The complaint was filed on Tuesday in the US District Court for the Southern District of California in San Diego and seeks a declaratory judgment, or a clarification of the laws governing Qualcomm’s use of the relevant patents.
In August, Judge James Selna of the US District Court for the Central District of California ruled that Qualcomm had violated an injunction order by continuing to “use and support” infringing WCDMA chips and had also failed to pay royalties to Broadcom on certain infringing products.
The judge ordered Qualcomm to pay Broadcom its gross profits from those products, as well as attorneys’ fees associated with the contempt action.
Broadcom filed the case in May 2005, and in May 2007 a jury decided that Qualcomm had infringed the three patents and awarded Broadcom $19.64 million in damages. In January, a US magistrate judge also ordered Qualcomm to pay $8.5 million for withholding evidence relevant to the case.
Qualcomm vowed to appeal Judge Selna’s decision.
Broadcom is now claiming, among other issues, that “Qualcomm’s use of ‘exhausted’ patents to control post-sale use of products in the wireless communications industry results in a double recovery of royalties (or other consideration) to Qualcomm for the use of its patents”, according to a Broadcom release.
The Supreme Court somewhat expanded the doctrine of patent exhaustion, or the first-sale doctrine, in June this year, when it ruled in Quanta v LG that a downstream buyer could not be held liable for infringement, since the licence agreement in question authorised the sale of components that “substantially embodied” the patents in suit, thereby triggering exhaustion.
Following the Quanta decision, a Qualcomm spokesperson told Managing IP: “Unlike the licence agreement at issue in the Quanta case, Qualcomm's agreements limit the rights granted in order to prevent patent exhaustion. Therefore, we do not expect this decision to impact Qualcomm's business.”
That statement was reiterated by another Qualcomm spokesperson yesterday, who said: "Broadcom's latest complaint is meritless and misstates the law. Broadcom's reliance on the Supreme Court's decision in Quanta v. LG is wrong because that decision was tailored to the facts of that case which are counter to our approach."
Meanwhile, in an update to a separate proceeding at the US International Trade Commission (ITC), an administrative law judge yesterday affirmed an initial ruling that certain SiRF Technology Holdings’ chips related to global positioning system technology be barred from importation into the US, as they infringe three of Broadcom’s patents.
SiRF said last month that it has implemented alternatives to the initial ruling so that customers can continue shipping products to the US.
A Broadcom release said that the ITC will now consider whether to implement the remedies proposed by the ITC judge in his Initial Determination, which include implementing a permanent exclusion order and a cease and desist order against SiRF.
The Commission has set a target date of December 8 to issue its Final Determination and remedy order.
