ASUSTeK Computer, Inc. et al. v. Avago Technologies General IP (Singapore) Pte. Ltd.

I'll research this case and its parallel litigation before drafting.

Good foundation. Now let me dig into the parallel district court case, the judge, the other patents, and the settlement.

Now let me verify the institution grounds, termination details, and the district court outcome.

Case Overview: ASUSTeK Computer, Inc. v. Avago Technologies General IP (Singapore) Pte. Ltd., IPR2016-00646

The parties. Avago Technologies General IP (Singapore) Pte. Ltd. is the patent-holding and licensing subsidiary of the Avago/Broadcom group — not a classic NPE, but a large operating company's assertion arm monetizing a portfolio assembled from Agilent's spun-off semiconductor business and Avago's 2014 acquisition of LSI Corporation. Avago's real parties-in-interest in the companion '087 IPR were identified as Broadcom Ltd., Broadcom Corporation, Avago Technologies Limited, and Avago Technologies U.S., Inc. (IPR2017-00520, Paper 3, Mandatory Notices, Jan. 11, 2017). On the other side are Taiwanese PC/device maker ASUSTeK Computer, Inc. and its Fremont, California subsidiary ASUS Computer International (ACI), which Avago sued in the U.S. because ACI maintains its regional headquarters in the Northern District of California. Avago was the plaintiff in the underlying litigation; ASUS was the petitioner here — a defensive, parallel-track IPR filed two months after the second district court complaint.

The technology and patents. U.S. Patent 5,870,087 ("MPEG Decoder System and Method Having a Unified Memory for Transport Decode and System Controller Functions"), inventor Kwok Kit Chau, filed November 13, 1996, issued February 9, 1999, claims an MPEG video decoder in which transport/demultiplexing logic, the MPEG decode engine, and the system controller all share a single unified memory instead of separate dedicated memories — a cost- and board-space-reduction architecture for DVD players, set-top boxes, and PCs. Claim 1 is the representative system claim; claim 10 is the parallel method claim; claims 5 and 7–9 and 11 are dependents (e.g., demultiplexing/PES parsing, memory-sharing details). The IPR challenged claims 1, 5, 7–11, and 16 over U.S. Patent 5,898,695 (Fujii), U.S. Patent 5,960,464 (Lam), and U.S. Patent 5,847,771 (Cloutier), each § 102(e) art. The accused products in the district court case were ASUS notebooks, desktops, and optical-disc-drive-equipped systems (the complaint's '835 count lists models such as A7Sv, F3Sv, G2S, M50Sv, Essentio desktops, etc.), with the '087 count pleaded against ASUS products generally and on direct, induced, and willful-infringement theories dating to a September 13, 2010 knowledge date and May 15, 2015 preliminary infringement contentions.

Procedural posture. The IPR is a satellite to two related N.D. Cal. suits before Judge Edward M. Chen, San Francisco Division: Avago Techs. Gen. IP v. ASUSTeK Computer, No. 3:15-cv-04525-EMC ("Avago I," filed Oct. 1, 2015) and No. 3:16-cv-00451-EMC ("Avago II," filed Jan. 26, 2016), which together asserted the '730, '087, '835, '148, '663, '387 and '830 patents. ASUS filed three companion petitions on February 22, 2016 (IPR2016-00646 on the '087; IPR2016-00647 on the '148; IPR2016-00648), all against Avago. The Board instituted the '087 review on August 22, 2016 (Paper 11) before a panel of APJs Perry, Scanlon (author), and Lee. That same fall the district court case moved decisively against Avago: on November 9, 2016, Judge Chen granted ASUS partial summary judgment of noninfringement on the '148, '087, and '830 patents (the '087 ruling turned on the court's construction of "system controller" as hardware, after excluding Avago's expert for untimely disclosure) plus summary judgment on the '663/'387, with only one patent surviving to trial (No. 15-cv-04525-EMC, Dkt. 365). The parties then stipulated to stay the district case (Jan. 13/Feb. 16, 2017), and after a global settlement the IPR was terminated on joint motion on May 16, 2017 (Papers 24–26), without a final written decision — so the Board never reached the merits of Fujii, Lam, or Cloutier.

