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QUALCOMM INCORPORATED, Plaintiff-Appellant, v. BROADCOM
CORPORATION, Defendant-Appellee.
2007-1545, 2008-1162
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
548 F.3d 1004; 2008 U.S. App. LEXIS 24749; 89 U.S.P.Q.2D (BNA) 1321
December 1, 2008, Decided
SUBSEQUENT
HISTORY:
certiorari dismissed by Qualcomm Inc. v. Bradcom Corp., defendant-appellee. With him on the brief were John J.
2009 U.S. LEXIS 3801 (U.S., May 15, 2009) Regan, Vinita Ferrera, Kate Saxton, and Carrie H. Seares.
Of counsel were Donald R. Steinberg and James L.
PRIOR HISTORY: [**1]
Appeals from the United States District Court for the Southern District of California in case no. 05-CV-1958, JUDGES: Before MAYER, LOURIE, and PROST,
Qualcomm Inc. v. Broadcom Corp., 539 F. Supp. 2d1214, 2007 U.S. Dist. LEXIS 57136 (S.D. Cal., 2007) OPINION BY: PROST
Qualcomm Inc. v. Broadcom Corp., 2007 U.S. Dist.
LEXIS 57122 (S.D. Cal., Aug. 6, 2007)
Qualcomm Inc. v. Broadcom Corp., 2007 U.S. Dist.
LEXIS 28211 (S.D. Cal., Mar. 21, 2007)
[*1008] PROST, Circuit Judge.
DISPOSITION:
consequence of silence in the face of a duty to disclose ("SSO"). The district court concluded that Qualcomm COUNSEL: Carter G. Phillips, Sidley Austin LLP, of
breached its duty to disclose U.S. Patent Nos. 5,452,104 Washington, DC, argued for plaintiff-appellant. With him ("'104 Patent") and 5,576,767 ("'767 Patent") to the Joint on the brief were Stephen B. Kinnaird, Eric A. Shumsky, Video Team ("JVT") SSO. As a remedy, the district court Peter S. Choi, and Ryan C. Morris. Of counsel on the ordered the '104 and '767 Patents (and related patents) brief were David B. Salmons, Bingham McCutchen LLP, unenforceable against the world. Additionally, based on of Washington, DC, and Richard S. Taffet, of New York, both Qualcomm's JVT misconduct and its litigation New York; William S. Boggs, Brian A. Foster, Timothy misconduct, the court determined that this was an S. Blackford, and Stanley J. Panikowski, DLA Piper US exceptional case and awarded Broadcom its attorney fees.
LLP, of San Diego, California; and Evan R. Chesler and For the reasons set forth below, we affirm the district Peter T. Barbur, Cravath, Swaine & Moore LLP, of New court's determinations that Qualcomm had a duty to disclose the asserted patents to the JVT, that it breachedthis duty, and that the JVT misconduct and litigation William F. Lee, Wilmer Cutler Pickering Hale and Dorr misconduct were proper bases for the court's exceptionalcase determination. Because the scope of the remedy of 548 F.3d 1004, *1008; 2008 U.S. App. LEXIS 24749, **2; unenforceability as applying to the world was too broad, On October 14, 2005, Qualcomm filed the present however, we vacate the unenforceability judgment and lawsuit against Broadcom in the United States District remand with instructions to enter an unenforceability Court for the Southern District of California, claiming remedy limited in scope to H.264-compliant products.
that Broadcom infringed the '104 and '767 Patents by Accordingly, we affirm-in-part (duty to disclose, breach making products compliant with the H.264 video of duty, exceptional case determination), vacate-in-part compression standard. A jury trial was held from January (unenforceability [**3] scope), and remand.
9, 2007, to January 26, 2007. The jury returned aunanimous verdict as to non-infringement and validity, I. BACKGROUND
finding that (1) Broadcom does not infringe the '104 and'767 Patents; and (2) [**5] the '104 and '767 Patents were not shown to be invalid. The jury also returned a Qualcomm waived its right to assert its patents by failing unanimous advisory verdict as to the equitable issues, to disclose them to the JVT SSO. The asserted patents finding by clear and convincing evidence that (1) the '104 relate to video compression technology. The '104 Patent Patent is unenforceable due to inequitable conduct; and issued in 1995 and is entitled, "Adaptive Block Size (2) the '104 and '767 Patents are unenforceable due to Image Compression Method and System." The '767 Patent issued in 1996 and is entitled, "Interframe VideoEncoding and Decoding System." Chong U. Lee, who On March 21, 2007, the district court entered an was the Vice President of Technology at Qualcomm at order (1) finding in favor of Qualcomm and against the time of this litigation, is the named inventor of the Broadcom on Broadcom's counterclaim of inequitable '104 Patent, and he and Donald Pian are the named conduct as to the '104 Patent; (2) finding in favor of inventors of the '767 Patent. Qualcomm is the assignee of the '104 and '767 Patents.
affirmative defense of waiver as to the '104 and '767Patents; and (3) setting a hearing on an Order to Show In late 2001, the JVT was established as a joint Cause as to the appropriate remedy for Qualcomm's project by two parent SSOs: (1) the Video Coding waiver. The district court's conclusion that Qualcomm waived its rights to assert the '104 and '767 Patents was based on Qualcomm's conduct before the JVT.
Standardization Sector ("ITU-T"); and (2) the MovingPicture Experts Group ("MPEG") of the International Throughout discovery, motions practice, trial, and even post-trial, Qualcomm adamantly maintained that it International Electrotechnical Commission ("IEC"). The did not participate in the JVT during development of the JVT was created to develop a single "technically aligned, production and interrogatories requesting documents [**4] technology. Qualcomm Inc. v. relating to Qualcomm's JVT participation prior to Broadcom Corp., 539 F. Supp. 2d 1214, 1218 (S.D. Cal. 2007) ("Remedy Order") (quoting JVT Terms of repeatedly represented to the court that it had no such Reference ("ToR")). The standard developed by the JVT documents or emails. On January 24, 2007, however, one was later named the H.264 standard. In May 2003, the of the last days of trial, a Qualcomm witness testified that ITU-T and ISO/IEC adopted and published the official she had emails that Qualcomm previously claimed did not exist. Later that day, Qualcomm produced twenty-oneemails belonging to that witness. As the district court [*1009] Plaintiff Qualcomm is a member of the later discovered, these emails were just the "tip of the American National Standards Institute ("ANSI"), which iceberg," as over two hundred thousand more pages of is the United States representative member body in the ISO/IEC, and was an active dues-paying member for post-trial. Remedy Order at 1245. The district court later many years prior to 2001. It is also a member of the ITU-T and a participant in the JVT. Qualcomm did not "indisputably demonstrate that Qualcomm participated in disclose the '104 and '767 Patents to the JVT prior to the JVT from as early as January 2002, that Qualcomm release of the H.264 standard in May 2003.
