Patent Law Updates | New Settlements and Verdicts

April 1, 2009

Microsoft and TomTom Settle GPS Patent Infringement Cases

Microsoft Corp. v. TomTom NV
No. 09-247, U.S. District Court for the Western District of Washington, 3/30/2009

Microsoft and TomTom Settle GPS Patent Infringement Cases

Holding:

Microsoft Corp. (“Microsoft”)and TomTom N.V. (“TomTom”) have settled the patent infringement cases brought by Microsoft before the U.S. District Court for the Western District of Washington and the International Trade Commission (“ITC”) and by TomTom in the U.S. District Court for the Eastern District of Virginia. Under the settlement agreement, TomTom will pay Microsoft for coverage under the eight car navigation and file management systems patents in the Microsoft case. Also as part of the agreement, Microsoft will receive coverage under the four patents relating to global position system (“GPS”) included in the TomTom countersuit. The agreement, which has a five-year term, does not require any payment by Microsoft to TomTom. It covers both past and future U.S. sales of the relevant products. The parties did not specify in the agreement the financial terms of their settlement. The agreement includes patent coverage for Microsoft’s three file management systems patents provided in a manner that is fully compliant with TomTom’s obligations under the General Public License Version 2 (GPLv2). TomTom will remove from its products the functionality related to two file management system patents (the “FAT LFN patents”), which enables efficient naming, organizing, storing and accessing of file data. TomTom will remove this functionality within two years, and the agreement provides for coverage directly to TomTom’s end customers under these patents during that time.This agreement puts an end to the litigation between the two companies.

Detailed Summary:

In its complaint filed on February 25, 2009, Microsoft alleged that it is the owner of all right, title, and interest in U.S. Patent Nos. 6,175,789; 7,054,745; 6,704,032; 7,117,286; 6,202,008; 5,579,517; 5,758,352; and 6,256,642 (collectively, “the Microsoft patents-in-suit”).  It asserted that TomTom was “directly infringing and/or inducing others to infringe by making, using, offering to sell or selling in the United States, or importing into the United States, products or processes that practice inventions claimed in the Microsoft patents-in-suit.”  Complaint, paragraph 10.

These patents relate to portable navigation devices and software.  Specifically,

—U.S. Patent No. 6,175,789 (“the ’789 patent”) is entitled “Vehicle Computer System with Open Platform Architecture” issued by the U.S. Patent and Trademark Office on January 16, 2001.

—U.S. Patent No. 7,054,745 (“the ’745 patent”) is entitled “Method and System For Generating Driving Directions,” and issued by the U.S. Patent and Trademark Office on May 30, 2006.

—U.S. Patent No. 6,704,032 (“the ’032 patent”) is entitled “Methods and Arrangements for Interacting with Controllable Objects within a Graphical User Interface Environment Using Various Input Mechanisms,” and issued by the U.S. Patent and Trademark Office on March 9, 2004.

—U.S. Patent No. 7,117,286 (“the ’286 patent”) is entitled “Portable Computing Device-integrated Appliance,” and issued by the U.S. Patent and Trademark Office on October 3, 2006.

—U.S. Patent No. 6,202,008 (“the ’008 patent”) is entitled “Vehicle Computer System with Wireless Internet Connectivity,” and issued by the U.S. Patent and Trademark Office on March 13, 2001.

—U.S. Patent No. 5,579,517 (“the ’517 patent”) is entitled “Common Name Space for Long and Short Filenames,” and ssued by the U.S. Patent and Trademark Office on November 26, 1996.

— U.S. Patent No. 5,579,517 (“the ’517 patent”) is entitled “Common Name Space for Long and Short Filenames,” and issued by the U.S. Patent and Trademark Office on November 26, 1996.

—U.S. Patent No. 5,758,352 (“the ’352 patent”) is entitled “Common Name Space for Long and Short Filenames,” and issued by the U.S. Patent and Trademark Office on May 26, 1998.

—U.S. Patent No. 6,256,642 (“the ’642 patent”) is entitled “Method and System for File System Management Using a Flash- Erasable, Programmable, Read-only Memory” and issued by the U.S. Patent and Trademark Office on July 3, 2001.

