Qualcomm Can Use Rival Chip Patents Until 2009
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A federal judge in California ruled that Qualcomm can keep selling some chips whose designs infringe patents held by Broadcom through January 2009.
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SANTA CLARA, Calif. --(Business Wire)-- Nov. 19, 2004 -- NVIDIA Corporation (Nasdaq:NVDA) and Intel Corporation today announced the companies have signed a broad, multi-year patent cross-license agreement
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New cellphones sold in the United States will not be allowed to use chips from Qualcomm, after a trade agency found the products infringe a patent owned by rival Broadcom.
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After Qualcomm rejected a $20 million payment from Nokia made with the intention of extending a license to use the network chipset provider's WCDMA technologies, Nokia responded this morning by countersuing Qualcomm. It claims some of the underlying technology in Qualcomm's chipsets actually belongs to Nokia.
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(InfoWorld) - A German court stayed a patent-infringement case that Qualcomm filed against Nokia, as hearings regarding a similar case in the U.S. International Trade Commission suit continue. On Tuesday, the District Court of Dusseldorf, Germany, ordered a stay of proceedings until further notice based on a request by Qualcomm, Nokia said. A hearing in that case had been scheduled for Tuesday. Meanwhile, hearings for theÂ patent-infringement case that Qualcomm brought against NokiaÂ in the U.S. ITC started on Monday and will last until Sept. 24. At issue are patents Qualcomm owns related to power control used in EDGE (Enhanced Data GSM Environment) and GPRS (General Packet Radio Service). The initial ITC complaint included six Qualcomm patents, but Qualcomm later reduced the complaint to cover just three. Qualcomm initially declared one of the patents as essential to the standards, but later withdrew the essentiality declaration, according to Nokia. Qualcomm did identify the patent as one that may be essential, but after further investigation determined that it wasn't, said Alex Rogers, legal counsel for Qualcomm. But that issue is irrelevant to this case, he said, which charges Nokia with patent infringement. The hearings this week are dedicated to Qualcomm testimony and has included participation by Chuck Wheatley and Ana Weiland, former Qualcomm developers who worked on the patented technology, Rogers said. Nokia will also have five days to present its witnesses. The mobile giant will argue that it does not infringe on the patents and that the patents are invalid, it said. The judge will issue an initial determination after the hearings are complete. The commission then has an opportunity to accept or modify the judge's decision and issue a final determination. The U.S. ITC case is one ofÂ several ongoing suits between Qualcomm and Nokia. In August,Â Nokia asked the ITCÂ to launch a separate investigation, charging Qualcomm with patent infringement. In June, Nokia charged Qualcomm with infringing on patents in its MediaFlo and Brew products. In a statement in May, Nokia said that Qualcomm has filed 11 patent suits against Nokia in just over a year and a half. The ongoing dispute between the companies likely stems from their failure to renegotiate their patent licensing agreement that expired in April. Nokia has said that it believes Qualcomm, which is well-known for its development of the CDMA wireless technologies, charges more than fair and reasonable rates when licensing the technology to be used in standards-based equipment. In a separate intellectual-property battle, theÂ ITC recently banned the importÂ of mobile phones with certain Qualcomm chips, based on a case Broadcom filed.
