepting that invitation to return promptly to the ITC, Microsoft waited more

than two weeks (from June 24 through July 12) and then filed its instant suit with this Court,



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requesting a preliminary injunction forcing Customs to do as Microsoft bids without resort to

further administrative proceedings.

III. ARGUMENTThe preliminary injunction Microsoft seeks is an extraordinary remedy that is to be

granted only sparingly, upon a clear showing. Miniter v. Moon, 684 F. Supp. 2d 13, 15-16

(D.D.C. 2010) (quotingMazurek v. Armstrong, 520 U.S. 968, 972 (1997)); see Winter v. Natural

Res. Def. Council, Inc., 555 U.S. 7, 22 (2008) (preliminary injunction is an extraordinary

remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such

relief); see alsoSweis v. U.S. Foreign Claims Settlement Commn, Civil Action No. 13-

366(GK), 2013 WL 2986252, at *3 (D.D.C. June 15, 2013). A plaintiff seeking a preliminary

injunction must establish [1] that he is likely to succeed on the merits, [2] that he is likely to

suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in

his favor, and [4] that an injunction is in the public interest. Wagner v. Fed. Election Commn,

854 F. Supp. 2d 83, 87 (D.D.C. 2012) (quoting Winter, 555 U.S. at 374). The D.C. Circuit has

suggested, without deciding, that Wintershould be read to abandon the sliding-scale analysis in

favor of a more demanding burden that requires movants to demonstrate independently both a

likelihood of success on the merits andirreparable harm. Id. (quoting Sherley v. Sebelius, 644

F.3d 388, 392 (D.C. Cir. 2011). Regardless whether the critical factors are viewed on a sliding

scale or essayed one by one, Microsofts case for a preliminary injunction, far from being

exceptionally strong, is fatally weak.

Indeed, Microsofts legal theory, at its very foundation, builds from a false premise.

The purpose of a preliminary injunction is merely to preserve the relative positions of the

parties until a trial on the merits can be held. Univ. of Tex. v. Camenisch, 451 U.S. 390, 395



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(1981). Far frompreserving the status quo, Microsofts requested injunction wouldupendthe

status quo. Microsoft requests an affirmative injunction ordering Customs to exclude Motorolas

products from entry into the United States, to recall Motorola products already imported, and to

revoke its April 25 and June 24 rulings. (Dkt. 7-18 at 2.) This remedy does not preserve the

status quo. Instead it would require Customs to take affirmative action contrary to its current,

prevailing, well considered views. Cf. Sherley, 644 F.3d at 398 (reversing preliminary injunction

that would in fact upend the status quo). This Court reviews a request for mandatory,

affirmative preliminary injunction that would alter the status quo, such as this, with even greater

circumspection than usual,Mylan Pharms., Inc. v. Shalala, 81 F. Supp. 2d 30, 36 (D.D.C.

2000), insisting that the movant meet a higher standard than were the injunction he sought

merely prohibitory. Veitch v. Danzig, 135 F. Supp. 2d 32. 35 (D.D.C. 2001). That standard

requires Microsoft to show clearly that it is entitled to relief or that extreme or very serious

damage will result from the denial of an injunction. Sweis v. U.S. Foreign Claims Settlement

Commn, No. 13-366, 2013 WL 2986252, at * 5 (D.D.C. June 15, 2013). Because Microsoft

cannot meet the traditional standard, it follows a fortiori that it cannot meet the substantially

higher standard operative here.

Notably, Microsoft comes up short under each essential factor.

A. Microsoft Has No Likelihood of SuccessFor the same reasons that Microsofts claims are due to be dismissed (Motorola Mobility,

LLCs Motion to Dismiss Pursuant to Rules 12(b)(6) and 12(b)(1) filed concurrently with the

instant motion), they are procedurally doomed. Nor can Microsofts claims withstand

substantive review even if the Court is inclined to reach their substance.



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1. Microsofts Claims Should Be Dismissed at the ThresholdMicrosofts attempt to hijack, under the auspices of the Administrative Procedure Act

(APA), an administrative process that is still underway should be dismissed at the threshold.

The APA allows for review only of final agency action and only where the plaintiff has no

other adequate remedy in court. 5 U.S.C. 704. That standard is not met because Microsofts

own initial papers taking issue with Customs decision to refrain from enforcement pending

guidance from the ITC make plain that Microsoft should be turning to the ITC and then, if

aggrieved, to the Federal Circuit. Microsoft has an established administrative mechanism for

seeking administrative relief in the ITC. See 19 C.F.R. 210.75; 19 C.F.R. 210.76. In no

event does Microsofts complaint belong before this Court in its present posture.

(a) Microsoft Has Other RemediesCustoms noted that the ITC has yet to consider, much less resolve, the issue Microsoft

asks this Court to decide: whether Motorolas use of the Google Calendar synchronization

protocol infringes Microsofts patent. (Dkt. 1 at 25.) Further, once the ITC does consider and

resolve the issue, Microsoft will have an adequate and appropriate remedy from Congress.

Microsoft can petition the ITC for enforcement or modification of the exclusion order and then

seek review in the Federal Circuit in the event its request is denied.

As noted by Customs, it is theITCthat should weigh in on the exclusion order issued by

theITC. (See Dkt. 7-2 at 10 (stating that further guidance from the ITC was required).) Customs

found, after consulting the ITC, that there has been no determination by the ITC specifically as to

whether the Google Calendar synchronization protocol functionality infringes. (Dkt. 7-2 at 10.)

