Litigation

Advanced Micro Devices, Inc. et al. v. Avago Technologies General IP (Singapore) Pte. Ltd.

terminated - settlement

IPR2017-01182

Filed
2017-03-28
Terminated
2017-09-06

Patents at issue (1)

6982663

Summary

AMD and ATI petitioned for inter partes review of the '663 patent. Proceeding terminated due to settlement on Sept. 6, 2017.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case carefully. Note at the outset that the metadata identifies this as a PTAB inter partes review (IPR2017-01182), not a district court action, so I'll verify the procedural posture and the underlying litigation.

Good grounding so far. Now let me pin down the underlying district court action against AMD, the patent's technical content, and the parallel proceedings.

Now let me dig into the underlying district court suits, the parallel Amazon IPRs, and counsel.

Important framing note

The docket in the metadata — IPR2017-01182 — is not a district court infringement suit. It is an inter partes review petition filed by AMD against Avago at the PTAB, filed March 28, 2017 and terminated September 6, 2017 before institution. The infringement litigation itself sat in the district courts (C.D. Cal. and N.D. Cal.) and at the ITC, and this IPR was a defensive filing against that campaign. Below I cover both layers, since the IPR cannot be understood apart from the suits that provoked it.

1. The parties: a fabless chipmaker against an operating company's patent-holding arm

Petitioners. Advanced Micro Devices, Inc. (Sunnyvale/Santa Clara, CA) is a fabless semiconductor designer of CPUs, GPUs and accelerated processing units; ATI Technologies ULC (Markham, Ontario) is its indirect, wholly owned Canadian graphics subsidiary and a named real party-in-interest, with 1252986 Alberta ULC as the intervening holding entity (Petition, Paper 1, at 2; RPI statement). AMD is an operating company, not a PAE — it was the defendant-side actor here, using the PTAB to attack patents being asserted against the video-decode silicon it supplies to PC and consumer-electronics OEMs.

Patent Owner. Avago Technologies General IP (Singapore) Pte. Ltd. is a Singapore patent-holding vehicle, not an independent troll: its mandatory notices identify as real parties-in-interest Broadcom Ltd., Broadcom Corporation, Avago Technologies Limited, and Avago Technologies U.S., Inc. (Paper 4, Apr. 18, 2017). The lineage matters: the patents originated with LSI Logic Corporation, which Avago Technologies acquired in 2014; Avago then acquired Broadcom Corporation in 2016, and the combined group operated as Broadcom Limited/Broadcom Inc. So this is operating-company portfolio monetization run through a special-purpose IP subsidiary — practically an assertion entity in posture, but with an operating parent's balance sheet and R&D history behind it. Avago's Singapore entity later became a recurring fixture in global FRAND/licensing disputes (and was dissolved/restructured after 2017, a point litigated in later Realtek and UPC proceedings).

2. The technology and patent: the binarization step of H.264's CABAC

Patent at issue: U.S. Patent No. 6,982,663 B2, "Method and System for Symbol Binarization" (inventor Lowell Winger, Waterloo, Ontario; originally assigned to LSI Logic; issued Jan. 3, 2006; App. No. 10/770,213, filed Feb.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this. Let me start with the PTAB proceeding and the underlying district court case.

Let me dig into the underlying district court litigation and AMD's role.

Let me research the related district court cases and whether AMD itself was sued.

Threshold point: this docket is a PTAB inter partes review, not an infringement action

The case identified in the metadata — Advanced Micro Devices, Inc. et al. v. Avago Technologies General IP (Singapore) Pte. Ltd., IPR2017-01182 (PTAB, filed 2017‑03‑28, terminated 2017‑09‑06) — is an inter partes review of U.S. Patent No. 6,982,663, not a district court infringement suit. Petitioners were AMD and ATI Technologies ULC (both identified as real parties in interest in the petition), and Patent Owner Avago identified Broadcom Ltd., Broadcom Corporation, Avago Technologies Limited, and Avago Technologies U.S., Inc. as additional RPIs (Avago Mandatory Notices, Paper 4, filed 2017‑04‑18, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1486335](/patent/1486335)).

