Amazon.com, Inc. et al. v. Avago Technologies General IP (Singapore) Pte. Ltd.

I'll research this case across PTAB records and related litigation coverage.

Now let me dig into the district court litigation and the Board's denial reasoning.

Let me locate the actual denial decision and the accused products.

Case Overview & Background

A framing note first: IPR2017-00964 is not itself an infringement action — it is the PTAB inter partes review that Amazon filed as a flanking maneuver against the C.D. Cal. infringement suit. The litigation of record is Broadcom Corp. v. Amazon.com, Inc., No. 8:16-cv-01774-JVS-JCG (C.D. Cal.), filed Sept. 23, 2016, and the IPR is best understood as one skirmish in that campaign.

The parties. The petitioners were Amazon.com, Inc. and Amazon Web Services, Inc., with Amazon Digital Services LLC, AWSHC, Inc., and Amazon Fulfillment Services, Inc. named as real parties-in-interest in updated mandatory notices (Paper 6, Apr. 6, 2017) — an operating-company defendant group, not a shell. The patent owner, Avago Technologies General IP (Singapore) Pte. Ltd., is the Singapore IP-holding arm of the Avago/Broadcom corporate family — the entity that absorbed the LSI Corporation portfolio in 2014 (itself descended from Agere, Lucent, AT&T and Bell Labs) after Avago acquired Broadcom Corp. in 2016 to form Broadcom Limited. The complaint recites that history and describes pre-suit licensing outreach, including a June 22, 2016 letter to Amazon that went unanswered (complaint excerpt via RPX). So this is an operating-company portfolio assertion — semiconductor/video-compression assets monetized through a captive licensing entity — not an NPE/PAE or university case, and it should not be characterized as one.

The patent and the alleged infringement. U.S. Patent No. 6,982,663, "Method and System for Symbol Binarization" (inventor Lowell Winger; filed Feb. 2, 2004 as a continuation of the application that issued as the '387 patent; issued Jan. 3, 2006; Tech Center 2800). In one line: it claims a hybrid binarization scheme — unary codewords up to an index threshold, then exp-Golomb suffixes — that shrinks the binary symbols handed to a binary arithmetic coder in an image/video encoder, cutting encoder computation (see the Board's characterization in the petition record). This is CABAC-adjacent H.264/AVC-era compression art, which is why it sat in a portfolio asserted against device and streaming companies. Caveat: I could not verify the specific accused Amazon products from the complaint text; RPX's case page lists 22 accused products across the 11 asserted patents, but the product-by-product mapping for the '663 patent is not in the sources I could access. The complaint covered a broad consumer-electronics and cloud portfolio (press coverage described "10 tech patents"; the docket shows exhibits A–L, and RPX counts 11 patents-in-suit — the counts don't reconcile across sources).

The IPR and its fate. Amazon petitioned Feb. 22, 2017 on all claims 1–21, on four grounds: anticipation by Wiegand (Draft ISO/IEC 14496-0, May 2002) and by Cheung (2001), plus obviousness over Cheung+Wien and Wien+Kerofsky. The petition was initially flagged defective (Paper 3, Mar. 15, 2017) and accepted as corrected Apr. 3, 2017. Avago's preliminary response (Paper 11, June 15, 2017, with Ex. 2001–2005) made three lines of attack: (i) the '663 claims are supported by the '387 application and the ITC had already so held; (ii) the relied-on portions of Wiegand were solely attributable to Winger himself and therefore not § 102(a) prior art "by others"; and (iii) petitioners offered no evidence of public accessibility for Wiegand, Wien or Cheung beyond dates printed on the documents. The panel — James A. Worth, James B. Arpin, Melissa A. Haapala, with Worth writing — denied institution on Sept. 13, 2017 (Paper 15). Post-institution fees were refunded (Papers 16–17, Oct.–Nov. 2017). I was not able to retrieve the text of the denial decision in my searches, so I am not asserting which of Avago's arguments carried the day; the printed-publication and "by others" theories were the ones teed up. Note that an aggregator labels Paper 15 a "Trial Instituted Document," which appears to be a scraping artifact — the case status is institution denied.

