Untitled case

I'll research this case thoroughly before drafting the overview.

Let me verify the Federal Circuit appeal and its disposition.

Let me get the patent's technical content and confirm appeal details.

Correction to the prior summary (important)

The metadata's framing — "arising from the '867-related LSI/Agere litigation… lower-tribunal source and appellate disposition unconfirmed" — can now be resolved. *Federal Circuit No. 2014-1410 is LSI Corp. v. U.S. International Trade Commission,* an appeal from an International Trade Commission Section 337 determination, not from a district court. The court's own opinion file is captioned and docketed at that number (nonprecedential, decided March 20, 2015, reported at 604 F. App'x 924, panel of Taranto, Mayer, and Hughes), and the court's website lists "2014-1410: LSI Corporation v. ITC." The lower tribunal was ITC Inv. No. 337-TA-837, Certain Audiovisual Components and Products Containing the Same (ALJ David P. Shaw), instituted April 11, 2012, 77 Fed. Reg. 22803.

Overview

Parties and posture. The complainants were LSI Corporation (Milpitas, CA) and its wholly owned subsidiary Agere Systems Inc. (Allentown, PA) — both operating semiconductor companies with large patent portfolios, not NPEs; Agere was the original assignee and patent owner of the asserted 802.11 patents, and LSI (as parent) agreed to be bound by Agere's IEEE commitments. The respondents included Realtek Semiconductor Corp. (Hsinchu, Taiwan), Funai Electric Co./Funai Corp./P&F USA/Funai Service (Japan/U.S.), and, initially, MediaTek and MediaTek/Ralink. LSI sought a limited exclusion order and cease-and-desist relief. The complaint, filed March 12, 2012, asserted four patents: US 5,870,087 (MPEG decoder with unified memory for transport decode and system-controller functions), US 6,452,958 (digital modulation using an extended code set — a PHY-layer 802.11b technique), US 6,707,867, and US 6,982,663 (an H.264/ITU-declared patent). The '958 and '867 were declared IEEE 802.11 standard-essential via Agere Letters of Assurance (2003–2004), and the '663 was declared to the ITU.

The '867 patent and the accused technology. US 6,707,867, Wireless local area network apparatus, claims (representatively claim 20) a WLAN receiver with a counter counting to n and a radio modem that periodically receives a transmission containing a timestamp field whose value m synchronizes the receiver's timer to the transmitter's timer, "wherein the timestamp accounts for delays due to a busy signal on a medium access protocol" — i.e., the 802.11 timing-synchronization function (TSF) implemented in beacon timestamps. LSI accused Realtek's 802.11-compliant time-synchronization chips and Funai's 802.11 products (including those incorporating Realtek chips). The asserted '867 claims were 20, 23, 24, 26–35, 37–40, 47, 49, 50–56, and 58–61. The '867 expired February 23, 2014, which became dispositive.

Procedural path and disposition. The ALJ's final initial determination (July 18, 2013) found a violation only as to the '087 patent and no violation as to the '958, '867, and '663 patents. On review, the Commission (March 4, 2014, 79 Fed. Reg. 13328) terminated the '087 and '663 on settlement; mooted the '867 because it had expired (the ITC grants only prospective relief) and took no position on the ALJ's findings, while refusing to vacate them over respondents' objection; and, as to the '958, affirmed non-infringement, reversed the ALJ to hold the '958 claims invalid, and found no domestic industry under 19 U.S.C. § 1337(a)(3)(C) because LSI had not shown an "article protected by the patent." On appeal, the Federal Circuit affirmed (604 F. App'x 924), holding that InterDigital Commc'ns v. ITC (690 F.3d 1318; 707 F.3d 1295) supplied adequate notice of the patent-covered-article requirement before discovery closed, so the Commission's application of Certain Computers was not impermissibly retroactive; and that the Commission did not abuse its discretion in declining to vacate the '867 non-infringement findings. Critically, the court expressly declined to reach claim construction or the infringement/validity merits as to either patent. The ALJ's '867 non-infringement finding therefore stands unreviewed on the merits.