Why it is notable. First, it is a window into Avago/Broadcom's broad 2015–2016 MPEG-2/DVD/HDMI assertion campaign against TV, PC, and set-top manufacturers — the '087 was simultaneously asserted against Acer (No. 3:15-cv-05427, N.D. Cal.), Sony (C.D. Cal. No. 16-cv-1052), and Funai, and drew follow-on IPRs from Sony (IPR2017-00520, filed Dec. 21, 2016, terminated after settlement in June 2017) and Amazon (IPR2017-01816, filed July 18, 2017, dismissed Nov. 6, 2017) — a coordinated defense-side strategy to invalidate one patent across an industry of accused implementers. Second, the '087 generated an early and much-discussed post-Alice § 101 ruling: on April 25, 2016, Judge Chen denied ASUS's motion to dismiss, applying a "quick look" preemption test and finding no genuine risk of preempting future research because the claims recited a specific configuration (Dkt. 200); commentators on PatentDocs and JD Supra flagged it as a rare patentee win on a software-implemented claim, though ASUS ultimately prevailed on infringement rather than eligibility. Third, the timeline is illustrative of IPR-litigation interplay: institution gave ASUS leverage, but the November 2016 summary judgment order — issued days before the '087's 20-year term from its November 13, 1996 filing would on its face have run (I have not verified whether any extension or disclaimer altered that date) — drained the patent's value and drove a global settlement that terminated the IPR and the district case together (joint motion to dismiss filed June 13, 2017, ECF 78 in No. 16-cv-451). The net result is that the Federal Circuit never got an obviousness or claim-construction ruling on the '087, leaving the district court's "system controller must be hardware" construction as the only substantive adjudication.

Sourcing note: Party names, filing/termination dates, and the panel are grounded in the PTAB papers and Unified Patents PTAB docket for IPR2016-00646; the litigation details come from the N.D. Cal. docket (Dkts. 200, 234, 365) and secondary reporting (Bloomberg Law/IP Law Daily, Nov. 10, 2016; PatentDocs, May 3, 2016). I did not independently confirm the '087's original assignee (Chau's 1996 filing predates Avago), the exact expiration date, or whether ASUS obtained a dismissal with prejudice — those points should be verified against the patent's face and the final dismissal order before being stated as fact.

Sources: Unified Patents PTAB portal, https://portal.unifiedpatents.com/ptab/case/IPR2016-00646; Institution Decision, Paper 11 (Aug. 22, 2016), https://www.docketalarm.com/cases/PTAB/IPR2016-00646/Inter_Partes_Review_of_U.S._Pat._5870087/docs/08-22-2016-Board/Decision_Granting_Institution-11-Decision___Institution_of_Inter_Partes_Review.pdf; Patent Owner Response, Paper 16 (Dec. 6, 2016); N.D. Cal. Dkt. 365 (Nov. 9, 2016), http://business.cch.com/ipld/avagoVasustek11102016.pdf; Dkt. 200 (Apr. 25, 2016), https://law.justia.com/cases/federal/district-courts/california/candce/3:2015cv04525/[291791/200](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=291791-0200)/; Dkt. 234 (Aug. 18, 2016), https://cases.justia

I'll research the district court docket, claim construction, summary judgment, and the parallel PTAB proceedings.

Let me dig into the transfer, stay, and final dismissal documents.

Scope and one correction to the earlier sections

The metadata frames this matter as IPR2016-00646, but the question asks about the infringement litigation. That litigation is the pair of N.D. Cal. suits (Avago I, No. 3:15-cv-04525-EMC, and Avago II, No. 3:16-cv-00451-EMC), in which Avago was plaintiff and ASUS defendant — the mirror image of the PTAB posture.

Correction to the case-overview section: Avago I was not filed on 2015-10-01. The complaint was filed 2015-02-20 in the Eastern District of Texas, Marshall Division, No. 2:15-cv-00239-JRG (Judge Gilstrap), and was transferred to the Northern District of California, where it was docketed 2015-10-01 and assigned to Judge Edward M. Chen. Sources: E.D. Tex. complaint (Count 2, '087), https://iknow.stpi.narl.org.tw/Post/Files/complaint/complaint_pclass_10763_20150226_Avago%20v.%20Asus.pdf; Pet. Ex. 1012 (E.D. Tex. Joint Claim Construction Statement), https://www.docketalarm.com/cases/PTAB/IPR2016-00646/Inter_Partes_Review_of_U.S._Pat._5870087/docs/02-22-2016-Petitioner/Exhibit-1012-Petitioners_ASUS_Ex_1012_EDTX_CC_Statement.pdf; RPX Insight docket (filed 10/01/2015, N.D. Cal.), https://insight.rpxcorp.com/litigation/61695-avago-technologies-general-ip-pte-v-asustek-computer. ASUS's pro hac vice motion in the IPR likewise describes No. 3:15-cv-04525 as "transferred from E.D. Tex."

