Motorola Inc. said it filed counterclaims against Qualcomm Inc., the latest punitive move in a more than two-year dispute between the companies that is brewing in a San Diego U.S. district court.
Motorola claims Qualcomm breached two clauses of agreements signed between the companies in 1990, the most-favored nations and royalty-sharing provisions. This recent filing comes after Qualcomm last month asked the court to terminate all of Motorola’s CDMA licenses Qualcomm granted the company under a patent license agreement, claiming the two-year patent infringement case Motorola has pending against the company violates Qualcomm’s patent agreements. Motorola called the claims groundless.
The dispute between the two companies began in February 1997, when Qualcomm introduced its Q phone series at a Cellular Telecommunications Industry Association trade show. Motorola claimed the new CDMA handset violated Motorola’s patents because it copied the basic look and functions of its StarTac wearable phone. The case still was expanded to include several consolidated cases for patent and trade dress infringement. A pretrial conference is set for December.
“We believe their suit is meritless, and we’re confident that we have fully complied with contractual obligations,” said Qualcomm spokeswoman Christine Trimble, referring to Motorola’s latest charges.
It this latest lawsuit, Motorola claims the two companies cross-licensed certain intellectual property rights and agreed to work together to develop and commercialize Code Division Multiple Access technology, said Motorola.
Motorola said it agreed to and invested substantial amounts of money in Qualcomm’s development of CDMA technology and made Motorola’s technology available to Qualcomm. In return, Qualcomm agreed to give Motorola favorable licensing treatment and royalty sharing rights to give Motorola an advantage in the CDMA marketplace over later licensees.
Motorola claims Qualcomm’s licensing process has not given it the advantages envisioned. Motorola is seeking specific enforcement of the agreements, damages and injunctive relief.