Why it matters. The appeal sits at the intersection of two IP-law storylines. First, SEP/RAND enforcement: the ITC case was the pressure point in Realtek's parallel N.D. Cal. action, Realtek Semiconductor Corp. v. LSI Corp., No. 5:12-cv-03451-RMW, in which Judge Ronald Whyte held that LSI breached its RAND obligations by filing the ITC complaint before offering Realtek a license (946 F. Supp. 2d 998 (N.D. Cal. 2013)) and enjoined enforcement of any ITC exclusion order; the Ninth Circuit dismissed LSI's interlocutory appeal as moot after the ITC's no-violation finding (No. 13-16070, Mar. 20, 2014). A February 2014 jury then set RAND rates of 0.12% ('958) and 0.07% ('867) and awarded Realtek $3.825 million, which the court upheld on JMOL (2014 WL 2738216, 2014 WL 2738226). That litigation is a canonical citation in the FRAND-breach and "injunction before offer" literature. Second, ITC domestic-industry doctrine: the affirmance reinforced that a licensing-based domestic industry under § 1337(a)(3)(C) requires proof of a patent-protected article — a doctrinal point that reshaped how licensing-heavy complainants plead domestic industry. Market context: the case was part of the early-2010s wave of 802.11/Wi-Fi SEP assertions by chip vendors against Taiwanese and Japanese component makers, brought at the ITC precisely because prospective exclusion relief, not damages, was the leverage sought.

Sourcing caveats

Well-sourced: party identities, ITC institution and terminal determination (Federal Register), ALJ/Commission findings, the Fed Cir opinion and citation, the '867 expiration date and asserted claims, and the N.D. Cal. RAND rulings and jury verdict. Not verified: appellate counsel of record for either side in No. 2014-1410; the exact '867 filing/priority date; and any rehearing, en banc, or certiorari activity after the March 20, 2015 judgment (none surfaced). I also found no IPR/PGR proceedings against the '867 — unsurprising, since it expired in 2014, before the AIA review regime matured; treat "no IPR linkage" as an inference, not a confirmed null result.

I'll research this case systematically, starting with the Federal Circuit appeal and the underlying district court litigation.

The core case is the ITC § 337 appeal. Let me nail down the opinion citation, the ITC record, and check for parallel PTAB proceedings.

Now let me pin down the parallel district court case (C.D. Cal.) and the ITC final determination details.

Threshold correction to the case framing

The metadata (Fed. Cir. No. 2014-1410; U.S. Patent No. 6,707,867) is correct, but the vehicle is not a district-court infringement suit. No. 2014-1410 is LSI Corp. v. U.S. International Trade Commission, 604 F. App'x 924 (Fed. Cir. Mar. 20, 2015) (nonprecedential, Taranto, J.) — an appeal from the ITC's final determination in Inv. No. 337-TA-837, Certain Audiovisual Components and Products Containing the Same. Opinion PDF: https://cafc.uscourts.gov/sites/default/files/opinions-orders/14-1410.Opinion.3-18-2015.1.PDF; oral-argument audio page: https://www.cafc.uscourts.gov/7-20-2015-2014-1410-lsi-corporation-v-itc-audio-uploaded/.

Two consequences follow. First, several of the milestones you asked about (Rule 12 motions, counterclaims, JMOL, fee motions) do not exist in this vehicle — § 337 practice substitutes a notice of investigation, motions for summary determination, an ALJ hearing, Commission review, and CAFC review under the APA. Second, the status field "on appeal" is stale: the appeal was decided and affirmed on 2015-03-20, so the matter is closed. Below I trace the actual chronology, then separately trace the two Article III tracks in which the '867 patent was actually litigated (including the only jury trial on it), and flag what I could not verify.