Consequently, there is no complaint, answer, counterclaim, Markman hearing, summary-judgment motion, trial, verdict, JMOL, or appeal in this case. The infringement litigation over the '663 patent was pending in other fora, and AMD's IPR was a defensive move inside that broader dispute. Below I map your requested categories onto what actually happened in the IPR and then give the related district court/ITC developments that supply the litigation context.

1. Filing and initial pleadings (IPR papers)

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and related filings for this IPR.

Good leads — Baker Botts appears. Let me find the actual petition and its mandatory notices.

Let me pull the petition itself and the joint motion to dismiss, which list counsel.

Bottom line

This is a PTAB inter partes review, not a district-court infringement suit, and the docket is thin — 12 papers total, terminated before institution — so the universe of "counsel of record" is small and verifiable from the Board's own papers. AMD and ATI (with Avago as patent owner) appear in the petitioner role, i.e., the functional "plaintiff" side of this caption. I can confirm two Baker Botts attorneys on the petitioner side. I could not retrieve the text of Paper 1 (the petition) or Paper 7 (the joint motion to dismiss), so I cannot rule out that additional back-up counsel were designated in the petition's mandatory notices without ever appearing on a separately docketed paper.

Petitioner counsel of record — Advanced Micro Devices, Inc. and ATI Technologies ULC

1. Brian W. Oaks — Lead Counsel

  • Firm / office: Baker Botts L.L.P., 98 San Jacinto Blvd., Suite 1500, Austin, Texas 78701 (Reg. No. 44,981).
  • Basis for identification: Listed first under "PETITIONER" on the Board's Notice of Refund (Paper 12, mailed Sept. 11, 2017), with service address brian.oaks@bakerbotts.com; independently reported by IPVerse/GreyB as "Petitioner Counsel" for IPR2017-01182. The Austin address/Reg. No. pairing is his standard PTAB signature block, confirmed across numerous other Baker Botts PTAB filings.
  • One-line note: Longtime Baker Botts PTAB practice leader who has served as lead counsel in dozens of IPRs (e.g., DJI v. Textron, IPR2022-00163, as patent-owner lead; Arris/CommScope matters), frequently in consumer-electronics and video-coding cases.

2. Jennifer (Librach) Nall — Petitioner counsel (back-up capacity; formal designation unconfirmed)

  • Firm / office: Baker Botts L.L.P., Austin, Texas at the time (she was elevated to partner at Baker Botts in 2018; she is now at DLA Piper).
  • Basis for identification: Listed alongside Oaks under "PETITIONER" on the Notice of Refund (Paper 12), with service address jennifer.nall@bakerbotts.com.
  • One-line note: Registered patent attorney and former Intel design engineer and Federal Circuit law clerk; her practice has centered heavily on video-compression and semiconductor litigation, including AMD-side defense work (Collabo v. AMD, Polaris v. AMD, Aquila v. AMD) and the Realtime Adaptive Streaming v. ARRIS video-compression IPR/Federal Circuit matters.

Caveat on role labels: The Board's Notice of Refund does not itself label lead vs. back-up. "Lead counsel" for Oaks rests on his first-listed position and the IPVerse counsel record; I did not obtain Paper 1's § 42.8(b)(3) designation table, which is the authoritative source and which I could not retrieve. I am not able to name any further back-up counsel with confidence, and I will not guess at names.

For context — Patent Owner (Avago) counsel, i.e., the opposing side

Not asked, but useful for cross-checking the caption: Daniel Young and Chad E. King of Swanson & Bratschun, L.L.C. (dyoung@sbiplaw.com / cking@sbiplaw.com), per the same Notice of Refund and Avago's Power of Attorney and Mandatory Notices (Papers 3–4, filed Apr. 18, 2017).

