ARM sues Qualcomm for license and trademark infringement

ARM processor developer is suing Qualcomm and its US subsidiary Nuvia. ARM claims that Qualcomm intentionally develops high-end ARM processors and also advertises them as the ARM brand without authorization. The core business came from Nuvia, which was acquired by Qualcomm last year, but whose ARM licenses are no longer valid.

Qualcomm owns a license per se, but this only applies to internal development processes. Qualcomm itself in another court case (Qualcomm vs. Trung Huang) and have also publicly stated several times that they are developing related processors that they want to introduce this year, which are based on Nuvia’s developments. These processor designs and the Nuvia developers working on them may be the main reason why Qualcomm bought Nuvia for $1.4 billion. According to ARM, that was pretty much a waste of money.

Because Nuvia’s licenses expire indisputably on March 1, 2022, which Qualcomm itself has confirmed in writing, ARM explains in the complaint filed in US Federal District Court in Delaware on Wednesday. Comprehensive negotiations between ARM and Qualcomm over a new licensing agreement did not lead to a result, but Qualcomm continues to work relentlessly and publicly announces new upcoming processors.

License status according to ARM

In order to properly classify a legal dispute, it is helpful to understand the licenses granted by ARM. The company develops processor designs, but does not manufacture them itself, but rather leaves that to third parties. ARM typically enters into a Technology License Agreement (TLA) with these, which allows processors to be manufactured with the most minor deviations from the ARM specification.

ARM rarely enters into more comprehensive architecture license agreements (ALA). These allow the licensee to develop specific designs for ARM processors. ARM offers help with this work, but there is no guarantee of success. If further development is successful, Licensee may manufacture and sell the corresponding processor cores using the ARM brand name.

However, ARM maintains that ALA generally only applies to very specific ARM processor architectures, not to ARM technology in general. Above all, however, the license terms are intended to prohibit the transfer of rights to third parties without ARM’s consent, which also expressly applies to the entire licensee’s seizure.

You buy Qualcomm Nuvia to upgrade the processor

Nuvia was founded in 2019 by former Apple and Google chip developers (which prompted Apple to sue its former employees, The apple of Gerard Williams III.). They have embarked on the development of a power-efficient ARM processor for data centers, dissolving ALA with ARM in September 2019. According to ARM, it has actively supported the development.

Qualcomm also owns ALA from ARM, and in the past has even tried to develop an ARM processor for the same data centers. But in 2018, Qualcomm discontinued this project and laid off hundreds of employees.

Qualcomm purchased Nuvia in early 2021 and was publicly pleased with the ARM processor technology purchased. It is intended for use in laptops and mobile phones, and is a departure from Nuvia’s design goal for data center processors. Qualcomm may have performed the computation without the ARM host. The British company insists on the ALA clause, under which the license may not be transferred to third parties unless ARM agrees.

ARM wants money for a new license

And ARM wants this approval to be silver. After unsuccessful negotiations, ARM terminated the Nuvia ALA effective March 1, 2022, which was confirmed by Qualcomm on April 1, 2022. Qualcomm may believe that its ALA, which is still in effect, is sufficient to continue Nuvia’s developments. ARM does not agree, and demands that all Nuvia projects be destroyed, Qualcomm and Nuvia cease operations, discontinue use of the ARM brand name in connection with the affected processors, and pay triple damages in addition to punitive damages, litigation and attorneys’ fees.

Compared to rising online, Qualcomm is disappointed that ARM is moving away from a “long-term and successful relationship with Qualcomm”. “ARM has no right, contractual or otherwise, to attempt to interfere with Qualcomm or Nuvia innovations,” the defendant wrote, “ARM’s claim ignoring that Qualcomm has broad and well-established licensing rights covering custom CPU designs. We are certain that it will support (the court) these rights.”

Various court cases

The procedure that was opened on August 31 has been called Qualcomm arm et al It is pending in the United States District Court for the State of Delaware under Case 1: 22-cv-01146.

Apple’s lawsuit against its former employee and now Nuvia developer Gerard Williams has been pending since 2019. This action is called Gerard Williams’ apple, third In Santa Clara County Superior Court under File No. 19CV352866.

One of the ironies of the story is that ARM relies, among other things, on Qualcomm’s arguments in its lawsuit against former Nuvia developer Truong Hoang. in the lawsuit Qualcomm vs. Trung Huang (U.S. District Court of Southern California, Case No. 3: 22-cv-00248), Qualcomm accused the man of copying over a thousand trade secret documents protected in Nuvia/Qualcomm without permission and transferring them to his new employer, Mediatek.

Hoang also admitted to acting as a consultant for another company while at Qualcomm without Qualcomm’s permission. The process ends with a settlement, under which Huang must destroy all documents. The comparison wouldn’t come as a surprise in ARM’s lawsuit against Qualcomm, but it’s likely to be much more expensive.

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