Updated at 2:24 p.m.
Last May, Sidley Austin helped client Microsoft Corp. win an order from the U.S. International Trade Commission barring imports of Motorola Mobility Inc. devices that infringed certain patents. The firm is now going to court for Microsoft—suing federal agencies over allegedly failing to follow the commission’s order.
In a complaint filed July 12 in U.S. District Court for the District of Columbia, Microsoft accused the U.S. Bureau of Customs and Border Protection—part of the Department of Homeland Security—of allowing imports of products the trade commission found violated Microsoft patents.
Microsoft accused the bureau of engaging in outside communications with Motorola and entertaining arguments in favor of import without giving Microsoft notice or a chance to respond.
The customs bureau, Microsoft alleged, "has allowed Motorola to relitigate—in secret—issues that Motorola lost before the Commission, and has granted Motorola precisely the relief that the Commission expressly refused to grant after full, fair, and open litigation” (emphasis in original.)
Microsoft accused customs officials of allowing the import of Motorola devices with a calendar function that violated Microsoft's patents. Microsoft said the customs bureau decision was "flatly inconsistent" with a ruling from the trade commission rejecting Motorola's request to import devices that included the function.
Joseph Guerra, a partner in Sidley's Washington office and co-chair of the firm's appellate practice, is listed as lead counsel in court filings. He could not immediately be reached for comment. Guerra earlier served as a top lawyer in the front office of the Justice Department under Attorney General Eric Holder Jr.
Sidley attorneys—including partners Richard Cederoth and Brian Nester, who are listed as counsel for Microsoft in the latest lawsuit—have represented Microsoft in a number of recent patent cases against Motorola. Cederoth, who’s based in Chicago, practices in patent litigation. Nester is a partner in Washington who focuses on patent and trade secret litigation.
In a statement, Microsoft's deputy general counsel, David Howard, said: "Customs has a clear responsibility to carry out ITC decisions, which are reached after a full trial and rigorous legal review. Here Customs repeatedly ignored its obligation and did so based on secret discussions."
A spokesman for Google, which owns Motorola, said in a statement that the "U.S. Customs appropriately rejected Microsoft's effort to broaden its patent claims to block Americans from using a wide range of legitimate calendar functions, like scheduling meetings, on their mobile phones. We're confident that the court will agree.”
A spokeswoman for the customs bureau declined to comment.
The case is assigned to U.S. District Judge Richard Roberts. No hearings are scheduled in the case.