Microsoft has established administrative mechanisms for seeking from the ITC, through a

proceeding to enforce the exclusion order, the very interpretation it urges. Specifically, 19

C.F.R. 210.75(b) allows the ITC to institute an enforcement proceeding for alleged



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violations of any exclusion order. And 19 C.F.R. 210.75(a) authorizes the ITC to issue such

orders as it deems appropriate to implement and insure compliance with the terms of an

exclusion order. Upon conclusion of the enforcement proceeding, the ITC may [m]odify a

cease and desist order . . . in any manner necessary to prevent the unfair practices that were

originally the basis for issuing such order. 19 C.F.R. 210.75(b)(4)(i). Microsoft could also

petition for expansion of the exclusion order pursuant to 19 C.F.R. 210.76 so that it

encompasses Motorolas redesigned devices.7 Indeed, the ITC is the tribunal best positioned to

interpret its own orders and apply its own procedural rule. Microsoft knows this full well which

perhaps led to its forum shopping here. Customs finding that the issue had not been determined

by the ITC, combined with Customs suggestion that Microsoft seek additional guidance from

the ITC (Dkt. 7-2 at 11), after which any adverse decision would be directly appealable to the

Federal Circuit, hardly presents an instance in which Microsoft has no other adequate remedy in

court. 5 U.S.C. 704.

Notably, the ITC can even provide the very sort of interim relief that Microsoft is

requesting from this Court in the form of a preliminary injunction. Specifically, 19 C.F.R.

210.77, titled Temporary emergency action, allows the ITC to immediately and without

hearing or notice modify an exclusion order or issue an appropriate exclusion order to prevent

a violation of an exclusion order. Thus, if Microsoft is correct that the existing exclusion order

7 Microsoft itself has recently explained why the decision of whether a re-designedproduct falls within the scope of an exclusion order should be decided by the ITC. In a July 20,

2013 submission in response to a Request for Public Comments by the Office of U.S. IntellectualProperty Enforcement Coordinator, Microsoft stated, [t]he ITC is best positioned to decide animporters ruling request on whether a redesigned product falls within an exclusion ordersscope. (Ex. 4 at 3 (Comments of Microsoft Corporation on the Interagency Review of theExclusion Order Enforcement Process).) According to Microsoft, [t]he ITC is the ultimatearbiter and most experienced decision maker. (Id.) On these points, Motorola agrees. All themore reason, therefore, why this Court should dismiss this suit and leave these matters to theITC.



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clearly covers the products and functionality it now accuses, the ITC can grant all the relief that

Microsoft seeks (and that Customs has indicated it would enforce) on an expedited basis.

Section 704 of the APA makes it clear that Congress did not intend the general grant of

review in the APA to duplicate existing procedures for review of agency action. Bowen v.

Massachusetts, 487 U.S. 879, 903 (1988). In particular, Congress did not intend that general

grant of jurisdiction [in the APA] to duplicate the previously established special statutory

procedures relating to specific agencies. Id. An alternative judicial remedy that forecloses resort

to the APA need not provide relief identical to relief under the APA, so long as it offers relief of

the same genre. Garcia v. Vilsack, 563 F.3d 519, 522 (D.C. Cir. 2009). If the statutory scheme

for review of the agency action channels review to the courts of appeals, it eliminates the federal

question jurisdiction that the district courts would otherwise enjoy under the APA. Friends of the

Earth v. U.S. E.P.A., No. 12-363, 2013 WL 1226822, -- F. Supp. 2d -- (D.D.C. Mar. 27, 2013)

(quotingAm. Road & Transp. Builders Assn v. E.P.A., 865 F. Supp. 2d 72, 81 (D.D.C. 2012)).

Microsoft has an adequate remedy in court. After it obtains a ruling from the ITC on

whether devices that use Google sync infringe the patent and are included in the exclusion order,

Microsoft can appeal that decision to the United States Court of Appeals for the Federal Circuit.

See 28 U.S.C. 1295(a)(6) (conferring upon the Federal Circuit jurisdiction over appeals from

ITC proceedings relating to unfair practices in import trade). Following a decision by the Federal

Circuit, Microsoft could also petition for a writ of certiorari in the Supreme Court. See 28 U.S.C.

1254. In addition to this Courts decisions in Friends of the Earth andAmerican Road &

Transportation Builders,numerous courts have held that appellate review of agency decisions in



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an Article III court of appeals is quintessentially an adequate remedy in court.8 Because

Microsoft can seek appellate review of ITC decisions, an original action has no place in district

court and this Court should dismiss for lack of jurisdiction. Indeed, permitting Microsoft to

proceed on this complaint would provide other aggrieved parties a roadmap for circumventing the

ITC and the statutory pathway up to the Federal Circuit that Congress has prescribed. This is the

very specter the D.C. Circuit stands vigilant against, safeguarding comparable administrative

processes and statutory schemes for orderly judicial review. See Fomaro v. James, 416 F.3d 63,

68 (D.C. Cir. 2005) (Allowing district court actions challenging how OPM calculates civil

service benefits for particular classes of beneficiaries would plainly undermine the whole point of

channeling review of benefits determinations to the MSPB and from there to the Federal Circuit.)

To the extent that Microsoft would claim that it has no other recourse specifically for

challenging the decision by Customs not to enforce the exclusion order, as requested by Microsoft,

for the time being as final in and of itself, such recourse should be altogether foreclosed, including

here. The agencys decision to refrain from enforcing a particular order, after consulting the

tribunal that issued that order and confirming the need for clarification from the issuing tribunal,

would constitute an irreproachable exercise of enforcement discretion by Customs. Thus,

Heckler v. Chaney [470 U.S. at 126] is controlling here, and . . . the challenged agency action is

not subject to judicial review because it is committed to agency discretion. K-V Pharm. Co. v.

