Broadcom awarded $19.64M in Qualcomm patent case

By Colleen Taylor, Contributing Editor -- Electronic News, 5/30/2007

Marking a milestone in the long-running intellectual property feud between the two wireless communication chip companies, a unanimous federal jury found Monday that certain Qualcomm Inc. cellular baseband chips and software infringe claims of three Broadcom Corp.'s patents, and awarded Broadcom $19.64 million in damages for Qualcomm's past infringement.

The jury of six women and three men, sitting in U.S. District Court in Santa Ana, Calif., also found Monday that the three patents are valid and that Qualcomm's infringement was willful, allowing the court to increase the damages up to three times the amount awarded by the jury, according to Broadcom.

Broadcom said it plans to ask the court to issue a permanent injunction barring Qualcomm from further infringement of the three patents. The court has set a hearing for June 18 to schedule post-trial motions and further proceedings, including whether any injunctive relief is appropriate.

Broadcom filed the lawsuit in May 2005, alleging that five of its patents had been infringed. During the course of the litigation, Broadcom dismissed one patent, and the court stayed the case with respect to a second patent.

Not surprisingly, Broadcom expressed pleasure with the jury's findings this week. "We are very pleased with the jury's verdict, and gratified that the jurors were able to absorb and evaluate very technical material and arrive at the conclusion that Qualcomm once again is improperly utilizing our patented technology covering cellular baseband solutions," David A. Dull, Broadcom's senior VP and general counsel said in a statement. "Broadcom's patents are our company's lifeblood, representing substantial financial investment and the hard work and innovations of our engineers around the world. We are heartened that the legal system has provided redress for Qualcomm's infringing behavior."

For its part, Qualcomm was less enthusiastic about the jury's findings. "We continue to believe that none of the Broadcom patent claims are valid or were infringed by Qualcomm, and we will challenge the jury's findings of infringement, validity and willfulness in post-trial motions and on appeal if necessary," Lou Lupin, Qualcomm's executive VP and general counsel, said in a separate statement.

The three patents include: U.S. Patent No. 5,657,317, which relates generally to simultaneous participation on two networks using a single transceiver. The jury found that Qualcomm has used the multimode inventions of the '317 patent in its EV-DO baseband chips. U.S. Patent No. 6,847,686, which relates generally to a chip architecture for performing video processing. The jury found that Qualcomm has used Broadcom's patented architecture for providing this increased video performance in its "Enhanced Multimedia" and "Convergence" chip platforms. And U.S. Patent No. 6,389,010, which relates generally to a phone that may be used to place calls over fixed or variable bandwidth networks. The jury found that Qualcomm uses the invention of the '010 patent in its QChat software.

This is not the only time in recent months that Broadcom has had cause to celebrate following the outcome of a legal tussle with Qualcomm. In December 2006, the U.S. International Trade Commission (ITC) upheld an initial ruling that Qualcomm's 3G cellular baseband chips infringe a Broadcom patent related to power-saving technology. A decision on the appropriate remedy for that infringement is expected by June 7. In January, a unanimous jury in San Diego federal court determined that Broadcom does not infringe two Qualcomm patents related to video compression. The judge in that case then decided that Qualcomm had waived its right to enforce the patents by failing to comply with its obligations to the applicable industry standards body. A hearing on the appropriate remedy for Qualcomm's conduct in the video compression case is set for June 25.

And the legal battles are far from over for the two companies. Broadcom has joined five other mobile wireless technology companies in filing complaints with the European Commission alleging that Qualcomm has engaged in anticompetitive conduct in the licensing of its patents and the sale of its chipsets for mobile wireless devices and systems. Broadcom and other wireless technology companies have filed similar complaints before the Korean Fair Trade Commission. Broadcom is also appealing last year's dismissal of its federal antitrust lawsuit against Qualcomm. The dismissal, by a U.S. District Judge in New Jersey, was sent to the U.S. Court of Appeals for the Third Circuit. The appeal is scheduled to be heard June 28.