Arm Sues Qualcomm And Nuvia Unit For Licence Infringement

British chip designer Arm Holdings accuses Qualcomm and Nuvia of trademark infringement and breaching certain licence agreements

Arm Holdings has set aside worries about its future ownership and has begun legal action in the United States against Qualcomm and its newly acquired chip design firm Nuvia.

The Cambridge, UK-based chip designer announced the filing of a lawsuit against Qualcomm and two of its subsidiaries and Nuvia in the United States District Court for the District of Delaware for breach of certain licence agreements with Arm and trademark infringement.

The legal action stems from an acquisition. In January Qualcomm announced that it would acquire server chip specialist NuVia for approximately $1.4 billion, in an effort to bolster its SnapDragon platform.

NuVia ARM Licences

At the time of the deal, Qualcomm said that NuVia has a “proven world-class CPU and technology design team, with industry-leading expertise in high performance processors, Systems on a Chip (SoC) and power management for compute-intensive devices and applications.”

NuVia was founded by three former top semiconductor executives at Apple, who were in charge of iPhone chips.

The startup had been working on a custom CPU core design that was designed to be used in server chips.

The deal was seen as a way for Qualcomm to lessen its reliance on Arm.

Historically, most of Qualcomm’s chips have used computing cores licensed directly from Arm, while Nuvia’s cores use Arm’s underlying architecture, but are custom designs.

But soon after the acquisition was completed, the relationship between Arm and Qualcomm began to break down.

On Wednesday Arm began a lawsuit in the United States, and said it is “seeking specific performance of the contractual obligation to destroy certain Nuvia designs, an injunction against trademark infringement as well as fair compensation for the trademark infringement.”

“Arm is filing this claim to protect Arm, our partners, and the unparalleled ecosystem we have built together,” it said. “Arm and its partners have invested billions of dollars to create industry-leading intellectual property.”

“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,” the British chip designer stated.

“Before and after that date, Arm made multiple good faith efforts to seek a resolution,” it added. “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,” it said.

“As an intellectual property company, it is incumbent upon us to protect our rights and the rights of our ecosystem,” it concluded. “We will work vigorously to protect what is rightfully ours and we are confident that the courts will agree with us.”

Qualcomm response

But Qualcomm said Arm has no right 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,” Ann Chaplin, general counsel of Qualcomm was quoted by Reuters as saying in a statement.

There is speculation that if Arm’s effort is successful, it would essentially unwind one of Qualcomm’s most strategic acquisitions in recent years.

The lawsuit represents a significant breakdown of the relationship between Qualcomm and Arm.

The British chip designer has for years been one of Qualcomm’s most important technology partners.

Indeed, Qualcomm has relied on Arm designs ever since it stopped designing its own custom computing cores.

However Reuters reported that some inside Qualcomm have privately complained that Arm’s pace of innovation is slackening, causing Qualcomm’s chips to fall behind Apple’s processors in performance.