Microsoft filed the patent-infringement claims against Amsterdam-based TomTom in February after the companies were unable to reach a licensing agreement.  In its February 2009 statement announcing the filing of the suit, Microsoft said, “We have taken this action after attempting for more than a year to engage in licensing discussions with TomTom.”

On March 16 , 2009, TomTom filed a counter suit in the district court of Eastern District of Virginia. The title of the case is TomTom Global Assets BV v. Microsoft Corp., No. 09cv118, filed in the U.S. District Court, Eastern District of Virginia. In particular, TomTom alleged that “ Defendant Microsoft has made, used, offered to sell, or sold and continues to make, use, offer to sell, or sell within the United States and within this judicial district and division software products and products related thereto, including, but not limited to, its Microsoft Streets and Trips product, that directly or indirectly infringe TomTom’s U.S. Patent Nos. 5,902,350 (“the ‘350 patent”), 5,938,720 (“the ‘720 patent”), 6,600,994 B1 (“the ‘994 patent”) and 6,542,814 (“the ‘814 patent”). Upon information and belief, Defendant Microsoft has imported and continues to import into the United States products that directly or indirectly infringe the ‘350, ‘720, ‘994, and the ‘814 patents.” Paragraph 3, Amended Complaint dated March 20, 2009.

Further, TomTom alleged that it is the assignee of these patents.  Specifically,

— The ‘350 patent is entitled “Generating a Maneuver at the Intersection Through a Turn Lane” and listing Haruhisa Tamai and Simon Desai as inventors, and issued on May 11, 1999.

— The ‘720 patent is entitled “Route Generation in a Vehicle Navigation System” and listing Haruhisa Tamai as its inventor, and issued on August 17, 1999.

—The ‘994 patent is entitled “Quick Selection of Destinations in an Automobile Navigation System” and listing Ari I. Polidi as its inventor, and legally issued on July 29, 2003.

—The ‘814 patent, entitled “Methods and Apparatus for Dynamic Point of Interest Display” and listing Ari I. Polidi and Gunda Govind as inventors, and issued on April 1, 2003.

Companies Mentioned

Microsoft Corp.

TomTom N.V.

Also See:

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Demand Letter Transparency Act to Tackle Growing Problem of Patent Trolls

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Companies Mentioned

Patent Law

The following companies are mentioned in Patent Law Updates:

Boston Scientific Corp.

Microsoft Corp.

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Stryker Corp.

Cordis Corp.

Boston Scientific Scimed, Inc.

U.S. Patent and Trademark Office

Mylan Pharmaceutical, Inc.

Ortho-McNeil Pharmaceutical, Inc.

Acumed, LLC

Stryker Sales Corp.

Teva Pharmaceuticals USA, Inc.

Glamourmom LLC

Audiovox Communications Corp.

Stryker Orthopaedics

Target Corp.

McKesson Information Solutions, Inc.

Howmedica Osteonics Corp.

Kohl’s Department Stores, Inc.

Bridge Medical, Inc.

J.C. Penney Company, Inc.

Smith & Nephew, Inc.

Cohesive Technologies, Inc.

Waters Corp.

Elizabeth Lange LLC d.b.a. Liz Lange Maternity

Association for Molecular Pathology

LG Electronics, Inc.

Quanta Computer, Inc.

Federated Department Stores

Egyptian Goddess, Inc.

Swisa, Inc.

K-Mart Corp.

Motorola, Inc.

Dror Swisa

Sears Holding Corp.

Ranbaxy, Inc.

Nokia, Inc.

SmithKline Beecham Corp. d.b.a GlaxoSmithKline

Prometheus Laboratories, Inc.

SmithKline Beecham PLC

Mayo Collaborative Services d.b.a. Mayo Medical Laboratories

Sanyo North America Corp.

Glaxo Group Limited d.b.a. GlaxoSmithKline

Scimed Life Systems Inc.

Smithkline Beecham Corp. (d.b.a. GlaxoSmithKline, plc.)

Johnson & Johnson, Inc.

United States Patent and Trademark Office

Honeywell International, Inc.

HT Window Fashion Corp.

Mylan Laboratories, Inc.

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