What I could not verify

  • No district-court docket sheet exists for this number. IPR2017-01182 is a PTAB proceeding (Tech Center 2800, Art Unit 2819, inventor Lowell Winger, "Method and system for symbol binarization"). PACER, Law360, and Reuters Legal are not the right sources here; the PTAB E2E / PTAB Public Information system and Docket Alarm are.
  • ITC parallel. The '663 patent was also litigated in an ITC investigation (Avago's exhibits in this IPR — e.g., Ex. 2005, Ex. 2006 — are stamped as RX exhibits "submitted in ITC Matter"), and Amazon separately petitioned on the same patent in IPR2017-00964. Counsel appearing for AMD in those fora are not necessarily the same as the IPR counsel listed above, and I did not confirm the ITC representation, so I am not attributing it.
  • No sealing issue affecting counsel identity: the confidentiality request in this case (Paper 8, joint request to treat the settlement agreement, Ex. 1023, as confidential) covered the settlement agreement, not the appearances. Petitioners filed no motion to withdraw before termination, so the counsel above remained of record through the Sept. 6, 2017 termination (Paper 10).

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel for this IPR. Note that in this PTAB proceeding the "defendant" role is filled by the patent owner, Avago Technologies General IP (Singapore) Pte. Ltd. Let me search.

Let me pull the Mandatory Notices (which list lead/backup counsel) and related materials.

Let me confirm the full counsel list and addresses from the filings themselves.

Bottom line

In this PTAB inter partes review the "defendant" role is filled by the patent owner/respondent, Avago Technologies General IP (Singapore) Pte. Ltd. (real parties in interest also included Broadcom Ltd., Broadcom Corporation, Avago Technologies Limited, and Avago Technologies U.S., Inc.). Only two attorneys ever appeared of record for Avago in IPR2017-01182 — a single two-lawyer team from one small Colorado IP boutique:

# Name (Reg. No.) Role Firm / office One-line experience note
1 Daniel S. Young (Reg. No. 48,277) Lead counsel Swanson & Bratschun, LLC, 8210 Southpark Terrace, Littleton, CO 80120 (Denver metro) — the firm later practiced as Adsero IP LLC d/b/a Swanson & Bratschun LLC First-chair PTAB/IP advocate who has litigated 30+ PTAB proceedings (11 to final written decision) and served as Avago/Broadcom's lead PTAB counsel across its '663, '087, '375, '387 and '121 IPR families.
2 Chad E. King (Reg. No. 44,187) Back-up counsel Same firm and address (Littleton, CO); now King IAM LLC, Lone Tree, CO Former Townsend and Townsend and Crew partner; Cornell J.D. (magna cum laude), clerk to Judge Jerry E. Smith (5th Cir.); career-long PTAB/reissue/reexam and IP litigation practice; Avago/Broadcom back-up counsel in numerous IPRs.

No local counsel, no in-house counsel of record, and no pro hac vice admissions appear on this docket.

Sourcing

Caveats and limits worth flagging

  • This docket is unusually thin (12 papers). Avago never filed a Patent Owner Response; the case ended on a joint motion to dismiss (Paper 7, Aug. 30, 2017), with the Board's termination decision on Sept. 6, 2017 (Paper 10) and a refund notice (Paper 12, Sept. 11, 2017). There were therefore no counsel substitutions, withdrawals, pro hac vice motions, or additional appearances to report.
  • Sealed material: the settlement itself is not public — Petitioner's Exhibit 1023 ("Confidential Agreement") and the joint request to treat information as confidential (Paper 8) were filed under seal. That does not affect the counsel roster, which is public in Papers 3–4.
  • No in-house or local counsel: nothing in the record designates an Avago/Broadcom in-house attorney; PTAB practice does not use "local counsel," and none appears.
  • Role labels: "lead" and "back-up" are the PTAB's own designations under 37 C.F.R. § 42.8(b)(3). Avago's litigation counsel in the parallel district court cases (e.g., Avago v. ASUSTeK, N.D. Cal. 3:16-cv-00451; Broadcom v. Sony, C.D. Cal. 8:16-cv-01052) did not appear in this IPR; I have not verified who those district-court counsel were, so I am not naming them.
  • For completeness on the other side, secondary sources list Petitioner AMD/ATI's counsel as Brian Oaks (GreyB IPverse), but I could not confirm his firm from a primary filing on this docket and so am not asserting it here.