[A2k] Wall Street Journal Law Blog: Setting the Standards: Fed. Cir. Upholds Big Broadcom-Qualcomm Ruling

[Thiru Balasubramaniam]

http://blogs.wsj.com/law/2008/12/02/setting-the-standards-fed-cir-upholds-b=
ig-broadcom-qualcomm-ruling/trackback/

December 2, 2008, 9:21 am
Setting the Standards: Fed. Cir. Upholds Big Broadcom-Qualcomm Ruling
Posted by Ashby Jones

Often, it=92s hard for us non-technology-inclined folks to determine
which patent rulings coming out of the Federal Circuit are potentially
groundbreaking, and which aren=92t. But patent folks seem to be buzzing
over a Federal Circuit ruling issued yesterday involving a maneuver by
Qualcomm against Broadcom that in other cases has been called a
=93patent ambush.=94 So we=92re gonna take the liberty of getting you up to
speed on it.

According to a helpful piece by the Recorder=92s Zusha Elinson, the
Federal Circuit =97 the federal appellate court which hears appeals on
many of the nation=92s patent disputes =97 agreed with a lower court=92s
ruling that Qualcomm should be punished for its behavior in a dispute
with Broadcom. The lower court, in a 2007 opinion by Southern District
of California judge Rudi Brewster, slapped Qualcomm for not disclosing
patents to a standards-setting body and then suing adopter=92s of that
standard, namely Broadcom. Click here, here and here for earlier LB
posts on the case, which largely focused on a nasty discovery dispute
between the parties.

The Federal Circuit limited Qualcomm=92s ability to enforce the two
video compression patents it hid from a standards-setting group called
the =93Joint Video Team.=94 It also must pay Broadcom=92s attorneys fees,
which total more than $8.5 million.

According to the Recorder, the opinion helps clarify what is legal
behavior in the murky area of standards-setting organizations. Such
organizations are widely used in the technology industry to ensure,
for instance, that all lamp plugs can fit into the same electrical
outlet.

The broader impact? Clarification in what=92s long been a rather foggy
area of the law. =93The courts are showing a willingness to find a duty
to disclose where there=92s none set forth,=94 said Tyler Baker, a partner
at Fenwick & West, to the Recorder. =93It says that you should err on
the side of assuming that you have to disclose, or you may suffer the
consequences of having your patent made unenforceable if you don=92t.=94

Broadcom was represented by WilmerHale=92s Bill Lee. San Diego=92s
Qualcomm, which tapped Sidley Austin=92s Carter Phillips to handle the
argument, emphasized the ruling=92s silver lining =97 that Federal Circuit
pared back Brewster=92s order that the patents shouldn=92t be enforceable
at all.


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Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
thiru@keionline.org


Tel: +41 22 791 6727
Mobile: +41 76 508 0997