Court ruling: Qualcomm waived right to enforce digital video patents with "litigation misconduct"

By Colleen Taylor, Contributing Editor -- Electronic News, 8/8/2007

The latest in a series of litigious wins for Broadcom Corp., a San Diego federal court ruled Monday that Qualcomm Inc. has engaged in "aggravated litigation misconduct and standards abuse" with respect to two of its own patents, and has thereby waived its rights to enforce all claims of the two patents. 

The court held that Qualcomm had deliberately concealed U.S. Patent Nos. 5,452,104 and 5,576,767, which relate to digital video technology, from the standard setting body responsible for developing the H.264 standard, therefore precluding Qualcomm from enforcing the patents. The court also ordered Qualcomm to pay all of Broadcom's reasonable attorneys' fees, court costs, expert witness fees, travel expenses and any other litigation costs reasonably incurred by Broadcom in defending the patent infringement case that led to the rulings.

"Qualcomm closely monitored and participated in the development of the H.264 standard, all the while concealing the existence of at least two patents it believed were likely to be essential to the practice of the standard, until after the development was completed and the standard was published internationally," the court said in a 54-page opinion posted on Broadcom's website.  "Then, without any prior letter, email, telephone call, or even a smoke signal, let alone attempt to license Broadcom, Qualcomm filed the instant lawsuit against Broadcom for infringement of the '104 and '767 patents."

In a statement issued today, Qualcomm said it "respectfully disagrees" with the court's ruling, and intends to file an appeal.

Qualcomm filed the case in San Diego federal court in October 2005, alleging that Broadcom products complying with the H.264 digital video compression standard infringed two Qualcomm patents.  In January 2007, a unanimous jury found that Broadcom did not infringe the patents, and further recommended that the court find that Qualcomm misled an industry standards-setting body known as the JVT by failing to disclose the patents related to the H.264 standard. The court adopted the jury's finding regarding standards abuse in a March decision and held a hearing in June to determine the appropriate remedy for that alleged abuse.

Broadcom has also filed a motion for sanctions for Qualcomm's litigation misconduct in the patent case.  A hearing on that motion was conducted July 26, and the parties await a ruling.

The ruling marked the second courtroom victory enjoyed by Broadcom over Qualcomm this week. Also on Monday, the Bush administration declined to issue a veto of the U.S. International Trade Commission order barring the importation of Qualcomm chips and certain cellular phones containing those chips that have been found to infringe a Broadcom patent.