U.S. Food & Drug Admin., 889 F. Supp. 2d 119, 132 (D.D.C. 2012) (dismissing APA challenge

against FDA for failure to enforce); see Roberts v. Napolitano, 792 F. Supp. 2d 67 (D.D.C. 2011),

8 See, e.g., Dresser v. Meba Med. & Benefits Plan, 628 F.3d 705, 710-11 (5th Cir. 2010)

(review in the court of appeals of decision of National Transportation Safety Board precludedchallenge in district court under APA);In re Russell, 155 F.3d 1012 (8th Cir. 1998) (review ofDepartment of Veterans Affairs decision in Board of Veterans Affairs and subsequent review ofBoard of Veterans Affairs decision in Federal Circuit precluded jurisdiction in district courtunder APA);Beamon v. Brown, 125 F.3d 995 (6th Cir. 1997) (same).



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(Customs selective enforcement of the TSA Global Entry program was not reviewable under

Chaney); see also Secy of Labor v. Twentymile Coal Co., 456 F.3d 151, 157 (D.C. Cir. 2006);

Drake v. FAA, 291 F.3d 59, 70-71 (D.C. Cir. 2002); Shoshone-Bannock Tribes v. Reno, 56 F.3d

1476, 1481-82 (D.C. Cir. 1995);Block v. SEC, 50 F.3d 1078, 1081-82 (D.C. Cir. 1995); Kisser v.

Cisneros, 14 F.3d 615, 620-21 (D.C. Cir. 1994).9

(b) Microsofts Claims Are Not Ripe for AdjudicationAnother problem fatal to Microsofts case is lack of ripeness. Thus, assuming arguendo

that Microsofts complaint could ever come before this Court, it still would not be ripe for

adjudication at this time. In insisting upon prudential ripeness, this Court asks whether fitness

of the issue for judicial decision and the hardship to the parties of withholding court

consideration make an issue fit for present adjudication, thereby balancing a petitioners

interest in prompt consideration of allegedly unlawful agency action against the agencys interest

in crystallizing its policy before that policy is subject to review and the courts interest in

avoiding unnecessary adjudication and in deciding issues in a concrete setting. City of Houston,

Tex. v. Dept of Hous. & Urban Dev., 24 F.3d 1421, 1430 (D.C. Cir. 1994); see also Am.

Petroleum Inst. v. E.P.A., 683 F.3d 382, 386-87 (D.C. Cir. 2012) (Letting the administrative

process run its course before binding parties to a judicial decision prevents courts from

9 The same concern sounds in terms of the doctrine of primary jurisdiction so as toforeclose Microsofts complaint and requested relief. Simply put, Microsoft is seekingresolution of issues which, under a regulatory scheme, have been placed in the hands of an

administrative body, particularly Customs and the ITC. Total Telecomms Servs., Inc. v. AT&T,919 F. Supp. 472, 478 (D.D.C. 1996). Applying the traditional[] four factors, thedetermination of how a particular ITC order should be enforced on the ground relative to certainproducts: (1) is not within the conventional expertise of judges; (2) instead lies particularlywithin the agencys discretion [and] requires the exercise of agency expertise; (3) poses asubstantial danger of inconsistent rulings relative to what the ITC might say; and (4) implicatesa prior application to the agency. Himmelman v. MCI Communications Corp., 104 F. Supp. 2d1, 3-4 (D.D.C. 2000).



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entangling themselves in abstract disagreements over administrative policies, and ... protect[s]

the agencies from judicial interference in an ongoing decision-making process.) (quoting

Abbott Labs. v. Gardner, 387 U.S. 136, 148 (1967)).

Per the D.C. Circuits instruction, this Court asks specifically 1) whether delayed review

would cause hardship to the plaintiffs; 2) whether judicial intervention would inappropriately

interfere with further administrative action; and 3) whether the courts would benefit from further

factual development of the issues presented. Nevada v. Dept of Energy, 457 F.3d 78, 84 (D.C.

Cir. 2006). The answers in this case are easy, and point uniformly towards dismissal for lack of

ripeness, if for no other reason. As to (1) hardship, Microsoft cites no specific facts, much less

proof, indicating any particular hardship. As to (2) further administrative action, Customs has

made clear that it is looking to the ITC even as Microsoft rushes headlong to circumvent the ITC.

And, as to (3) benefiting from further factual development, this Court would surely benefit from

a record that includes, e.g., the ITCs own views of the ITCs exclusion order and the history of

its own proceedings that Microsoft would put before this Court to interpret. In sum, there is

still more to be done in connection with the matters now before the Court, rendering the case

not fit for review at this time. Mississippi Valley Gas Co. v. F.E.R.C., 68 F.3d 503, 508-09

(D.C. Cir. 1995).

2. Microsofts Claims Are Also Doomed On Their Substantive MeritsBesides being procedurally improper, Microsofts claims also ring substantively false

they fail because Customs June 24th Ruling is well supported by both the facts and the law.

Under the APA, this Court cannot overturn Customs decision unless it is arbitrary, capricious,

an abuse of discretion, or otherwise not in accordance with law. 5 U.S.C. 706(2)(A).

Likewise, Customs factual determination cannot be overturned unless they are unsupported by

substantial evidence. 5 U.S.C. 706(2)(E). Review of agency actions under the arbitrary and



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capricious standard is highly deferential and presumes the agencys action to be valid.

