ITC says Apple infringes a Qualcomm patent but iPhones shouldn't be banned

Qualcomm had asked for iPhones to be banned from import because of alleged patent infringement by Apple.

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Shara Tibken was a managing editor at CNET News, overseeing a team covering tech policy, EU tech, mobile and the digital divide. She previously covered mobile as a senior reporter at CNET and also wrote for Dow Jones Newswires and The Wall Street Journal. Shara is a native Midwesterner who still prefers "pop" over "soda."
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Qualcomm has wanted to prevent certain iPhones from being sold.

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Apple might've infringed a Qualcomm patent, but that doesn't mean iPhones should be banned from sale, a new US International Trade Commission filing said Friday.

Qualcomm in late 2017 had asked the ITC to prevent iPhones that had Intel 4G chips from being sold because of allegations of patent infringement. Administrative Law Judge Thomas Pender on Friday agreed that Apple infringed one Qualcomm patent related to power management, but it didn't infringe two other patents, he said in a final initial determination published to the ITC's website. 

"It is my recommendation that the statutory public interest factors weigh against issuing a limited exclusion order as to the products found to infringe the patents asserted in this investigation," Pender wrote without naming Apple or Qualcomm in his notice. 

Watch this: Qualcomm now seeks a ban on some Apple iPhone Xs

The case isn't over, though. It next goes to the full ITC commission, and President Donald Trump could even weigh in.

Apple said in a statement that "Qualcomm has continued to unfairly demand royalties for technologies they have nothing to do with to protect their monopoly. We're glad the ITC stopped Qualcomm's attempt to damage competition and ultimately harm innovators and US consumers."

Don Rosenberg, Qualcomm's general counsel, meanwhile, said in a statement that his company is "pleased" the ITC judge found Apple infringed one of its patents, "but it makes no sense to then allow infringement to continue by denying an import ban. That goes against the ITC mandate to protect American innovators by blocking the import of infringing products."

He added that "there are many ways Apple could stop infringing our technology without affecting the public interest. We look forward to a full ITC commission review in the coming months and continue to pursue the more than 40 other patent infringement cases we have brought against Apple globally."

The two companies have been fighting over patents since January 2017, when Apple filed suit against Qualcomm for roughly $1 billion, saying the maker of wireless chips didn't give fair licensing terms for its technology. Apple wants to pay a lower amount for using Qualcomm technology in its devices. Qualcomm, the world's biggest provider of mobile chips, responded by suing Apple for patent infringement and seeking a ban on iPhone sales. The company maintains that no modern handset -- including the iPhone -- would've been possible without its cellular technologies.

Nearly a year ago, Qualcomm asked the ITC to ban the import and sale of certain iPhones that use Intel's modem. Those would've included the iPhone X88 Plus7 and 7 Plus that run on AT&T and T-Mobile. The phones that run on networks from Verizon and Sprint use Qualcomm's modem and wouldn't be included in the ban.

Qualcomm initially asserted 88 claims from six patents. The ITC's decision Friday upheld only one claim from one patent. 

Earlier this week, Qualcomm accused Apple of stealing confidential information and trade secrets related to its chip software and then providing the info to Intel, a rival chip company.

Apple gave Intel engineers confidential information, including Qualcomm source code and log files, to overcome flaws in the company's chips used in iPhones, alleges a lawsuit filed Monday with the Superior Court of California. Qualcomm charged in the complaint that Apple used this "second source of chipsets" to pressure it in business negotiations.

Apple on Monday referred back to its previous comments that "Qualcomm's illegal business practices are harming Apple and the entire industry."

Because of the legal dispute, Apple has moved away from using Qualcomm modems in its devices. Its newest phones, the iPhone XS, XS Max and XR, use only Intel 4G chips.

First published at 12:45 p.m. PT.
Update at 2:01 p.m. PT:
Adds comment from Qualcomm.
Update at 2:57 p.m. PT: Adds comment from Apple.

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