14 DAY TRIAL // TomTom, a Netherlands-based vendor of Linux-based car navigation devices, agreed to play to Microsoft's tune in the Redmond company's intellectual property licensing ballet after it was sued for patent infringement. TomTom looked for a brief period of time like it was more than ready to stand its ground and put up a fight, but in the end settled all patent infringement cases with Microsoft out of court.
“This agreement puts an end to the litigation between our two companies,” explained Peter Spours, director of IP Strategy and Transactions at TomTom N.V. Microsoft had filed legal action against TomTom in the U.S. District Court for the Western District of Washington and the International Trade Commission (ITC) for infringement on no less than eight patents, three of which involving the open-source Linux operating system.
In response to the software giant's IP infringement lawsuit, TomTom fired back with a countersuit in the U.S. District Court for the Eastern District of Virginia, accusing the Redmond company that it too was violating its patents. Following the settlement, the two parties informed that Microsoft would be compensated by TomTom for all eight car navigation and file management system patents. At the same time, the Redmond company managed to convince TomTom to give it coverage for the four patents involved in the countersuit. Horacio Gutierrez, corporate vice president and deputy general counsel of Intellectual Property and Licensing, Microsoft, applauded TomTom's decision.
“We are pleased TomTom has chosen to resolve the litigation amicably by entering into a patent agreement. Our car navigation patents, which are at the heart of the enhanced auto experience enjoyed by millions of drivers today, have been licensed to many companies, including leaders in the car navigation sector. The file management system patents, which increase file management system efficiency and functionality, have also been licensed by many companies, including those that produce mixed source products.”
The IP agreement between the two companies is planned to last at least five years. Microsoft made it clear that it is in no way paying TomTom even after it has settled the dispute, but no additional details were made public. “We were able to work with TomTom to develop a patent agreement that addresses their needs and ours in a pragmatic way. When addressing IP infringement issues, there are two possible paths: securing patent coverage or not using the technology at issue. Through this agreement, TomTom is choosing a combination of both paths to meet the unique needs of its business, and we are glad to help them do so,” Gutierrez added.
One aspect mentioned specifically is the fact that TomTom remains in full compliance with the General Public License Version 2 (GPLv2) for the Linux OS included in its devices, even with coverage from Microsoft for the file management systems patents. TomTom has agreed to amputate functionality from its devices that infringe on two file management system patents from Microsoft. The agreement “is drafted in a way that ensures TomTom’s full compliance with its obligations under the GPLv2, and thus reaffirms our commitment to the open source community,” Spours added.