TomTom to pay Microsoft to settle patent cases

GPS navigation device vendor TomTom International BV has agreed to pay Microsoft Corp. to settle patent-infringement cases the companies filed against each other in the last five weeks, but Microsoft will not pay fees to TomTom.

TomTom will pay Microsoft to license patents for technologies in its car navigation and file-management system, effectively settling a case Microsoft filed against it last month in the U.S. District Court for the Western District of Washington and with the International Trade Commission, Microsoft said via e-mail today.

However, Microsoft is not paying TomTom to license four patents in Microsoft Streets and Trips, which were at the center of TomTom's case against it in U.S. District Court for the Eastern District of Virginia. That suit, filed earlier this month, was a reaction to Microsoft's.

Specific financial terms of the agreement are not being disclosed.

The result could have ramifications in the open-source community, which was concerned when Microsoft filed its case against TomTom. The patents at the center of Microsoft's case involved technologies found in a version of the Linux OS that TomTom's portable devices run, and Microsoft has made bold claims that Linux violates more than 235 of its patents.

Microsoft has maintained the suit has nothing to do with Linux but is a disagreement between the two companies over specific technologies. While some open-source proponents tried to keep an open mind, there was worry in the community that the suit seemed a reversal of a friendlier attitude toward open source that Microsoft has tried to cultivate in the last year and a half with donations to open-source projects and the formation of its platform strategy group, which acts as a liaison to the community.

According to the agreement's terms, TomTom will remove within two years from its products functionality related to two file-management system patents that violate Microsoft intellectual property. Customers will be protected during that period from patent infringement claims from Microsoft, the company said.

Three other file-management systems patents TomTom uses in its devices are covered under the suit provided they are implemented in compliance with the General Public License Version 2 (GPLv2), according to Microsoft.

In a statement, Peter Spours, director of IP strategy and transactions at TomTom, said the company's compliance with GPLv2 under the terms of its agreement with Microsoft reaffirms TomTom's commitment to the open-source community.

Horacio Gutierrez, Microsoft's corporate vice president and deputy general counsel of intellectual property and licensing, said in a statement that he is pleased TomTom chose to resolve the matter out of court, and that many companies already license the patents in question, including companies that create products containing both open-source and proprietary code.