1 September 2022TrademarksStaff Writer

Softbank unit takes Qualcomm to court

Chip makers square up over $1.4bn buyout | Complaint asks for destruction of tech built under license while Nuvia was part of Arm | Lawsuit is needed to protect itself claims the Softbank unit.

Arm, a chip technology company owned by Softbank Group, has sued semiconductor manufacturer Qualcomm and its recently acquired chip design company Nuvia for infringing its trademarks and violating a licence agreement.

Arm announced the suit yesterday, August 31, and stated that it is seeking specific performance of the contractual obligation to destroy certain Nuvia designs, an injunction against trademark infringement and fair compensation for the infringement.

Filed at the US District Court for the District of Delaware, the suit claimed that Qualcomm’s $1.4 billion acquisition of Nuvia caused Nuvia to breach its Arm licences, leading Arm to terminate those licences.

This, in turn, required Qualcomm and Nuvia to stop using and destroy any Arm-based technology developed under the licences, according to Arm.

The licences provided Nuvia with access to specific Arm architecture, designs, IP, and support in exchange for payment of licensing fees and royalties on future server products that include processor cores based on Arm’s architecture, designs, or related IP.

The suit added: “Undeterred, Qualcomm and Nuvia have continued working on Nuvia’s implementation of Arm architecture in violation of Arm’s rights as the creator and licensor of its technology.

“Further, Qualcomm’s conduct indicates that it has already and further intends to use Arm’s trademarks to advertise and sell the resulting products in the US, even though those products are unlicensed.”

In a statement, Arm said it had brought the claim to protect itself, its partners and “the unparalleled ecosystem we have built together”.

"Arm was left with no choice other than to bring this claim against Qualcomm and Nuvia to protect our IP, our business, and to ensure customers are able to access valid Arm-based products,” it said.

In a statement, Ann Chaplin, general counsel of Qualcomm said:"Arm’s lawsuit marks an unfortunate departure from its longstanding, successful relationship with Qualcomm. Arm has no right, contractual or otherwise, to attempt to interfere with Qualcomm’s or NUVIA's innovations. Arm’s complaint ignores the fact that Qualcomm has broad, well-established license rights covering its custom-designed CPU’s, and we are confident those rights will be affirmed."

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