Procedural posture, venue, and why it matters. The infringement case landed before Judge James V. Selna and Magistrate Judge Jay C. Gandhi in the Southern Division at Santa Ana, transferred there as related to Broadcom v. Sony, No. 8:16-cv-01052-JVS-JCG. C.D. Cal. mattered both because it was already handling the Sony case and because Avago/Broadcom's California presence made it a natural forum over a Seattle-based defendant. The case produced real substantive rulings before it died: Judge Selna denied Amazon's motion to compel arbitration under the AWS Customer Agreement (Dkt. 76, Mar. 22, 2017 — holding Broadcom was not required to arbitrate and that the agreement did not bind Avago or Amazon.com), and issued a Markman order on Sept. 1, 2017 (Dkt. 118) that construed, among other things, whether the three steps of '663 claims 11 and 21 must be performed in order. Amazon's IPR campaign was broader than this one petition — IPR2017-00963 ('387), -00964 ('663), -01112 ('375), and -01816 ('087) — and AMD filed its own petitions against the '663 (IPR2017-01181/-01182, Mar. 28, 2017), which were jointly dismissed and terminated in early September 2017. The whole thing then collapsed: the parties noticed settlement Oct. 3, 2017 and Judge Selna dismissed the action upon settlement Oct. 6, 2017 (Dkt. 125), 23 days after institution was denied. The case is therefore a clean illustration of a pattern worth flagging: IPR petitions filed within months of a portfolio complaint, a PTAB denial on prior-art-qualification grounds, and rapid settlement — with the denial likely improving Avago's settlement leverage rather than the reverse. For market context, this was the opening round of a long Amazon–Avago/Broadcom campaign; the same parties were still litigating Avago patents years later (e.g., Broadcom v. Netflix, N.D. Cal. No. 3:20-cv-04677, Judge Donato, where the docket reflects a notice of denial of institution as to the '663 patent in 2021, Dkt. 146, and where the Federal Circuit affirmed PTAB cancellation of Avago's '098 patent in February 2025, per MLex).

Sourcing notes / unverified points: (1) I could not open the Sept. 13, 2017 institution decision itself, so the Board's precise reasoning is unconfirmed — the Avago arguments above come from its preliminary response. (2) Accused-product identification for the '663 patent is unverified. (3) The patent count in the district court complaint is reported inconsistently (10 vs. 11). (4) The ITC track record is well documented: in Inv. No. 337-TA-837 (Certain Audiovisual Components, LSI/Agere v. Realtek, Funai et al.), the ALJ's July 18, 2013 initial determination found no violation as to the '663 patent, and the '663 claims were terminated on settlement in March 2014 (79 Fed. Reg. 13328) — a fact Avago leaned on in its POPR and one that cuts against reading the '663 patent as a strong assertion.

Framing note before the chronology

The docket in the case metadata — IPR2017-00964 — is a PTAB inter partes review, not a district court case. It has no complaint, answer, Markman ruling, verdict, or JMOL practice. The "patent infringement litigation" it belongs to is Broadcom Corp. et al. v. Amazon.com, Inc. et al., No. SACV 16-01774-JVS (JCGx) (C.D. Cal.), filed 2016-09-23 before Judge James V. Selna (Magistrate Judge Jay C. Gandhi), in which Broadcom and Avago Technologies General IP (Singapore) asserted the '663 patent (among ~11 patents) against Amazon and AWS. That case settled on 2017-10-06 — twenty-three days after the Board denied institution of this IPR. So the practical "outcome" of this litigation track is: no institution, no trial, global settlement.

Everything below is organized chronologically across both tracks, with sourcing and explicit flags where the record is thin.

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1. Filing and initial pleadings (district court)

The complaint identified the '663 patent as one of several asserted patents; the same patent was simultaneously in suit against ASUSTeK/Acer in N.D. Cal. and against Sony in C.D. Cal. (No. 8:16-cv-01052).

2. Filing of the IPR (the docketed case)

• 2017-02-22 — Amazon.com, Inc. and Amazon Web Services, Inc. file the petition in IPR2017-00964 (Paper 2), challenging claims 1–21 of the '663 patent. Real parties in interest included Amazon Digital Services, AWSHC, Inc., and Amazon Fulfillment Services. Lead counsel Joseph F. Edell, backup David M. Saunders (Fisch Sigler LLP).
• Grounds pleaded: anticipation by Wiegand (Draft ISO/IEC 14496-0, May 10, 2002) under §102(a)/(b); anticipation by Cheung ("Configurable Variable Length Code for Video Coding," 2001); obviousness over Cheung + Wien; and a Kerofsky (U.S. 6,622,145) ground.
• 2017-02-22 (parallel) — Amazon also petitions on the parent '387 patent (IPR2017-00963). Later, 2017-07-18, Amazon petitions on the '087 patent (IPR2017-01816); IPR2017-01112 covered the '375 patent.
• 2017-03-15 — Board issues Notice of Defective Petition (Paper 3). 2017-03-31 corrected Exhibit 1017 filed; 2017-04-03 Board accepts the corrected petition (Paper 5).
• 2017-03-28 — Advanced Micro Devices files its own '663 petitions (IPR2017-01181 / -01182), a second front on the same patent. Outcomes not verified in the sources I could reach; do not assume they mirrored Amazon's.

3. Pre-trial motions of substance in C.D. Cal.

• 2017-01-30 — Broadcom/Avago move for judgment on the pleadings striking Amazon's tenth (contract/license) and eleventh (arbitration) defenses; heard 2017-02-27.
• 2017-02-10 — Amazon/AWS move to compel arbitration (Dkt. 47), heard 2017-03-06.
• 2017-03-06 — Magistrate Judge Gandhi grants Broadcom's motion to compel discovery responses (Dkt. 45), waives L.R. 37-2/37-3, and authorizes letter-brief discovery practice (Dkt. 65).
• 2017-03-22 — The Court denies arbitration. Holding: Amendment No. 1 (effective 2013) to the AWS Customer Agreement, which directs disputes to court, applies to and supersedes the conflicting arbitration clause in the 2016 Agreement as to AWS; and, independently, the 2016 Agreement does not bind Avago or **Amazon.com

I'll research the counsel of record for the petitioners in this PTAB proceeding.