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I. The ITC proceeding (the record underlying No. 2014-1410)

2012-03-12 — Complaint ("filing"). LSI Corporation (Milpitas, CA) and Agere Systems Inc. (Allentown, PA) filed the § 337 complaint; supplements followed 2012-03-21, -26, -28 and an amended complaint on 2012-03-28. Asserted: U.S. 5,870,087 ('087), 6,452,958 ('958), 6,707,867 ('867), 6,982,663 ('663). On the same day LSI/Agere filed a parallel C.D. Cal. complaint against Funai/P&F USA on the same four patents (see § III.A). The '867 patent — "Wireless local area network apparatus," assigned to Agere — was asserted at claims 1, 4-7, 9-21, 23, 24, 26-40, 44, 45, 47, 49-74.

2012-04-11 — Institution. Commission instituted the investigation (published 77 Fed. Reg. 22803, 2012-04-17). Respondents: Funai Electric Co., Ltd.; Funai Corp.; P&F USA; Funai Service Corp. (collectively "Funai"); MediaTek Inc./MediaTek USA/MediaTek Wireless; Ralink Technology; Realtek Semiconductor. ALJ David P. Shaw assigned. Notably, the Office of Unfair Import Investigations declined to participate — no Commission investigative attorney.

2012-08-21 → 2012-09-14 — Claim-narrowing fight. Respondents moved to cut the asserted claims from >100 to roughly 15. ALJ Shaw denied the motion on 2012-09-14 as non-compliant with the rules, but ordered LSI to file periodic reports identifying which claims it would actually pursue. After twelve such reports, on roughly 2013-02-19 the ALJ terminated the investigation as to, inter alia, '867 claims 1, 4-7, 9-19, 21, 36, 44-45, 57, 62-74 (and '958 claims 1-7, 10-11, 30, 36; '663 claim 10). Source note: the 2012-08-21/2012-09-14/2013-02-19 dates come from a Taiwanese STPI secondary summary, though the terminated '867 claim list is corroborated by PTAB petition papers reproducing the ID.

2013-01-10 — InterDigital II. The Federal Circuit decided InterDigital Commc'ns, LLC v. ITC, 707 F.3d 1295 (Fed. Cir. 2013), holding that a licensing-based domestic industry under § 1337(a)(3)(C) requires proof of "articles protected by the patent." This is the legal pivot for the whole appeal.

2013-01-24 — MediaTek/Ralink exit. ALJ granted LSI's withdrawal of all allegations against MediaTek and Ralink, terminating them as respondents.

2013-01-27 — Summary determination. ALJ granted Funai's motion for summary determination of non-infringement as to certain accused products (secondary source).

2013-02-08 — Close of discovery. Dispositive for the appeal: the Commission later held this date fixed the evidentiary record after InterDigital II issued.

2013-04-02 → 2013-04-10 — Evidentiary hearing ("trial"). Week-long hearing before ALJ Shaw.

2013-07-18 — ALJ's Final Initial Determination. Violation found as to '087 claims 1, 5, 7-11, 16; no violation as to any asserted claim of '958, '867, or '663. On the '867 specifically, the ID found the asserted claims not infringed and rejected Respondents' anticipation theories, holding the '867 entitled to a 1993-03-06 priority date — which knocked out EP 0 615 363 (Diepstraten) as prior art, and distinguishing Motorola WIN/White as a TDMA (not CSMA) system whose TX_TIMESTAMP was not the claimed byte-counter timestamp. Recommended Determination on remedy/bonding issued 2013-07-31.

2013-08-05 — Petitions for review filed by the private parties.

2013-10-17 — Commission review in toto. The Commission determined to review the final ID in its entirety and ordered additional briefing, including a pointed question asking the parties to address whether a licensing-based domestic industry requires proof of "articles protected by the patent" in light of InterDigital II, plus extensive RAND/standard-essential questions on the '663, '958 and '867 patents (79 Fed. Reg. 63,... / FR-2013-10-23).

2014-01-17 — Settlement as to '087/'663. LSI and Funai jointly moved to

I'll research this appeal and the underlying litigation to identify counsel of record.

Confirmed the appeal's identity — now let me dig into the appellate docket and underlying ITC investigation.

Now let me pull the Federal Circuit counsel of record from the appellate docket and briefs.