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(InfoWorld) - Nokia Corp.'s patent licensing deal with Trimble Navigation Ltd. this week could give the phone maker an important boost in an ongoing dispute with CDMA developer Qualcomm Inc. The dealÂ gives Nokia a license for 700 Trimble technologies for delivering location-based services, as well as exclusive rights to sublicense them to other companies in the wireless industry. That means any company that wants to license Trimble's patents must now do so through Nokia. Nokia officials stopped short of calling the deal just what it needs to end itsÂ acrimonious renegotiation talks with Qualcomm. But they acknowledged that it will strengthen Nokia's hand in licensing talks with all wireless companies that include GPS (Global Positioning Systems) capabilities in their products. "It will improve our negotiating position," said Ulla James, director of intellectual property rights strategic marketing for Nokia. Trimble has one of the biggest portfolios of patents for location-based technologies, and any company that offers such capabilities will now need to talk to Nokia, she said. Qualcomm integrates GPS capabilities in many of its chipsets, including its gpsOne product. The company has shipped tens of millions of such chipsets in the past few years, said Nitesh Patel, a senior analyst at Strategy Analytics Inc. "Given that Nokia can sublicense to whoever it wants to and on whatever terms it wishes to, it has a strong bargaining position with Qualcomm with respect to GPS," Patel wrote in an e-mail. He cautioned that Qualcomm might already have a long-term contract with Trimble that could supersede the arrangement between Nokia and Trimble. Qualcomm declined requests for comment, and Nokia would not discuss how the deal might affect its negotiations with Qualcomm specifically. Nokia and Qualcomm are engaged in a bitter renegotiation of a patent licensing agreement that ends in April 2007. The companies license a variety of patents from each other relating to mobile phone standards. Qualcomm is well-known for developing the CDMA (Code Division Multiple Access) standard and Nokia patents contribute to the WCDMA (Wideband CDMA) and other standards. Qualcomm has launched several lawsuits against Nokia for alleged patent infringement and Nokia, along with five other mobile vendors, has filed an anticompetitive complaint against Qualcomm with the European Commission. Nokia played down the significance of the April deadline. If the two sides don't reach agreement by then, they will both be able to continue selling their respective products in any case, James said. It is "normal practice" for two companies in a renegotiation process to continue selling products even if the contract expires, with an eye to settling payments once a new contract is agreed to, she said. Nevertheless, a stronger patent portfolio of its own could only help Nokia in its negotiations. In some of its lawsuits against Nokia, Qualcomm has asked the court to pay for Nokia's alleged patent infringement on phones that it has already sold. Nokia's agreement with Trimble marks a new way of thinking at the Finnish handset maker, which now views intellectual property more as an investment, said James. That's a turnaround from the 1980s, when the company didn't believe in the long-term value of patents and advised companies not to apply for them, James said. Today, Nokia contributes 25 percent of the patents that make up the GSM (Global System for Mobile Communications) standard and 28 percent of WCDMA patents, James said. It also holds 130 essential patents for CDMA. Despite announcing an exit from the CDMA market, Nokia intends to hold onto those patents as a revenue generator, she said. Nokia also believes that it has around 25 percent of essential patents for WiMax, the emerging broadband wireless standard. Qualcomm recently beganÂ asking WiMax vendors to license patents relevant to WiMax that it acquired when it bought Flarion Technologies Inc. last year. Â  James Niccolai in Paris contributed to this report. Â
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This patent, as well as others, could yield information about company's plans for a "Gphone."
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(InfoWorld) - The U.S. International Trade Commission has denied a request by Qualcomm Inc. to stay an ITC ban on the importation of some Qualcomm chips and cell phones into the U.S. while the company continues its appeal in a patent infringement case filed against it by Broadcom Corp. The ITC found in an eight-page ruling issued Thursday that Qualcomm failed to meet a "four-prong test" applied in courts trying to determine whether to grant preliminary injunctions. The test was also used in this particular case by a U.S. federal court and requires that Qualcomm prove: a likelihood its appeal will succeed; that irreparable harm will be done to it if the stay is not imposed; that "issuance of a stay would not substantially harm other parties"; and "that the public interest favors a stay." After reviewing arguments and also hearing from other companies in the same market, the ITC found that Qualcomm didn't meet the requirements of the four-prong test. The ITC issued the ban on June 7 after hearings on the matter. The ban applies to some future mobile phones using Qualcomm 3G (third-generation) chips after the ITC found that Qualcomm infringed on one Broadcom patent. A jury in U.S. District Court for the Central District of California in Santa Ana found in late May that Qualcomm infringed on three other Broadcom patents and awarded Broadcom US$19.6 million in damages. A few hours before the ITC ruling came out, the head of the CTIA cellular industry association sent a letter to U.S. President George Bush urging him to toss out the ban, contending that it will "freeze innovation" for U.S. wireless networks and hinder industry efforts to improve emergency 911 services. The intervention of a president would be rare in such an instance, but even if Bush does not act as the CTIA has requested Qualcomm can appeal the ITC ban to the U.S. Court of Appeals for the Federal Circuit. As would be expected, Broadcom hailed the ITC decision, with its Senior Vice President and General Counsel David A. Dull saying in a statement that "the protection of intellectual property is essential to American competitiveness and innovation ... particularly in this age of advanced technology and huge worldwide consumer demand for electronic devices and equipment." He further noted that "the burden of resolving these matters rests squarely with Qualcomm." No word yet on the matter from Qualcomm, which is based in San Diego and so no one there was available to comment Friday morning U.S. Eastern Time. Â