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Chronology of the infringement litigation

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

Scope note

In this proceeding ASUS is the petitioner, not the plaintiff — the caption is ASUSTeK Computer, Inc. and ASUS Computer International v. Avago Technologies General IP (Singapore) Pte. Ltd., IPR2016-00646 (PTAB, filed Feb. 22, 2016). The related infringement suit, Avago Technologies General IP (Singapore) Pte. Ltd. v. ASUSTeK Computer Inc., No. 3:16-cv-00451 (N.D. Cal.), had ASUS on the defense side. Below is the counsel of record for ASUS as petitioner before the PTAB, with a short cross-reference to the district court team. All of this comes from the public PTAB docket (papers and exhibits are not sealed); no filed-but-unappeared counsel issue applies here.

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1. Counsel of record at institution / through termination (Alston & Bird LLP)

ASUS's representation came entirely from Alston & Bird LLP, with no separate local counsel (the Board does not require one) and no ASUS in-house attorney appearing on the docket.

Docket anchors

• Paper 1 & 2, Powers of Attorney (Feb. 22, 2016) – appoint all practitioners under Customer No. 00826; lead/back-up designations.
• Paper 5, Patent Owner's Mandatory Notice (Mar. 14, 2016) – certifies service on "Scott Stevens (Lead Counsel), Derek Neilson (Back-up Counsel), Alston & Bird LLP, Charlotte, NC."
• Papers 7–8, updated Power of Attorney (Aug. 17, 2016) – lead: Christopher TL Douglas; back-up: Michael J. Newton (pro hac vice pending) and Derek S. Neilson.
• Paper 10 (Aug. 17, 2016) & Paper 13 (Aug. 23, 2016, Order – Admission Pro Hac Vice) – Newton admitted in IPR2016-00646, -00647 and -00648.
• Paper 14 (Nov. 9, 2016) – Avago's stipulation notice, served on Douglas, Newton and Neilson.
• Paper 29 in IPR2016-00647 (May 9, 2017) – consolidated oral-argument order listing Petitioner's counsel as Douglas and Neilson.
• Paper 26, Termination Decision (May 16, 2017) – proceeding terminated by settlement before any final written decision; the May 17, 2017 hearing never yielded a merits ruling.

Same team (Douglas / Newton / Neilson, with Stevens at filing) handled ASUS's companion petitions IPR2016-00647 (U.S. Pat. 6,430,148) and IPR2016-00648 (U.S. Pat. 6,188,835) against Avago.

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2. Cross-reference: ASUS's defense team in the parallel N.D. Cal. suit

In Avago Techs. General IP (Singapore) Pte. Ltd. v. ASUSTeK Computer Inc., No. 3:16-cv-00451 (N.D. Cal.), ASUS's counsel were also Alston & Bird: Michael J. Newton, Derek S. Neilson, Patrick J. Flinn, Sang (Michael) Lee, Xavier M. Brandwajn, and Christopher L. McArdle (docket listings via UniCourt; Alston & Bird's joint stipulation of Sept. 14, 2016 is signed by Newton). Flinn, Lee and Brandwajn were identified by Alston & Bird as firm attorneys in a contemporaneous pro hac vice motion in D. Del. (Philips v. Acer, C.A. No. 15-1170). I could not independently confirm whether any of these individuals held in-house ASUS titles, so treat their status as firm counsel with that caveat.

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Sourcing caveats

• Firm offices, registration numbers, and role designations are taken directly from the filed powers of attorney and Board orders on the public docket (Docket Alarm / Unified Patents PTAB portal mirrors of Papers 1, 2, 5, 7, 8, 10, 13, 14 and IPR2016-00647 Paper 29).
• Biographical/experience descriptions are from Alston & Bird's own professional profiles and Chambers/Best Lawyers listings — self-reported, not independently adjudicated.
• I found no indication of sealed filings affecting counsel information; the settlement-related termination papers (Paper 26, May 16, 2017) are public, and the Board never issued a final written decision.