witnesses . . . and other engineers were all aware of and a 548 F.3d 1004, *1009; 2008 U.S. App. LEXIS 24749, **6; part of this participation, and that Qualcomm knowingly order. The magistrate judge also referred six Qualcomm attempted in trial to continue the concealment of attorneys to the California State Bar for investigation and possible sanctions. The magistrate judge further orderedQualcomm and the sanctioned attorneys to participate in On August 6, 2007, after a hearing on the Order to a comprehensive Case Review and Enforcement of Show Cause, the district court entered an Order on Discovery Obligations ("CREDO") program. Qualcomm Remedy for Finding of Waiver, ordering the '104 and subsequently paid the sanction and participated in the continuations-in-part, divisions, reissues, and any otherderivatives thereof) unenforceable against This appeal followed. We have jurisdiction under 28 In light of all of the . . . evidence finally non-infringement judgment, we "may dismiss this appeal as moot, because it no longer presents any Appellee's Br. 1-2. As Qualcomm responds, however, the district court's judgment on waiver related patents) unenforceable against the world, lose the opportunity to mitigate, if not to which has a broader scope than the judgment of non-infringement as to the asserted claims and the accused products in this case. Thus, Qualcomm's Broadcom, ignorant of the existence of the failure to appeal the non-infringement judgment '104 and '767 patents, designed and is in does not moot its appeal of the unenforceability judgment. Cf. Astra Aktiebolag v. Andrx Pharms., Inc. (In re Omeprazole Patent Litig.), 483 F.3d1364, 1375 (Fed. Cir. 2007) (stating that an "inequitable conduct claim was not technicallymoot, because it would have rendered the entire . .
On August 6, 2007, the district court also granted . patent unenforceable, rather than just the claims Broadcom's exceptional case motion, finding that this is "an exceptional case by clear and convincing evidencebased on (1) Qualcomm's bad faith participation in the II. DISCUSSION
H.264-standard-setting body, the Joint Video Team By failing to disclose relevant intellectual property ('JVT'); and (2) the litigation misconduct of Qualcomm rights ("IPR") to an SSO prior to the adoption of a through its employees, hired outside witnesses, and trial standard, a "patent holder is in a position to 'hold up' counsel during discovery, motions practice, trial, and industry participants from implementing the standard.
post-trial proceedings." Qualcomm Inc. v. Broadcom Industry participants who have invested significant Corp., No. 05-CV-1958, 2007 U.S. Dist. LEXIS 57122, at resources developing products and technologies that *7 (S.D. Cal. Aug. 6, 2007) [**8] ("Exceptional Case conform to the standard will find it prohibitively Order"). In conjunction with the exceptional case order, expensive to abandon their investment and switch to the district court granted Broadcom its attorney fees.
another standard." Broadcom Corp. v. Qualcomm Inc., On October 12, 2007, the magistrate judge held a 501 F.3d 297, 310 (3d Cir. 2007). In order to avoid hearing to investigate Qualcomm's litigation misconduct.
"patent hold-up," many SSOs require participants [**10] As a sanction, the magistrate judge ordered Qualcomm to to disclose and/or give up IPR covering a standard. See pay Broadcom's attorney fees, offset by any amount Mark A. Lemley, Intellectual Property Rights and Qualcomm pays associated with the exceptional case Standard-Setting Organizations, 90 Cal. L. Rev. 1889,1902 (2002) ("Because many SSOs want the public to be 548 F.3d 1004, *1010; 2008 U.S. App. LEXIS 24749, **10; free to use their standard, they will often require members associated with any standardization proposal (of their to give up any IP protection that covers the standard.").
own or anyone else's). Such information should beprovided on a best effort basis.'" Id. (quoting JVT ToR [*1011] In Rambus Inc. v. Infineon Technologies subsection 3.2). The district court next considered the AG, this court considered the question of whether the JVT participants' treatment of the JVT IPR policies. The plaintiff, Rambus, had a duty to disclose information district court stated that, "[s]imilar to Rambus, despite the about patents or patent applications to the Joint Electron Device Engineering Council ("JEDEC"), which is an participants to disclose patents to the JVT, the issue SSO associated with the Electronic Industries Alliance before the Court is whether JVT participants treated the ("EIA" ). 318 F.3d 1081, 1096 (Fed. Cir. 2003). It stated IPR policy as imposing a duty of disclosure." Id. at *38.
that, "[b]efore determining whether Rambus withheld The district court concluded, like Rambus, that JVT information about patents or applications in the face of a members treated the JVT IPR policies as imposing a duty duty to disclose, this court first must ascertain what duty of disclosure on participants apart from the submission of Rambus owed JEDEC." Id. In determining what duty, if technical proposals. In order to determine whether any, Rambus owed JEDEC, our court considered both the Qualcomm breached its disclosure duty, the district court language of the written EIA/JEDEC IPR policy and the considered whether the '104 and '767 Patents "reasonably members' treatment of said language. Id. at 1098. It [**13] be necessary" to practice the H.264 determined that the written policy did not impose a direct standard. Finally, having concluded that the asserted duty on members expressly requiring disclosure of IPR patents fell within the "reasonably might be necessary" information. [**11] Id. "Nevertheless, because JEDEC standard, the district court determined that the proper members treated the language of [the policy] as imposing remedy for said breach was to order the patents a disclosure duty, this court likewise treat[ed] this language as imposing a disclosure duty." Id.
This appeal requires that we address the following After considering evidence regarding the JEDEC questions relating to the district court's judgment: (1) members' understanding of the JEDEC policy, this court Existence of Disclosure Duty: Did Qualcomm, as a determined that "Rambus's duty to disclose extended only participant [*1012] in the JVT, have a duty to disclose to claims in patents or applications that reasonably might patents to the JVT prior to the release of the H.264 be necessary to practice the standard." Id. at 1100.
standard in May 2003; (2) Scope of Disclosure Duty: If Applying that rationale to the claims at issue and the so, what was the scope of its disclosure duty; (3) Breach: evidence in the case, it stated that "[t]he record shows Did Qualcomm breach its disclosure duty by failing to that Rambus's claimed technology did not fall within the disclose the '104 and '767 Patents; and (4) Remedy: If so, JEDEC disclosure duty." Id. at 1104. Accordingly, this was it within the district court's equitable authority to court concluded that "substantial evidence does not enter an unenforceability remedy based on the equitable support the jury's verdict that Rambus breached its duties under the EIA/JEDEC policy." Id. at 1105.
A. Existence of Disclosure Duty
In the present case, the district court considered whether Qualcomm had a duty to disclose the '104 and 1. Standard of Review
'767 Patents to the JVT prior to the release of the H.264standard. The district court first analyzed the written JVT We review questions of law de novo, Wang Labs., IPR policies, and concluded that, "[s]imilar to Rambus, Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1581 the JVT IPR Policy and Guidelines provide no express (Fed. Cir. 1997), and factual findings for clear error, Fed. requirement to disclose patents unless [**12] a member R. Civ. P. 52(a). The existence of a disclosure duty is a submits a technical proposal." Qualcomm Inc. v. legal [**14] question with factual underpinnings. See Broadcom Corp., No. 05-CV-1958, 2007 U.S. Dist. Rambus, 318 F.3d at 1087 n.3 (stating that the existence LEXIS 28211, at *34 (S.D. Cal. Mar. 21, 2007) ("Waiver of a disclosure duty "may well be a legal question with factual underpinnings"). In the present case, one such 'members/experts are encouraged to disclose as soon as possible IPR information (of their own or anyone else's) understanding of the meaning of the JVT IPR policies.