Tindal v. McHugh, No. 10-237 (BAH) 2013 U.S. Dist. LEXIS 73106, at *23 (D.D.C. May 23,

2013) (citation omitted). If the agency has rationally set forth the grounds on which it acted,

. . . this court may not substitute its judgment for that of the agency. Dist. Hosp. Partners, L.P.

v. Sebelius, No. 11-1717(GK), 2013 U.S. Dist. LEXIS 42186, at *15-*16 (D.D.C. Mar. 23, 2013)

(citations omitted). When reviewing an agencys factual determination, weighing the evidence

is not the courts function. Instead, the question is whether there is such relevant evidence as a

reasonable mind might accept as adequate to support the agencys finding. Id. at *16 (citations

omitted). Especially given the heavy standard of deference that is operative, Microsofts claims

have no hope of succeeding.

(a) Customs Decision That Microsoft Abandoned ItsInfringement Allegations Against The Use Of Googles

Synchronization Protocol Is Not Arbitrary And Capricious

Three determinations underlie Customs decision. First, Customs determined that, as a

matter of policy, it will not refuse entry based on features that were present in accused devices

during the ITC investigations but not accused of infringement:

CBPs enforcement responsibility in the exclusion order context isto apply the infringement findings from the ITC record todetermine whether imported articles exhibit those elements of theadjudged infringing products that the ITC complainant previouslycontended and proved satisfy the specific limitations of theasserted claims. In light of the above, CBP will not refuse entry onthe basis of features that were present on the accused devices at thetime of the ITC investigation but were not specifically accused andfound to satisfy the limitations in the asserted patent claims

identified in the exclusion order.

(Dkt. 7-2 at 9.) Second, Customs determined that Motorolas accused products had the

functionality that Microsoft now accuses the ability to synchronize with Googles servers

during the ITC investigation: [T]here is no dispute that these features [the use of Googles



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servers and synchronization protocols] were present on the devices before the ITC during the

investigation. (Dkt. 7-2 at 11.) Third, Customs determined that, although Microsoft initially

alleged that the use of the Google Calendar synchronization protocol infringed the 566 patent,

Microsoft then abandoned any such allegation: CBP determines that the record is insufficient to

support a finding that the legacy Motorola devices at the ITC were specifically accused and

proven to infringe based on their ability to use Googles servers and Googles synchronization

protocol. (Dkt. 7-2 at 10.)

Neither the first nor the second determination by Customs is under challenge; indeed,

they seem beyond reproach as an exercise of Customs administrative discretion and judgment.

Instead, Microsofts instant challenge exclusively faults Customs third determination namely,

that Microsoft failed to accuse and prove infringement as to Motorolas accused products

insomuch as they use Googles servers and synchronization protocol. By Microsofts account,

Customs finding should be foreclosed by the law of the case because the ITC allegedly rejected

Motorolas request to limit the exclusion order. (Dkt. 7-1 at 18.) Yet Microsofts account of

law of the case is far from unassailable. It is, in fact, exceedingly peculiar because it is

contrary to what theITCitselfsaid. The ITC informed Customs that it took no position on the

matter and was, far from instructing Customs to do as Microsoft bid, instead suggesting an

alternative approach. (Dkt. 7-2 at 10.) It suffices, in order to refute the merits of Microsofts

challenge, to note that Customs conscientiously considered Microsofts account and offered a

reasonable explanation of why it was parting ways after specifically considering Microsofts

submissions, reviewing the relevant pleadings as submitted to the ITC, and even asking the ITC

for clarification as to how itsaw the relevant case and exclusion order.



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Delving further, particulars of the ITC record are squarely against Microsoft. Thus,

Customs specifically found that Microsofts only infringement theory actually advanced and

decided before the ITC did not reach Motorolas mobile devices and their use of Google

Calendar synchronization protocols that Microsoft is now trying to exclude; Customs did so after

studying and chronicling aspects of the ITC proceedings, including testimony by Motorolas

witness Peter John Cockerell, testimony by Microsofts expert Hugh H. Smith, Microsofts pre-

and post-hearing briefs, and the ITCs actual opinion, all of which so confirmed. (Seeid. at 10.)

There is nothing for Microsoft to fault in this regard. During the ITCs review of the ALJs

initial determination, Microsoft explicitly submitted to the Commission that it had established

infringement based solely on use of the ActiveSync protocols, without mentioning the Google

Calendar synchronization protocols: MMIs infringement of the 566 patent was proved by

virtue of 1) its connection to the Exchange servers (requiring use of [sic] ActiveSync protocol)

and 2) a users ability to generate a meeting request with invitees. (Ex. 5 (Microsofts Response

to Motorola Mobilitys Written Submission in Response to Notice of a Commission

Determination Review a Final Determination) at 52.) During the same briefing, Motorola for its

part asked the ITC to explicitly limit the exclusion order so that it would not reach the use of the

Google Calendar synchronization protocols:

To the extent that Microsoft seeks to exclude the AccusedProducts ability to use Googles servers and synchronizationprotocols to synchronize calendar objects created on the AccusedProducts with a users Google Calendar application, such anexclusion order is overly broad and unsupported by the record inthis investigation. . . . Based on the broad wording of its proposedexclusion order, Microsoft is attempting to recapture via anexclusion order the infringement allegations that it abandonedduring the course of this Investigation. Allowing Microsoft toextend the scope of its exclusion order to cover abandonedinfringement allegations is fundamentally unfair to Motorola, whowas not given an opportunity to develop a full record with respect



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the Accused Products implementation of calendar synchronizationusing Googles synchronization protocol and to defend againstMicrosofts allegations regarding this implementation.

