Apple looks to end Motorola patent attack in Germany with U.S. suit

Posted:
in General Discussion edited January 2014


Apple stayed on the legal offensive Friday, filing a new lawsuit in a U.S. court that claims Motorola Mobility's recent patent barrage of patent claims in Germany is in breach of a licensing agreement between the RAZR maker and Qualcomm.



The complaint, lodged in the Southern District Court of California, asserts that Apple buys and uses Qualcomm wireless baseband processor in its iPhone 4S product and should therefore be a third-party beneficiary to Motorola's license agreement with the chip maker, reports Reuters.



Apple's suit also claims that the patent rights Motorola is exerting in Germany are exhausted in both Europe and the U.S., thus any current or future litigation regarding said patent would be in violation of the patent's original contract.



The patent in question relates to certain how devices connect to UMTS an GPRS networks, a piece of Motorola technology that was licensed by Qualcomm to build baseband chips like the MDM6610 chip found in the CDMA version of the iPhone 4S. In December, a German court handed down an injunction against the iPhone and 3G-capable iPads, saying that the devices infringed on Motorola-owned European Patent 1010336.



In today's filing it is contested that when Qualcomm paid Motorola to use the patent, the company also bought the rights for its customers, including Apple.



From the complaint:



Quote:

This is a lawsuit asserting claims for breach of contract, declaratory, and injunctive relief related to Motorola’s European Patent No 1 010 336 (“the ‘336 patent”) and the equivalent

U.S. Patent No. 6,359,898 (“the ‘898 patent”). Motorola has sued Apple in Germany, claiming infringement of the ‘336 patent based on Apple’s use of Qualcomm components in Apple’s 26

iPhone 4S product. Motorola’s German lawsuit is in direct breach of a Patent Licensing Agreement between Motorola and Qualcomm. As a Qualcomm customer, Apple is a third-party

beneficiary of that contract. Moreover, under this same contract, Motorola’s rights under the ‘336 and the ‘898 patents are exhausted.



In total, today's filing seeks judgment on the following five outlined counts:





Breach of contract to which Apple is a third party beneficiary.

Declaratory judgment that Apple is authorized to use Qualcomm components under a covenant not to sue.

Declaratory judgment that Motorola's patent rights are exhausted.

Permanent equitable injunction.

Permanent anti-suit injunction





Qualcomm MDM6610 baseband chip in iPhone 4S teardown. | Source: TechRepublic







With the suit, Apple is looking to end the prosecution enforcement of Motorola's German claims, a permanent injunction of further lawsuits regarding the patent, damages for breach of contract and compensation for legal fees incurred during the hearing process.



Motorola has lodged numerous patent claims against Apple in Germany over a variety of patents, most recently losing a suit in Mannheim over certain 3G/UMTS technology. The telecom has dealt blows to the iPhone makers, however, and is expected to enforce an injunction in the the country related to iCloud's push services.



The U.S. District Court case is Apple Inc. and Apple Sales International v. Motorola Mobility Inc., 12-cv-355.



[ View article on AppleInsider ]

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Comments

  • just_mejust_me Posts: 591member
    Good to be a lawyer
  • apple ][apple ][ Posts: 8,128member
    Awesome! Apple is on a roll today!



    Wait for the people to enter the thread and whine about "Oh, there's too many lawsuits! I'm tired of them!". Lawsuits are a common thing for a huge company like Apple, get used to them. Like I just said in the other thread, I'm looking forward to many more.



    Apple should also join forces with all sorts of Patent Troll companies and take down the no talent companies who infringe upon Apple's IP. At least Apple is not pathetic and desperate, trying to sue using FRAND patents, like some other asshat companies are attempting to do.
  • tallest skiltallest skil Posts: 40,379member
    Quote:
    Originally Posted by Apple ][ View Post


    Apple should also join forces with all sorts of Patent Troll companies?



    The last thing Apple should do is associate themselves with patent trolls. Aside from maybe two patents since this whole thing started, all of their stuff has been legitimate concerns.
  • macky the mackymacky the macky Posts: 4,622member
    This suit will benefit any manufacturer that uses the Qualcomm chip in question. I'm surprised that MicroSoft or Nokia didn't join the suit along with many of the Android phone manufacturers.



    All-in-all, Qualcomm licenses a number of patents in order to produce their products, some relating to what the chip does, such as the Moto patent that suit centers around. Moto gets their 2.25% of the Qualcomm chip value, or about 2-3 cents, and not the $15 they were wanting to charge Apple.



    Apple's message with all these suits is "Don't copy us and don't otherwise screw around with us." In the end, there will be less suits and more innovation as other manufacturers will start sandboxing their development instead of handing an iPhone to the design department to copy.
  • apple ][apple ][ Posts: 8,128member
    Quote:
    Originally Posted by Tallest Skil View Post


    The last thing Apple should do is associate themselves with patent trolls. Aside from maybe two patents since this whole thing started, all of their stuff has been legitimate concerns.



    Wasn't there some article a little while back where Apple had transferred some patents over to a Patent Troll company, and that company then went on to sue a few Android companies?
  • macky the mackymacky the macky Posts: 4,622member
    Quote:
    Originally Posted by Tallest Skil View Post


    The last thing Apple should do is associate themselves with patent trolls. Aside from maybe two patents since this whole thing started, all of their stuff has been legitimate concerns.