548 F.3d 1004, *1012; 2008 U.S. App. LEXIS 24749, **14; 2. Written Policies
Subsection 3.2, entitled "Collection of IPR information during the standardization process," Determining whether Qualcomm had a duty to disclose the '104 and '767 Patents to the JVT involvestwo questions. First, we must determine whether the obligations on participants (apart from the submission of technical proposals). Second, to the extent the written JVT IPR policies are ambiguous, we must determine whether the JVT participants understood the policies as The district court first considered the written JVT IPR policies. Specifically, the district court considered the JVT ToR, which encompass patent and copyrightIPR. 2 As the district court noted, the IPR [*1013] disclosure provisions of the JVT IPR policies apply to Qualcomm, as a member of the ITU-T and participant in Declaration form--note that this isdistinct from the ITU ISO IEC Section 3 of the JVT ToR is entitled "IPR Policy & Guidelines." J.A. 8175. Subsection 3.1, entitled "Basic IPR [**15] Principles," states that the "JVT has agreed to the following basic principles" regarding IPR for the JVT codec: decoder) in order to promote thewide implementation and use of 548 F.3d 1004, *1013; 2008 U.S. App. LEXIS 24749, **16; On appeal, the threshold dispute between the parties is whether the written JVT IPR policies impose any disclosure duty on participants apart from the submission of technical proposals. Qualcomm argues that the written JVT IPR policies require disclosure only when atechnical proposal is made, and that disclosure is merelyencouraged from participants not submitting technical proposals. Broadcom, however, argues that the written policies of both the JVT and its parent organizations impose disclosure obligations on participants (apart from the submission of technical proposals). Additionally, Broadcom submits that, to the extent there is any ambiguity in the written policies, the understanding of the One of the key inquiries regarding the meaning of the written JVT IPR policies centers on the following language of subsection 3.2 of the JVT ToR: "According to the ITU-T and ISO/IEC IPR policy, members/experts tabulated in a "IPR status list" (e.g.
are encouraged to disclose as soon as possible IPR information (of their own or anyone else's) associated with any standardization proposal (of their own or anyone else's). Such information [**19] should be provided on a best effort basis." J.A. 8176 (emphases added). Pointing to subsection 3.2, Qualcomm argues that the express the "IPR status list" as early as language of the written JVT policies only requires possible. The "IPR status list" is a disclosure when a technical proposal is made, and that disclosure is merely "encouraged" from participants notmaking technical proposals. Thus, Qualcomm argues that the district court erred in holding that Qualcomm waivedpatent rights by breaching an "unwritten" JVT disclosure As the district court observed, it is clear from a duty. In addition to the language of subsection 3.2, review of the JVT IPR policies that identification of IPR Qualcomm points to the JVT patent disclosure form, by JVT participants is critical to the development of an which states: "JVT requires that all technical [*1014] contributions be accompanied with this form. Anyone profiles of the JVT standard may include patents on a with knowledge of any patent affecting the use of JVT reasonable terms and conditions basis, the goal of the work, of their own or any other entity ('third parties'), is JVT was to develop a royalty free "baseline" profile. See strongly encouraged to submit this form as well." J.A.
J.A. 8176 ("The JVT codec should have a simple royalty 8179 (first, third, and fourth emphases added).
free 'baseline' profile."). The district court recognized that"[t]he non-disclosure of a participant's core patents in such a program could put the participant in a position in which it could literally block the use of the published H.264 standard by any company unless the company "information should be provided on a best effort basis").
obtained a separate license from the participant." Waiver When asked at oral argument whether there is any Order at *60. As previously mentioned, however, the evidence in the record that Qualcomm made any efforts, district court determined that the written JVT IPR let alone best [**20] efforts, to disclose IPR information policies "provide no express requirement to disclose associated with any standardization proposal, Qualcomm [**18] patents unless a member submits a technical responded, "No, we didn't because we did not view that as imposing a duty on us." Oral Arg. at 9:27, available at 548 F.3d 1004, *1014; 2008 U.S. App. LEXIS 24749, **20; http://oralarguments.cafc.uscourts.gov/mp3/2007-1545.mp3.
On rebuttal, Qualcomm clarified this response by "encouraged," not required. See Oral Arg. at 35:09, approval process. So if you're participating http://oralarguments.cafc.uscourts.gov/mp3/2007-1545.mp3; have to submit a form to the parent bodies.
see also Appellant's Br. 25 ("The use of best efforts to identify essential patents, like the disclosure thereof, is merely encouraged, not required.").
participating prior to approval, so thislanguage didn't apply.
We disagree with Qualcomm's reading of subsection 3.2. While Qualcomm places much emphasis on the use [*1015] J.A. 26421. We now know, however, that of the word "encouraged" in subsection 3.2, we agree Qualcomm actually was participating in the JVT prior to with Broadcom that, when considered in light of the approval of the H.264 standard. On appeal, Qualcomm relevant context, this language applies to the timing of the responds that its trial counsel "acknowledged that the disclosure (i.e., "encouraged to disclose as soon as 'must be done' language is mandatory but did not make possible"), not the disclosure duty itself. Thus, while the any representations as to the nature of the disclosure duty language of the JVT IPR policies may not expressly or what constitutes the relevant participation in parent require disclosure by all participants in all circumstances organizations." Appellant's Reply Br. 8 n.1. Qualcomm's (e.g., if relevant IPR is not disclosed despite the use of trial counsel clearly indicated, however, that its position best efforts), [**21] it at least incorporates a best efforts was, "if you're participating when a standard is approved, standard (even apart from the submission of technical [**23] then you have to submit a form to the parent proposals). By Qualcomm's own admission, it did not bodies." J.A. 26421. We reject its contrary arguments on present evidence of any efforts, much less best efforts, to disclose patents associated with the standardizationproposal (of their own or anyone else's) to the JVT prior The rules of the JVT parent organizations provide to the release of the H.264 standard.
that an ITU-T and ISO/IEC "Patent Statement andLicensing Declaration" should be submitted separately to Moreover, in addition to the disclosure obligations the ITU-T and ISO/IEC prior to final approval of a provided in the JVT IPR policies, Qualcomm has standard created by the JVT. Remedy Order at 1219. The disclosure obligations under the rules of the JVT parent ITU-T and ISO/IEC patent policy provides that "any organizations. Subsection 3.2 of the JVT IPR policies party participating in the work of the ITU, ISO or IEC states that "the JVT Patent Disclosure form at the should" identify patents "embodied fully or partly" in a proposal stage does not have the same formal status as standard under consideration. Id. As the district court the final IPR declaration to the ITU TSB and ISO/IEC, noted, this language applies to Qualcomm as a "party which must be done in the approval process for the ITU-T participating in the work of the ITU, ISO or IEC." 3 Id. In Recommendation and ISO/IEC International Standard." light of the foregoing, we agree with the district court that J.A. 8176 (emphasis added). Broadcom submits that the JVT participants also had to disclose patents prior to final "must be done" language in subsection 3.2 is a mandatory approval of a standard under the rules of the JVT parent final approval process requiring all participants to make disclosure prior to final approval of the standard. Indeed,Broadcom claims that Qualcomm made arguments to the 3 Likewise, Broadcom argues that Section 2.14.2 trial court that should preclude it from arguing on appeal of the ISO/IEC Directives applies to Qualcomm.
that there is not a "must be [**22] done" requirement.
