Slacker, re: Apple v MOT ………………………
Thanks for your summation which from my quick read appears to cover the basic case. However, I believe Apple has seen the MOT /QCOM contract …the provisions of which are the “.. basis of the confidential complaint filed under seal concurrently in this Court…”
From this complaint, it appears we now can connect some more dots-
1) Apple has a QCOM license
2) MOT included 3rd party pass thru rights in their license with QCOM (and attempted to withdraw such).
3) Apple, as does **any** licensed device mfg that uses a QCOM chipset (MSM / MDM), automatically has right to all 3rd party IPR. Note- I incorrectly believed that only licensees that agreed to the 3rd party provision had these rights …..quid pro quo.
4) It appears that MOT’s subject IPR was included in the 3rd party pass-thru rights and thus automatically becomes available to Apple, or **any** licensed device mfg using a QCOM chipset…( patent exhaustion??)
5) There appears to be an “escape clause” out of the 3rd party provisions… void if first to initiate litigation.
6) The MDM6610 baseband is used within Apple’s CDMA2000-compliant iPhone 4S.
7) Apple, or **any** licensed device mfg that uses a QCOM chipset (MSM /MDM) is protected from infringement claims filed by any of Q’s 3rd party pass-thru rights participant companies.
I wonder if this applies to only essential patents attached to the applicable standard? ..non-essential IPR does not apply???
If a mobile device mfg wants to limit litigation…. Use a QCOM chipset , and don’t be first to litigate. ….Patent Peace.
OTOH- if a device mfg has significant IPR and wants to block others… don’t sign-up for the 3rd party pass-thru right provision. The downside is the tedious and costly requirement to license individually with many other companies with essential IPR.
I believe we were told that NOK did not agree to 3rd party pass-thru rights, but did agree to a lower royalty cap in their last Q license extension
Snips from Apple's complaint ( thanks for spending the big bucks) >>>>>>>>>>>>>>>>>>>>>>
newsandinsight.thomsonreuters.com
+ 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.
+ MOTOROLA’S LICENSE WITH QUALCOMM
8. The provisions of the Patent Licensing Agreement upon which this dispute is
based are set forth in the confidential Complaint filed under seal concurrently in this Court.
III. THE QUALCOMM COMPONENTS SUPPLIED FOR INCORPORATION INTO
APPLE PRODUCTS ARE LICENSED BY MOTOROLA
9. Qualcomm CDMA Technologies Asia-Pacific Pte. Ld. (“QCTAP”), which is a
wholly-owned subsidiary of Qualcomm Incorporated, now sells the MDM6610 baseband
processors to Apple’s contract manufacturers and those components are incorporated into Apple’s
CDMA2000-compliant iPhone 4S.
+ MOTOROLA’S INEFFECTIVE ATTEMPT TO TERMINATE APPLE’S RIGHT
TO USE THE QUALCOMM COMPONENTS
39. On January 11, 2011, Mr. Kirk Dailey, Motorola’s Corporate Vice President,
Intellectual Property, sent a letter to Qualcomm, copying Apple, purporting “to terminate any and
all license and covenant rights with respect to Apple, effective February 10, 2011 (30 days from
the date of this letter).”
40. Apple has not asserted any of its Customer Essential Patents against Motorola and
did not first assert any of its patents against Motorola. It was Motorola who first sued Apple for
patent infringement on October 6, 2010 in the United States District Courts for the Northern
District of Illinois, the Southern District of Florida, and in the International Trade Commission.
Accordingly, Motorola is not entitled to terminate license and covenant rights that flow to Apple
under the Qualcomm/Motorola agreements.
41. On April 25, 2011, Mr. Derek Aberle, Executive Vice President of Qualcomm and President of Qualcomm Technology Licensing responded to Motorola’s letter of January 11,2011. Mr. Aberle disagreed with Motorola’s contention that it could invoke the Defensive Suspension Provision with respect to Apple. He noted that the Defensive Suspension provision did not entitle Motorola to terminate rights based on suits brought by Apple |
