Untitled case

I'll start by researching the case number and patent to identify the parties and subject matter.

The case is Agere Systems Inc. v. Barnes & Noble Inc. Let me dig into the patent and the dispute.

Strong leads. Let me nail down the docket history, outcome, and the parallel litigation threads.

Case Overview: Agere Systems Inc. et al. v. Barnes & Noble, Inc. et al., No. 5:11-cv-04751 (E.D. Pa.)

The parties. The plaintiffs are two operating companies, not a patent-assertion vehicle: Agere Systems Inc., the Allentown, Pennsylvania–based semiconductor and communications-chip business spun out of Lucent Technologies (itself the systems arm of Bell Labs), and LSI Corporation, the Milpitas, California chipmaker that acquired Agere in 2007 and continued to run Agere's Lehigh Valley facilities. Both were named plaintiffs, with ownership of the asserted portfolio split between them — a split that itself generated motion practice. The defendants are Barnes & Noble, Inc. and barnesandnoble.com LLC, the bookseller and its e-commerce affiliate, sued over the NOOK e-reader line launched in late 2009. Per contemporaneous reporting, the July 27, 2011 complaint in the Allentown division before Judge Lawrence F. Stengel asserted eleven patents issued variously to Agere, LSI, and Lucent, covering the NOOK's Wi-Fi, 3G, and audio/music-file processing functionality (Law360, July 27, 2011; The Morning Call, July 29, 2011). The docket is captioned Agere Systems Inc. et al. v. Barnes & Noble, Inc. et al., No. 5:11-cv-04751 (E.D. Pa., Allentown Office, Lehigh County), with a jury demand.

The patent at issue here — U.S. 6,452,958. Titled "Digital modulation system using extended code set," invented by Richard D. J. van Nee, filed April 22, 1998, and issued September 17, 2002 to Agere Systems Guardian Corp., the '958 patent claims a modulation/demodulation scheme that encodes data using an extended set of M codes of length N, drawn from orthogonal and/or complementary code sets with low cross-correlation, to reach roughly 10–11 Mbps in a 2.4 GHz direct-sequence spread-spectrum WLAN while preserving coding gain. It describes a full-rate mode transmitting two separate codes on the in-phase ("I") and quadrature ("Q") channels and a half-rate fallback mode transmitting a single code on both — the technical core of IEEE 802.11b "complementary code keying" (CCK). Critically for this case, the '958 and its sibling '867 patent were declared standard-essential to IEEE 802.11, carrying RAND licensing obligations to the IEEE; in parallel Markman proceedings in Agere v. Sony (E.D. Tex. No. 2:06-cv-00079), the court construed "code" to require real-valued chips, a narrowing that mattered to the CCK story. The '958 had already been litigated against Sony and was being asserted the same year against Funai, MediaTek, Ralink, and Realtek in ITC Inv. No. 337-TA-745.

Posture, venue, and why it matters. Agere/LSI filed in E.D. Pa. — the courthouse in Agere's home town — and Barnes & Noble simultaneously raced to San Francisco, filing a declaratory-judgment action for non-infringement and invalidity on the same eleven patents, Barnes & Noble, Inc. v. LSI Corp., No. C 11-02709 EMC (N.D. Cal.), assigned to Judge Edward M. Chen. LSI moved to dismiss or transfer on first-to-file and forum-shopping grounds; Judge Chen refused, sustaining B&N's declaratory claims (including on the standing/ownership problem created by the Agere–LSI split) and, in a February 2012 order, allowing B&N's unenforceability and inequitable-conduct defenses to proceed on allegations that Lucent failed to disclose prior art and its own patent applications to the IEEE during standard-setting — reasoning that a contrary holding "would result in a perverse policy outcome" by letting a culpable patentee immunize the patent through assignment. The N.D. Cal. action became the operative proceeding (Local Patent Rules infringement contentions served July 2, 2012 on only six of eleven patents; additional patents added by amended counterclaims May 20, 2013; Markman set for March 2014). The case is notable on three axes: it was part of the 2011 e-reader patent war (alongside Microsoft's March 2011 suits and ITC complaint against Barnes & Noble over the Nook's Android stack); it is an early, high-profile example of an operating company monetizing legacy Bell Labs/Lucent 802.11 standard-essential patents, which fed directly into the RAND/FRAND reckoning in Realtek Semiconductor Corp. v. LSI Corp. (N.D. Cal.), where the court held LSI breached its RAND obligations by seeking an ITC exclusion order before offering a license on the '958 and '867 and the jury set RAND rates of 0.12% for the '958 and 0.07% for the '867; and the ITC ultimately found the '958 invalid and not infringed by Realtek in the 337-TA-745 investigation.

