Neither Qualcomm Nor Broadcom May Prevail in Remaining Battle

A few days ago, Qualcomm elected to withdraw its patent infringement claims against Broadcom, and Broadcom in turn withdrew almost all of its counterclaims...except a few. Late yesterday, we learned why. US District Judge Rudi Brewster ruled yesterday in favor of Broadcom. In 2003, when Qualcomm failed to provide information to the US International Trade Commission supporting the two specific patents it's defending now, Judge Brewster found that Qualcomm waived its rights to enforce those same patents later.

This portion of the judge's ruling coincides with an advisory verdict made by a jury last January.

The subject of these two patents was the H.264 video compression standard - patents whose validity and ownership by Qualcomm have been firmly established. The problem is, Judge Brewster found, when members of the Joint Video Task force were establishing standards for video compression codecs to be used in embedded chips such as Broadcom's, and JVT members were compelled to claim their intellectual property now...or forever hold their peace...Qualcomm had an obligation to make its objections and claims known then, but waited until it was too late.

Broadcom would not rule the day, however. Making clear he had carefully scrutinized that verdict, the judge overturned one of its key findings: that Qualcomm also withheld key data from the US Patent and Trademark Office. While Qualcomm may have been a bit negligent, the judge declared that the court "finds no clear and convincing evidence of inequitable conduct" on the part of the company.

Launching one shot across the bow while it still can, Broadcom general counsel David Dull issued a statement saying the judge's decision "confirms what the industry has long suspected: that Qualcomm does not shoot straight with standards bodies. We are continuing to examine their conduct before various cellular and other standards bodies."

In its declaration of victory - which the press has come to expect in the wake of any decision in this patent dispute, one way or the other - Qualcomm's own general counsel, Lou Lupin, stated, "Qualcomm is gratified by the court's confirmation that our conduct before the Patent Office was lawful and consistent with our duty of candor."