Litigation

Barnes & Noble Inc. v. LSI Corporation

3:11-cv-02709

Filed
2011-06-06

Patents at issue (1)

5870087

Defendants (1)

Summary

Barnes & Noble Inc. brought a declaratory judgment action against LSI Corporation et al. in N.D. Cal. over U.S. Patent 5,870,087; outcome not established.

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 to build an accurate overview, starting with the docket and party/patent background.

Good foundation. Now let me nail down the case's procedural arc and outcomes, plus the parallel ITC and PTAB proceedings.

The ITC case turns out to be against Funai/Realtek, not B&N — and the litigation apparently ended via filings in Pennsylvania. Let me pin down the dismissal/transfer and the PTAB outcome.

Case Overview & Background

The parties. This is a declaratory-judgment action that reversed the usual roles: on June 6, 2011, Barnes & Noble, Inc. and barnesandnoble.com LLC (together, "B&N") sued LSI Corporation and Agere Systems Inc./LLC in the Northern District of California, asking the court to declare that B&N's NOOK line of e-readers and tablets did not infringe, and was invalid over, patents LSI and Agere had been asserting in license negotiations. B&N is the operating retailer/device maker; LSI (Milpitas, CA) and Agere (Allentown, PA) were semiconductor and IP-licensing companies — LSI had absorbed Ag

Key legal developments & outcome

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

I'll research this case systematically.

Barnes & Noble, Inc. v. LSI Corp., No. 3:11-cv-02709-EMC (N.D. Cal.) — Litigation Chronology

Bottom line: This was a declaratory-judgment/patent case that never reached trial. B&N filed first in N.D. Cal.; LSI/Augere counterclaimed on nine patents (including the '087); the case survived two motions to dismiss, a contested first-to-file/transfer fight, a long magistrate-level discovery war, and a claim construction ruling in April 2014 — and then ended by stipulated dismissal on 2014-06-10 (Dkt. 319) as part of a global settlement that also closed LSI's parallel Pennsylvania action. There was no verdict, no JMOL/new-trial practice, and no Federal Circuit appeal. The '087 patent's most consequential rulings came from the ITC (Inv. No. 337-TA-837) and, later, from PTAB IPR2016-00646 and a separate Funai declaratory-judgment case.

1. Filing and initial pleadings

Date Event Source
2010-06 LSI writes to B&N alleging the Nook's 3G, Wi-Fi and audio functionality infringes LSI patents; licensing talks fail Studicata summary of 2011 opinion
2011-06-06 B&N (and later barnesandnoble.com LLC) files DJ complaint in N.D. Cal. under 28 U.S.C. § 2201, naming LSI Corporation as sole defendant and alleging LSI owned all the patents Dkt. 1; Justia docket
2011-07-27 LSI and Agere Systems, Inc. sue B&N and BN.com in Pennsylvania federal court on the same patents (captioned Agere Systems Inc. et al. v. Barnes & Noble, Inc. et al.) — the basis for the later first-to-file/transfer fight Law360 case page; 823 F. Supp. 2d at 984–85
2011-08-10 B&N amends as of right (Dkt. 25): adds BN.com as plaintiff and Agere as defendant, adds invalidity claims as to all patents and a non-infringement claim on the '633 patent Dkt. 25; 823 F. Supp. 2d at 984
2011-08-29 Defendants file second motion to dismiss (Dkt. 45) on the same grounds (no case or controversy, nonjoinder, first-to-file; alternative transfer) Dkt. 45
2011-10-24 (approx.) LSI/Agere answer and counterclaims for infringement (Dkt. 62). Counterclaims ultimately asserted nine patents, including the '087, plus the '730, '663, '006, '867, '958, '394, '420 and '552 patents Dkt. 62; Studicata 2014 summary
2012-09-07 Agere Systems LLC substituted for Agere Systems, Inc. (Dkt. 133) Dkt. 133

Note on the '087 in this case: the '087 was not B&N's lead patent. It entered the case as one of LSI/Agere's infringement counterclaims against the Nook (MPEG decoder/unified memory), and it was one of the patents that reached the court's Markman ruling.

2. Pre-trial motions of substance

a) Motions to dismiss / transfer — DENIED (2011-10-18, Dkt. 61), reported at 823 F. Supp. 2d 980.
Judge Edward M. Chen rejected three defense theories:

  • 12(b)(1)/no case or controversy: although nine of the patents were owned by Agere, not LSI, B&N

Plaintiff representatives

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

Bottom line

Both plaintiffs — Barnes & Noble, Inc. and barnesandnoble.com llc (added by amended complaint, ECF 25, Aug. 10, 2011) — were represented throughout by Quinn Emanuel Urquhart & Sullivan, LLP, appearing through its Los Angeles and San Francisco offices. There was no separate local-counsel firm and no in-house B&N attorney appearing of record in any filing I could retrieve; because Quinn Emanuel had a San Francisco office and its signing attorneys held N.D. Cal. bar numbers, the firm itself satisfied the local-counsel function. (Defendants LSI Corp./Agere Systems were represented by Fenwick & West LLP — Mountain View — for contrast.)

