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

I'll research this case across the docket, PTAB proceedings, and trade press before drafting.

Good context. Now let me pin down the pleadings, transfer, key rulings, and the settlement.

Important — the record shows a summary judgment and Federal Circuit appeal, not simply a settlement. Let me verify the appeal outcome and the '087-specific rulings.

Case Overview

Parties. Plaintiff Avago Technologies General IP (Singapore) Pte. Ltd. is the IP-holding and licensing arm of Avago Technologies Ltd., the semiconductor company spun out of Agilent/HP's component business; its complaint pleads principal places of business at 1320 Ridder Park Dr., San Jose, and 1 Yishun Avenue 7, Singapore (Compl. ¶ 1, E.D. Tex. filing, later N.D. Cal. Dkt. 1). Unified Patents' PTAB tracker classifies the patent owner in this family of cases as an "Operating Company," which fits: Avago is not a classic litigation-only PAE, but this Singapore entity functions as a portfolio-assertion vehicle for patents Avago acquired with LSI Corporation (2014), including the MPEG-decoder patents originally assigned to LSI Logic. PTAB service in the resulting IPRs ran to an address literally labeled "BroadcomIPR@kilpatricktownsend.com" (IPR2016-00646, Paper 5), reflecting the February 2016 Avago–Broadcom merger that closed mid-campaign. Defendants are ASUSTeK Computer Inc. (Taipei, Taiwan) and its Fremont, California subsidiary ASUS Computer International — a branded OEM of notebooks, tablets, all-in-ones, motherboards and phones, i.e., a downstream integrator rather than a chip designer (Compl. ¶¶ 2–4).

Accused technology and patents. The case was a multi-patent campaign against ASUS's consumer PCs and tablets, with more than 200 accused products at its peak (Order Denying Sanctions at 1, Dkt. 234, Aug. 18, 2016). Representative models named in the discovery protocol included the Transformer Book T100TAF, G751JM gaming notebook, M11BB-B07 desktop, X102BA and TF701T (Dkt. 140), and the real technical dispute sat one layer up the supply chain — in MPEG and OFDM codec components from Intel, Qualcomm, Sony and FuZhou/Foxconn, which generated § 1782 requests to Japan for Sony documents and a Qualcomm-specific supplemental protective order (Dkt. 193). Although your case metadata lists only U.S. Patent No. 5,870,087, the docket and RPX's case profile show the suit ultimately carried seven patents: the '087 ("MPEG Decoder System and Method Having a Unified Memory for Transport Decode and System Controller Functions," issued Feb. 9, 1999 to Kwok Kit Chau — sharing one memory among transport, decode and system-controller functions to cut decoder memory cost and bandwidth); the '730 (data protocol/memory segmentation for a music chip); the '148 (OFDM sync signal inserted before modulation/IFFT); the '387 and '663 (MPEG variable-length/binarization ordering); the '830 (audio-visual compression and transmission); and the '835, which was carved out by stipulated partial dismissal in July 2016 (Dkt. 211).

Posture and significance. Avago filed in the Eastern District of Texas on February 20, 2015 before Judge Rodney Gilstrap (E.D. Tex. No. 2:15-cv-00239), and the case landed in the Northern District of California, San Francisco Division, as No. 3:15-cv-04525-EMC before Judge Edward M. Chen, with Magistrate Judge Donna M. Ryu referred (RPX lists a prior presiding judge, Beth Labson Freeman, through Sept. 19, 2016 — I could not independently confirm that reassignment detail). A related second suit, Avago II, No. 3:16-cv-00451-EMC, covered post-contentions products and was coordinated before Chen. The venue mattered: N.D. Cal. was both ASUS's U.S. forum and Avago's own San Jose home turf, and it produced a notably defendant-friendly set of rulings — the April 15, 2016 order denying ASUS's § 101 motion to dismiss the '087 claims (the court applied step one as a "quick look" preemption test and found the claims "directed to" decompressing video with a single memory, an approach commentators criticized as out of step with buySAFE/Ultramercial), then the November 9, 2016 summary judgment order (Dkt. 365) that went the other way: no literal infringement of the '148 because ASUS maps data before adding sync, with doctrine of equivalents barred by prosecution history estoppel; pre-suit damages barred for failure to mark; and — critically for the '087 — Avago's expert testimony excluded for late disclosure, and "system controller" construed to require hardware, yielding noninfringement of both the '087 and the '830. Final judgment entered for ASUS (Dkt. 388), ASUS's § 285 fee motion was held in abeyance pending appeal (Dkt. 409), and Avago appealed to the Federal Circuit as No. 17-1491. In parallel, ASUS's Alston & Bird team filed IPR2016-00646 ('087), -00647 ('148) and -00648 ('835) on Feb. 22, 2016; the '087 review was instituted Aug. 22, 2016 on Maturi/Lam-Fujii-Cloutier grounds, argued May 17, 2017 alongside the '148 case, and terminated May 16, 2017. The case's broader notability is threefold: it exemplifies the 2015–16 wave of operating-company MPEG/OFDM codec assertions against PC and TV OEMs (Avago/LSI also sued Funai, Vizio, Acer and others, with an ITC track in Inv. No. 337-TA-837); it shows the district-court/IPR parallelism problem, including a follow-on Sony IPR2017-00520 against the same '087 that Avago attacked as redundant under § 325(d); and it is a useful data point on how expert-disclosure discipline, not claim construction alone, decided a multi-patent hardware case.