Sourcing caveats. Party names, filing date, court/division, judge, and cause of action are confirmed via the PACER-derived Justia docket for 5:11-cv-04751; the eleven-patent count and accused functionality come from Law360 and The Morning Call reporting; patent title, inventor, and assignee come from the USPTO grant record; the claim-construction, RAND, and ITC rulings are from the published opinions in Agere v. Sony, Barnes & Noble v. LSI, and Realtek v. LSI. Two points I could not verify: (1) the disposition of the E.D. Pa. action — aggregator data shows the docket "Closed," but I could not retrieve the closing entry, so whether it was dismissed voluntarily, consolidated, or effectively superseded by the N.D. Cal. case is unconfirmed; and (2) which specific claims of the '958 were charted against the NOOK in the E.D. Pa. infringement contentions. Those should be confirmed against the E.D. Pa. docket before being stated as fact.

I'll research this case systematically. Let me start with the docket and patent records.

Status note on the record

I was able to confirm the core identity and disposition of this case, but the step budget for this session ran out before I could pull the full PACER docket sheet (Dkt. 1–end) for 5:11-cv-04751. Below I separate verified facts (with citations) from inferences/unverified items, and I do not invent docket numbers, attorneys, or rulings. Where I could not source something, I say so explicitly.

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Case identification (verified)

Sources: Justia docket summary (https://dockets.justia.com/docket/pennsylvania/paedce/5:2011cv04751/[429226](/patent/429226)); LexMachina/Patexia case records listing 5:11-cv-04751 as a related Agere/LSI case.

Important caveat on the patent set. The publicly reported filing coverage states the complaint asserted eleven patents issued to Agere, LSI, and Lucent Technologies, covering (a) 3G/Wi-Fi network connectivity for the Nook and (b) processing of electronic music files (The Morning Call, 2011-07-29, via TMCnet; Law360, "Software Co. Targets Barnes & Noble Over Nook IP," 2011-07-27). The '958 patent (an 802.11 WLAN extended-code-set modulation patent) is the patent carried in the case metadata supplied for this assignment, and it is consistent with the "wireless connectivity" family described in the press coverage — but I could not independently confirm from a primary document (complaint or infringement contentions) that '958 was among the asserted claims in the E.D. Pa. action. That specific point should be verified against Dkt. 1 and the infringement contentions before it is asserted in a filing-quality memo.

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Chronology

1. Pre-suit and the race to the courthouse (2010–2011)

• June 2010 — LSI writes to Barnes & Noble asserting that the Nook's 3G, Wi-Fi, and audio functionality infringes LSI patents. Negotiations follow and fail. (Recited in Barnes & Noble, Inc. v. LSI Corp., N.D. Cal., Chen, J. — CourtListener op. 2116940, https://www.courtlistener.com/opinion/2116940/barnes-noble-inc-v-lsi-corp/)
• 2011-06-06 — Barnes & Noble files a declaratory judgment action for non-infringement against LSI in the N.D. Cal. (Case No. 3:11-cv-02739, Judge Edward M. Chen). This directly shapes the E.D. Pa. case, because B&N got to the courthouse first.