Case No. 11-cv-02709 EMC (N.D. Cal., Judge Edward M. Chen; Mag. Judges Beeler and Spero).

Plaintiff's counsel of record

Attorney (Bar No.) Role Firm / Office Note
John B. Quinn (Cal. 90378) Lead counsel of record — expressly identified as B&N's "lead counsel" in Judge Beeler's May 2, 2012 discovery order (ECF 114) Quinn Emanuel Urquhart & Sullivan LLP, 865 S. Figueroa St., 10th Fl., Los Angeles, CA 90017 Quinn Emanuel's founding partner and one of the best-known U.S. patent/commercial trial lawyers (the firm was lead trial counsel for Samsung in Apple v. Samsung); listed on the earliest joint filings in this case (Sept. 2011) and still on the May 2014 stipulation (ECF 316).
David Eiseman (Cal. 114758) Lead San Francisco counsel / principal signatory — the QE partner whose name appears on virtually every plaintiff-side filing (ECF 55, 123, 133, 179, 303, 316) Quinn Emanuel, 50 California St., 22nd Fl., San Francisco, CA 94111 Founded QE's first Northern California office (1997) and is co-managing partner of the SF office; IP litigation and ITC practice. His firm bio lists multiple Barnes & Noble / NOOK engagements, including a patent case won on summary judgment of non-infringement and affirmed on appeal, and ITC § 337 trials for B&N.
Shon Morgan (Cal. 187736) Attorney of record, member of trial team (2011–2012 filings) Quinn Emanuel, Los Angeles, CA Listed in the initial appearance/stipulation blocks alongside Quinn (ECF 55; Sept. 12, 2011 stipulation).
Melissa J. Baily (Cal. 237649) Attorney of record, member of trial team Quinn Emanuel, San Francisco, CA Appears on filings from Sept. 2011 through the May 2014 stipulation (ECF 55, 123, 133, 316).
Carl G. Anderson (Cal. 239927) Attorney of record, member of trial team; frequent signatory for plaintiffs on stipulations (ECF 55, 133, 179) Quinn Emanuel, San Francisco, CA QE patent litigator; the attorney whose /s/ signature appears for B&N on most stipulated orders in the case.

Sourcing and docket grounding

Caveats / what I could not verify

  • Signature block on the original complaint (ECF 1, filed June 6, 2011) — I could not retrieve a readable copy, so I cannot confirm which QE attorney signed the initial pleading. The QE team is documented on filings beginning June 2011 (stipulated extension, ECF 12/13) and continuously thereafter, and the same firm filed the amended complaint as of right on Aug. 10, 2011 (ECF 25).
  • No withdrawal or substitution of plaintiff's counsel appears in the materials I could access; the same QE team is on the last plaintiff-side stipulation in May 2014. That said, I could not review a complete PACER docket sheet line-by-line, so a late withdrawal or an additional appearance cannot be ruled out.
  • In-house counsel: no Barnes & Noble legal-department attorney appears on any filing I retrieved; I found no basis to name one, and I have not done so.
  • Appellate counsel: the docket appears to have closed around Nov. 13, 2014 (per third-party docket aggregators, not PACER directly), and I could not verify from a primary source whether any Federal Circuit appeal was taken in this docket or who argued it. I am therefore not naming appellate counsel.
  • The case later involved a much larger patent set (B&N sought declaratory judgment on up to eleven Wi-Fi/3G/audio patents, and LSI/Agere counterclaimed on the '730, '958, '867, '420 and '552 patents), even though the metadata accompanying this case lists only the '087 patent.

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 records for this case.

Good leads. Let me verify the defense team and docket appearances.

Let me confirm the defense signature blocks on key pleadings and check for any later substitutions.

Counsel of Record for Defendants LSI Corporation and Agere Systems Inc./LLC

Bottom line: Both defendants were jointly represented throughout by Fenwick & West LLP (Silicon Valley Center, 801 California Street, Mountain View, CA). No separate counsel for Agere appears in the record, and — because Fenwick is a California firm — I found no local-counsel or pro hac vice arrangement; every defense signature block lists California State Bar numbers. All appearances are dated 2011–2014 and are documented in filed documents and the court's published opinion.

