In Brief: Qualcomm v. Broadcom

Posted on | June 2, 2008 | No Comments

2008-1199, 2008-1271, 2008-1272 Qualcomm v. Broadcom
CD/CA 05-CV-467
Judge James V. Selna

The appeal briefs are in from the other, other Qualcomm v. Broadcom case in which certain of Qualcomm’s (3G) WCDMA and EV-DO cellular
chips and its QChat software were found to infringe and were permanently enjoined. 

Qualcomm’s brief can be downloaded here, Broadcom’s here.  The Summary of Argument from each party’s brief is posted below the fold. 

Here is a copy of the Second Amended and Restated Permanent Injunction.  Note that it includes an injunction against infringement of the 6,657,317 patent.  This must be a typographical error: the patents at issue are 5,657,317; 6,847,686 and 6,389,010. 

Oral argument is scheduled for Wednesday, July 9, 2008, 10:00 A.M., Courtroom 203.

Summary of Argument of defendant/appellant Qualcomm.  Sidley Austin LLP, Washington, D.C. (Carter G. Phillips, Stephen B.Kinnaird); DLA Piper US LLP, San Diego, CA (Richard T. Mulloy, Stanley J. Panikowski); Cravath, Swaine & Moore, LLP, New York, NY (Evan R. Chesler, Richard J. Stark, Andrei Harasymiak) on brief.   

The only asserted claim of the ‘686 Patent is invalid for two reasons. Despite intrinsic evidence overwhelmingly demonstrating that the claimed “digital signal processor” does not include a “global controller,” the district court imported that limitation into the claim. Broadcom’s expert conceded that a prior art chip disclosed each limitation of Claim 3, except for a “global controller.” Furthermore, even under the court’s construction, it would have been obvious to combine the features of that chip with another chip that undisputedly contained a “global controller” but simply lacked another claim limitation.

The district court also incorrectly construed the claims of the ‘317 Patent, which require a transceiver to “simultaneously participate” on two networks. Although the specification repeatedly distinguishes between “simultaneous participation” (at the same instant in time) and “multiple participation” (during the same period of time), the district court redefined “simultaneous participation” to require only “multiple participation.” Broadcom introduced no evidence that the accused Qualcomm chipsets infringed the claims under the correct construction.

Even under the court’s construction of “simultaneous participation,” the claims were anticipated by the Burson patent. Broadcom’s expert contended that Burson did not disclose “simultaneous participation” but did so on the basis of limitations not found in the claims or in the court’s claim construction. Although Broadcom argued that the invention of the ‘317 Patent antedated Burson, it introduced no substantial evidence from which the jury could have reached that conclusion.

The ‘010 Patent infringement verdict is likewise defective because no substantial evidence supports it. The asserted claims require an “interface circuit” that “selectively couples” to two types of networks. The jury was instructed that the terms “select,” “couple” and “selectively couple” have their ordinary meaning. Broadcom accused QChat-enabled cellphones of containing an interface circuit that selectively couples to two terrestrial networks: the public switched telephone network (“PSTN”) and an “IP WAN.” However, as confirmed by Broadcom’s expert, the ordinary meaning of “couple” requires an electrical connection, which means the cellphone cannot “selectively couple” to any network, let alone the PSTN and IP WAN networks. Broadcom’s expert also confirmed that actual selection of and switching between those networks is performed by CDMA2000 network infrastructure, not the cellphone.

Finally, the district court abused its discretion in entering a broad injunction against numerous Qualcomm CDMA products for which Broadcom plans to offer no replacements. The court’s finding of irreparable injury was clearly erroneous because it rested solely on Broadcom’s unsubstantiated assertions of harm. The court’s finding that Broadcom could not be monetarily compensated was also erroneous since it ignored Broadcom’s paid license of the patents-in-suit to Verizon. The court improperly weighed the balance of hardships by discounting, for legally improper reasons, substantial injury to Qualcomm. And the court failed to consider the full extent of harm to non-parties and the public interest. Because of those errors, the court improperly determined that Broadcom met its burden to show entitlement to an injunction.

Summary of Argument of plaintiff/appellee Broadcom. Wilmer Cutler Pickering, Hale and Dorr LLP, Boston, MA (William F. Lee, Richard W. O’Neill, Joseph J. Mueller, Lauren B. Fletcher); Wilmer Cutler Pickering, Hale and Dorr LLP, Washington, D.C. (James L. Quarles, III) on brief.

The Court should affirm the jury’s infringement and validity verdicts and the district court’s permanent injunction.

First, this Court should affirm the jury’s finding that claim 3 of the ‘686 patent is not invalid. The district court correctly construed the claimed “DSP controller” to function at times under the direction of a “global controller,” and properly rejected Qualcomm’s overbroad construction that would result in the ‘686 patent’s own specification (and prior art described therein) invalidating claim 1. Under the district court’s proper construction, Qualcomm concedes infringement and substantial evidence supports the jury’s validity verdict.

Second, this Court should affirm the jury’s findings that claims 1, 6, 9, and 12 of the ‘317 patent are infringed and not invalid. The district court correctly construed the “simultaneous participation” limitation in accordance with the intrinsic evidence, and in any event, Broadcom introduced substantial evidence showing infringement even under Qualcomm’s flawed construction. Substantial evidence also supports the jury’s finding that the asserted claims are not anticipated by Burson, which is not even prior art.

Third, this Court should affirm the jury’s findings that claims 1,2,3, and 7 of the ’010 patent are infringed. Substantial evidence demonstrates that phones containing Qualcomm’s MSM chips and QChat software include an “interface circuit” that “selectively couples” to either the PSTN for a traditional voice call or the Internet for a QChat call. Qualcomm does not contest the district court’s claim constrction or the jury’s validity verdict.

Finally, the district court did not abuse its discretion either in deciding to enter a permanent injunction or in crafting the scope of the injunction. As confirmed by the district court’s detailed factual findings, the extensive evidentiary record demonstrates that Broadcom would be irreparably harmed, in a manner that cannot be compensated with monetary damages, if forced to license its patents to Qualcomm, a larger and far more established competitor.

Moreover, through sunset provisions that effectively stay portions of the injunction for twenty months after the jury verdict, the district court carefully balanced Broadcom’s important patent rights and emerging cell phone business with the potential impact on Qualcomm and Qualcomm’s customers, including Sprint. The district court did not abuse its discretion simply because the sunset provisions do not completely shelter Qualcomm and its customers from all harm – especially given Qualcomm’s decision to expand its infringement throughout this case and to wait until after the jury’s verdicts to begin any design-around efforts.

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