Good initial hits. Let me pin down the petition's counsel designation and the Baker Botts–to–Fisch Sigler transition.

Let me verify the original petition signature block and check the Baker Botts reference.

Scope note

This docket is a PTAB inter partes review, not a district-court infringement action, so there is no "complaint" and no "plaintiff" in the technical sense. The party aligned with the plaintiff's side is the petitioner — Amazon.com, Inc. and Amazon Web Services, Inc. (real parties in interest also included Amazon Digital Services LLC, AWSHC, Inc., and Amazon Fulfillment Services, Inc., per Petitioners' Updated Mandatory Notices, Paper 6, Apr. 6, 2017). All counsel below are from the petitioner side. There was no sealed appearance in this docket; the petition and powers of attorney are public.

Petitioner (Amazon / AWS) — counsel of record

No in-house Amazon attorney appeared as counsel of record in this IPR, and no pro hac vice counsel was designated on the petitioner side. The only petitioner-side changes were the Saunders→Zhang swap in August 2017.

A discrepancy worth flagging

Avago's Mandatory Notice and Notice of Lead and Back-Up Counsel (Paper 8) served process on Brian Oaks and Jennifer Nall of Baker Botts L.L.P. as "counsel of record for Petitioner" (service also directed to AMD_663IPR@bakerbots.com). That is inconsistent with every petitioner-side filing in the docket, which is signed by Fisch Sigler, and with the Board's own characterization of Edell as lead counsel. The likely explanation is that the Baker Botts names were carried over from a related Avago proceeding (Avago's parallel notices in the AMD petitions, IPR2017-01181/01182), or reflect Amazon's separate district-court representation. I could not verify that Baker Botts ever appeared for Amazon in IPR2017-00964, so I would not list Oaks or Nall as counsel of record here without pulling Paper 8 directly. Treat this as an open item.

Contrast: patent owner (Avago) counsel — for completeness only

The Board's caption block lists, on the Avago (defendant) side: Jason S. Angell and Jing H. Cherng of Freitas Angell & Weinberg LLP (Redwood Shores, CA — Avago's litigation counsel, served a courtesy copy per Paper 6), and Daniel S. Young (Reg. No. 48,277, lead) and Chad E. King (Reg. No. 44,187, back-up) of Swanson & Bratschun, LLC, 8210 Southpark Terrace, Littleton, CO 80120 (Avago's PTAB counsel per Papers 7–8). The '663 patent's USPTO correspondence address was Latham & Watkins LLP, Costa Mesa, CA.

Related context

• Panel: Administrative Patent Judges James A. Worth (opinion author), James B. Arpin, Melissa A. Haapala. Institution denied Sept. 13, 2017 (Paper 15), followed by petitioners' fee refund request (Paper 16) and Notice of Refund (Paper 17).
• The decision identified the related district-court matters as Broadcom Corp. v. Amazon.com, Inc., No. 8:16-cv-01774-JVS-JCG (C.D. Cal.); Avago v. ASUSTeK Computer, Inc., No. 3:15-cv-04525 (N.D. Cal.); No. 3:16-cv-00451 (N.D. Cal.); and Broadcom v. Sony Corp., No. 8:16-cv-01052 (C.D. Cal.). I did not verify Amazon's district-court counsel in the C.D. Cal. action, so I am not attributing any firm to that case.

Sources: PTAB Papers 6, 12, 13, 14, 15 in IPR2017-00964 (via Docket Alarm/Patexia/PTACTS); Decision on Motion to Withdraw, Paper 14 (Aug. 18, 2017), https://www.docketalarm.com/cases/PTAB/IPR2017-01816/Inter_Partes_Review_of_U.S._Pat._5870087/docs/08-18-2017-Board/Other_Not_for_motions-6-Decision_on_Motion_to_Withdraw.pdf; petitioner's Aug. 14, 2017 Power of Attorney (Paper 13); https://services.patexia.com/lawsuits/Amazoncom-Inc-v-AVAGO-TECHNOLOGIES-GENERAL-IP--SINGAPORE--PTE-LTD-id-74250/documents.

I'll research this. Note upfront: the case metadata describes an IPR (IPR2017-00964), not a district court suit — so the "defendant" here is the patent owner, Avago Technologies General IP (Singapore) Pte. Ltd. (the respondent/patent owner in the IPR), and any related district court litigation where Avago was plaintiff/Amazon was defendant. Let me verify counsel of record.

Key finding already: Patent Owner Avago's counsel of record in this IPR appears to be Swanson & Bratschun, LLC. Let me verify against the docket and identify the paper-9/10 power-of-attorney additions, plus confirm the related district-court picture.