Verification caveats. Your metadata describes the case as settled, and the docket does show settlements on the periphery — the '835 was dismissed with prejudice and its IPR terminated by joint motion in December 2016 (IPR2016-00648, Paper 19), and the '087 IPR was terminated in May 2017. But the public record for the lead case shows it closing on December 16, 2016 after a final judgment of noninfringement/invalidity in ASUS's favor and a pending Federal Circuit appeal, not a global settlement; I could not verify the Federal Circuit's disposition of No. 17-1491 in the sources reviewed, so treat "settled" as describing the peripheral patents rather than the whole case. Finally, note the tension in the metadata's single-patent framing: the '087 was the IPR anchor and one of the patents on which judgment was entered, but it was one of seven asserted patents and not the only patent pleaded in the complaint.

I'll research this case across multiple sources.

Avago v. ASUSTeK, No. 3:15-cv-04525-EMC (N.D. Cal.) — Chronology of Key Developments on U.S. Patent 5,870,087

Framing note. This was a seven-patent, multi-suit campaign, not a single-patent case. The '087 patent ("MPEG Decoder System and Method Having a Unified Memory for Transport Decode and System Controller Functions," issued 1999‑02‑09 to Kwok Kit Chau) was one of seven patents asserted together with the '730, '830, '835, '148, '387 and '663 patents in Avago I (No. 15‑cv‑4525), which was related to Avago II (No. 16‑cv‑0451‑EMC) before Judge Edward M. Chen. The '087-specific developments below are flagged as such; the rest is context for

I'll research the counsel of record for Avago Technologies General IP (Singapore) Pte. Ltd. in this case.

Let me pull the docket sheet and complaint details.

Counsel of Record for Plaintiff Avago Technologies General IP (Singapore) Pte. Ltd.

Bottom line: Avago was represented by Kilpatrick Townsend & Stockton LLP as lead trial counsel, with the engagement run out of the firm's Denver, Colorado office and a San Francisco partner listed for N.D. Cal. local-court purposes. A Littleton, Colorado IP boutique (Swanson & Bratschun, LLC) also appeared for Avago on the patent-prosecution-adjacent side and participated in discovery. The appearances are public and on the docket — nothing about the identity of Avago's counsel is under seal, although many substantive filings (infringement contentions, damages material) were filed under seal.

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Lead / primary counsel — Kilpatrick Townsend & Stockton LLP

Additional plaintiff-side counsel

Attorneys listed in the court's plaintiff-attorney roll but whose specific role I could not verify

Third-party docket aggregators (UniCourt/PACER-derived) list the following as "Plaintiff Attorneys" for 3:15-cv-04525: Jeffrey Matthew Connor, John David Cadkin, and Laura Kathryn Mullendore. These are consistent with Kilpatrick Townsend's San Francisco/Silicon Valley patent litigation bench, but I was unable to confirm from a primary filing which firm each was with or whether each appearance relates to the '087 case specifically rather than the consolidated/related Avago matters. Treat as unverified.