(Ex. 6 (Motorolas Response to Complainant Microsofts Opening Brief on Commission

Review) at 45-47.) In a footnote, the ITC declined to address this issue one way or the other:

Motorola also argues that any exclusion order should not extend to the accused products use of

Googles servers and Googles synchronization protocol to synchronize calendar objects. We

decline to consider this issue . . . . (Dkt. 7-8 at 24 n. 12.)

Microsoft calls this footnote indisputable proof that the ITC rejectedMotorolas

arguments on the merits, making it the law of the case. (Dkt. 7-1, at 18.) Yet, both Customsand

the ITCdisagree, a fact that Microsoft neglects to mention. (Dkt. 7-2 at 10.) Indeed, it

seemingly would be unreasonable perhaps even arbitrary and capricious for Customs to

equate the ITCs studied declination to consider an argument with conclusive rejection of that

argument by the ITC. Certainly Customs did not venture off established administrative rails

simply by finding, as it did, that the footnote in the Commission Opinion seems to imply that

the use of Googles servers and Googles synchronization protocol was not specifically accused,

or at the very least that the record was unclear, because if it had been specifically accused, the

ITC would have expressly denied Motorolas assertion as having been subject to the concession

it made and, consequently, the ALJs infringement finding.10 (Dkt. 7-2 at 10.) Moreover,

Customs then undertook further diligence by checking with the Office of the General Counsel at

the ITC so as to confirm that it was getting things right. When asked for confirmation regarding

10Indeed, Customs rationale is further supported by Microsofts delay in asserting its

arguments regarding Motorolas use of the Google Calendar synchronization protocols.Microsoft received the Commissions Opinion on May 21, 2012 yet waited approximately 11months until April 25, 2013 to raise Motorolas use of the Google Calendar synchronizationprotocols with Customs. Throughout this entire 11 month period, Motorola was importingphones that used the Google Calendar synchronization protocols.



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the record it developed and the precise infringement findings that resulted in the exclusion

orders issuance,the ITC reiterated that it took no position on the matter. . . . Id. (emphasis

added). Of course, Microsoft may continue to disagree with Customs interpretation of the ITCs

exclusion order and to prefer its own divergent interpretation; this cannot be mistaken, however,

for an instance where Customs has acted arbitrarily and capriciously.

(b) Microsofts Specific Indictments of Customs DecisionmakingAre Off Base

Although Microsoft bids this Court to enter the weeds of the ITC proceedings in order to

second-guess Customs understanding of them, Microsofts challenge fares no better there.

(i) ITC Infringement EvidenceMicrosoft attacks Customs finding that Microsoft abandoned its infringement

contentions against the use of Googles synchronization protocols, alleging that Customs failed

to meaningfully address the relevant evidence, particularly that cited by Microsoft. (Dkt. 7-1, at

26.) But it is Microsofts brief, not Customs Ruling, that ignores the relevant evidence, which

demonstrates Microsofts abandonment of the infringement theory it now advances. Customs

June 24th Ruling specifically cites four pieces of evidence (1) Dr. Smiths July 8, 2011

deposition testimony (as informed by corresponding testimony from Motorolas Rule 30(b)(6)

designee, Mr. Cockerell), (2) Microsofts Pre-Hearing Brief, (3) Microsofts Witness Statements,

and (4) Microsoft Post-Hearing Briefs that all confirm Microsoft abandoned its allegations

against the Google synchronization protocol.11 (Dkt. 7-2 at 10.) Tellingly, Microsoft even now

11 These documents also demonstrate the error in Microsofts claim that Motorolaconceded, without qualification, that its products infringe the 566 Patent. (Dkt. 7-1, at 8.)Motorolas mid-trial concession applied only to the infringement allegations that were beingmade at the time of the concession. Because Microsoft had already abandoned its allegationsagainst the Google synchronization protocol, the allegedly unqualified concession did not applyto that technology. Indeed, Microsoft never submitted any admissible evidence demonstrating



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addresses none of thesefouritems on which Customs expressly relied. (See, e.g., Dkt. 7-2 at 10

(Moreover, during his deposition, Microsofts expert witness, High M. Smith, testified that the

focus of his infringement analysis was on the ActiveSync protocol alone concerning the

limitation in question, which, as CX-1081C reveals, was the synchronization component.)

(citing Smith Tr. 141:7-143:13); id. (Microsoft, likewise, does not point to any support in its

Pre- or Post-Hearing Briefs for its position that Googles synchronization protocol was

specifically accused to satisfy this claim limitation); see also Ex. 1, ALJs Ground Rule 8(f)

(Any contentions not set forth in detail as required here shall be deemed abandoned, or

withdrawn, except for contentions of which a party is not aware and could not be aware in the

exercise of reasonable diligence at the time of filing of the pre-hearing statement.).

As Customs noted in the ruling letter, [i]t is well settled that each element of a claim is

material and essential and, for a court or the ITC to find infringement, the patentee must show

the presence of every element in the accused device by a preponderance of the evidence. (Dkt.

7-2 at 8 (quotingRohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).) As

the patent owner, Microsoft bore the burden of proof at the ITC of making a prima facie

showing of infringement as to each accused device before the burden shift[ed] to Motorola to

offer contrary evidence. L & W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir. 2006);

Rambus Inc. v. Hynix Semiconductor Inc., 642 F. Supp. 2d 970, 976 (N.D. Cal. 2008) (Rambus,

as the party asserting infringement, bears the burden of persuasion at trial as to whether or not

each of the Manufacturers accused products infringe its claims.). A patentee cannot simply

assume that all of the [accused infringers] products are [alike], and thereby shift to [the accused

infringer] the burden to show that this is not the case. Shertech, 471 F.3d at 1318; see also

infringement by use of Google Calendar synchronization protocols as opposed to by use ofActiveSync.



