Apple files complaint against Motorola in the US to prevent iPhone 4S litigation

Apple asked a federal court to rule that Motorola Mobility's patent claims relating to Qualcomm components are exhausted

Apple has asked a federal court in California for an order enjoining Motorola Mobility from suing the company in other courts for patent infringement in connection with its use of chips from Qualcomm in its products.

The maker of the iPhone and iPad is concerned that Motorola will bring the iPhone 4S into a patent infringement lawsuit it has filed against Apple in the U.S., as it has tried to do in Germany.

Apple said in the lawsuit filed Friday before the United States District Court, Southern District of California that Motorola's lawsuit in Germany, alleging infringement of its European Patent No. 1010336 ('336 patent) in the iPhone 4S, is in direct breach of a patent licensing agreement between Qualcomm and Motorola, of which Apple is a third-party beneficiary.

Motorola's rights under the '336 and its equivalent U.S. Patent No. 6,359,898 ('898 patent) are exhausted under the same contract, Apple said in the lawsuit.

A Qualcomm subsidiary sells the MDM6610 baseband processors to Apple's contract manufacturers for their inclusion in its CDMA2000-compliant iPhone 4S, Apple said.

Motorola has sued Apple in a German court alleging that it infringes the '336 patent, claiming that it is not possible to practice the GPRS (General Packet Radio Service) standard of the European Telecommunications Standards Institute (ETSI), without infringing the '336 patent. Motorola has pursued an aggressive international campaign of litigation that flies in the face of its promise to license its cellular standards-essential patents on FRAND (fair, reasonable, and non-discriminatory) terms, Apple said.

A lawsuit relating to alleged infringement of the equivalent '898 patent is also pending before the United States District Court for the Northern District of Illinois.

Countries like Germany may opt to stay any infringement claims and enforcement requests against the iPhone 4S as long as the court in California evaluates the questions Apple has raised, Florian Mueller, a patent analyst said in a blog post.

Apple has asked the court among other things for a declaratory judgment that Apple is allowed to use Qualcomm components under a covenant not to sue, and that Motorola's patent rights in the Qualcomm MDM6610 chip and other Qualcomm components licensed under Motorola patents are exhausted.

It is also seeking permanent injunctive relief restraining Motorola from prosecuting patent infringement proceedings against Apple based on Apple's use of the Qualcomm MDM6610 chip and other Qualcomm components licensed under Motorola patents in any forum other than the court in California.

Motorola and Qualcomm could not be immediately reached for comment.

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John Ribeiro

IDG News Service
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