Specifically, Broadcom asserts that, in the following http://oralarguments.cafc.uscourts.gov/mp3/2007-1545.mp3; argument to the district court, Qualcomm conceded that Appellee's Br. 38. Section 2.14.2(a) of the JVT participants had a duty to disclose patents to the ISO/IEC and the ITU-T when a standard was approved: 548 F.3d 1004, *1015; 2008 U.S. App. LEXIS 24749, **23; Policies
Even if we were to read the written IPR policies as aforementioned disclosure obligations, our conclusion as to the disclosure obligations of JVT participants would nonetheless be the same. That is because the language of the JVT [*1016] IPR policies coupled with the district court's unassailable findings and conclusions as to the JVT participants' understanding of the policies further establishes that the policies imposed disclosure duties [**26] on participants (apart from the submission oftechnical proposals). As previously discussed, even J.A. 11892-93. Broadcom also points to the though the Rambus court determined that there was not ITU-T policy stating that "the patent holder has to an express disclosure duty in the JEDEC patent policy in provide a written statement to be filed at the that case, it treated the policy as imposing a disclosure [Telecommunications Standards Bureau] using duty because the members treated it as imposing a the ITU-T 'Patent Statement and Licensing disclosure duty. Rambus, 318 F.3d at 1098.
Declaration' form." J.A. 11925; Appellee's Br. 38.
In the present case, while the district court concluded At oral argument, Qualcomm argued, however, that there was no express disclosure requirement in the that the ISO/IEC policy does not impose any written policies apart from the submission of technical more of a duty than otherwise would exist. Oral proposals, it found "clear and convincing evidence that JVT participants treated the JVT IPR Policies as http://oralarguments.cafc.uscourts.gov/mp3/2007-1545.mp3.
imposing a duty to disclose," Waiver Order at *34, and 4 Qualcomm notes that, while it did not disclose "that Qualcomm was aware of this treatment as early as the '104 and '767 Patents to the JVT prior to August 2002," prior to the release of the H.264 standard adoption of the H.264 standard, it did disclose the in May 2003, Remedy Order at 1224. Specifically, the technology covered by the asserted patents to a district court noted that, "like Rambus, in addition to the different project, the MPEG Digital Cinema written guidelines, JVT participants also learned of the project, in late 2001. It also notes that "[t]he meetings." Waiver Order at *34. The district court Sullivan, who subsequently chaired the JVT." considered witness testimony, including testimony from Qualcomm employees, indicating that it was the practice responds, however, Qualcomm cannot argue that of the chairman of the [**27] JVT, Gary Sullivan, to its disclosure to the Digital Cinema project discuss the JVT IPR policies at every meeting. The district court also considered testimony indicating that Additionally, Broadcom argues that Qualcomm's disclosure to the Digital Cinema project shows without an accompanying technical proposal.
that there is no doubt that Qualcomm knew howto disclose these patents when it chose to disclose Qualcomm attempts to distinguish Rambus by them in the development of another standard. We arguing that the JEDEC patent policy in Rambus was silent as to whether members had a disclosure duty, whilethe written JVT IPR policies are "unambiguous," In sum, we conclude that Qualcomm, as a participant Appellant's Reply Br. 15, and "expressly specify in the JVT prior to the release of the H.264 standard, did disclosure duties only in conjunction with a submission," have IPR disclosure obligations, as discussed above, Appellant's Br. 28. Thus, Qualcomm argues that the under the written policies of both the JVT and its parent district court erred by inferring a disclosure duty that is "directly contrary to the written JVT policy." Appellant's 3. JVT Participants' Understanding of the JVT IPR
Br. 26. As previously discussed, however, we disagree 548 F.3d 1004, *1016; 2008 U.S. App. LEXIS 24749, **27; with Qualcomm's interpretation of the written JVT IPR the disclosure duty. In Rambus, although the JEDEC IPR policies in the present case. Moreover, even if we were to policy did not use the language "related to," the parties read the written IPR policies as not unambiguously consistently agreed that the policy required disclosure of requiring by themselves the aforementioned disclosure patents "related to" the standardization work of the obligations, the disclosure duty found by the district court committee. Rambus, 318 F.3d at 1098. The parties based on the understanding of the JVT participants is disagreed, however, in their interpretation of "related to." certainly not "directly contrary to the written JVT Id. at 1099. The court considered evidence regarding the JEDEC members' understanding of the JEDEC policy,and concluded that "Rambus's duty [**30] to disclose Having rejected Qualcomm's argument that the extended only to claims in patents or applications that understanding [**28] of JVT participants is contrary to reasonably might be necessary to practice the standard." the written JVT IPR policies, we are left with reviewing Id. at 1100. The court reasoned that, "[t]o hold otherwise the sufficiency of the district court's factual finding that would contradict the record evidence and render the JVT participants understood the JVT IPR policies as JEDEC disclosure duty unbounded. Under such an imposing a disclosure duty. Qualcomm argues that the amorphous duty, any patent or application having a vague evidence relied upon by the district court does not relationship to the standard would have to be disclosed." support its finding that the JVT participants understood Id. at 1101. The court noted, "[j]ust as lack of compliance the JVT IPR policies as imposing a disclosure duty. It asserts that Broadcom offered no testimony of the other JVT participants as to their understanding of the policy.
after-the-fact morphing of a vague, loosely defined policy Broadcom responds that it offered, inter alia, the to capture actions not within the actual scope of that testimony of Gary Sullivan (the JVT chair) and Stephen policy likewise would chill participation in open standard-setting bodies." Id. at 1102 n.10.
understood the patent disclosure duty to be mandatory.
Qualcomm offers a different interpretation of this In the present case, the district court noted that the testimony, as well as the testimony expressly relied upon JVT IPR policies refer to IPR information "associated by the district court regarding the discussion of the JVT with" any standardization proposal or "affecting the use" IPR policies at every meeting and the submission of of JVT work. Waiver Order at *27 (citing JVT ToR).
disclosures without accompanying technical proposals.
Applying the reasoning of Rambus, the district court We are not persuaded, however, by Qualcomm's concluded that this language requires only that JVT arguments that the district court's findings lacked participants disclose patents that "reasonably might be sufficient evidentiary support, or that the evidence should necessary" to practice the H.264 standard. Id. To hold be interpreted [*1017] differently. [**29] The district otherwise, [**31] the district court explained, "would court was in the best position to determine the significance and implications of the record testimony in 'unbounded,' 'amorphous,' and 'vague.'" Id.
the first instance, and the cited testimony providessufficient evidentiary support for its findings. 5 On appeal, Qualcomm argues that we should reject the district court's formulation of the "reasonably might Moreover, while we conclude that the district be necessary" standard. Qualcomm characterizes the court's findings on this point were sufficiently "reasonably might be necessary" formulation from supported by the record, we agree with Broadcom Rambus as follows: "it must be reasonably clear at the that Qualcomm's litigation misconduct in this case time that the patent or application would actually be likely prevented Broadcom from obtaining further necessary to practice the standard." Appellant's Reply Br.
evidence regarding the understanding of other 20 (emphasis removed) (citing Rambus, 318 F.3d at 1100). Thus, according to Qualcomm, when the Rambuscourt explained the standard in terms of whether the B. Scope of Disclosure Duty
patent or application "reasonably might be necessary" topractice the standard, the court really meant that the Having concluded that Qualcomm, as a participant in patent or application must "actually be necessary" to the JVT prior to release of the H.264 standard, had a duty practice the standard. Id. (emphasis added). Qualcomm to disclose patents, we turn to the question of the scope of 548 F.3d 1004, *1017; 2008 U.S. App. LEXIS 24749, **31; submits that "[i]t is nonsensical to conceive that an SSO at trial that "the claims of the ['104] patent map onto the would require disclosure to design a standard around a H.264 standard, so that devices or systems that practice patent when the standard does not read on the patent in H.264 actually practice claims of the 104 patent." Waiver the first place." Id. at 21-22.