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Implicit Networks Inc. v. F5 Networks Inc.,Nos. C10-3365 SI, C 10-4234 SI, 2013 WL 1007250,

at *13 (N.D. Cal. Mar. 13, 2013). Having failed to carry its burden at trial, Microsoft asks this

Court to correct its mistakes.

While fixating on isolated items of evidence that it cited to Customs, Microsoft is

incorrect in contending that Customs somehow overlooked it. (Dkt. 7-1, at 26). The June 24th

Ruling specifically addresses both Dr. Smiths expert report and the updated claim chart labeled

CX-1081C and explains why those do not sustain Microsofts arguments:

[T]he updated claim chart contained in CX-1081C, whichincorporates aspects of Cockerells deposition testimony, focuses

on the ActiveSync system anddoes not refer to Googlessynchronization protocol. Microsoft has not identified anyportion of its expert reports or witness statements that clarifies

where in the record a Google synchronization protocol was

claimed to satisfy the synchronization component.

(Dkt. 7-2 at 10 (emphasis added).) Tellingly, Microsoft here offers no pin-cite to either CX-

1081C or to Dr. Smiths expert report that is to the contrary. Moreover, Dr. Smiths expert

report and the updated claim chart were served before Microsoft serve the briefs and witness

testimony relied upon by customs in its June 24th Ruling. This subsequent evidence shows that

as the ITC investigation progressed, Microsoft abandoned its allegations against the Google

Calendar synchronization protocol.

Likewise, Microsofts reliance on Motorolas Motion to Extend the Target Date is

misplaced for several reasons. First, Microsoft fails to note that the parties dispute regarding the

566 patent was merely one portion of one argument raised in Motorolas motion. The majority

of Motorolas motion addressed other Microsoft patents. Second, the basis of Motorolas

ActiveSync argument was that Microsofts new Active Sync-related infringement theories

required additional discovery that could not be completed within the schedule in place at the

time. Finally, Motorolas motion was filed on June 29, 2011, and subsequent events made it



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clear that Microsoft had abandoned its infringement allegations with respect to the use of the

Google Calendar synchronization protocols. Specifically, Dr. Smith confirmed at his July 8,

2011 deposition that his infringement analysis was based on the ActiveSync protocols (Dkt. 7-2

at 10), Dr. Smiths July 28, 2012 witness statement contained testimony solely based upon

ActiveSync, and Microsofts August 8, 2011 Pre-Hearing Brief made no arguments regarding the

Google Calendar synchronization protocols (Dkt. 7-2 at 10), thereby waiving them under Ground

Rule 8(f). See Ex. 1 at Ground Rules, pp. 17-18.

(ii) Burden of ProofMicrosoft contends that Customs improperly shifted the burden of proof. That, too, is

untrue. Here, Microsoft is glossing over both the procedural backdrop of Microsofts submission

and the substance of Customs June 24th Ruling.

By the time of its ruling at issue, Customs had already determined in an earlier

proceeding that Motorola affirmatively proved in accordance with its then-operative burden of

proof that its re-designed products do not infringe the 566 patent and are therefore outside the

scope of the exclusion order. (Dkt. 7-14.) It was subsequent to that successful showing by

Motorola that Microsoft came forward alleging that the use of Googles synchronization protocol

was specifically accused of infringement and formed part of the ITCs infringement finding,

such that the devices at issue in the ruling letter must refused entry. (Dkt. 7-2 at 2.) Because

Microsoft was the moving party under 19 C.F.R. Part 177.12(b) and sought to establish that the

use of Googles synchronization protocols was part of the ITCs infringement finding, Microsoft

can hardly claim surprise that Customs would examine Microsofts claims against the factual

record of the ITC proceeding.



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In any event, nothing in the June 24th Ruling indicates that Customs assigned the burden

of proof to Microsoft. Rather, Customs simply sought to determine whether or not the record of

the ITC investigation bears out Microsofts factual contention that use of Googles

synchronization protocol was specifically accused of infringement and formed part of the ITCs

infringement finding. (Dkt. 7-2 at 9-11.) Customs could not make that determination

consistent with the APA without identifying substantial evidence to support it. 5 U.S.C.

706(2)(E). In this sense, Microsofts gripe that Customs insisted upon proof from Microsoft

effectively faults Customs for doing its job and not simply accepting Microsofts allegations as

true.

(iii) Notice to MicrosoftMicrosoft alleges that Customs failed to give Microsoft proper notice, thereby depriving

it of the opportunity to marshal all of the evidence showing that it did not abandon its

accusation of phones that use Google servers and synchronization components. (Dkt. 7-1, at

25.) Once again, Microsoft is turning history on its head. It wasMicrosoft that sought a ruling

from Customs, just as it wasMicrosoft that raised the issue whether use of Googles

synchronization protocol was specifically accused of infringement and formed part of the ITCs

infringement finding. (Dkt. 7-2 at 2.) It is ludicrous for Microsoft to argue that it lacked fair

notice that Customs would rule on the very issue as to which Microsoft was seeking a ruling.

The mere fact that Microsoft knew to allege that use of the Google Calendar synchronization

protocol was part of the ITCs infringement determination belies any notion that it had no inkling

Customs would be ruling on that point, as it did on June 24th.

Similarly, Microsoft faults Customs for making its initial determination that use of the

Google Calendar synchronization protocol did not fall within the scope of the exclusion order



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without consulting Microsoft. (Dkt. 7-1 at 2, 12-13, 20, 22, 25 & 30.) But Microsoft cites no

authority even suggesting that Customs cannot have ex parte communications with an importer.