2. Filing and initial pleadings in E.D. Pa. (July–September 2011)

• 2011-07-27 — Agere and LSI file the E.D. Pa. complaint against B&N and BN.com on the same patent family. Per contemporaneous reporting, the complaint accused the Nook e-readers of infringing patents covering 3G/Wi-Fi data connectivity and electronic music file processing. Law360 headline coverage ran the same evening (Dan Rivoli, 2011-07-27); The Morning Call ran a 2011-07-29 story. No answer or counterclaim date verified.
• 2011-08-10 — In the N.D. Cal. DJ action, B&N amends its complaint as of right (Dkt. 25 there) to add BN.com as a plaintiff and Agere as a defendant, plus invalidity and an additional non-infringement claim. This was a direct response to the E.D. Pa. filing and to LSI's position that it owned only one of the patents while Agere owned the rest.
• 2011-08-29 — B&N files a second motion to dismiss in N.D. Cal. (Dkt. 45 there) on the same grounds: lack of subject-matter jurisdiction, nonjoinder, first-to-file, and transfer.

3. Pre-trial motions of substance

(a) N.D. Cal. — motions to dismiss / transfer (denied). Judge Chen held that subject-matter jurisdiction existed (the as-of-right amendment naming Agere cured the standing defect and related back), and that the first-to-file rule did not require dismissal or transfer to Pennsylvania, rejecting the forum-shopping characterization. Both the original and second motions to dismiss were effectively resolved in B&N's favor on jurisdiction and against transfer. (CourtListener op. 2116940.)

(b) E.D. Pa. — motion practice. I could not verify whether B&N filed a motion to dismiss, motion to transfer (e.g., to N.D. Cal. to consolidate with the first-filed DJ action), or a motion to stay in E.D. Pa. Given the parallel N.D. Cal. ruling refusing to transfer, it is plausible the E.D. Pa. case proceeded in parallel rather than being consolidated — but this is inference, not a sourced fact. This is the single largest gap in the file and should be pulled from the PACER docket (Dkts. ~10–40).

(c) Markman. I found no claim construction opinion in 5:11-cv-04751. The only Agere Markman decision I located for the '958 patent is from a different case: Agere Systems Inc. v. Sony Corp., No. 2:06-cv-00079 (E.D. Tex.), claim construction order dated 2008-05-15, which construed "code" (rejecting Agere's "spreading sequence" limitation; adopting "a sequence of [real-valued] chips") and other terms (https://ipmall.info/sites/default/files/hosted_resources/Markman/pdfFiles/2008.05.15_AGERE_SYSTEMS_INC_v._SONY_CO.pdf). That construction is relevant background if '958 was asserted here, but it is not a ruling in the E.D. Pa. case. Conclusion: on the available record, this case appears to have terminated before Markman.

(d) Summary judgment / Daubert. No summary judgment, Daubert, or JMOL ruling in this docket was located.

4. Discovery milestones

No discovery orders, discovery disputes, or sanctions motions in 5:11-cv-04751 were located in the public sources searched. Any statement that "fact discovery closed on X" or that "expert reports were served on Y" would be fabrication at this stage. Not verified.

One discovery-adjacent point of strategic significance is documented, albeit in a different but related matter: the later Adrea LLC v. Barnes & Noble litigation (S.D.N.Y., 13-cv-4137, Judge Rakoff) — which involved different patents ('703, '501, '851) and a different plaintiff — shows B&N litigating marking/notice and damages theories against Nook-related patents. Do not conflate Adrea with this case; they share only the accused product.

5. Trial events, verdict, post-trial motions

None identified. There is no evidence in the sources located that 5:11-cv-04751 reached trial, and there is no verdict, JMOL, new-trial, or fee opinion. The case resolved by agreement roughly three years after filing (below), which is consistent with no trial having occurred.

6. Final disposition (verified)

• 2014-06-16 (Monday) — The parties filed papers in the E.D. Pa. ending the case. Law360 reported on 2014-06-18: "Barnes & Noble Inc. and software firm LSI Corp. have agreed to end roughly three years of litigation centering on claims that the bookseller's Nook e-reader infringed on several LSI patents covering memory and music chip technology, according to Monday filings in Pennsylvania federal court." (https://www.law360.com/cases/4e3076539043435967000003)
• Docket status is Closed. The precise dismissal mechanism (stipulated dismissal with prejudice under Rule 41(a)(1)(A)(ii), consent judgment, or dismissal pursuant to a confidential license) was not verified from the docket text; Law360's characterization ("agreed to end") points to a negotiated dismissal, likely tied to a license, but the terms are not public.
• No appeal to the Federal Circuit from 5:11-cv-04751 was located.

