Qualcomm Inc. v. Broadcom Corp

This patent infringement case involves the consequence of silence in the face of a duty to disclose patents in a standards-setting organization (“SSO”). The district court concluded that Qualcomm breached its duty to disclose U.S. Patent Nos. 5,452,104 (“’104 Patent”) and 5,576,767 (“’767 Patent”) to the Joint Video Team (“JVT”) SSO. As a remedy, the district court ordered the ’104 and ’767 Patents (and related patents) unenforceable against the world. Additionally, based on both Qualcomm’s JVT misconduct and its litigation misconduct, the court determined that this was an exceptional case and awarded Broadcom its attorney fees. For the reasons set forth below, we affirm the district court’s determinations that Qualcomm had a duty to disclose the asserted patents to the JVT, that it breached this duty, and that the JVT misconduct and litigation misconduct were proper bases for the court’s exceptional case determination. Because the scope of the remedy of unenforceability as applying to the world was too broad, however, we vacate the unenforceability judgment and remand with instructions to enter an unenforceability remedy limited in scope to H.264-compliant products. Accordingly, we affirm-in-part (duty to disclose, breach of duty, exceptional case determination), vacate-in-part (unenforceability scope), and remand.

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