Qualcomm and Patent Submarining

AUGUST 14, 2009

Just came across this, now year-old, story of Qualcomm’s submarining efforts (and subsequent cover-up) in relation to the JVT (joint video team) standardization effort for H.264/MPEG-4 AVC codec.

Qualcomm participated in the JVT (joint video team) standardization effort for H.264/MPEG-4 AVC (a video codec) which was concluded in 2003. However, they (intentionally) did not declare relevant patents (though obliged to do so) and subsequently sued Broadcom for infringement of these patents in 2005. At the resulting trial they then concealed extensive documentary material relating to their involvement in the standards process. However this fraud was discovered (in dramatic fashion) and they lost their suit with their patents being voided – though only in relation to the standard. From the Court of Appeals Judgement (United States Court of Appeals for the Federal Circuit Judgement 2007-1545, 2008-1162 pp.3-4, emphasis added):

Plaintiff Qualcomm is a member of the American National Standards Institute (“ANSI”), which is the United States representative member body in the ISO/IEC, and was an active dues-paying member for many years prior to 2001. It is also a member of the ITU-T and a participant in the JVT. Qualcomm did not disclose the ‘104 and ‘767 Patents to the JVT prior to release of the H.264 standard in May 2003.

On October 14, 2005, Qualcomm filed the present lawsuit against Broadcom in the United States District Court for the Southern District of California, claiming that Broadcom infringed the ‘104 and ‘767 Patents by making products compliant with the H.264 video compression standard. A jury trial was held from January 9, 2007, to January 26, 2007. The jury returned a unanimous verdict as to non-infringement and validity, finding that (1) Broadcom does not infringe the ‘104 and ‘767 Patents; and (2) the ‘104 and ‘767 Patents were not shown to be invalid. The jury also returned a unanimous advisory verdict as to the equitable issues, finding by clear and convincing evidence that (1) the ‘104 Patent is unenforceable due to inequitable conduct; and (2) the ‘104 and ‘767 Patents are unenforceable due to waiver.

On March 21, 2007, the district court entered an order (1) finding in favor of Qualcomm and against Broadcom on Broadcom’s counterclaim of inequitable conduct as to the ‘104 Patent; (2) finding in favor of Broadcom and against Qualcomm on Broadcom’s affirmative defense of waiver as to the ‘104 and ‘767 Patents; and (3) setting a hearing on an Order to Show Cause as to the appropriate remedy for Qualcomm’s waiver. The district court’s conclusion that Qualcomm waived its rights to assert the ‘104 and ‘767 Patents was based on Qualcomm’s conduct before the JVT.

Throughout discovery, motions practice, trial, and even post-trial, Qualcomm adamantly maintained that it did not participate in the JVT during development of the H.264 standard. Despite numerous requests for production and interrogatories requesting documents relating to Qualcomm’s JVT participation prior to adoption of the H.264 standard, Qualcomm repeatedly represented to the court that it had no such documents or emails. On January 24, 2007, however, one of the last days of trial, a Qualcomm witness testified that she had emails that Qualcomm previously claimed did not exist. Later that day, Qualcomm produced twenty-one emails belonging to that witness. As the district court later discovered, these emails were just the “tip of the iceberg,” as over two hundred thousand more pages of emails and electronic documents were produced post-trial. Remedy Order at 1245. The district court later determined that these documents and emails “indisputably demonstrate that Qualcomm participated in the JVT from as early as January 2002, that Qualcomm witnesses . . . and other engineers were all aware of and a part of this participation, and that Qualcomm knowingly attempted in trial to continue the concealment of evidence."