Under the Administrative Procedure Act, ex parte communications can occur in specified

circumstances. See 5 U.S.C. 554 & 557(d)(1). That prohibition, however, applies only to

adjudications and rule making that require a hearing. See 5 U.S.C. 554 & 557(d)(1).

Customs response to a ruling request constitutes neither agency rule making nor adjudication,

and Microsoft has not argued otherwise. See Ammex, Inc. v. United States, 62 F. Supp. 2d 1148,

1167 n.16 (Ct. Intl Trade 1999) (APA does not prohibit ex parte communications related to

Customs Headquarters Ruling). Further, Microsoft has acknowledged that Customs frequently

issues such rulings without consultation with the patentee. (Ex. 4 at 1(When an importer

initiates a request to CBP to allow importation of a new design, the importer makes that request

ex parte.).) Indeed, Customs met with Microsoft ex parte en route to its decision at issue, just

as it met with Motorola ex parte, just as it routinely meets with various parties ex parte in order

to render informed decisions about what products should be excluded when it comes time to

implement particular exclusion orders. Such determinations by Customs as to what procedures

are most appropriate, in practice, when determining the proper scope of an exclusion order

relative to particular imports are part of how it bring[s] the benefit of specialized experience to

bear on the subtle questions in this case and part of the administrative process that deserves

deference, according to the Supreme Court. United States v. Mead Corp., 533 U.S. 218, 235

(2001).

(iv) The Transition PeriodMicrosoft takes issue with the 30-day transition period that CPB afforded Motorola after

Microsoft unilaterally and improperly terminated the ActiveSync license of Motorolas supplier,



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Emtrace. In doing so, Microsoft ignores the procedural history regarding the 30-day transition

period. Microsoft pretextually purported to terminate the Emtrace/Microsoft agreement on

December 1, 2012, notwithstanding the fact that Emtrace complied with all provisions of the

Emtrace/Microsoft agreement. Microsoft specifically cited Microsofts business relationship

with Motorola in its termination letter, leaving no doubt that Microsofts actions were intended

to harm Motorola. (Ex. 2 at 1-3.) In subsequent correspondence, Emtrace made it clear to

Microsoft that Microsofts purported grounds for termination were meritless (Ex. 3.); however,

Microsoft ignored these letters and informed Customs of its termination of the

Emtrace/Microsoft agreement. In light of Microsofts purported termination of the

Emtrace/Microsoft agreement, Customs required Motorola to implement its re-design that

removes the email scheduling request feature on all its phones, including those that use

Emtraces software. To facilitate an orderly transition and because the changes in Motorolas

phones were prompted by Microsofts unilateral (and unjustified) termination of the

Emtrace/Microsoft agreement, Customs allowed Motorola to implement its re-design on a rolling

basis during the 30-day transition period.

This orderly transition served the interest of Motorolas customers and end users and was

neither arbitrary nor capricious. Microsofts citations to the Commissions opinion that a

transition period was unwarranted (Dkt. 7-1, at 27) are inapposite here. In every ITC

investigation, there is a 60-day presidential review period before any exclusion order takes

effect. 19 U.S.C. 1337(j)(2). The 60-day presidential review period serves as a default

transition period. At issue in the Commission opinion was whether a transition period beyond

the default 60-day presidential review period was warranted. (Dkt. 7-8 at 22.) In this case,

Customs permitted only a 30-day transition period and only in special circumstances where there



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was an ongoing dispute about the status of a license and a sudden attempt by Microsoft to revoke

an extant license that was, at the very least, questionable; there certainly is no inconsistency

between Customs decision and the Commissions opinion. Especially considering that

Microsofts out-of-the-blue decision to improperly terminate the Emtrace agreement is what

necessitated the transition period, it has no basis for complaining that the transition period was

aberrant, much less unlawful.

B. Microsoft Faces No Prospect Of Irreparable HarmMerits deficiencies aside, Microsoft has made no credible showing of irreparable harm,

nor can it. No matter how strong its case on the merits, a movant seeking a preliminary

injunction must show at least some injury because the entire basis of injunctive relief in the

federal courts has always been irreparable harm. Chaplaincy of Full Gospel Churches v.

England, 454 F.3d 290, 297 (D.C. Cir. 2006)( quoting Population Inst. v. McPherson, 797 F.2d

1062, 1078 (D.C. Cir. 1986), & Sampson v. Murray, 415 U.S. 61, 88 (1974)). A movants

failure to show any irreparable harm is therefore grounds for refusing to issue a preliminary

injunction, even if the other three factors entering the calculus merit such relief. Id.

Further, the alleged harm must be certain, great and irreparable. Chaplaincy of

Full Gospel Churches, 454 F.3d at 297. A plaintiff alleging irreparable harm bears an

obligation to demonstrate that its harm is great, even when plaintiff alleges an irrecoverable

financial loss. ViroPharma, 898 F. Supp. 2d at 26 (citingAir Cargo, 756 F. Supp. 2d at 125,

n.6). [V]ague allegations do not satisfy the irreparable injury standard. Id. at 27. To

demonstrate irreparable injury, a plaintiff must allege harm that require[es] a remedy of more

than mere monetary damages. A monetary loss will not suffice unless the movant provides

evidence of damage that cannot be rectified by financial compensation. Biovail Corp. v. FDA,



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519 F. Supp. 2d 39, 49 (D.D.C. 2007) (quoting Gen. Textile Printing v. Expromtorg Intl, 862 F.

Supp. 1070, 1075 (S.D.N.Y. 1994)).

