Apple looks to end Motorola patent attack in Germany with U.S. suit
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:
This is a lawsuit asserting claims for breach of contract, declaratory, and injunctive relief related to Motorolaâs European Patent No 1 010 336 (âthe â336 patentâ) and the equivalent
U.S. Patent No. 6,359,898 (âthe â898 patentâ). Motorola has sued Apple in Germany, claiming infringement of the â336 patent based on Appleâs use of Qualcomm components in Appleâs 26
iPhone 4S product. Motorolaâs 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, Motorolaâs rights under the â336 and the â898 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.
37 Comments
Good to be a lawyer
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.
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.
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.
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?