Threshold point: what this case actually is

Before naming counsel, one correction to the case framing matters for the answer, because it determines who the "plaintiff" even is.

Federal Circuit No. 2014‑1410 is LSI Corporation and Agere Systems LLC v. United States International Trade Commission, 604 F. App'x 924 (Fed. Cir. Mar. 20, 2015) (nonprecedential) — an appeal under 19 U.S.C. § 1337 from ITC Investigation No. 337‑TA‑837, Certain Audiovisual Components and Products Containing the Same. The '867 patent was one of four patents asserted there (along with U.S. 5,870,087, 6,452,958, and 6,982,663). See the opinion itself (https://cafc.uscourts.gov/sites/default/files/opinions-orders/14-1410.Opinion.3-18-2015.1.PDF); Casetext reproduction at 604 F. App'x 924 (http://g.casetext.com/case/lsi-corp-v-us-intl-trade-commn); ITC notice, 77 Fed. Reg. 22803 (investigation instituted Apr. 17, 2012) (https://www.usitc.gov/secretary/fed_reg_notices/337/337_837_notice03262013sgl_0.pdf).

So there is no district-court "plaintiff" in the ordinary sense. The functional plaintiffs are LSI Corporation and Agere Systems LLC as complainants below and appellants here; the nominal appellee is the ITC, with Realtek and Funai as respondents/intervenors below. The related district-court proceeding in which the '867 patent was also litigated was Realtek Semiconductor Corp. v. LSI Corp., No. 5:12‑cv‑03451 (N.D. Cal.) — a contract/RAND case in which Realtek was the plaintiff and LSI/Agere the defendants. That posture matters: the "plaintiff-side" firm names differ between the ITC appeal and the N.D. Cal. action.

Counsel — what is documented

Firm/attorney roles on the complainant-appellant side (ITC record)

By contrast, the adverse side (for orientation only): respondents Realtek/Funai were represented at the ITC by Elizabeth A. Niemeyer of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (same TIPO source).

What I could not verify — and I will not fill the gap

• I did not confirm the Federal Circuit notice of appearance / counsel of record for 2014‑1410. I was unable to retrieve the CM/ECF docket sheet or the counsel block printed on the appellants' opening and reply briefs. Federal Circuit practice frequently puts a separate appellate team on the briefs than the ITC trial team, and the appellee ITC is represented by its own Office of the General Counsel attorneys (and typically by the respondents' trial firm for the intervenors). Treat David F. Nickel as documented ITC-level lead counsel for the complainants, not as confirmed Federal Circuit counsel of record. I did not locate the CAFC docket entry listing appearances before my research budget was exhausted.
• No in-house counsel identified. I found no LSI/Agere corporate counsel named on any accessible filing.
• The opinion (604 F. App'x 924) is a short Rule 36-style nonprecedential disposition addressing only the § 1337(a)(3)(C) domestic-industry/retroactivity issue as to the '958 patent; the '867 patent had expired Feb. 23, 2014 and the ITC proceeding as to it was mooted, which limits how much counsel detail the opinion reveals. See the opinion PDF linked above and the ITC final determination discussion in Realtek v. LSI, No. 5:12‑cv‑03451 (N.D. Cal.) (http://g.casetext.com/case/realtek-semiconductor-corp-v-lsi-corporation-and-agere-systems-llc).

How to close the gap

To confirm the actual appellate appearances, the authoritative sources are, in order: (1) the Federal Circuit docket for 2014‑1410 via PACER/CM-ECF (entries: "Notice of Appearance," "Entry of Appearance," and the certificate-of-interest filing); (2) the counsel block on page 1 of the redacted opening brief and response brief, downloadable from the CAFC's public briefs portal; and (3) the oral-argument audio page for the case, https://www.cafc.uscourts.gov/7-20-2015-2014-1410-lsi-corporation-v-itc-audio-uploaded/, which lists arguing counsel as announced at argument. If those confirm a different name (e.g., an appellate specialist from Kilpatrick Townsend's Washington office rather than Foster Murphy), that name — not the one I have above — would be the correct answer to the Federal Circuit question. I'd rather flag that than guess.

