ASUSTeK Computer Inc. et al. v. Ricoh Company, Ltd.

I'll research this case thoroughly across docket sources, opinions, and coverage.

Good foundation. Now let me pin down the Wisconsin ruling, the collateral-estoppel basis, and the final disposition.

Now let me verify the patent specifics and locate the actual docket/disposition.

I'll research this case systematically, starting with the docket and opinions.

Bottom line

This was a short-lived 2007–2008 declaratory-judgment/patent action in N.D. Cal. that was never tried and never reached claim construction in the Northern District. It is best understood as a collateral proceeding to Ricoh's optical-disc-drive campaign in W.D. Wis.: ASUS escaped the Wisconsin case on personal jurisdiction, immediately filed a DJ action in California, and Judge Marilyn Hall Patel (1) refused to stay for Ricoh's Federal Circuit appeal and (2) gave collateral-estoppel effect to the Wisconsin invalidity judgment on '109 claims 1 and 4 — but refused to kill the whole '109 counterclaim. The parties then went into settlement talks (Dec. 2007–Mar. 2008), and the Federal Circuit dismissed Ricoh's appeal in Nov. 2008 by agreement of the parties, which is the strongest available signal that the global dispute settled.

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Chronological developments

1. Wisconsin predicate (context — not this docket)

2. Filing and initial pleadings in N.D. Cal.

• 2007-04-06 — ASUSTeK Computer Inc. and ASUS Computer International file a complaint for declaratory judgment, No. C 07-01942, N.D. Cal. (initially captioned in the San Jose Division and assigned to Magistrate Judge Patricia V. Trumbull as "C 07-01942-PVT"; the case was later reassigned to Judge Marilyn Hall Patel and carried as "C 07-01942-MHP," San Francisco Division, Courtroom 15).
  • The complaint pleads that Ricoh's August 2006 accusations created an "objectively reasonable apprehension" of suit and seeks declarations of invalidity and non-infringement. Confirmed counts include Count VI (non-infringement of the '109 patent, specifically claims 1 and 4), Count VII (invalidity of the '755 patent, claims 1–3) and Count VIII (non-infringement of the '755 patent).
  • Caveat: the complaint runs to at least eight counts, and contemporaneous Chinese-language press reporting (2007-04-16) describes ASUS seeking declarations on four Ricoh optical-drive patents. I could not verify from the record which additional patents were named in Counts I–V. The case metadata lists only '755 and '109.
• 2007-05-24 — Ricoh (through Bergeson, LLP — Daniel J. Bergeson, Donald P. Gagliardi, Marc G. Van Niekerk — and Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC — Mark C. Hansen, J.C. Rozenendaal) files a motion asking the court to decline to exercise declaratory-judgment jurisdiction (ECF No. 12), arguing the Wisconsin action and Federal Circuit appeal made a DJ declaration duplicative. I could not verify the disposition of that motion; the record shows the case proceeded with Ricoh counterclaiming for infringement, including a "third counterclaim" on the '109 patent.
• ASUS's counsel throughout: Paul, Hastings, Janofsky & Walker LLP (Ronald S. Lemieux, Michael Edelman, Vidya R. Bhakar, Shanée Y. Williams).

3. Pre-trial motions of substance

(a) Ricoh's motion to stay pending the Federal Circuit appeal — DENIED (2007-11-21).
Ricoh argued that if it won the appeal of its Wisconsin dismissal, all work in N.D. Cal. would be moot. Judge Patel denied the stay, reasoning:

• Duplication would be "minimal" because ASUS was dismissed early in Wisconsin — only seven months, in which ASUS took no depositions of Ricoh, Ricoh took one Rule 30(b)(6) technical deposition of ASUS, and Ricoh produced only 1,244 documents.
• A stay would prejudice ASUS, which had "been living in the shadow of Ricoh's threatened patent litigation since August 2006," and even Ricoh's best case ran to February 2008.
• Citing Dependable Highway Express v. Navigators Ins. Co., 498 F.3d 1066 (9th Cir. 2007) and Yong v. INS, 208 F.3d 1116 (9th Cir. 2000), the court held a stay pegged to an appeal is "of dubious character" and potentially indefinite — "especially in light of the Supreme Court's recent interest in patent cases."

