ITC hands minor victory to Nokia, Qualcomm may appeal

The U.S. International Trade Commission yesterday affirmed an initial ruling from December that Nokia Corp. does not infringe on three patents claimed by Qualcomm Inc.
The case, brought by Qualcomm in June 2006, related to claims by the chipmaker that the handset giant had infringed on patents related to GSM/GPRS/EDGE phones that did not also offer W-CDMA. Legal wrangling over W-CDMA-related issues continues in other venues.
The ITC’s “initial determination” from Dec. 12 — which now stands as a final ITC ruling — also found that one patent claimed by Qualcomm was invalid.
The ruling is likely to bolster Nokia’s confidence in its overall patent portfolio position as it approaches a two-track process of further litigation over myriad issues and ongoing negotiations over a cross-licensing agreement with Qualcomm.
In a statement, Nokia declared itself “very pleased” with the ITC decision, and added:
“Qualcomm’s strategy of pursuing lawsuits around the world against Nokia continues to be rejected. Further, this ‘final determination’ reaffirms Nokia’s assessment that Qualcomm does not have relevant GSM patents.”
Qualcomm declared itself “disappointed” and said it would consider an appeal. But the chip vendor added that it is focused on an upcoming case in Delaware Chancery Court, set for trial in July, that consolidates a case filed by Nokia against Qualcomm in August 2006 with elements of the rivals’ arbitration process over cross-licensing.
In the Delaware case, the Finnish handset maker charged that Qualcomm was not licensing its GSM and UMTS patents — patents declared “essential” to implementing global technology standards by ETSI, a standards-setting organization — on fair and reasonable terms. Nokia also claimed in the case that Qualcomm was not entitled to request injunctions in disputes related to essential standards.
The Delaware court has agreed to also review Nokia’s and Qualcomm’s conflicting claims regarding the status of the cross-licensing agreement that expired in April 2007. Qualcomm has claimed that, by continuing to ship products that rely on Qualcomm patents covered in the expired agreement, Nokia has “by its conduct” elected to renew the agreement and its terms. Nokia’s position is that it has until 2008 to renegotiate the terms of the agreement, based on its patent work since the agreement was first signed.
The two companies’ original agreement, forged in 1992 for devices and amended in 2001 to cover network equipment patents, expired in April 2007 relative to handsets, and the two sides have been unable to reach mutually acceptable terms in a year of negotiations and legal skirmishing.