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Microsoft, TomTom reach patent settlement

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Intellectual,
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Intellectual Property

Ina Fried CNET News

Published: 31 Mar 2009 08:23 BST

Microsoft and TomTom have reached a settlement in their respective patent suits, the companies said on Monday.

As part of the deal, TomTom will pay Microsoft for patent protection related to mapping patents and file-management patents that Microsoft claimed were infringed by TomTom's use of the Linux kernel. Microsoft will also get access to the TomTom patents that were cited in TomTom's countersuit against Microsoft, although Microsoft will not make any payment to TomTom.

In a statement, the two companies said the settlement provides TomTom patent coverage "in a manner that is fully compliant with TomTom's obligations under the General Public License Version 2 [GPLv2]". As part of the agreement, TomTom will "remove from its products the functionality related to two file-management systems patents" over the next two years. The agreement protects TomTom's customers under the patents during that time, the companies said.

The settlement has a five-year term. Specific financial terms were not disclosed. With respect to Microsoft's mapping patents and TomTom's patents, the two companies have agreed to take no further legal action for the duration of the term. In the case of the three file-management patents, Microsoft is providing an agreement not to sue customers for their use of TomTom's products.

"We are pleased TomTom has chosen to resolve the litigation amicably by entering into a patent agreement," Microsoft deputy general counsel Horacio Gutierrez said in a statement.

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Microsoft filed its legal actions against TomTom in February. Attention was focused on the Linux claim as it marked the first time that Microsoft had filed court papers with its long-held assertion that Linux infringes on its intellectual property.

"This agreement puts an end to the litigation between our two companies," said Peter Spours, director of IP strategy and transactions at TomTom, in a statement. "It 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."

Although the pact may settles things for TomTom, it adds further questions marks for where Microsoft is headed with its broader claims against Linux. The software maker has refused to go into detail as to what actions it might take against other companies that use Linux commercially.

However, the company has sought patent deals with companies that use Linux commercially. In addition to its deals with Linux vendors such as Novell, TurboLinux, and Xandros, Microsoft has also signed pacts with consumer electronics firms that use Linux, such LG, Samsung, and Fuji Xerox.

In recent interviews, Gutierrez has said that, although each case is different, Microsoft has an obligation to its shareholders as well as to the companies that have taken patent licenses to ensure that Microsoft is being fairly compensated for its intellectual property, including in cases involving Linux.

Until the TomTom case, we had only seen examples where Microsoft was able to convince companies to take a license. The TomTom case shows, though, that we may see Microsoft begin to take further action when negotiations don't lead to a deal.