Case Summary
Qualcomm Inc. v. Broadcom Corp., 2007 U.S. Dist. LEXIS 57136 (S.D. Cal. Aug. 6, 2007).
Qualcomm filed a patent infringement action against Broadcom regarding a Broadcom product that met standards of a committee that required participants to disclose patents to the committee and offer to license them. According to the court, Qualcomm participated in the committee while concealing the existence of certain relevant Qualcomm patents.
Following trial, the court entered an order that Qualcomm's two patents were unenforceable due to waiver arising from Qualcomm's conduct before the standards-setting body. In addition, the court found that Qualcomm's counsel misrepresented the existence of certain documents. The court pointed to an instance in which counsel for Qualcomm stated that there was no email actually sent to the standards group that included a Qualcomm employee. According to the court, counsel's assertion came four days after preparation of the employee for her appearance as a witness during which counsel "stripped" over 50 pages of email regarding the standards group from the employee's email archive.
The court relied on Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1102 - 05 (Fed. Cir. 2003), and declared Qualcomm's patents and any derivatives "totally unenforceable." The Court further stated in an Order to Show Cause that it "is inclined to consider the imposition of any and all appropriate sanctions on Qualcomm's attorneys, including but not limited to, monetary sanctions, continuing legal education, referral to the California State Bar for appropriate investigation and possible sanctions, and counsel's formal disclosure of this Court's findings to all current clients and any courts in which counsel is admitted or has litigation currently pending."
Following trial, the court entered an order that Qualcomm's two patents were unenforceable due to waiver arising from Qualcomm's conduct before the standards-setting body. In addition, the court found that Qualcomm's counsel misrepresented the existence of certain documents. The court pointed to an instance in which counsel for Qualcomm stated that there was no email actually sent to the standards group that included a Qualcomm employee. According to the court, counsel's assertion came four days after preparation of the employee for her appearance as a witness during which counsel "stripped" over 50 pages of email regarding the standards group from the employee's email archive.
The court relied on Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1102 - 05 (Fed. Cir. 2003), and declared Qualcomm's patents and any derivatives "totally unenforceable." The Court further stated in an Order to Show Cause that it "is inclined to consider the imposition of any and all appropriate sanctions on Qualcomm's attorneys, including but not limited to, monetary sanctions, continuing legal education, referral to the California State Bar for appropriate investigation and possible sanctions, and counsel's formal disclosure of this Court's findings to all current clients and any courts in which counsel is admitted or has litigation currently pending."