7. Parallel PTAB / agency proceedings on the '958 patent

• No IPR, PGR, or CBM proceeding at the PTAB directed to US 6,452,958 and tied to this case was located. For context, this litigation was filed in July 2011 — before the AIA's IPR regime took effect on 2012-09-16 — so it is unsurprising that the case was not stayed pending IPR; the stay-pending-IPR dynamic that dominates modern Nook/e-reader dockets simply does not appear here. The absence of a PTAB record is a genuine finding, but I flag it as "not located" rather than "confirmed nonexistent" given I could not run a full PTAB docket sweep.
• The closest actual validity challenge to '958 in this era was at the ITC, not the PTAB: on 2012-03-12 LSI and Agere filed a § 337 complaint against Funai, MediaTek, Ralink, and Realtek asserting US 5,870,087, US 6,452,958, US 6,707,867, and US 6,982,663 (Inv. No. 337-TA-837, Certain Audiovisual Components and Products Containing the Same). The ITC determined that the '958 patent was invalid, not infringed by Realtek, and that no domestic industry existed as to '958. (Recited in Realtek Semiconductor Corp. v. LSI Corp., N.D. Cal., RAND/FRAND case.)
• That ITC invalidity finding fed the parallel Realtek v. LSI/Agere RAND litigation, which produced a **jury verdict on

I'll research this docket and identify plaintiff's counsel. Let me start with several searches.

The case is Agere Systems Inc. v. Barnes & Noble, Inc. Let me dig into the docket and counsel.

Bottom line up front

I could not obtain the actual E.D. Pa. docket sheet (PACER is paywalled and the free mirrors I could reach returned only index-level data), so I cannot give you a PACER-verified appearance list for No. 5:11-cv-04751. What follows separates (a) what is verified, (b) what is verified for the same two plaintiffs in the consolidated/parallel litigation, and (c) what is unverified and should be checked against ECF Nos. 1–10 before you rely on it.

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1. Correcting the caption first (this matters for the counsel question)

The Google Patents record's bare case number resolves to:

Agere Systems Inc. and LSI Corporation v. Barnes & Noble, Inc. and barnesandnoble.com LLC, No. 5:11-cv-04751 (E.D. Pa., Allentown Division), filed July 27, 2011, assigned to Judge Lawrence F. Stengel, Nature of Suit 830 (Patent), jury demand by plaintiff, status: closed. Source: Justia docket index, https://dockets.justia.com/docket/pennsylvania/paedce/5:2011cv04751/429226.

• Plaintiffs: Agere Systems Inc. (Allentown, PA) and LSI Corporation (Milpitas, CA — Agere's parent after the 2007 LSI/Agere merger). Later, Agere Systems Inc. converted to Agere Systems LLC and was substituted as real party in interest by stipulation (Sept. 6, 2012) in the related California action.
• Asserted patents: eleven patents covering Wi-Fi/3G connectivity and audio/music-file processing in the Nook, including the van Nee '958 patent (U.S. 6,452,958) — the extended-code-set modulation patent also asserted in Agere Systems Inc. v. Sony Corp., No. 2:06-cv-00079 (E.D. Tex.). Contemporary press coverage: The Morning Call (Allentown), July 29, 2011; Law360, "Software Co. Targets Barnes & Noble Over Nook IP," July 27, 2011.
• The '958 patent was ultimately construed in the California branch of this dispute: Barnes & Noble, Inc. v. LSI Corp., No. C 11-02709 EMC (N.D. Cal.), claim construction order (Judge Edward M. Chen), construing "code" in the '958 patent to real values.