Bottom line

In IPR2016-00646 the party designated as "defendant" in your metadata — Avago Technologies General IP (Singapore) Pte. Ltd. — was actually the Patent Owner / respondent (ASUSTeK and ASUS Computer International were the petitioners). Avago's counsel of record in the IPR was a Kilpatrick Townsend & Stockton LLP team out of the firm's Denver, Colorado office. No in‑house Avago/Broadcom attorney appears of record in the papers I could review, and no "local counsel" appears (local-counsel practice does not apply at the PTAB; the Kilpatrick San Francisco attorney who acted as local counsel, Robert J. Artuz, appears only in the parallel district court case).

Note that the PTAB has no formal "appearance" docket like a district court; counsel of record is fixed by the power of attorney / mandatory notice under 37 C.F.R. § 42.8(b)(3) and by who signs the filings.

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Counsel of record for Avago (Patent Owner / "defendant")

Grounding:

• Paper 5, Patent Owner's Mandatory Notice Information (Mar. 14, 2016) — expressly designates "Kristopher L. Reed (Lead Counsel) … Jeffrey M. Connor (Back-up Counsel)," both Kilpatrick Townsend, 1400 Wewatta Street, Suite 600, Denver, CO 80202 (https://www.docketalarm.com/cases/PTAB/IPR2016-00646/Inter_Partes_Review_of_U.S._Pat._5870087/docs/03-14-2016-Patent_Owner/Notice-5-Related_Matters.pdf).
• Paper 14, Notice of Stipulation Extending Due Dates 1 and 2 (Nov. 9, 2016) — filed "[b]y: Kristopher L. Reed (Lead Counsel) … Lead Counsel for Patent Owner," Reg. No. 58,694, same Denver address (https://www.docketalarm.com/cases/PTAB/IPR2016-00646/Inter_Partes_Review_of_U.S._Pat._5870087/11-09-2016-Patent_Owner/Notice-14-Notice_of_Stipulation_Extending_Due_Dates_1_and_2/).
• Paper 16, Patent Owner's Response (Dec. 6, 2016) — filed for Avago by the Kilpatrick team.
• Exhibit 2004, Kramer deposition transcript (Nov. 21, 2016) — appearances: "Kilpatrick Townsend & Stockton, Attorneys for Patent Owner, 1400 Wewatta Street, Denver, Colorado … By: Laura Mullendore, Esq." (the transcript itself misspells the street as "Hewatta").
• Docket metadata confirming Patent Owner counsel = "Kilpatrick Townsend & Stockton LLP," petitioner counsel = "Alston & Bird LLP" (Unified Patents PTAB portal, https://portal.unifiedpatents.com/ptab/case/IPR2016-00646).

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Context on the related district court litigation

Avago was the plaintiff in the co-pending infringement actions identified in Avago's mandatory notice — Avago Techs. Gen. IP (Singapore) Pte. Ltd. v. ASUSTeK Computer, Inc., No. 3:15‑cv‑04525‑EMC (N.D. Cal., transferred from E.D. Tex. No. 2:15‑cv‑00239) and No. 3:16‑cv‑00451 (N.D. Cal.). There, the Kilpatrick team was larger and included David E. Sipiora (lead trial counsel, SBN 124951), Kristopher L. Reed, Matthew C. Holohan, Kenneth S. Chang, and San Francisco-based Robert J. Artuz (Kilpatrick's Two Embarcadero Center office). Those additional attorneys did not appear of record in IPR2016‑00646.

(For completeness, and to avoid confusion: petitioners ASUS were represented in the IPR by Alston & Bird LLP — Scott Stevens (lead), Derek Neilson (backup), and Michael J. Newton (admitted pro hac vice, Paper 10, Aug. 17, 2016).)

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Caveats

• No sealed material affected this listing — the § 42.8 mandatory notice and all signature blocks are public. However, the PTAB file does not contain a formal "notice of appearance" for every attorney who worked the matter, so attorneys such as Ms. Mullendore who participated in discovery/depositions may not be fully captured in the papers available online.
• The proceeding terminated by settlement (Joint Motion to Terminate; Board's Termination Decision Document, Paper 26, May 16, 2017), so there is no final written decision and no later counsel substitution reflected — Kilpatrick Townsend remained Avago's counsel of record through termination.
• Firm affiliations are as of the 2016–2017 record; Kristopher Reed is now shown at Holland & Knight LLP (Dallas) in later filings (e.g., Regents of the Univ. of Minn. v. LSI Corp., N.D. Cal. No. 5:18‑cv‑00821), so his current firm differs from the one of record here.