After a nine-day trial that included testimony from Broadcom co-founder Dr. Henry Samueli and Qualcomm co-founder Dr. Irwin Jacobs, a federal jury in San Diego has found that semiconductor company Broadcom had not infringed two patents for digital video compression owned by CDMA pioneer Qualcomm.

The nine member US District Court jury reached its unanimous verdict after six hours of deliberation, rejecting Qualcomm’s claims of infringement. In addition to finding the two patents not infringed, Broadcom reports that in an advisory opinion to the presiding judge the jury found that Broadcom proved “…by clear and convincing evidence…” that Qualcomm knowingly violated a duty to disclose its patents to the Joint Video Team, or its parent organisation, during the JVT's preparation and eventual adoption of the video compression industry standard known as the H.264 standard.

In a statement Broadcom says that additional evidence of Qualcomm's effort to unfairly leverage the H.264 standard emerged during trial, with testimony that the company requested a royalty for a single patent allegedly reading on H.264 that is twice the amount charged by the entire MPEG LA licensing organisation for its pool of 160 essential patents - and with Qualcomm’s attempt to enjoin Broadcom's future sales of H.264-compliant products.

In a second advisory opinion to the judge, the jury apparently found that Broadcom proved , again by clear and convincing evidence, that Qualcomm committed inequitable conduct before the US Patent and Trademark Office (USPTO) by breaching its duty of honesty and good faith in dealings with the USPTO.

“We are obviously very pleased and very grateful for this jury's diligence in working to arrive at the truth, even when presented with some very complex and intricate engineering testimony,” remarks the interestingly named Broadcom senior vice president and general counsel David A. Dull. “This is a victory not just for Broadcom but for the entire digital video community, against an attempt by Qualcomm once again to tax an important new technology - in this instance based upon the claims of a single patent. The trial not only showed that Qualcomm was wrong about Broadcom’s alleged infringement, but also cast a bright light on Qualcomm's penchant for abusing the rules and procedures of industry standards-making bodies.”

The H.264 verdict marks Broadcom's second consecutive win against Qualcomm involving intellectual property issues. Last Autumn the United States International Trade Commission (ITC) judge ruled that Qualcomm's cellular baseband chips infringe five claims of a Broadcom patent. The full Commission affirmed that ruling in December (click) and is now reported to be considering remedies against many Qualcomm products. The ITC action was the first of several patent disputes between the companies to go to trial.

Broadcom says it is currently in the final stages of preparing additional patent infringement cases against Qualcomm concerning cellular baseband chips. In March 2007, the US District Court in San Diego is scheduled to try Broadcom's claims that Qualcomm infringes two Broadcom patents relating to Bluetooth® technology in cellular phones. Then in May 2007, the US District Court in Santa Ana is scheduled to try Broadcom's claims that Qualcomm infringes three additional Broadcom patents relating to cellular technology. Qualcomm and Broadcom have other, later-filed patent disputes pending in the US District Court in San Diego that are also expected to be tried this year. Following conclusion of the ITC proceeding, expected this March when the Commission is scheduled to rule on remedies for Qualcomm’s infringement, Broadcom will also litigate in the Santa Ana court the same three patents that were tried last year in the ITC.

Altogether, Broadcom currently has infringement claims from 14 different Broadcom patents awaiting trial against Qualcomm. The lawyers must be ecstatic.
John Williamson