Apple has filed a suit in San Diego federal court accusing Motorola of breaching its licensing agreement with Qualcomm over a chip used in the iPhone 4S.
The Californian company's latest filing revolves around technology found in the iPhone 4S's MDM6610 baseband chip, which is made by Qualcomm and contains technology licensed from Motorola. Motorola has raised the possibility that it may assert a patent infringement claim against Apple for using the chip.
Apple's pre-emptive filing on Friday, however, aims to stop Motorola from suing it for using the chip. In particular, Apple is aiming to stop enforcement of Motorola's claims in Germany, where it has filed lawsuits against the iPad maker citing patent infringement in its mobile devices. Apple is also seeking to block Motorola from filing further lawsuits over its use of the Qualcomm-licensed technology in its products.
Apple and Motorola have been involved in a number of patent disputes in various countries including the Netherlands, the US and Germany.
Apple's filing (PDF) on Friday argues that as a customer of Qualcomm, which licenses the technology from Motorola, it is protected from being sued under the terms of 'patent exhaustion' — i.e. that once a patented technology is licensed to a third-party and then sold in a product that the original patent holder cannot sue for infringement.
Also at issue is whether Motorola's attempt to terminate third-party rights with respect to Apple is in breach of agreements to license the technology on Fair Reasonable and Non Discriminatory (FRAND) terms.
"On 11 January, 2011, Kirk Dailey, Motorola's corporate vice president of Intellectual Property, sent a letter to Qualcomm, copying Apple, purporting to terminate any and all license and covenant rights with respect to Apple, effective 10 February, 2011," the filing notes.
Software patent expert Florian Mueller said on Saturday that it was an issue that could have a far reaching effect in the context of Motorola and Apple's patent battles.
"This lawsuit here is different from the previous ones. It's an 'antisuit lawsuit'. It aims to prevent litigation and curb abuse that would, if proven, be outrageous beyond belief," Mueller wrote in a blog.
Mueller also said the decision could also raise potential antitrust issues for Google's purchase of Motorola Mobility.
"This is a very serious issue, and it could have major impact. Beyond presenting a good chance that Motorola will in the not too distant future be effectively precluded from enforcing its baseband patents against the iPhone 4S — and Apple products to be released in the near term — this could further increase the likelihood of serious antitrust trouble for Google-MMI (Motorola Mobility Holdings Incorporated) in Europe and, in a worst-case scenario, it could reflect very unfavourably on Google-MMI's credibility in certain important circles."