Qualcomm Inc. and Motorola Inc. ended their longstanding patent disputes last week, agreeing to extend their Code Division Multiple Access cross licenses.
The new settlement calls for Motorola and Qualcomm to leave unmodified the financial terms of their original 1990 royalty-bearing license agreement for CDMA applications that encompassed certain patents filed before July 3, 1995.
The new accord encompasses certain patents filed after July 3, 1995, and licenses patents for CDMA standards including Interim Standard-95 A and B, RTT multicarrier 1X, 1X Plus and 1XTREME.
As part of the agreement, Motorola will pay royalties to Qualcomm at rates consistent with those generally paid by the industry for using newly licensed patents. Licenses Motorola originally granted to Qualcomm in 1990 for subscriber and infrastructure products were terminated since Qualcomm sold those businesses.
The agreement ends three years of complex litigation comprising seven separate federal court cases alleging claims and counterclaims for patent infringement, trade dress infringement, breach of the parties’ license agreements, misappropriation of trade secrets and unfair competition.
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 its patents because the phone copied the basic look and functions of the StarTac wearable phone.
Last year, both Motorola and Qualcomm expanded the dispute with new lawsuits, while the court ruled in Qualcomm’s favor, finding that its Q phone design did not infringe on Motorola’s phone-design patents. Qualcomm had asked the district court to terminate all of Motorola’s CDMA licenses that Qualcomm granted the company under a patent license agreement, claiming the infringement case Motorola filed violated Qualcomm’s 1990 patent agreements with Motorola. Motorola countersued, charging Qualcomm with breach of contract. A trial was set for June.
Motorola and Qualcomm also agreed to a three-year moratorium on patent infringement lawsuits with respect to CDMA subscriber products, network equipment, chipsets and test equipment. Additional details of the settlement were not announced by either company.