(b) ASUS's motion to dismiss Ricoh's '109 counterclaim — GRANTED IN PART (2007-11-21).
Briefing: ASUS opposition/affidavit 2007-10-08 (ECF 42-2) and 2007-10-09 (ECF 44-2); ASUS reply 2007-10-22 (ECF 55); hearing 2007-10-29, 2:00 p.m., Courtroom 15.
Holding (ECF No. 58, Asustek Computer Inc. v. Ricoh Co., No. C 07-01942 MHP (N.D. Cal. Nov. 21, 2007)):

• Collateral estoppel applies: the Wisconsin court actually litigated and necessarily decided the invalidity of '109 claims 1 and 4; the pendency of Ricoh's appeal does not defeat preclusion; Ricoh did not seriously contest the point (its argument was that its pleading was too vague to be read as asserting only those claims).
• But the court refused to dismiss the entire '109 counterclaim. Under 35 U.S.C. §§ 282 and 288, each claim is presumed valid independently; only the specifically invalidated claims are precluded. Because Ricoh purported to assert the ten-claim '109 patent generally, dismissal of the whole counterclaim was impermissible under Rule 8 notice pleading.
• The court cured the vagueness by ordering Ricoh to serve Patent L.R. 3-1 "Disclosure of Asserted Claims and Preliminary Infringement Contentions" within ten days and held Ricoh estopped from asserting claims 1 and 4 going forward.

That is the practical high-water mark of the case: Ricoh's '109 case was

I'll research the counsel of record for ASUSTeK/ASUS in this 2007 N.D. Cal. case.

Good — I have strong leads. Let me verify the complaint-stage counsel and get the docket/party-attorney record.

Let me locate the docket itself and the original complaint to confirm counsel at filing and any later substitutions.

Counsel of record for Plaintiffs ASUSTeK Computer Inc. and ASUS Computer International

Bottom line: All plaintiff-side counsel of record in this action came from a single firm — Paul, Hastings, Janofsky & Walker LLP (now Paul Hastings LLP), Palo Alto office (Five Palo Alto Square, Sixth Floor, Palo Alto, CA 94306‑2155; tel. 650‑320‑1800 / fax 650‑320‑1900). Four attorneys signed the plaintiffs' filings; Ronald S. Lemieux was the senior/lead figure. No in-house ASUS/ASUSTeK counsel and no pro hac vice counsel for plaintiffs appear in any of the filings I could retrieve.

Sourcing and verification notes

• Signature blocks and roles are drawn directly from the case's filed papers: Doc. 23‑2 (June 25, 2007, Williams L.R. 6‑2 decl.), Doc. 39 (Oct. 1, 2007), Doc. 42‑2 (Oct. 8, 2007), Doc. 44‑2 (Oct. 9, 2007), Doc. 55 (Oct. 22, 2007 reply), and the Oct. 12, 2007 Response to Counterclaims — all captioned Asustek Computer Inc. v. Ricoh Co., Ltd., No. C 07‑01942‑MHP. E.g., https://www.findforms.com/single_form.php/form/[737094](/patent/737094) and https://www.findforms.com/single_form.php/form/[737084](/patent/737084)
• Sept. 10, 2007 Civil Pretrial Minutes for C 07‑1942 MHP list "Pif: Ronald Levieux, Shanee Williams" (OCR of Lemieux), confirming the two who physically appeared: http://ia801603.us.archive.org/12/items/gov.uscourts.cand.[192395](/patent/192395)/gov.uscourts.cand.192395.29.0.pdf (note: the archive item ID appears mislabeled relative to this case).
• PlainSite attorney record ties Shanee Y. W. Nelson (Paul Hastings LLP) to this docket as plaintiff's counsel, filed 4/6/2007: https://www.plainsite.org/attorneys/paul-hastings-llp/shanee-y-w-nelson/table-attorneydockets/sort-type

Explicit caveats / things I could not confirm

1. I could not obtain a PACER docket sheet or the CourtListener/RECAP docket for this specific case number, so I cannot rule out additional counsel (including any pro hac vice admissions or later substitutions) appearing in entries whose text isn't publicly indexed. The four names above are those that actually signed or appeared — not a certified complete list.
2. No in-house ASUS/ASUSTeK attorney appears of record in any retrieved filing. If one exists, it is not reflected in the indexed documents.
3. Do not confuse plaintiff and defense counsel. Several OCR‑garbled search snippets place Daniel J. Bergeson, Donald P. Gagliardi, and Marc G. Van Niekerk (Bergeson, LLP, San Jose) next to ASUS's name. Those attorneys — together with Mark C. Hansen and J.C. Rozendaal (Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, Washington, D.C.) — were Ricoh's counsel, not plaintiffs'. See the Sept. 25, 2007 stipulation signature blocks: https://www.findforms.com/single_form.php/form/[737120](/patent/737120)
4. The firm is styled "Paul, Hastings, Janofsky & Walker LLP" in these 2007 filings; the "Paul Hastings LLP" name post-dates this case, so any later citation to "Paul Hastings LLP" is the same firm.

