Motorola, Qualcomm design spat

Electronic News, March 10, 1997

Libertyville, Ill.--A long-standing cooperative relationship between two wireless technology icons wound up in a legal snarl last week over cellular phone designs that bear a striking resemblance to one another.

Motorola said Qualcomm, Inc. copied the basic look, including key design elements and functional features, of its StarTAC Code Division Multiple Access (CDMA) digital handset and declared its intention to sue the San Diego-based company for patent infringement. The company said it will seek an injunction and damages.

Qualcomm denied any wrongdoing and petitioned a San Diego court to affirm its innocence before Motorola has a chance to try and prove otherwise.

The battleground must look familiar to Qualcomm--it is currently embroiled in a similar patent infringement dispute with Telefon AB L.M. Ericsson, which sued Qualcomm last year for infringement of eight CDMA patents relating to telephone equipment and chips.

Qualcomm is leading the fledgling CDMA market, as others are just entering. CDMA has been hailed by supporters as giving a cleaner signal than other digital cellular standards that seek to replace analog cellular technology; yet its widespread deployment has been delayed because of technical snafus. It is one of a handful of technologies being pushed for the PCS (Personal Communications Services) market emerging in the U.S., which operates in the 1,800MHz to 2GHz frequency band.

Long a leader in the cellular phone market, Motorola invested heavily in CDMA early on, but is said to be still only shipping small quantities of the handsets.

Last week, Motorola asserted that Qualcomm took advantage of "good faith" negotiations for a CDMA patent cross license to gain access to the design it ultimately applied to its palm-sized Q Phone, unveiled at last week's Wireless '97 show in San Francisco. The Q Phone looks remarkably similar to the StarTAC Wearable Cellular Telephone, according to Motorola, right down to the marketing literature.

"Qualcomm led Motorola to believe that it had no intention of copying Motorola's products, but merely wanted to avoid inadvertent infringement," said Wolf Pavlok, senior VP and GM of Motorola's Pan American Cellular Subscriber group.

Motorola has since called off the negotiations.

That, coupled with the threat of legal action led Qualcomm to ask the U.S. District Court in San Diego for a declaratory judgment that its product does not infringe Motorola's patents.

Furthermore, Qualcomm claimed a 1990 technology and patent license between the companies precludes Motorola from asserting infringement of the patents.

"In our development of the Q Phone, we followed our usual practice of verifying and checking existing patents. Our lawsuit seeks judicial confirmation that our judgment was correct," stated Harvey White, president of Qualcomm.