UPDATED 21:20 EDT / SEPTEMBER 10 2017

INFRA

Qualcomm loses bid to limit Apple lawsuits as patent royalties row rumbles on

Semiconductor company Qualcomm Technologies Inc.’s latest bid to force iPhone contract manufacturers to resume royalty payments worth billions of dollars has been rejected by a federal judge who said they could continue withholding payments until its dispute with Apple Inc. is resolved.

U.S. District Judge Gonzalo Curiel in San Diego ruled on Sept. 8 that Qualcomm had failed to show it would suffer “irreparable harm” if iPhone makers withheld royalties while litigation is pending. The ruling means Apple’s 11 foreign lawsuits against Qualcomm can go ahead, alongside similar legal action in the U.S.

Qualcomm and Apple have been battling it out in the courts ever since January when Apple accused the chipmaker of charging excessive royalty fees for patents around its modem chips, which are used to provide connectivity on devices such as the iPhone.

Qualcomm is required to license those chips on “fair terms” because they have become a standard across the mobile phone industry, Reuters reported. But Apple claims Qualcomm is charging unfair prices for its technology and accuses it of engaging in anticompetitive behavior. For its part, Qualcomm argues that its terms are fair and that it’s within its rights to determine prices for patents that are not covered by the industry standards rules.

Friday’s ruling comes as a blow to Qualcomm, but it wasn’t unexpected. Stacy Rasgon, an analyst with Bernstein Research, told the San Diego Tribune that the decision “suggests to me that there won’t be a quick resolution. Nobody has any incentive to settle at this point.”

Qualcomm has been left reeling after seeing its patent licensing revenue fall by around $500 million per quarter, after four Taiwan-based contract manufacturers, including Foxconn Technology, Pegatron Corp., Wistron Corp. and Compal Electronics Inc., began withholding payments to the company at the behest of Apple.

Qualcomm had been trying to win an “anti-suit” injunction against Apple. That would have forced it to temporarily halt 11 overseas lawsuits against it and its subsidiaries in places such as China, Japan, Taiwan and the U.K., ahead of the resolution of its U.S. case. Had it been successful, the contract manufacturers would have also been forced to resume making royalty payments.

However, Judge Gonzalo Curiel said there was no reason to prevent Apple from proceeding with those cases alongside the U.S. dispute. “Apple’s declarations make evident that it has sought to challenge Qualcomm’s patent licensing practices and anticompetitive conduct territory by territory,” Curiel wrote, as reported by Reuters. “While Qualcomm may object to this litigation strategy as duplicative, the Court will not conclude that Apple’s exercise of its rights under foreign laws is vexatious.”

Apple said in a statement that it was pleased with the judge’s decision. “We are pleased the federal court in San Diego decided Qualcomm must establish the fair value of its technology and defend its business practices in court before forcing Apple and others to pay exorbitant and unfair rates, which amount to a tax on our own inventions,” a spokesperson for the company said in a statement.

Christine Trimble, vice president of public affairs at Qualcomm, said that “while we are disappointed by today’s rulings, we recognize that the motions involved high procedural hurdles.”

Qualcomm has initiated a countersuit of sorts against Apple, asking the U.S. International Trade Commission to ban the import of some iPhones and iPads that use chipsets from rival company Intel Corp. Qualcomm argues that Apple infringes on some of its patents in those devices, and should be banned from sale in the U.S. as a result.

Elsewhere, Qualcomm is also facing a separate antitrust complaint from the U.S. Federal Trade Commission over its royalty licensing practices.

Image: Karlis Dambrans/Flickr

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