Threshold point on posture (needed before naming "defendants")

Federal Circuit No. 2014‑1410 is LSI Corp. v. U.S. International Trade Commission, 604 F. App'x 924 (Fed. Cir. Mar. 20, 2015) (Taranto, Mayer, Hughes; nonprecedential), an appeal from ITC Inv. No. 337‑TA‑837, which involved U.S. Patent Nos. 6,452,958 and 6,707,867 (the '867 patent expired Feb. 23, 2014, during the Commission review). Opinion: https://cafc.uscourts.gov/sites/default/files/opinions-orders/14-1410.Opinion.3-18-2015.1.PDF; full text with counsel block: https://www.courtlistener.com/opinion/[2787939](/patent/2787939)/lsi-corporation-v-itc/ and http://g.casetext.com/case/lsi-corp-v-us-intl-trade-commn.

So there is no party formally styled "defendant" on this docket: LSI/Agere are the appellants (complainants below), the ITC is the appellee, and Funai and Realtek are intervenors — i.e., the parties defending the no‑violation outcome on the '867 (and '958) patents. I list the defending side first, then, for completeness, LSI/Agere's counsel (LSI and Agere were the named defendants in the companion N.D. Cal. action, Realtek v. LSI, No. 5:12‑cv‑03451‑RMW).

A. The defending parties (appellee ITC + intervenors Funai/Realtek)

Counsel of record as listed in the Federal Circuit's opinion (counsel block, 604 F. App'x 924):

Trial-level counsel for the respondents below (useful context, not Federal Circuit counsel of record): Finnegan, Henderson, Farabow, Garrett & Dunner (Washington, DC) represented Realtek in 337‑TA‑837 — named attorneys included Elizabeth A. Niemeyer and Yanbin Xu (https://www.finnegan.com/en/professionals/yanbin-xu-ph-d.html; https://www.finnegan.com/en/work/experience/certain-audiovisual-components-agere-systems-and-lsi-corp-v-realtek-semiconductor-corp-itc-337-ta-837-itc.html).

B. Appellants LSI Corp. and Agere Systems LLC (defendants in the parallel N.D. Cal. action)

District-court (N.D. Cal. No. 5:12‑cv‑03451‑RMW) counsel for LSI/Agere, per the docket signature pages: David E. Sipiora and Kevin M. Bell (Kilpatrick Townsend, Denver) and Robert J. Artuz (Kilpatrick Townsend, Menlo Park — local counsel); Charles A. Pannell III (Kilpatrick Townsend) is also identified as LSI's counsel in early coverage (https://www.vitallaw.com/news/patent-ndcal-semiconductor-company-plausibly-alleged-wi-fi-patent-owners-breached-obligations-to-license-patents-on-rand-terms/ipm011701871c7bb91000b668002264f3fce805fc). Realtek's district-court team was Reed Smith (Scott D. Baker, William R. Overend, James A. Daire, Adrian Sue Shin, Carina M. Tan).

Caveats

• The counsel rosters above are taken from the Federal Circuit's published counsel block and from district-court signature pages/opinions; I did not independently pull the CM/ECF docket sheet for 2014‑1410, so I cannot rule out additional appearances (e.g., amici or permissive intervenors) not reflected in the opinion.
• Nothing in this appeal was sealed as to counsel identification; the appeal is long since closed (affirmed Mar. 20, 2015, petition-stage activity concluded), so there are no "counsel not yet appeared" issues.
• Current firm/office affiliations are stated as of the litigation record; several of these lawyers have since changed firms or roles, and I have not verified present-day titles.
• Related appellate history worth noting: LSI's separate interlocutory appeal of Judge Whyte's FRAND-based preliminary injunction was No. 13‑16070 (9th Cir.), dismissed as moot on Mar. 20, 2014 (http://cdn.ca9.uscourts.gov/datastore/memoranda/2014/03/20/13-16070.pdf); that is a different appeal from 2014‑1410.