CAFC Vacates Limited Exclusion Order Against Qualcomm Chips and Downstream Devices Containing Same

The CAFC states that the ITC can reconsider its enforcement options on remand. The CAFC has also vacated and remanded the ITC's finding of liability based on induced infringement.

Broadcom's 983 patent covers a mobile computing device that can both communicate with wireless networks and operate in a reduced power mode to extend battery life.

(In 2007, the ITC issued a limited exclusion order against Qualcomm based on a complaint filed by Broadcom. The limited exclusion order prohibited the unlicensed entry of baseband processor chips or chipsets, including chips or chipsets incorporated into circuit board modules and carriers, manufactured abroad by or on behalf of Qualcomm or any of its affiliated companies, parents, subsidiaries, contractors, or other related business entities, or their successors or assigns, that are programmed to enable the power saving features covered by certain claims of the 983 patent, as well as handheld wireless communications devices, including cellular telephone handsets and PDAs (personal digital assistants), containing the infringing Qualcomm baseband processor chips or chipsets.

The ITC issued a cease and desist order against Qualcomm, which is not discussed in the court's decision. See ITT's Online Archives or 01/07/08 news, 08010720, for BP summary of the ITC's institution of a formal enforcement proceeding to determine whether Qualcomm is in violation of its cease and desist order.)

Limited Exclusion Orders Cannot Exclude Products of Non-Respondents

The CAFC states that the ITC has no statutory authority to issue a limited exclusion order against downstream products of non-respondents, as section 337 of the Tariff Act of 1930 permits the exclusion of non-respondents only via a general exclusion order (and then, too, only by satisfying certain requirements). A limited exclusion order cannot exclude products of those who are not persons determined to be in violation.

ITC's "Induced Infringement" Determination Was Based on the Wrong Standard

The ITC previously determined that Qualcomm "induced" the infringing acts of its handset manufacturer customers by providing customers with the system determination software, training them on implementation of their mobile devices, etc.

However, the CAFC rules that the ITC misapplied the standard for induced infringement, as a 2006 CAFC decision determined that to induce infringement, the inducer must have specific affirmative intent to cause direct infringement. (The CAFC adds that such intent may be demonstrated by circumstantial evidence such as that presented by Broadcom.)

(The CAFC also upheld the ITC's finding that Broadcom's 983 patent is valid and its finding that there was no direct infringement by Qualcomm, which was an allegation relating to Qualcomm's importation and use of certain testing devices.)

(See ITT's Online Archives or 06/14/07 news, 07061415, for BP summary of the limited exclusion order, and a cease and desist order against Qualcomm.

See ITT's Online Archives or 07/05/07 news, 07070515, for BP summary of U.S. Customs and Border Protection's posting of a certification form for certain exempt "pre-existing" models containing Qualcomm chips, etc.

See ITT's Online Archives or 09/18/07 news, 07091810, for BP summary of a CAFC's grant of a stay (pending appeal) to allow seven companies to import handsets containing Qualcomm chips that were banned by the ITC's limited exclusion order.)

CAFC decision (Kyocera Wireless Corp., Qualcomm Inc., et al. vs. U.S. and Broadcom Corporation, CAFC 2007-1493, -1494, -1495, -1496, -1497, -1498, -1499, -1514, -1573, 2008-1004, -1009, -1010, -1012, -1013, -1015, -1018, -1019, dated 10/14/08) available at http://www.cafc.uscourts.gov/opinions/07-1493.pdf