Federal judge finds QUALCOMM did not meet unwritten IPR disclosure expectations of standard setting group

(Business News & Technology News, 23 Mar 2007)

A federal judge ruled today that "despite the jury's advisory verdict to the contrary, the Court finds no clear and convincing evidence of inequitable conduct" by QUALCOMM Inc. in obtaining two patents. The patents are U.S. Patents Nos. 5,452,104 and 5,576,767 relating to techniques for compressing digital video signals for more efficient storage or transmission. A 2005 suit filed by QUALCOMM in San Diego federal court accused Broadcom's video encoding chips of infringing the patents. At a trial in January 2007, Broadcom argued that QUALCOMM had deceived the Patent Office by withholding certain alleged prior art in order to obtain the patents. In today's ruling, Judge Rudi M. Brewster flatly disagreed, finding that QUALCOMM had disclosed the most relevant prior art to the patent office and that QUALCOMM was not guilty of any conduct before the Patent Office that would render the patents unenforceable.

The judge also ruled today that QUALCOMM's disclosure of its ownership of patents essential to the H.264 video encoding standard created by the Joint Video Team (JVT) standardization group was not timely in light of what he found to be the unwritten expectations of the group's members. The Broadcom chips accused of infringement by QUALCOMM implement the H.264 video standard. Notably, the court did not find that QUALCOMM had violated any provision of the JVT's written intellectual property policy, but rather that a duty to make an earlier disclosure arose from his conclusion that the JVT members considered themselves obligated to make IPR declarations in circumstances not mandated by the written IPR policy. The judge declared that a remedy in such circumstances should not be automatic and scheduled a further hearing on May 2, 2007 in order to determine the appropriate remedy.

Broadcom
QUALCOMM