Thursday, September 1st 2022
Arm Files a Lawsuit Against One of its Biggest Customers, Qualcomm
The world of semiconductor IP licensing is complex by nature. If you use a company's IP, you must agree to its licensing terms. Today, it is precisely those terms that are being breached in the event of Arm Ltd. filing a lawsuit against one of its biggest customers, Qualcomm. When Qualcomm acquired Nuvia Inc., regarded as one of the best CPU design teams in the industry, it transferred Arm-Nuvia license agreements as its own. It continued the development of Arm IP under Qualcomm's name. This is a standard restriction, as Arm's licensing prohibits these sorts of IP transfers among companies to protect the IP.
As the UK-headquartered company reports: "Because Qualcomm attempted to transfer Nuvia licenses without Arm's consent, which is a standard restriction under Arm's license agreements, Nuvia's licenses terminated in March 2022. Before and after that date, Arm made multiple good faith efforts to seek a resolution. In contrast, Qualcomm has breached the terms of the Arm license agreement by continuing development under the terminated licenses. 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."
Interestingly, Arm is now " seeking specific performance of the contractual obligation to destroy certain Nuvia designs, an injunction against trademark infringement as well as fair compensation for the trademark infringement." With this case now reaching the United States District Court for the District of Delaware, it is a matter of time before we see more information about the case. The two could settle; however, Arm has pointed out that it tried it off-court with Qualcomm, and it didn't work.
Source:
Arm
As the UK-headquartered company reports: "Because Qualcomm attempted to transfer Nuvia licenses without Arm's consent, which is a standard restriction under Arm's license agreements, Nuvia's licenses terminated in March 2022. Before and after that date, Arm made multiple good faith efforts to seek a resolution. In contrast, Qualcomm has breached the terms of the Arm license agreement by continuing development under the terminated licenses. 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."
36 Comments on Arm Files a Lawsuit Against One of its Biggest Customers, Qualcomm
Additionally, AleksanderK has a habit of presenting articles from a very narrow & one-sided perspective, as was done here.The direct statement here sides with ARM based on their claims without any consideration for Qualcomm's position. The contracts are NOT public information and are governed by NDA. There is no way for anyone outside of ARM, Qualcomm and Nuvia to know the details of what is and is not permited. Further, there are conditions under which the rights and permissions of one company are transferred to another upon purchase of the subject entity. Qualcomm is likely exercising what it interprets as it's lawful rights. Again, such disputes are for a COURT to decide, not the press. It is inappropriate for an article writer to take such an openly biased position.
What I'm saying here is that the professionalism bar needs to be set a bit higher.
Arm's website (including trademark and logo guidelines) > Wikipedia.
www.arm.com/company/policies/trademarks/guidelines-trademarks
TPU is following Arm's trademark usage
What's the wrong in saying "standard contracts" aren't transferable?
But sure, the article is more 'positive' towards Arm than Qualcomm, and should've preferably been tldr; at top and then the press release from Arm
All in all, it could go either way, but I'd put my money on ARM.
@Aquinus won't stop digging my heals when I'm correct on Arm trademarking ;) I'd say it's lex that's digging his heel, unsourced/wikipedia sourced for trademark/branding vs official guidelines....
Which is more professional to use?
www.arm.com/company/policies/trademarks/arm-trademark-list/arm-trademark
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For the license itself , it certainly depends on precedence and contract.
I'm pretty sure they can have non-transferable licenses. ( www.minterellison.com/articles/back-to-basics-negotiating-ip-rights-in-technology-development-agreements#:~:text=If%20a%20licence%20is%20non,permission%20(if%20at%20all). )
but license itself is a shitshow, and I'm reminded again why I hate working close to licensing so much