Microsoft has not even attempted to marshal evidence that a preliminary injunction is

necessary to prevent irreparable harm. Nor could it reasonably do so considering that it has

widely licensed the patent in question, delayed raising issue with Customs or Motorola, delayed

filing suit, and has available legal and administrative remedies, including a suit for patent

infringement damages against Motorola. Instead, Microsoft rests its entire motion on a legally

erroneous conclusive presumption of irreparable harm. That conclusive presumption is,

however, refuted by this Courts precedent.

1. There Is No Presumption of Irreparable Harm, Conclusive orOtherwise

Microsoft advances no credible theory for this Court to arrive at a conclusive

presumption of irreparable harm. Whereas Microsoft wants irreparable harm to be superficially

examined and conclusively presumed, federal courts demand much more. See Winter v.

NRDC, 555 U.S. 7, 24 (2008) (A preliminary injunction is an extraordinary remedy never

awarded as of right. In each case, courts must balance the competing claims of injury and must

consider the effect on each party of the granting or withholding of the requested relief.);

ViroPharma, Inc. v. Hamburg, 898 F. Supp. 2d 1, 26 (D.D.C. 2012) (Yet, irreparability aside, it

remains incumbent on plaintiffs to demonstrate, first, that they are threatened with serious

injury. (emphasis in original)); Chaplaincy of Full Gospel Churches, 454 F.3d at 297 (This

court has set a high standard for irreparable injury.);Brown v. Dist. of Columbia, 888 F. Supp.

2d 28, 32 (D.D.C. 2012) (The plaintiff, in this case, thus must show that her injury is of such

imminence that there is a clear and present need for equitable relief to prevent irreparable

harm. (citation omitted)).



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Microsoft makes no such showing. (Ex. 7, Leonard Decl. 13.) It instead posits

irreparable harm based on the mere existence of a exclusion order issued by the ITC, despite a

conspicuous absence of supporting authority. Microsoft argues thatEaton Corp. v. United

States, 395 F. Supp. 2d 1314, 1329 (Ct. Intl Trade 2005), establishes a presumption of

irreparable harm from the failure to enforce an exclusion order issued to prevent the importation

of products that infringe a patent. (Dkt. 7-1 at 29.) But that case relied on the now-overturned

rule that, in matters involving patent rights, irreparable harm has been presumed when a clear

showing has been made of patent validity and infringement. Id. at 1167 (quotingBell & Howell

Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 708 (Fed. Cir. 1997)). That is no longer

good law because the presumption of irreparable harm from patent infringement was jettisoned

in eBay Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006). In eBay, the Supreme Court held

that the Federal Circuit erred by reasoning that the right to exclude conferred by a patent created

a presumption that its infringement should be remedied through an injunction. Id. at 392-94.12

There is therefore no presumption that the sale or importation of a product that infringes would

impose irreparable harm on the patentee.

Nor has Congress implemented any presumption that the failure to enforce a exclusion

order imposes irreparable harm. The Supreme Court has repeatedly cautioned against

interpreting statutes that authorize injunctions as though they eliminate any of the traditional

equitable factors. eBay, 547 U.S. at 393-94 (traditional injunction factors apply to Patent Act);

Amoco Production Co. v. Village of Gambell, AK, 480 U.S. 531, 544-45 (1987) (traditional

injunction factors apply to Alaska National Interest Lands Conservation Act);Hecht Co. v.

12 The case upon whichEaton Corp. relied,Bell & Howell Document ManagementProducts, has been explicitly recognized as abrogated by eBay. Am. Beverage Corp. v. DiageoN. Am., Inc., No. 12-601, 2013 WL 1314598, at *45 (W.D. Pa. Mar. 28, 2013).



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Bowles, 321 U.S. 321, 329-30 (1944) (traditional injunction factors apply to Emergency Price

Control Act of 1942). A major departure from the traditional equitable standard, such as a

complete elimination of any showing of likely harm, should not be lightly implied. Id. at 330.

Microsoft invokes the fact that a prevailing patentee in an ITC investigation brought

under Section 337 is entitled to an exclusion order even absent a showing that it faces the

prospect of irreparable harm from importation of the product. (Dkt. 7-1 at 28-29.) Although that

may be true when it comes to seeking an exclusion order in an ITC investigation, Microsoft is

not here seeking an exclusion order in an ITC investigation. Instead, Microsoft is seeking a

preliminary injunction from a United States District Court against officers of the United States

under the Administrative Procedure Act. And there is no congressional statement, much less a

clear congressional statement, that a preliminary injunction may be obtained under the APA

without a showing of irreparable harm. Indeed, this Court has repeatedly required a showing of

irreparable harm when a plaintiff seeks to preliminarily enjoin conduct it alleges violates the

APA. See, e.g, Sweis v. United States Foreign Claims Settlement Commn, No. 13-366, 2013

WL 2986252 (D.D.C. June 15, 2013);Elk Associates Funding Corp. v. U.S. Small Business

Admin., 858 F. Supp. 2d 1, 30 (D.D.C. 2012); VicroPharma, Inc. v. Hamburg, 898 F. Supp. 2d 1,

25-26 (D.D.C. 2012).

Microsofts assumption, in addition to being unsupported, is anomalous. Agencies issue

countless orders in their adjudicatory capacities without requiring any showing of irreparable

harm. It by no means follows, however, that a party can then obtain a preliminary injunction in

district court just by challenging an agencys enforcement decision without making any

particular showing of irreparable harm. The showing necessary to obtain an administrative order

from an agency naturally differs from t

Documents

13-08-02 Google's Opposition to Microsoft's Motion for Preliminary Injunction