Court Stings Qualcomm on H.264 Standards Patents

August 8, 2007

A San Diego-based U.S. Federal Court has just ruled that Qualcomm kept its patents on the H.264 video compression standard a secret until the video standard had been adopted by the industry, and then sued users for infringing on those patents.

The Register's Bill Ray writes in part that Qualcomm was an active member of the Joint Video Team (JVT) which defined the H.264 video standard, now common in mobile phone video applications.

"But while doing so it failed to mention owning at least two patents which anyone implementing the standard would need to license," Ray writes. "When Broadcom started development of chips using the standard, Qualcomm, "without any prior letter, email, telephone call, or even a smoke signal, let alone attempt to license Broadcom, Qualcomm filed the instant lawsuit against Broadcom for infringement of the '104 and '767 patents", the court said.

The court indicated that by these actions, Qualcomm has waived any rights to contest these patents.

"By clear and convincing evidence [Qualcomm], its employees, and its witnesses actively organised and/or participated in a plan to profit heavily by (1) wrongfully concealing the patents-in-suit while participating in the JVT and then (2) actively hiding this concealment from the court, the jury and opposing counsel during the present litigation," the court said in part.

Qualcomm issued a statement mirroring an apology made in April of this year, "for the errors made during discovery and for the inaccurate testimony of certain of its witnesses", while disputing the concept that companies should be compelled to reveal patents when deliberating industry standards.

San Diego-based Qualcomm is expecting to appeal.

Qualcomm is expected to appeal the decision.