Order at *41. Additionally, inter alia, the district courtrelied on [**34] an email from a Qualcomm employee We disagree with Qualcomm's characterization of discussing the coverage of the '767 Patent, and the standard applied in Rambus. The plain language used describing it as a "core patent relevant to H.264." Id. at might be necessary") contradicts Qualcomm's claim thatthe Rambus formulation requires that a patent must The district court refers to the standard in "actually be necessary" in order to trigger a disclosure duty. The Rambus court explained the "reasonably might "reasonably may be necessary," and "reasonably be necessary" standard by stating that "the disclosure may be essential." Compare Waiver Order at *26 duty operates when a reasonable competitor would not expect to practice the standard without a license under the ("reasonably might be necessary"), and *40 undisclosed claims." Rambus, 318 F.3d at 1100-01. It ("reasonably may be essential"). We will refer to further clarified that the "reasonably might be necessary" the standard in the terms used by the Rambus standard is an objective standard, which "does not depend court, "reasonably might be necessary," for on a member's subjective belief that its patents do or do not read on the proposed standard." Id. at 1104. Likewise,in the present case, we agree with the district court that the language requires JVT participants to disclose patents non-infringement here refutes any finding that it breached that "reasonably might be necessary" to practice the a disclosure duty. Broadcom responds, however, that it is H.264 standard. This is an objective standard, which inconsistent for Qualcomm to now argue that the asserted applies when a reasonable competitor would not expect to patents do not meet the "reasonably might be necessary" practice the H.264 standard without a license under the standard, when Qualcomm accused Broadcom's products undisclosed claims. This formulation does not require of infringement in this case solely because they practiced that the patents ultimately must "actually be necessary" to the H.264 standard. Broadcom also points to testimony of Qualcomm's own JVT participants in support of its claimthat JVT participants considered that the asserted patents C. Breach of Disclosure Duty
"reasonably might be necessary" to practice the H.264standard.
Having [**33] concluded that the proper scope of the disclosure duty requires JVT participants to disclose [*1019] On appeal, Qualcomm does not present patents that "reasonably might be necessary" to practice [**35] any arguments comparing the asserted claims to the H.264 standard, we next address the question of the H.264 standard in an attempt to show that they do not whether Qualcomm breached this disclosure duty. It is meet the "reasonably might be necessary" formulation.
undisputed that Qualcomm did not disclose the '104 and Indeed, Broadcom argues that if Qualcomm truly believes '767 Patents to the JVT prior to the release of the H.264 that the asserted patents do not meet the "reasonably standard. Thus, Qualcomm breached its disclosure duty might be necessary" standard, then it necessarily lacked a if, as the district court found by clear and convincing Rule 11 basis to bring this litigation in the first place.
evidence, the '104 and '767 Patents "reasonably might be Appellee's Br. 48 (citing Fed. R. Civ. P. 11 ("By necessary" to practice the H.264 standard.
presenting to the court a pleading . . . an attorney . . .
certifies that . . . (2) the claims, defenses, and other legal As previously mentioned, the district court found contentions are warranted by existing law . . . [and] (3) clear and convincing evidence that the '104 and '767 the factual contentions have evidentiary support . . . .")).
Patents "reasonably might be necessary" to practice theH.264 standard. 6 In reaching this conclusion, the district We are not persuaded by Qualcomm's arguments on court relied on the testimony from several Qualcomm this point, and are unable to reconcile its ex post witnesses. For example, the district court relied on argument that the asserted patents do not meet the testimony from Qualcomm's H.264 expert, who testified "reasonably might be necessary" standard with its ex ante 548 F.3d 1004, *1019; 2008 U.S. App. LEXIS 24749, **35; foregoing, we conclude that the district court did not err in finding clear and convincing evidence that the '104 and'767 Patents fell within the "reasonably might be Specifically, Qualcomm claims that the district necessary" standard. Thus, the district court properly court's findings in this case run directly contrary to any determined that Qualcomm breached its disclosure claim that Qualcomm intended to voluntarily waive its [**36] duty by failing to disclose the '104 and '767 patent rights. On this point, we agree with Qualcomm.
Patents to the JVT prior to the release of the H.264 The following finding by the district court certainly suggests that [*1020] Qualcomm did not intend towaive its patent rights: Accordingly, we turn to the question of whether it was within the district court's equitable authority to enter an unenforceability remedy in this case.
intentionally organized a plan of action to D. Equitable Remedies
shield the '104 and '767 patents fromconsideration by the [**38] JVT with the The district court analyzed the consequence of anticipation that (1) the resulting H.264 Qualcomm's failure to disclose the '104 and '767 Patents standard would infringe those patents and under the framework of waiver as a consequence of silence in the face of a duty to speak. The parties disagree opportunity to be an indispensable licensor on whether waiver was the appropriate equitable to anyone in the world seeking to produce framework, and whether the scope of the unenforceability remedy was within the district court's equitable authority.
1. Standard of Review
establishing that Qualcomm intentionally relinquished its We review a district court's judgment on the rights, the district court's findings demonstrate that equitable defense of waiver for an abuse of discretion.
Qualcomm intentionally organized a plan to shield its See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 patents from consideration by the JVT, intending to later F.2d 1020, 1028 (Fed. Cir. 1992) (en banc) ("As obtain royalties from H.264-compliant products. Thus, in equitable defenses, laches and equitable estoppel are these circumstances, it appears that "true waiver" is not matters committed to the sound discretion of the trial judge and the trial judge's decision is reviewed by this As Broadcom notes, however, the district court's court under the abuse of discretion standard."). We formulation of the law of waiver was not limited to "true review issues of law involved in the district court's waiver," but also addressed "implied waiver." Appellee's waiver judgment de novo. See Wang Labs., 103 F.3d at Br. 55. The district court's advisory jury instruction 1581. [**37] As this court has previously explained, we "may set aside a discretionary decision if the decisionrests on an erroneous interpretation of the law or on clearly erroneous factual underpinnings. If such error is absent, the determination can be overturned only if the trial court's decision represents an unreasonable judgment in weighing relevant factors." A.C. Aukerman, 960 F.2d enforce the 104 and 767 patents or that its 2. Waiver
conduct was so inconsistent with an intentto enforce its rights as to induce a First, we address the question of whether waiver was reasonable belief [**39] that such right the appropriate equitable doctrine to apply in this case.
