A trial early next year could decide whether L.M. Ericsson owns key patents to Interim Standard-95 technology.
Ericsson and Qualcomm Inc. are set to go to trial in February over eight patents Ericsson claims to own to cdmaOne technology. A hearing at the end of November will identify the scope and meaning of the patents and could determine which company has a stronger case.
The patents at issue include concepts for soft handoff and macrodiversity-features key to IS-95 technology.
Ericsson said it has renewed three patents through a re-issue procedure with the U.S. Patent and Trademark Office and dismissed three of the 11 patents asserted against Qualcomm in order to build a stronger case. Ericsson filed the lawsuit in September 1996.
The re-issuance, said Larry Lyles, vice president and general counsel of Ericsson, meant Ericsson narrowed the scope of two soft handoff patents, but broadened the scope of a patent for macrodiversity.
“We have stronger patents that have been through the Patent and Trademark Office twice with extra scrutiny,” said Lyles. “It strengthens our case.”
Louis Lupin, Qualcomm’s senior vice president and proprietary rights counsel, said the re-issuance of the two soft handoff patents corrected defects in the original patents. Indeed, Ericsson, in one document submitted to the patent office, said one of its soft handoff patents was broader than what it had a right to claim.
“It doesn’t strengthen their case,” he said. “By law they are required to seek claims no broader or narrower than their patents.”
In a war of press releases, Qualcomm claims Ericsson dropped the three patents from the lawsuit shortly before it was due to disclose in court proceedings its interpretation of the meaning and scope of the allegedly infringed claims.
Ericsson said Qualcomm has yet to produce any legitimate challenge to the validity of the Ericsson soft handoff patents. In papers recently filed in the Texas proceedings, Ericsson said Qualcomm was forced to admit that it has yet to uncover sufficient evidence to even raise a defense that Qualcomm invented soft handoff prior to Ericsson.
Ericsson and San Diego, Calif.-based Qualcomm have been in discussions concerning IS-95 patents since 1989. Those talks began to break down after Sweden-based Ericsson filed a patent-infringement lawsuit against Qualcomm in September 1996.
Qualcomm claims Ericsson’s patent-infringement claim violates a 1989 nondisclosure agreement between the two companies in which “Ericsson expressly acknowledged that key elements of Qualcomm’s CDMA technology … were proprietary to Qualcomm.”
Both Qualcomm and Ericsson hold CDMA U.S. patents. Qualcomm has designed and is building commercial cdmaOne infrastructure and handset equipment for the world market. Ericsson has chosen not to manufacture commercial cdmaOne equipment today, but plans to deploy wideband CDMA technology based on the Global System for Mobile communications platform for third-generation mobile phone systems.
The outcome of this trial could have an impact on the standoff between the two companies over third-generation technology. Ericsson, Nokia Oy and other vendors and GSM operators back W-CDMA technology, which is independent from current IS-95 systems. Qualcomm Inc., Lucent Technologies Inc. and U.S. and international IS-95 operators support cdma2000, an evolution of IS-95 technology. The International Telecommunication Union, in charge of setting worldwide standards, today is evaluating proposals submitted by standards bodies worldwide for 3G systems. On the table are 15 proposals that include W-CDMA, cdma2000 and other hybrid CDMA technology proposals. Qualcomm, which claims to hold key intellectual property rights to CDMA technology regardless of the bandwidth, has made it clear to the ITU it will not grant IPRs to W-CDMA technology or any other CDMA proposals unless they are converged with the cdma2000 proposal. ITU said all proposals with unresolved IPR issues will be dropped from consideration by Dec. 31.
Ericsson has said it has found no reason to believe Qualcomm holds any key IPR for W-CDMA technology. Power control and soft handoff features are key to W-CDMA technology as well.