    I totally agree. In addition, a patent really has no real footing until it is tried in court. It's an unfortunate aspect of the patent system.
  • machead75machead75 Posts: 28member
    Smart move. Always good to be one step ahead of the competition!
  • tundraboytundraboy Posts: 1,440member
    I'm amazed that Moto's lawyers would try to pull this stunt of requiring a license from Apple for using a component that already has a license paid for. Simple logic tells you that of course Qualcomm's license covers the purchaser of the part otherwise who would want to buy the part from Qualcomm? Am I missing something there?
  • just_mejust_me Posts: 591member
    Quote:
    Originally Posted by Apple ][ View Post


    Wasn't there some article a little while back where Apple had transferred some patents over to a Patent Troll company, and that company then went on to sue a few Android companies?





    Yup there was. Hes a mod, he cant be expected to remember every apple story AI publishes or he comments on. He has other duties like to ensure there are no spam, insults or trolling in AI
  • tallest skiltallest skil Posts: 40,379member
    Quote:
    Originally Posted by Just_Me View Post


    Yup there was. Hes a mod, he cant be expected to remember every apple story AI publishes or he comments on.



    Your implication being that every other member can?



    Quote:

    He has other duties like to ensure there are no spam, insults or trolling in AI



    Your condescension is unappreciated. If there's something that should be reported, report it, period. We can't be everywhere at once.
  • hill60hill60 Posts: 6,960member
    Quote:
    Originally Posted by Macky the Macky View Post


    This suit will benefit any manufacturer that uses the Qualcomm chip in question. I'm surprised that MicroSoft or Nokia didn't join the suit along with many of the Android phone manufacturers.



    Why should they, Motorola isn't revoking Qualcomm's license when they buy the chip of them, Apple has been singled out for this treatment, which is a breach of Qualcomm's contract with Motorola as this suit alleges.



    What's that sound I heard in the world according to Gatorguy?



    It sounded like a steel jawed trap slamming shut.
  • addaboxaddabox Posts: 12,667member
    Someone linked to a court document that seemed to indicate that Motorola had cancelled a licensing agreement with a component maker (not sure if it was Qualcomm or not) about a month after the iPhone was released-- and subsequently sued Apple for using that very same component. You get the feeling that Moto has been plotting its IP battles since long before Apple sued anyone.
  • mechanicmechanic Posts: 802member
    Quote:
    Originally Posted by addabox View Post


    Someone linked to a court document that seemed to indicate that Motorola had cancelled a licensing agreement with a component maker (not sure if it was Qualcomm or not) about a month after the iPhone was released-- and subsequently sued Apple for using that very same component. You get the feeling that Moto has been plotting its IP battles since long before Apple sued anyone.



    it was not qualcomm it was infineon the orginal chip used in the original iphone.
  • gatorguygatorguy Posts: 14,825member
    Quote:
    Originally Posted by addabox View Post


    Someone linked to a court document that seemed to indicate that Motorola had cancelled a licensing agreement with a component maker (not sure if it was Qualcomm or not) about a month after the iPhone was released-- and subsequently sued Apple for using that very same component. You get the feeling that Moto has been plotting its IP battles since long before Apple sued anyone.



    That was an Infineon chip. I'll try to find the source but somewhere in the past 24 hours I found a post/claim that Motorola decided to separate themselves from licensing any Infineon chips directly after choosing Infineon to produce a 3G chip to Moto spec, under a Moto patent, and under a Moto contract. That agreement was in Sept/07 according to a press release I found on it.



    If the claim is true (and I remember it correctly) that would imply that Apple wasn't the specific target, but perhaps better royalty income from the chip users was the intent.
  • luxom3luxom3 Posts: 96member
    Is there a possibility the original licensing from Motorola was for Qualcomm phones?

    Because I remember when QCOM made and sold phones in the early 90s.



    If so then those original QCOM licenses do not apply.



    And Apple is on the hook.



    Keep in mind gents - Motorola was THE original cell phone manufacturer. If there are patents they pretty much have all of them.
  • Quote:
    Originally Posted by LuxoM3 View Post




    Keep in mind gents - Motorola was THE original cell phone manufacturer. If there are patents they pretty much have all of them.



    I'm pretty sure that Steve patented the hell out of the iPhone. Expect to see many more pending patents being granted over time.
  • alienzedalienzed Posts: 393member
    Apple's iTools came out many many years ago and that's all iCloud is anymore... sounds like a case of too little too late for Moto...
  • cpsrocpsro Posts: 2,098member
    N.B. This will effectively become a suit against Google if the merger with MMI goes through.

    Hallelujah.
  • ajitmdajitmd Posts: 365member
    Quote:
    Originally Posted by tundraboy View Post


    I'm amazed that Moto's lawyers would try to pull this stunt of requiring a license from Apple for using a component that already has a license paid for. Simple logic tells you that of course Qualcomm's license covers the purchaser of the part otherwise who would want to buy the part from Qualcomm? Am I missing something there?



    My understand is that QCOM licenses IPRs from the UMTS consortium to manufacture the chips that are used in 3G. These licenses are for the chip only. When the chip is used in a product like the iPhone, a license has to be paid to the consortium. In previous iPhones, Apple used the Infineon chip sets. They had to pay royalties close to $40 to the consortium that included Nokia, Ericson, etc. I can not see how just using the QCOM chip would insulate Apple from having to pay all those royalties. If that was the case, they would have gone with the QCOM chips in the first place.



    The problem here is that Motorola is using the patent system is discriminatory unreasonable manner. Google want to use the patents to extort non FRAN licenses.



    Goog/Moto will end up getting spanked by the DOJ and EU. It will be along road in courts. There is too much money here, with Apple having $100B in the bank and every swinging company and lawyer wanting a piece.
  • addaboxaddabox Posts: 12,667member
    Quote:
    Originally Posted by Mechanic View Post


    it was not qualcomm it was infineon the orginal chip used in the original iphone.



    Thanks. But doesn't that suggest unflattering things about Motorola's FRAND strategy? The kind of things that could come back and bite them if they get investigated?
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