Qualcomm argues that the district court's findings do notconstitute waiver as a matter of law. It argues that "true Waiver Order at *32-33 (emphasis added). Broadcom 548 F.3d 1004, *1020; 2008 U.S. App. LEXIS 24749, **39; submits that "[t]he second element of that instruction waiver in the SSO context where the district court found correctly states the long-established doctrine of implied intentional nondisclosure in the face of a duty to speak. 7 Indeed, as previously mentioned, here the Qualcomm responds that "[e]ven if a duty to disclose district court found clear and convincing evidence had been breached, this breach is best explained as negligence, oversight, or thoughtlessness, which does notcreate a waiver." Appellant's Br. 52 (quotations omitted).
In the present case, however, the district court found clear and convincing evidence that Qualcomm knew that the the '104 and '767 patents from necessary" to practice that H.264 standard, and that it intentionally did not disclose them to the JVT. These findings demonstrate much more than "negligence, would then have an opportunity tobe an indispensable licensor to As to implied waiver, Qualcomm argues that, "even if Broadcom had proven an intentional breach of the JVT disclosure duty, waiver could be inferred only if Qualcomm knew that nondisclosure alone would (with nodetrimental reliance by any party) necessarily result in the loss of those rights." Appellant's Br. 52. WhileQualcomm argues that implied waiver requires that a Qualcomm also argues that any "nondisclosure did party have knowledge that its actions [**40] would not cause any harm to Broadcom or any other entity." "necessarily" result in the loss of rights, the case that Appellant's Br. 55. Qualcomm submits that there is no Qualcomm cites as support for this argument states that harm because (1) "the jury's non-infringement verdict "[w]here waivers are permissible, they are often enforced conclusively establishes" that the asserted patents are not only if the waiver was knowing or intelligent, which needed to produce H.264-compliant products, and (2) means the individual has sufficient awareness of the even if the asserted patents were needed to practice the relevant circumstances and likely consequences of his H.264 standard, [**42] Qualcomm would be willing to decision." Clark v. Capital Credit & Collection Servs., license them. Appellant's Br. 56. We disagree. Even if 460 F.3d 1162, 1170-71 (9th Cir. 2006) (quotations and Qualcomm agreed not to pursue an injunction in this citations omitted). The Clark case also makes clear that case, injunctions are not the only type of harm. Forcing a waiver depends on the right at issue. There was a party to accept a license and pay whatever fee the different right at issue in Clark, based on a different licensor demands, or to undergo the uncertainty and cost statutory scheme, in a much different context than the of litigation (which in this case was substantial), are present case. Thus, we are not convinced that the Clark analysis is particularly helpful here. Additionally, wenote that the district court's findings in the present Qualcomm further argues that "[t]he district court case--including that Qualcomm knew JVT participants never found detrimental reliance by Broadcom because of treated the JVT policies as imposing a duty, that it knew its misconception that such reliance is not an element of a the asserted patents "reasonably might be necessary" to defense premised on conduct that allegedly is objectively practice the H.264 standard, and that it intentionally misleading to a reasonable person." Appellant's Reply Br.
25. In essence, it appears that Qualcomm wants to benefit from its intentional nondisclosure of the asserted patents awareness of the relevant circumstances. Moreover, even by arguing that Broadcom cannot succeed on an implied [**41] if Qualcomm did not know that the asserted waiver defense without specific findings as to detrimental patents would "necessarily" be held unenforceable as a result of a breach of its disclosure duty, we conclude that We disagree with Qualcomm's contention that the alone would not shield it from the application of implied district court's findings in this case were insufficient to 548 F.3d 1004, *1021; 2008 U.S. App. LEXIS 24749, **42; support the application of an implied waiver defense. The district court found that JVT participants understood the JVT IPR policies as imposing a disclosure duty, that asserted patents from consideration during development of the H.264 standard, Qualcomm filed a patent release of the H.264 standard, and that Qualcomm was silent in the face of its disclosure duty. Indeed, the district court stated that "participants in the JVT project shared Broadcom's H.264 compliance. In these circumstances, the aims and policies of the JVT and considered we conclude that it was within the district court's themselves obligated to identify IPR owned or known by authority, sitting as a court of equity, to determine that them, whether or not they made technical proposals for Qualcomm's misconduct falls within the doctrine of study." Waiver Order at *60. As the district court noted, "Broadcom, ignorant of the existence of the '104 and '767patents, designed and is in the process of manufacturing 3. Equitable Estoppel
numerous H.264-compliant products." Remedy Order at There remains the question of whether, even if 1248. In light of the record in this case in its entirety, it implied waiver did not apply here, Qualcomm's conduct would be improper to allow Qualcomm to rely on the effect of its misconduct to shield it from the application estoppel. Indeed, Qualcomm argues that equitable of the equitable defense of implied waiver. 8 estoppel, rather than waiver, in appropriate circumstances is the proper remedy for breach of SSO disclosure duties.
"Broadcom's conception of waiver would swallow Appellant's Br. 54 ("This Court and others have the law of equitable estoppel." Appellant's Reply Br. 24. While equitable estoppel may generally be circumstances, is the proper defense when patent an appropriate legal framework for analysis of breaches of disclosure duties in the SSO context, Qualcomm claims that Broadcom chose not to pursue as Broadcom points out, that does not preclude equitable estoppel at trial, however, and is foreclosed the same underlying conduct from satisfying the from raising equitable estoppel on appeal because it did defense of implied waiver. As [**44] previously not cross-appeal the preclusion of that defense. We discussed, the district court's findings in this case as to Qualcomm's intentional nondisclosure in the face of a duty to speak fully support the asserted that Broadcom cannot now press an equitable estoppel defense because it "chose as a tactical matter to [*1022] In sum, we agree with the district court pursue this as a matter of waiver and not as a matter of that, "[a] duty to speak can arise from a group equitable estoppel." Oral Arg. at 6:35, available at relationship in which the working policy of disclosure of http://oralarguments.cafc.uscourts.gov/mp3/2007-1545.mp3.
related intellectual property rights ('IPR') is treated by the Broadcom responded, however, by noting that it group as a whole as imposing an obligation to disclose attempted to raise equitable estoppel as a defense at the information in order to support and advance the purposes trial court, but Qualcomm opposed the addition of this of the group." Waiver Order at *19-20. Not only did the defense, asserting that there is no legal or factual basis for district court find that Qualcomm was silent in the face of the application of equitable estoppel in this case.
a disclosure duty in the SSO context, it also found clear Broadcom argues, "Qualcomm cannot withhold evidence and convincing evidence that Qualcomm had knowledge, of its JVT participation, successfully oppose Broadcom's prior to the adoption of the H.264 standard in May 2003, equitable estoppel defense making false factual assertions that the JVT participants understood the policies as about its JVT participation, and then complain that its imposing a disclosure duty, that the asserted patents JVT misconduct is more amenable to an equitable "reasonably might be necessary" to practice the H.264 estoppel defense than a waiver defense." Appellee's Br.
