Category: Patent Validity - Anticipation

On Oct. 14, 2008, the Court of Appeals for the Federal Circuit addressed the International Trade Commission's issuance of an exclusion order against the importation of all downstream products containing imports of Qualcomm that it had determined infringed Broadcom’s U.S. Patent No. 6, 714,983.  The Federal Circuit agreed with the ITC that the patent had not been proven to be invalid, and that there was no direct infringement by Qualcomm.  The Court sent the case back to the ITC on the question of infringement, holding that the ITC had misapplied the standard for induced infringement, and it vacated the exclusion order against the downstream products, holding that it was granted without authority.  However, in determining that the patent had not been proven invalid, the court addressed whether the GSM standard (alleged to anticipate the patent) was a single reference or multiple documents, which would make the standard as a = whole unavailable in an anticipation analysis.  The Federal Circuit affirmed the ITC's determination that the standard was not a single reference:

The different specifications that comprise the GSM standard were authored by different subsets of authors at different times. Indeed, the GSM standard includes hundreds of individual specifications drafted by approximately ten different subgroups, each with its own title and separate page numbering. Each specification, though part of the greater GSM standard, stands as a separate document in its own right.  Even Qualcomm's witness--admittedly one of the most knowledgeable people in the world about the operation of GSM--testified that she had not read the entire standard and did not know of any person who had read the entire standard. Open Session Tr. 1712, Mar. 15, 2006. Under these circumstances, the GSM standard is actually several prior art references with separate dates of creation, rather than a single prior art reference.

Qualcomm also asserted that the various portions of the standard referenced each other, making the standard a single document, due to the concept of incorporation by reference.  The Federal Circuit disagreed because each of the various documents "at most...identifies itself as a part of the greater GSM standard; specifications at time cross-reference other specifications."  In a summary statement, the court also noted that the standard, as a whole could not be assigned "a single prior art date of creation."

An obviousness argument was not made regarding the effect of the various portions of the standard, taken together.

The case can be found at: 2008 U.S. App. LEXIS 21505.