## Facts

- Qualcomm owned U.S. Patent Nos. 5,452,104 and 5,576,767 relating to video compression.
- A standards-setting body, the Joint Video Team (JVT), developed the H.264 video compression standard with disclosure policies for potentially relevant intellectual property.
- Qualcomm participated in the JVT process but did not disclose the ’104 and ’767 patents during standard development.
- Qualcomm sued Broadcom in the Southern District of California, alleging Broadcom’s H.264-compliant products infringed the ’104 and ’767 patents.
- Broadcom asserted equitable defenses, including that Qualcomm waived enforcement by failing to disclose patents to the JVT despite a duty to do so.
- A jury found non-infringement of the asserted claims; it also rendered advisory findings supporting waiver and inequitable conduct theories.
- The district court found waiver (but not inequitable conduct) and ordered the ’104 and ’767 patents and related patents unenforceable in a broad, “against the world” manner.
- The district court also found serious discovery misconduct by Qualcomm, deemed the matter an exceptional case under 35 U.S.C. § 285, awarded Broadcom substantial attorneys’ fees, and referred counsel for professional discipline.
- Qualcomm appealed the waiver ruling, the breadth of the unenforceability remedy, and the exceptional-case and fee determinations; it did not appeal the non-infringement verdict.

## Issues

1. Whether JVT policies and participant practice imposed a duty on Qualcomm to disclose patents potentially necessary to practice H.264, even without a formal technical proposal submission.
2. Whether the duty required disclosure of patents that “reasonably might be necessary” to practice the standard.
3. Whether Qualcomm’s nondisclosure and later assertion of the patents supported implied waiver and/or equitable estoppel.
4. Whether Broadcom could rely on equitable estoppel on appeal notwithstanding alleged pleading deficiencies.
5. Whether the district court’s unenforceability remedy declaring the patents unenforceable “against the world” was overbroad.
6. Whether Qualcomm’s discovery conduct supported an exceptional-case finding and attorneys’ fee award under 35 U.S.C. § 285.

## Decision

- The Federal Circuit held the appeal was not moot despite the unappealed non-infringement verdict because the waiver-based unenforceability judgment was broader than the non-infringement judgment.
- The court affirmed that Qualcomm had a duty to disclose under JVT policies and participant practice, and that the duty extended to patents that “reasonably might be necessary” to practice H.264.
- The court affirmed that Qualcomm breached the duty by failing to disclose the ’104 and ’767 patents.
- The court affirmed the district court’s application of implied waiver in the standards-setting context and permitted Broadcom to rely on equitable estoppel as tried and litigated.
- The court vacated the unenforceability remedy to the extent it rendered the patents unenforceable “against the world,” and remanded for a narrower remedy limited to H.264-compliant products.
- The court affirmed the exceptional-case determination and attorneys’ fee award, holding litigation misconduct alone could support § 285 relief.

## Legal Principles

- A standards-setting disclosure duty is determined from the organization’s written policies and participant practice; it may apply even without a formal technical contribution.
- In the SSO context, disclosure obligations may reach patents that “reasonably might be necessary” to practice a developing standard, not only those proven essential after the fact.
- Implied waiver may bar enforcement when a patentee with a disclosure duty intentionally withholds potentially necessary patents during standard setting and later asserts them against standard adopters.
- Equitable estoppel may be considered where the issue was fully litigated, including when tried by consent despite technical pleading disputes.
- An unenforceability remedy tied to SSO misconduct must be proportional to the equities shown; it should be limited to products connected to the standard-setting reliance at issue.
- Litigation misconduct in discovery can independently support an exceptional-case finding and fee shifting under 35 U.S.C. § 285, including for failures in electronic discovery compliance.

## Conclusion

The Federal Circuit upheld findings that Qualcomm’s nondisclosure to the H.264 standards-setting process supported implied waiver and fee shifting for litigation misconduct, but it restricted the unenforceability remedy to H.264-compliant products rather than a global bar on enforcement.


Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004 (Fed. Cir. 2008)