Update 09/01/2022 5:37 pm PT
Qualcomm has issued a statement regarding the lawsuit filed by Arm against Qualcomm and Nuvia. The company believes that it has Technology License Agreements (TLA) and Architecture License Agreements (ALA) with Arm fully covering Nuvia-developed Phoenix core and other technologies.
“Arm’s lawsuit marks an unfortunate departure from its longstanding, successful relationship with Qualcomm,” said Ann Chaplin, General Counsel of 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.”
Original Article
Arm on Wednesday said it had filed a lawsuit against Qualcomm and Nuvia for breach of license agreements and trademark infringement. The CPU architecture developer wants to destroy Nuvia Phoenix core design, as well as fair compensation for the usage of its trademark.
Arm granted Nuvia a Technology License Agreement (TLA) and Architecture License Agreement (ALA) in Fall 2019, letting the company modify its off-the-shelf cores (TLA) as well as design custom cores based on Arm’s select architectures (ALA). However, these licenses were granted based on certain terms and could not be transferred to Qualcomm without Arm’s consent. Furthermore, Qualcomm’s own ALA and TLA Arm licenses do not cover products featuring Arm-based technologies developed by third parties under different Arm licenses, such as Nuvia’s custom Phoenix cores described by the company in mid-2020.
As it turns out, Qualcomm transferred Nuvia’s Arm licenses to a newly formed entity after it purchased the company last March without Arm’s consent, which Arm says is a standard restriction under Arm’s license agreements. Since the companies could not come to terms, Arm terminated Nuvia’s licenses in March 2022. Instead of getting a new license, Nuvia and Qualcomm continued to develop processors based on the Phoenix core, which is a breach of license agreements, according to Arm. Furthermore, since Nuvia and Qualcomm continued to use Arm’s trademark when talking about Nuvia’s upcoming processors, they also used it illegally.
To protect its legal rights, Arm filed a lawsuit against Qualcomm Inc. and its subsidiaries Nuvia and Qualcomm in the United States District Court for the District of Delaware for breaching license agreements and illegally using Arm’s trademark. Arm demands Qualcomm to destroy the Nuvia Phoenix design and fair compensation for the trademark infringement.
“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,” a statement by Arm reads. “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.”
Nuvia was established by Gerard Williams, a former Apple chief processor architect, in Fall 2019 in a bid to develop datacenter-oriented system-on-chips (SoCs) based on a highly-custom Arm ISA. Apple sued Williams in late 2019 claiming that he used knowledge about Apple’s forthcoming chips illegally. Nuvia’s Phoenix design has never seen the light of day, but eventually the company got acquired by Qualcomm in a bid to use its designs in its upcoming processors for client PCs. At Qualcomm, Nuvia-based SoCs were delayed for a number of times and currently the company expects to start their sampling in late 2023 or early 2024. This did not stop the company from announcing that Nuvia’s designs will also be used for datacenter-oriented processors eventually.
Qualcomm and Nuvia yet have to respond to Arm’s allegations.