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(InfoWorld) - Ongoing legal disputes over mobile phone patents between Nokia and Qualcomm are consuming much executive management time, generating substantial lawyer fees, and, if they escalate, could affect handset development and prices, experts warn. Defending IP (intellectual-property) rights through litigation "is the nature of the business," said Chris Jones, senior analyst with Canalys.com in Reading, England. "But in the case of Nokia and Qualcomm, unfortunately, it's been taking up too much management time." On Monday, Nokia responded to a patent lawsuit filed by Qualcomm in U.S. District Court for the Eastern District of Texas by filing a counterclaim against the U.S. company. Over the past two years, Qualcomm has filed 11 lawsuits against Nokia, according to a Nokia spokeswoman. The initial Qualcomm lawsuit filed in Texas deals with three patents related to the downloading of applications and other digital content over GPRSÂ or EDGE (Enhanced Data Rates for GSM Evolution) networks, two technologies for speeding the transmission of packet data in GSM networks. Nokia contends that Qualcomm's patents are invalid and, in addition, has asked the Texas court to stop Qualcomm from using six Nokia implementation patents used in Qualcomm's MediaFlow and Brew technologies. Standards bodies divide patents touching the technologies they define into two categories: Those essential to a standards-compliant product, and those that only cover a particular implementation of the standard. This is the second counterclaim filed by the Finnish manufacturer. On April 2, Nokia filed a counterclaim in the U.S. Western District of Wisconsin, accusing Qualcomm of infringing on six of its patents relating primarily to multiband and multimode technologies that reduce handset and chipset size, cost, and power consumption. The counterclaim came in response to Qualcomm's initial lawsuit filed in the same court over two patents covering speech encoders used in certain GSM phones to digitize audio signals for transmission. So far, the patent infringement lawsuits against Nokia "haven't taken the vendor's eye off the ball when it comes to developing and bringing handsets to market," Jones said but warned of "too much management time being focused on these litigation cases." Nokia is in "close discussions" with its partners and customers to keep them informed of how the company is dealing with litigation, the spokeswoman said. "Our view is that they respect our right to protect our patents and our business, and to take the action we need to take," she said. Andrew Gilbert, president of Qualcomm Europe, argues that the company's licensing model has created greater competition in the market by allowing vendors without GSM patents to enter the market and compete more easily. The model, known as "pass through rights," lets manufacturers obtain the rights to use numerous GSM patents already licensed by Qualcomm -- in addition to the company's own CDMA patents -- instead of having to strike separate royalty deals with each GSM patent holder. "We think our model drives down prices of royalties and thus the price of handsets," he said. But Gilbert conceded that the current litigation is a cost factor. "Clearly, we'd rather be spending the couple of hundred million dollars on innovation," he said. That sum could easily rise as the chronology of the legal battles between Qualcomm and Nokia suggests: On Oct. 28, 2005, Nokia and five other companies, including Broadcom and Telefonaktiebolaget Ericsson, filed a complaint to the European Commission over Qualcomm's high royalty rates, among other issues. The Commission has yet to make a decision. On Nov. 4, 2005,Â Qualcomm filed a lawsuit against NokiaÂ in the federal court of San Diego, California, over GSM patents. The court put the case on hold, pending further information. On May 24, 2006,Â Qualcomm filed a patent infringement lawsuit against Nokia in the U.K.Â over two GSM patents. The trial is expected later this year. On June 9, 2006, Qualcomm filed a complaint against Nokia with the U.S. International Trade Commission (ITC) over six GSM patents. The company later withdrew three, and the ITC has meanwhile put the case on hold. On Aug. 9, 2006, Qualcomm filed a GSM patent infringement lawsuit against Nokia in Germany. The trial is set for September. On the same day,Â Nokia filed a case in Delaware, claiming that Qualcomm breached its written contractual obligations to license essential GSM and 3G (third-generation) patents on fair, reasonable and non-discriminatory (FRAND) terms. On Oct. 4, 2006, Qualcomm filed a patent infringement lawsuits against Nokia in France and on Oct. 16 in Italy over GSM technologies. On Feb. 2, 2007, Qualcomm filed three complaints in China over GSM patents. On March 19, Nokia filed complaints against Qualcomm patents in Germany and the Netherlands. On April 2, Qualcomm filed the two cases against Nokia in Wisconsin an Texas. And on May 24,Â Nokia filed a counter-claim against QualcommÂ in response to the lawsuit filed in Wisconsin.
