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TomTom agrees patent payouts to Microsoft

Navigation device maker TomTom has agreed to make patent payouts to Microsoft for five years, settling a lawsuit brought against it by the software giant. TomTom said that the settlement does not break any licence terms for the Linux operating system.31 Mar 2009

TomTom was sued by Microsoft over eight patents which it claimed TomTom's car navigation systems infringed. Some of the claims were said to involve TomTom's use of the Linux open source operating system which Microsoft had previously claimed infringes its patents.

TomTom's director of intellectual property strategy Peter Spours said, though, that the settlement did not force TomTom into breach of the General Public License (GPL) that governs Linux use.

"This 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," said Spours.

Microsoft sued TomTom over five patents covering inventions related to car navigation systems and three to general operating systems. The settlement covers all eight patents and it gives Microsoft permission to use four patents that TomTom asserted its rights to in a counter-suit.

"We are pleased TomTom has chosen to resolve the litigation amicably by entering into a patent agreement," said Microsoft deputy general counsel of intellectual property and licensing Horacio Gutierrez. "Our car navigation patents … 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."

Microsoft filed its suit against TomTom in the US District Court for the Western District of Washington and the International Trade Commission (ITC), which can block imports of infringing goods. TomTom countersued, claiming that Microsoft's navigation systems violate four patents which it owns.

The settlement involves the payment of patent royalties by TomTom to Microsoft for five years for the use of the patents. Microsoft is granted use of TomTom's patents, though it will not pay TomTom.

TomTom will also remove technology related to two of Microsoft's file management patents within two years under the deal.

"We were able to work with TomTom to develop a patent agreement that addresses their needs and ours in a pragmatic way," said Gutierrez. "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.”

Microsoft has long claimed patent rights over some parts of Linux. It said in 2007 that the operating system infringed 235 of its patents.

On filing the TomTom suit, Gutierrez told CNET News that whether systems using Linux infringed its patents could only be judged on a case by case basis.

"[The] TomTom implementation of the Linux kernel…infringes these claims," Gutierrez said. "There are many flavors of Linux [and] many implementations of the Linux kernel. Cases such as these are very fact-specific."

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