Qualcomm Inc. v. Broadcom Corp (Fed. Cir., Dec. 1, 2008)
“This patent infringement case involves the consequence of silence in the face of a duty to disclose patents in a standards-setting organization (“SSO”).”
Qualcomm participated in the “Joint Video Team” to set standards for video compression technology. During those meetings, Qualcomm did not disclose that it held two patents that covered technologies required to comply with the standards being developed.
Under participant agreements, however, disclosure was required to help ensure “a simple royalty free baseline profile.” And, under Rambus, even non-explicit disclosure requirements can create a duty to disclose patent rights during standard setting discussions.
Because the patentee intentionally failed to disclose its patents, the court agreed that the patents were unenforceable under the equitable doctrine of implied waiver. However, the court limited the scope of the waiver only to products that were compliant with the new (H.264) standard.
Notes:
- The court cites Mark Lemley’s 2002 SSO paper