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Texas Instruments files the first patent request for an integrated circuit. Electronics is about to be revolutionized.
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After a year-and-a-half legal battle, Texas Instruments has won the right to continue using Qualcomm&#39;s patented cell-phone technology without paying royalties.
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Judge says competitor Maxim may have infringed on Qualcomm's patents but won't bar sales of contested cell phone chips.
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A federal agency on Thursday barred the import of new models of cell phones that contain semiconductors made by Qualcomm Inc., because the chips violate a patent held by a rival, Broadcom Corp.
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The U.S. International Trade Commission (ITC)&#160;said it will investigate whether Qualcomm is complying with a ban that prohibits it from importing certain chips into the U.S.The investigation is the result of a complaint that Broadcom filed with the U.S. ITC. Qualcomm is importing chips that employ a work-around of a Broadcom patent that the court ruled Qualcomm infringes. Broadcom alleges that the new technology also infringes its patent.The investigation is the latest chapter in a long-running dispute between the two chip companies. In July, the ITC ruled that Qualcomm was infringing on Broadcom patents. In a very rare decision,&#160;the ITC forbade the import of phones that included future versions of certain Qualcomm chips rather than all the offending chips because the commission decided that would have unduly damaged the economy.However,&#160;the U.S. Court of Appeals for the Federal Circuit has since stayed that ruling.One attorney suspects that Broadcom&#39;s most recent complaint to the ITC is an effort to essentially overrule the appeals&#39; court stay.&quot;This enforcement proceeding represents a crafty way for Broadcom to get around the court&#39;s stay and go directly to the ITC to give some teeth to the remedy provided by the ITC,&quot; said Lyle Vander Schaaf, an attorney at Bryan Cave and a former ITC attorney.If the commission decides in Broadcom&#39;s favor, Qualcomm could face millions of dollars in penalties, he said.Broadcom said it is seeking fines and additional orders against Qualcomm.
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In what could be the final word on the subject from a patent authority, the International Trade Commission has upheld a ruling last October stating that networking technology supplier Qualcomm did indeed infringe upon a critical patent held by technology developer Broadcom.
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(InfoWorld) - Qualcomm and Broadcom have settled some of their patent claims against each other, avoiding a jury trial scheduled to begin next month, Qualcomm said on Friday. They remainÂ deadlocked over other patents, however, and still face several potential trials this year. The chip makers have been battling in court since 2005, whenÂ Broadcom accusedÂ Qualcomm of infringing 10 of its technology patents.Â Qualcomm respondedÂ with its own infringement suit and the companies have been at loggerheads ever since. They have now agreed to dismiss all claims against each other relating to two of Broadcom's patents and two of Qualcomm's patents, Qualcomm said. The agreement means that one of their infringement lawsuits in San Diego Federal Court will be dropped, and a trial scheduled there for March 5 has been dismissed, Qualcomm said. Other cases in San Diego and in Orange County, California, remain unresolved, and the companies still have at least four other jury trials scheduled this year, Qualcomm said. Broadcom could not immediately be reached for comment on the matter. Separately, Qualcomm said an antitrust suit brought against it and several other technology companies by Golden Bridge Technology had been dismissed on Feb. 16. The suit, which also named Motorola, Nokia, Telefonaktiebolaget LM Ericsson, NTT DoCoMo, Panasonic, and the former Lucent Technologies, accused the companies of conspiring to exclude Golden Bridge's technology from a wireless industry standard. The court determined that there was no evidence that the defendants had acted improperly, according to Qualcomm. Golden Bridge Technology could not immediately be reached.
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Qualcomm and Nokia are working to resolve their long-running, expensive legal dispute.