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Cautions and sourcing notes

• No in-house counsel appeared for Avago on the public docket — the entity appeared solely through outside counsel. Avago Technologies / Broadcom legal department personnel do not appear in the docket's attorney list.
• Pre-transfer (E.D. Tex.) counsel not verified. Per the related-case records, an earlier Avago–ASUS suit was filed as No. 2:15-cv-00239 (E.D. Tex., filed Feb. 20, 2015); the instant action was docketed in N.D. Cal. on Oct. 1, 2015. I did not find a documented E.D. Tex. local-counsel appearance for Avago in the record I could access; if one existed it would have been superseded once the case landed before Judge Chen. Flagging this as unsourced rather than guessing a name.
• "Not classified" attorneys are not Avago's counsel. The docket also shows David Michael Keyzer and Iman Lordgooei in a non-party/miscellaneous capacity (Justia's docket index lists Keyzer as "Miscellaneous"; non-party NVIDIA and QUALCOMM appear in the docket through protective-order practice). They should not be counted as plaintiff's counsel.
• Sealed material. Numerous entries were filed under seal by administrative motion and granted (e.g., Dkts. 340–345, Oct. 21, 2016). None of the sealing orders conceal the identity of counsel; the protective orders (Dkt. 140, Dkt. 193 supplemental QUALCOMM order) define "Counsel of Record" but the appearances themselves are public.
• Key public anchors for the counsel identification: Dkt. 170 (Joint Claim Construction and Prehearing Statement, Feb. 5, 2016, caption listing Sipiora/Reed/Holohan for Avago); Dkt. 245 (Sept. 14, 2016 stipulation adding Robert J. Artuz, San Francisco); Dkt. 346 (Oct. 21, 2016 transcript order filed by "Sipiora, David"); the Sept. 1, 2016 Lyon deposition appearances page listing Holohan (Kilpatrick) and Daniel Young (Swanson Bratschun) for plaintiff and Michael J. Newton (Alston & Bird, Dallas) for ASUS; and Avago's Patent Owner Notice of Related Matters in IPR2016-00646 (Paper 5, Mar. 14, 2016) signed by Kristopher L. Reed as Lead Counsel.

I'll research the docket and counsel for ASUSTeK in this case.

Let me dig into the docket entries and appearances.

Bottom line

ASUS was represented throughout by Alston & Bird LLP, which acted as sole defense firm (no separate local-counsel firm appears in the N.D. Cal. record — Alston & Bird's East Palo Alto/San Francisco-area office and California-barred partner Michael J. Newton filled that function). Michael J. Newton (Dallas) was the attorney of record who actually signed the substantive filings in 3:15-cv-04525. The PTAB side of the same dispute (IPR2016-00646 on the '087 patent, plus -647 and -648) was led by Alston & Bird's Charlotte office.

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

What I could and could not verify

• Confirmed from case documents: Alston & Bird signed for ASUS on the April 11, 2016 joint stipulation (Dkt. 33, "/s/ Michael J. Newton (with permission)"), the September 14, 2016 stipulation (Dkt. 245), and the October 21, 2016 transcript order (Dkt. 347). Patrick Flinn's Atlanta contact block appears on the ASUS service list in the companion case 3:15-cv-04307 (Dkt. 103). Newton appears as "Attorneys for Defendant" on the September 1, 2016 Lyon deposition transcript, and Newton/Douglas/Neilson are the three service contacts in the ASUS IPR powers of attorney.
• Attorney roster source: The full seven-name list (Newton, McArdle, Neilson, Flinn, Lee, Brandwajn) comes from the UniCourt/PACER-derived party-attorney listing for 3:15-cv-04525; I did not independently pull each individual Notice of Appearance from PACER, and "Michael J. Newton" and "Michael John Newton" on that list are the same person (a common ECF duplicate).
• No separate local counsel firm identified. Unlike the co-defendants in the coordinated N.D. Cal. cases (e.g., Funai used Baker & Hostetler; Acer used TechKnowledge Law Group), ASUS appears to have relied on Alston & Bird alone, using its East Palo Alto office and California-barred Dallas partner. I found no boutique local-counsel appearance for ASUS in the N.D. Cal. docket.
• No in-house counsel of record. No ASUS corporate/legal-department attorney appears on the docket or service lists; if in-house counsel participated, it was behind the scenes and is not reflected in public filings.
• E.D. Tex. phase. The case originated in E.D. Tex. (Avago complaint dated Feb. 20, 2015) before transfer to N.D. Cal. (new docket opened Oct. 1, 2015). I could not confirm whether a separate Texas local-counsel firm appeared during the Marshall phase; every defense signature I located on the transferred docket is Alston & Bird.
• Post-settlement. The case closed December 16, 2016 (with docket activity into 2017); withdrawal motions, if any, would post-date the substantive record I reviewed and are not reflected here.
• The case ultimately involved more than the '087 patent alone (RPX reports seven patents-in-suit in this docket; the related 3:16-cv-00451 asserted the '730, '087, '148, '663, '387 and '830 patents). The '087 patent was the subject of ASUS's IPR2016-00646.

Caveat on sourcing: I was not able to query PACER directly; docket-entry numbers above are those visible in the reproduced filings (Justia/CourtListener/CCH hosts) and may be incomplete for appearance entries. Any attorney not listed here simply did not surface in the record I could access — I have not inferred additional names.