standard, and that Qualcomm intentionally organized a plan to shield said patents from consideration by the JVT, In its answer to the complaint, Broadcom included planning to demand license fees from those seeking to the equitable defenses of waiver, laches, and "other 548 F.3d 1004, *1022; 2008 U.S. App. LEXIS 24749, **46; significant [**49] measure, by Qualcomm's failure to incorrectly [*1023] asserted throughout discovery that it disclose its participation in the H.264 standard-setting never participated in the JVT. As a result of Broadcom's process. Under such extraordinary circumstances, any investigation, however, it discovered [**47] a single deficiencies in Broadcom's pleadings should not permit membership list for a JVT subcommittee including the email address of a Qualcomm employee--indicating thatQualcomm had indeed participated in the JVT prior to the We also reject Qualcomm's argument that Broadcom release of the H.264 standard. Broadcom then submitted cannot rely on equitable estoppel in this case because an interrogatory answer contending that Qualcomm is Broadcom did not cross-appeal the district court's barred by, inter alia, the doctrines of equitable estoppel preclusion of that defense. A cross-appeal would be and implied license. Qualcomm subsequently moved for improper here because the alternative doctrine of summary judgment on Broadcom's defenses of waiver, equitable estoppel would not enlarge the judgment equitable estoppel, and implied license. In support of its relative to the doctrine of waiver relied upon by the summary judgment motion, Qualcomm argued that district court. See Voda v. Cordis Corp., 536 F.3d 1311, Broadcom did not sufficiently plead equitable estoppel or 1324 n.4 (Fed. Cir. 2008) (stating that "where an implied license, but even if it had there is no basis for argument is merely an alternative basis to support a these defenses because Qualcomm did not participate in judgment of infringement, it is not a proper basis for the JVT prior to the release of the H.264 standard.
cross-appeal and should be dismissed"); Howmedica Remedy Order at 1240 (noting that Qualcomm's motion Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d for summary judgment stated, "[t]he facts are undisputed: 1337, 1343 n.2 (Fed. Cir. 2008) (noting that the court QUALCOMM employees never participated, in any "dismissed [a party's] cross-appeal as improper because it form, in the JVT until after the H.264 standard was did not seek to enlarge the judgment but merely asserted already released," and, "[t]here is no evidence that any an alternative ground to affirm the judgment"). Thus, QUALCOMM participant knew of the applicability of Broadcom properly raised equitable [*1024] estoppel the patents-in-suit to the H.264 standard prior to the [**50] as an alternative ground to uphold the judgment, initiation of [**48] this lawsuit"). Thus, Qualcomm represented to the district court that there was no basis for equitable estoppel or implied license because there wasno basis for them in the facts and because they were Broadcom submits that "if Qualcomm had produced during discovery the 46,000 documents showing its remedy is to remand to the district court participation in the JVT, the district court would almost surely have permitted Broadcom to amend its answer to assert equitable estoppel, as Broadcom was permitted to Rule 15(b), or, alternatively, remand to the do when new evidence of inequitable conduct came to district court with instructions to reinstate light." Appellee's Br. 56-57. We agree with Broadcom Broadcom's equitable estoppel defense, to that Qualcomm cannot withhold evidence of its JVT participation, make false factual assertions about this participation to the district court in opposition to Broadcom's equitable estoppel defense, and then argue onappeal that Broadcom failed to sufficiently plead Appellee's Br. 57 n.16. We agree with Broadcom that it is equitable estoppel. Surely Qualcomm cannot expect to entitled to a remand with respect to equitable estoppel.
benefit by concealing documents, misrepresenting facts However, because of our conclusion with respect to throughout trial, and then claiming ex post that Broadcom waiver, a remand to address equitable estoppel is not should have raised a similar equitable doctrine earlier.
Although Broadcom's pleadings may have been deficient 4. Unenforceability Remedy
in certain respects, such deficiencies were caused, in 548 F.3d 1004, *1024; 2008 U.S. App. LEXIS 24749, **50; In its March 21, 2007 order, after finding that reaching this conclusion, the district court rejected Qualcomm waived its rights to enforce the asserted Qualcomm's argument that Broadcom may not have any patents against H.264 products by silence in the face of a remedies beyond itself, because it raised waiver as an disclosure duty, the district court discussed the proper affirmative defense rather than as a counterclaim or remedy to apply in this case. The district court was cross-claim. The district court noted that this court has unable to find guidance for an equitable remedy of upheld the unenforceabilty of a patent to the world due to waiver by a patentee, but it noted that "[i]nequitable inequitable conduct even when pled as an affirmative conduct [**51] by an inventor and his/her agents before the PTO may result in a decree of unenforceability of the McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897, 908, 926 (Fed. Cir. 2007); Semiconductor considerations arising from the circumstances involved." Energy Lab. Co. v. Samsung Elecs. Co., 204 F.3d 1368, Waiver Order at *61. The court reasoned that an 1372, 1378 (Fed. Cir. 2000); [**53] Refac Int'l, Ltd. v. equitable remedy to a finding of waiver should not be Lotus Dev. Corp., 81 F.3d 1576, 1578, 1585 (Fed. Cir. automatic; rather, it should be fashioned to give a fair, just and equitable response reflective of the offendingconduct. Id. at *62. In light of this, the district court considered the extent of the materiality of the withheld unenforceability entered on Broadcom's defense of information and the circumstances of the nondisclosure waiver is contrary to law. It submits that once the jury relating to the JVT proceedings. Id.
returned a non-infringement verdict the district courtlacked any legal basis to consider the affirmative defense The district court noted that the "theoretical remedies of waiver. It appears to base this argument largely on the that appear vary from total unenforceability of the patents fact that Broadcom pled waiver only as an affirmative to no sanction of any kind." Id. The court stated: defense, as opposed to a counterclaim. Thus, Qualcommargues that, because waiver was pled as an affirmative between the '104 and '767 patents and unenforceability. We disagree. It was entirely appropriate for the district court to address the defense of waiver after the jury returned a non-infringement verdict. As the district court noted, this court has upheld judgments of unenforceability of the '104 and '767 unenforceability based on inequitable conduct even patents against any H.264 compliant where pled as an affirmative defense. We see no reason products, and (2) inclusion of the '104 and why an affirmative defense of waiver cannot similarly '767 patents in the MPEG LA patent pool, result in a judgment of unenforceability.
Broadcom also submits that "[t]he district court, sitting in equity, had the authority to grant relief as a result of Qualcomm's conduct." Appellee's Br. 57. By analogy, [**54] it claims that successful assertion of thedefenses of inequitable conduct, equitable estoppel, and Id. at *62-63. The court did not decide which remedy to patent misuse has resulted in unenforceability judgments.
apply in its March 21, 2007 order. Instead, it scheduled In response to Broadcom's analogy to inequitable an Order to Qualcomm to Show Cause why it should not conduct, Qualcomm argues "the rationale for a remedy of order the aforementioned remedy. Id. at *63.
unenforceability for inequitable conduct before thePTO--that such conduct taints the property right ab On August 6, 2007, after a hearing on the Order to initio--is simply not present for waiver based on Show Cause, the district court entered an Order on post-PTO conduct before a private SSO." Appellant's Remedy for Finding of Waiver, ordering the '104 and Reply Br. 27. In response to the patent misuse analogy, Qualcomm states that "[w]hen patent misuse is proven, a continuations-in-part, divisions, reissues, and any other court may temporarily suspend the owner's ability to derivatives thereof) unenforceable against the world. In enforce the patent while the improper practice and its 548 F.3d 1004, *1025; 2008 U.S. App. LEXIS 24749, **54; effects remain ongoing." Id.