Confirmed appearances

Attorney Role Firm / Office Bar No. Note
Charlene M. Morrow Lead counsel (partner); named first on every defense signature block; presented argument on the motions to dismiss/transfer and the motion to strike Fenwick & West LLP, Mountain View, CA CSB 136411 Fenwick's long-time patent trial lawyer (BTI Client Service All-Star); prior N.D. Cal. patent defense work, e.g. substituted in as counsel of record for NVIDIA Corp. (Dkt. 367 in No. 3:10-cv-231088)
Virginia K. DeMarchi Of counsel / partner; co-signed the joint stipulations, including the stipulated schedule for the amended counterclaims asserting the '087 patent Fenwick & West LLP, Mountain View, CA CSB 168633 Listed by the court among defense counsel in the Oct. 18, 2011 opinion, 823 F. Supp. 2d 980, 982
Hector J. Ribera Partner, Litigation Group; co-signer on defense filings and stipulations through the 2013–2014 scheduling phase Fenwick & West LLP, Mountain View, CA CSB 221511 Patent trial and PTAB practice; appears on Fenwick PTAB filings around the same period (e.g., IPR2014-00148 correspondence)
Ryan Tyz Associate/counsel; handled the evidentiary record on the transfer/first-to-file fight (his declaration, "Tyz Decl.," Dkt. 23, attached the E.D. Pa. complaint and inventor/prosecutor location evidence) Fenwick & West LLP, Mountain View, CA CSB 234895 Named in the court's counsel listing, 823 F. Supp. 2d at 982
Ravi Ranganath Associate; drafted the letters-rogatory declaration (Ranganath Decl., Dkt. 100) supporting discovery against Inventec/Jorjin, and signed the May 21, 2014 joint stipulation for defendants (Dkt. 316) Fenwick & West LLP, Mountain View, CA CSB 272981 Last defense signatory I can document (2014)
Yixin Zhang Associate; appears in defense signature blocks from the 2012 scheduling stipulations onward (e.g., Dkt. 123) Fenwick & West LLP, Mountain View, CA CSB 270527
Bryan A. Kohm Associate; appears in the 2013 defense signature block on the stipulation regarding defendants' motion for leave to amend infringement contentions and counterclaims (Dkt. 200) Fenwick & West LLP, Mountain View, CA CSB 233276

Sourcing

  • Court's own counsel listing: Barnes & Noble, Inc. v. LSI Corp., 823 F. Supp. 2d 980, 982 (N.D. Cal. Oct. 18, 2011) — "Charlene Marie Morrow, Hector J. Ribera, Ravi Ragavendra Ranganath, Ryan Aftel Tyz, Virginia K. Demarchi, Fenwick & West LLP, Mountain View, CA, for Defendants." (Order denying Dkts. 21, 45, 60.)
  • Dkt. 55 (Sept. 12, 2011 joint stipulation re Rule 26(f) report) — Fenwick signature block: Morrow, DeMarchi, Ribera, Tyz, Ranganath, "Attorneys for Defendants LSI Corporation and Agere Systems Inc." https://cases.justia.com/federal/district-courts/california/candce/3:2011cv02709/241539/55/0.pdf
  • Dkt. 62 (Nov. 1, 2011) — defendants' Answer and Counterclaims (the infringement counterclaims, including later the '087 patent); Dkt. 71 — defendants' motion to strike B&N's affirmative defenses.
  • Dkt. 123 / Dkt. 133 (2012) — Fenwick appears for "LSI Corporation and Agere Systems Inc.," including the stipulation substituting Agere Systems LLC for Agere Systems Inc. under Rule 25(c). Same Fenwick team continued for the LLC.
  • Dkt. 316 (May 21, 2014) — "/s/ Ravi Ranganath … Attorneys for Defendants LSI Corporation and Agere Systems LLC," reflecting the post-April 7, 2014 claim-construction order schedule.

Important caveats / what I could not verify

  • The '087 patent entered this case by counterclaim, not by the complaint. B&N's June 6, 2011 declaratory-judgment complaint covered ten patents; the '087 was added as a counterclaim patent in defendants' May 20, 2013 amended counterclaims (per B&N's 2013 Form 10-K/10-Q disclosures). So defense counsel's '087-specific work is concentrated in the 2013–2014 claim-construction phase, not the 2011 pleading phase.
  • No in-house counsel for LSI or Agere appears on any signature block or in the court's counsel listing. I found no docket entry naming an LSI/Agere in-house attorney as counsel of record, and I am not going to guess at names.
  • No sealed-counsel issue: the docket does contain sealed filings (e.g., Dkt. 140), but the identity of counsel of record is not sealed — it is visible on the public signature blocks above.
  • Post-2014 substitutions: the latest defense filing I could source is the May 2014 stipulation. I could not confirm whether Fenwick remained counsel through the end of the case (the case's termination/settlement posture is not established in the materials I could retrieve), nor whether any substitution followed LSI's 2014 acquisition by Avago. Treat the roster as accurate for 2011–2014.
  • Firm office location: Fenwick & West's Silicon Valley Center (Mountain View) is the address on all filings; individual attorneys are Mountain View–based, and Fenwick also used its San Francisco presence for hearings before Judge Chen.