Consistency with the existing summary

This does not contradict the prior sections; it fills the "counsel" gap that the earlier narrative did not address. Two soft points worth flagging for the case narrative: (a) the firm's docket entry date of 4/6/2007 on PlainSite indicates Paul Hastings was plaintiffs' counsel from the original complaint, not just after Ricoh's counterclaims; and (b) the June 2007 declaration's reference to lead trial counsel being in an E.D. Tex. trial is a small but useful data point on the plaintiffs' team's patent-trial experience, though the declaration does not name that attorney — attributing it to Lemieux is inference, not something the document states.

I'll research the docket and related coverage to identify Ricoh's counsel of record.

Good leads. Let me pull the docket and confirm the full counsel roster, including any later substitutions.

Let me confirm the Bergeson LLP role and check for any later substitution of counsel.

Counsel of Record for Defendant Ricoh Company, Ltd.

Bottom line: Ricoh was represented by a two-firm team — Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC (Washington, D.C.) as principal/lead counsel appearing pro hac vice, and Bergeson, LLP (San Jose, California) as local counsel of record. This division of labor is consistent across every filing I could locate, from Ricoh's first responsive motion (May 2007) through the post-settlement scheduling motions (April 2008).

Sourcing caveat: I could not open the PACER docket sheet directly. The roster below is reconstructed from imaged signature blocks and caption pages of the actual filed documents (docs. 12-3, 12-5, 13, 40, 44, 50, 76-2) as mirrored on document-hosting sites, plus the court's published opinions. Names, bar numbers, addresses and firm affiliations are read off those signature blocks and are reliable; the roles assigned below are my characterization based on filing conduct, not a docket "lead counsel" designation. Counsel should be confirmed against the PACER docket and any Civil L.R. 11-1 designation.

Principal / lead counsel — Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC (Washington, D.C.)

Local counsel of record — Bergeson, LLP (San Jose, California)

Bergeson, LLP, 303 Almaden Boulevard, Suite 500, San Jose, CA 95110-2712.
Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, Sumner Square, 1615 M Street NW, Suite 400, Washington, DC 20036.

Points to flag

1. No in-house Ricoh attorney appears of record. I found no Ricoh legal-department signature on any filing; all appearances in the imaged documents are outside counsel. If an in-house lawyer appeared, it is not in the documents I could review — treat as unknown rather than confirmed absent.
2. A fourth Kellogg Huber name may be missing from my list. The May 24, 2007 declination-to-proceed signature block (doc. 13) appears to end with a partially legible "Michael E. ___" after Richard H. Stern. I could not recover the surname from the OCR and will not guess it; it should be checked on the docket.
3. Judge/jurisdiction caption change — a real docket detail worth noting. Ricoh's May 2007 filings are captioned "No. C 07-01942-PVT" and "San Jose Division"; Ricoh then filed a declination to proceed before a U.S. magistrate judge (doc. 13, 5/24/2007), and the case was reassigned to Judge Marilyn H. Patel and recaptioned "C 07-01942-MHP," San Francisco Division. That reassignment is the procedural bridge to the November 21, 2007 Patel opinion denying Ricoh's stay motion and applying collateral estoppel to claims 1 and 4 of the '109 patent. (Dkt. 12, 12-3, 12-5, 13; Asustek Computer Inc. v. Ricoh Co., No. C 07-01942 MHP (N.D. Cal. Nov. 21, 2007).)
4. Counsel continuity through settlement. Rozendaal's April 21, 2008 declaration (doc. 76-2) confirms the Kellogg Huber–Bergeson team was still counsel of record when the parties told the court they had reached an agreement in principle to settle on November 27, 2007, were exchanging license/settlement drafts through spring 2008, and met without counsel in Taipei on April 18, 2008. The Federal Circuit appeal Ricoh had pressed (Ricoh Co. v. Asustek Computer Inc., 323 F. App'x 891 (Fed. Cir. 2009)) was later dismissed by agreement under Fed. R. App. P. 42(b) — consistent with the settlement.
5. One reconciliation with the existing case summary: the summary notes uncertainty about whether the '755 patent was placed at issue. The complaint text does plead declaratory-judgment counts on the '755 patent (Counts VII and VIII, invalidity and non-infringement of claims 1–3), so the '755 patent was pleaded; whether it was litigated to any ruling is a separate question the record I have does not resolve. Ricoh's counsel roster is unaffected either way.

Recommended verification steps: pull the PACER docket for 3:07-cv-01942-MHP and check (a) the initial appearance/PHV applications (likely docs. in the 5–11 range) to confirm the full Kellogg Huber roster, including the uncertain "Michael E." name, and (b) any substitution-of-counsel or withdrawal entries before the mid-2008 dismissal.