district court's unenforceability remedy in the presentcase was not limited in relation to Qualcomm's In addition to the analogy to inequitable conduct, we misconduct in the SSO context. The basis for Broadcom's waiver defense was Qualcomm's conduct before the JVT post-issuance patent misuse instructive in this case. As during development of the H.264 standard, including Qualcomm notes, the successful assertion of patent misuse may render a patent unenforceable until the "reasonably might be necessary" to practice the standard.
misconduct can be purged; it does not render the patent The district court correctly recognized that the remedy for unenforceable for all time. Appellant's Reply Br. 27. In B. waiver in the SSO context should not be automatic, but Braun Medical, Inc. v. Abbott Laboratories, this court should be fashioned to give a fair, just, and equitable determining the appropriate equitable remedy in this case, the district court properly considered the extent of the extension of [**55] the equitable doctrine materiality of [**57] the withheld information and the circumstances of the nondisclosure relating to the JVT proceedings. While we agree with the district court that there is an "obvious connection between the '104 and '767 patents and H.264 compliant products," we do not equitable defense available to the accused discern such a connection between the asserted patents and products that are not H.264-compliant, and neither practices that did not in themselves violate party points us to any such connection. Waiver Order at strength from the patent right, and thuswere deemed to be contrary to public Accordingly, based on the district court's findings, the broadest permissible unenforceability remedy in the circumstances of the present case would be to render the unenforceable until the misuse is purged.
continuations-in-part, divisions, reissues, and any other 124 F.3d 1419, 1427 (Fed. Cir. 1997) (citations and quotations omitted); see also C.R. Bard. Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1372 (Fed. Cir. 1998) ("Patent products in this case, as well as any other current or misuse arises in equity, and a holding of misuse renders future H.264-compliant products). Accordingly, we the patent unenforceable until the misuse is purged; it vacate the unenforceability remedy and remand with does not, of itself, invalidate the patent."). In light of the instructions to enter an unenforceability remedy limited foregoing, we agree with Qualcomm that patent misuse in scope to any H.264-compliant products.
does not render a patent unenforceable for all time.
Contrary to Qualcomm's arguments, however, the limited E. Exceptional Case Determination
[*1026] scope of unenforceability in the patent misuse Under 35 U.S.C. § 285, a district court "in context does not necessarily lead to the conclusion that an exceptional cases may award reasonable attorney fees to unenforceability remedy is unavailable in the waiver the prevailing party." An [**58] exceptional-case finding context in [**56] the present case. Instead, we conclude must be established by clear and convincing evidence.
that a district court may in appropriate circumstances Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1327 order patents unenforceable as a result of silence in the (Fed. Cir. 2003). In review of a § 285 exceptional case face of an SSO disclosure duty, as long as the scope of determination, we review the district court's underlying the district court's unenforceability remedy is properly factual findings for clear error and its legal conclusions limited in relation to the underlying breach.
without deference. Rambus, 318 F.3d at 1088. The While the scope of an unenforceability remedy in the district court's determination of the award appropriate in patent misuse context is limited to rendering the patent an exceptional case is reviewed for an abuse of unenforceable until the misuse is purged, the scope of the 548 F.3d 1004, *1026; 2008 U.S. App. LEXIS 24749, **58; Finding that Broadcom established this to be an found clear and convincing evidence that Qualcomm exceptional case by clear and convincing evidence, the intentionally organized a plan of action to shield the '104 district court awarded Broadcom its attorney fees. As and '767 Patents from consideration by the JVT with the both parties agree, the district court based its § 285 anticipation that it would then have the opportunity to exceptional case determination both on Qualcomm's (1) become an indispensable licensor to anyone in the world "bad faith participation" in the JVT, and (2) "litigation seeking to produce H.264-compliant products. The misconduct . . . during discovery, motions practice, trial, district court's litigation misconduct findings--which were and post-trial proceedings." Exceptional Case Order at based on the repeated false claims during discovery, trial, and post-trial, by Qualcomm's attorneys and witnessesthat Qualcomm did not participate in the JVT in the Qualcomm argues that the district court's award of development of the H.264 standard--represented the attorney fees associated [*1027] with the exceptional culmination of this plan. Qualcomm is correct that this case determination must be vacated because it is based in court has refused to uphold an exceptional case award "based on a patentee's bad-faith business conduct toward Qualcomm claims that the JVT misconduct findings are an accused infringer prior to litigation." Forest Labs. 339 clear error. Second, Qualcomm [**59] argues that a F.3d at 1329. In our view, the litigation misconduct patentee's bad-faith business conduct toward an accused findings were sufficient standing alone to support the infringer prior to litigation does not warrant a finding of exceptionality, and that at a minimum we should vacate circumstances of the present case it was not error for the and remand for the district court to reform the award to district court to additionally consider the related JVT misconduct, which [**61] was an important predicate tounderstanding and evaluating the litigation misconduct.
First, the district court's JVT findings are not clear error. The district court was in the best position to III. CONCLUSION
determine the significance and implications of the recordtestimony in the first instance, and the cited testimony Based on the foregoing analysis, we agree with the provides ample evidentiary support for its findings district court that Qualcomm had a duty to disclose the regarding JVT misconduct. For example, in support of its asserted patents to the JVT, that it breached its disclosure JVT misconduct findings, the district court relied upon duty, and that Broadcom was entitled to an award of attorney fees associated with the court's exceptional case "extending" Qualcomm's patents in order to cover the determination. Because the scope of the remedy of standard being developed by the JVT. Remedy Order at unenforceability as applying to the world was too broad, 1228. The district court also relied upon emails however, we vacate the unenforceability judgment and suggesting "monitoring" the JVT "from a distance" and remand with instructions to narrow the scope of refraining from making any submissions, which would include patent disclosures, to a JVT parent body. Id. The Accordingly, we affirm-in-part (duty to disclose, breach district court discussed these and many other pieces of of duty, exceptional case determination), vacate-in-part evidence relating to the JVT misconduct in detail in its (unenforceability scope), and remand.
opinions. We are not persuaded by Qualcomm's claimthat the [**60] cited evidence was insufficient.
AFFIRMED-IN-PART, VACATED-IN-PART, AND Second, as previously discussed, the district court

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Mens Sana Monographs, Vol. 6(1), Jan - Dec 2008 Journalology CITATION: Healy D., (2008), Our Censored Journals. In: Medicine, Mental Health, Science, Religion, and Well-being (A.R. Singh and S.A. Singh eds.), MSM, 6 , Jan - Dec 2008, p244-256. Our Censored Journals David Healy* [Editors’ Note: This is an important communication. Not only because it shows the courage to rufß

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F O R M A T O E U R O P E O P E R I L C U R R I C U L U M INFORMAZIONI PERSONALI Nome GIANNELLI MARCO Indirizzo VIA PONTEMAGGIORE 19, 55060, MASSA MACINAIA (LU), ITALIA ESPERIENZA LAVORATIVA • Dal 25-02-2002 ad oggi Dipendente dell’Azienda Ospedaliero-Universitaria Pisana (PI) quale Dirigente Fisico con rapporto di lavoro esclusivo a tempo indeterminato e a tem

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