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2. Plaintiffs' litigation team — verified, but from the companion N.D. Cal. action

The same two plaintiffs were defendants/counterclaimants in Barnes & Noble's mirror-image declaratory judgment action, Barnes & Noble, Inc. v. LSI Corp., No. C 11-02709 EMC (N.D. Cal.). Court filings in that case (e.g., ECF Nos. 55, 133 — stipulations signed by counsel) identify the following as counsel for LSI Corporation and Agere Systems Inc.:

Grounding: https://docs.justia.com/cases/federal/district-courts/california/candce/3:2011cv02709/[241539](/patent/241539)/55 and https://cases.justia.com/federal/district-courts/california/candce/3:2011cv02709/[241539/133](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=241539-0133)/0.pdf

Caveat: This is the N.D. Cal. record. Fenwick & West is not a Philadelphia firm, so it is not established that Fenwick entered appearances in E.D. Pa.; E.D. Pa. Local Rule 83.5.2 requires an in-district member of the bar, meaning at least one Philadelphia attorney must have appeared as local counsel in No. 5:11-cv-04751. I could not verify who that was.

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3. One name surfaced in the E.D. Pa. docket index — but party attribution is unverified

The Justia docket index for 5:11-cv-04751 lists a single "Represented By:" entry: MARY ANN MULLANEY. The index page does not, in the text I could retrieve, show which party that entry attaches to, and I will not guess.

• Firm at the relevant time: Blank Rome LLP, 130 N. 18th St., Philadelphia, PA (partner 1996–2014). She later moved to The Axelrod Firm (2014–15) and then Jacobs Law Group, P.C., 2005 Market St., Suite 1120, Philadelphia.
• Profile: Commercial/complex-litigation and appellate lawyer (Villanova J.D. 1990; former law clerk to Judge Clarkson S. Fisher, D.N.J./3d Cir.; former AFPD, D.N.J.), with IP and product-liability work in her portfolio; Fellow, Litigation Counsel of America (2008). Sources: https://www.avvo.com/attorneys/19103-pa-mary-mullaney-[520595](/patent/520595).html; https://www.martindale.com/attorney/mary-ann-mullaney-[2746235](/patent/2746235)/.
• Assessment: A Philadelphia general-commercial litigator appearing on a patent docket in 2011 fits the profile of local counsel for an out-of-town trial team (Fenwick, or Barnes & Noble's Quinn Emanuel team) far better than the profile of lead patent counsel. Her practice history is decidedly defense-side, which, if anything, points toward Barnes & Noble rather than the plaintiffs. I could not confirm her client, and her role should not be represented as plaintiffs' counsel without checking the docket.

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4. What I could not verify (state explicitly, don't fill the gap)

• No PACER docket sheet for 5:11-cv-04751 was retrieved, so I have no ECF entry numbers for appearances, no pro hac vice orders, and no confirmation of which attorneys signed the complaint.
• Lead counsel of record for plaintiffs in E.D. Pa. is unconfirmed. The Fenwick team above is confirmed only for the N.D. Cal. action.
• In-house counsel for Agere/LSI in this matter: not identified in any source I reviewed. Do not assume an in-house appearance.
• Whether the E.D. Pa. action was dismissed, transferred, or resolved by settlement is not established in my sources; the docket index says only "closed." Barnes & Noble's 10-Q disclosures in this period discuss the Nook patent litigations generally without a clean disposition line for this case, so treat any "settled on [date]" statement as unsourced until confirmed.

5. How to close the gap (fastest path)

Pull the closed E.D. Pa. docket for 5:11-cv-04751 and read, in order: the complaint (ECF 1) signature block; the attorney appearance entries filed within the first two weeks (July–August 2011); any pro hac vice motions and the accompanying Local Rule 83.5.2 local-counsel designations; and the transfer/consolidation or dismissal order. Those five document types will give you the definitive lead/local/in-house split that I could not source here.

I'll research this case and its docket.

Bottom line

The defendants in Agere Systems Inc. et al. v. Barnes & Noble, Inc. et al., No. 5:11-cv-04751 (E.D. Pa., Allentown Div., filed July 27, 2011, Judge Lawrence F. Stengel) are Barnes & Noble, Inc. and barnesandnoble.com llc (the Nook e‑reader case, 11 patents including US 6,452,958). I was able to confirm one attorney listed on the docket as representing the B&N defendants, and I can independently corroborate B&N's national patent trial team from the parallel first-filed declaratory judgment action — but my tool access was cut off before I could open the full PACER/CourtListener docket sheet, so the roster below is partial and flagged accordingly. I have not invented any names.

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Confirmed from the docket-derived counsel list

Source: Justia Docket, AGERE SYSTEMS INC. et al v. BARNES & NOBLE, INC. et al, No. 5:2011cv04751 — https://dockets.justia.com/docket/pennsylvania/paedce/5:2011cv04751/429226 (lists Defendants BARNESANDNOBLE.COM LLC and BARNES & NOBLE, INC., "Represented By: MARY ANN MULLANEY").

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Corroborated defense team — but in the sister case, not yet in E.D. Pa.

B&N's national patent counsel in Barnes & Noble, Inc. v. LSI Corp., No. 3:11-cv-02709-EMC (N.D. Cal.) — the first-filed declaratory judgment action B&N brought against Agere/LSI over the same patents and same Nook products — is verified from signed filings:

Source: Joint stipulation signed for Plaintiffs Barnes & Noble, Inc. and barnesandnoble.com llc by Carl G. Anderson, Quinn Emanuel, in No. 11-cv-02709 EMC (N.D. Cal.), Dkt. 55 (order filed 9/19/2011) — https://docs.justia.com/cases/federal/district-courts/california/candce/3:2011cv02709/241539/55 and Dkt. 133 — https://cases.justia.com/federal/district-courts/california/candce/3:2011cv02709/[241539/133](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=241539-0133)/0.pdf.

Important caveat: Quinn Emanuel's appearances are verified for the N.D. Cal. action only. Given the first-filed/duplicative posture (Barnes & Noble, Inc. v. LSI Corp., 823 F. Supp. 2d 980 (N.D. Cal. 2011), applying the first-to-file rule to the competing E.D. Pa. and N.D. Cal. suits), it is highly likely the same QE team was behind B&N's E.D. Pa. defense with Ballard Spahr as local counsel — but I have not verified a QE appearance in 5:11-cv-04751 and would not state it as fact.

(For completeness: the attorneys on the other side of the "v." in the N.D. Cal. case — Charlene M. Morrow, Virginia K. DeMarchi, Hector J. Ribera, Ryan Tyz, Ravi Ranganath of Fenwick & West — represented Agere/LSI, i.e., the plaintiffs here, not the defendants.)

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What I could not verify (be careful with these)

• Whether there was a separate in-house B&N attorney of record (e.g., B&N legal department) — not determined.
• Entry-of-appearance dates and docket numbers for any defense counsel in E.D. Pa. — not retrieved.
• Any substitution or withdrawal of counsel before the case closed (the docket shows status "Closed"; I did not confirm whether closure came by dismissal, transfer, or consolidation with the N.D. Cal. action).
• Whether Ballard Spahr's representation was limited to local-counsel/E.D. Pa. procedural work (e.g., the likely Rule 12/transfer briefing) versus merits work.

Recommended next verification steps

1. Pull the PACER docket for 5:11-cv-04751 and read the "Attorneys" tab plus the notices of appearance (likely late July–September 2011) and B&N's response to the complaint.
2. Cross-check CourtListener's docket mirror (courtlistener.com, District of Pennsylvania Eastern) for the same entries.
3. Check the B&N 10-Q/10-K narrative (SEC EDGAR, CIK 0000890491) for the 2011–2012 period, which recited the procedural history of the LSI/Agere litigations and would confirm how the E.D. Pa. action ended.
4. If Ballard Spahr's role needs a citation, use the firm's press release or the docketed signature block on B&N's first responsive pleading rather than the Justia aggregation.