Litigation

Broadcom Corporation v. Amazon.com, Inc.

8:16-cv-01774

Patents at issue (1)

5870087

Defendants (1)

Summary

Broadcom Corporation et al. sued [Amazon.com, Inc.](/litigations/by-plaintiff/Amazon.com%2C%20Inc.) et al. in C.D. Cal.; the case prompted Amazon IPR2017-01816, which was dismissed, but the district outcome was 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 thoroughly before drafting the overview.

Good initial results. Let me dig into the docket outcome, the asserted patents, and the IPR proceedings.

Let me get the complaint details (patents, accused products) and the claim construction ruling.

Case Overview & Background

Parties — an operating-company enforcement campaign, not an NPE suit. The plaintiffs were Broadcom Corporation (Irvine, CA) and Avago Technologies General IP (Singapore) Pte. Ltd.; the defendants were Amazon.com, Inc. and Amazon Web Services, Inc. Both plaintiffs belong to the same corporate family — Avago Technologies Limited closed its acquisition of Broadcom Corporation in 2016, consolidating the two

Key legal developments & outcome

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

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

Let me pull the docket details and key orders.

Case: Broadcom Corp. v. Amazon.com, Inc., No. SACV 16-01774 JVS (JCGx) (C.D. Cal.) — Judge James V. Selna; Mag. J. Jay C. Gandhi

Bottom line up front (correcting the prior summary): The district case did not end ambiguously. It was dismissed in its entirety on 2017-10-06 upon a global settlement between Broadcom and Amazon (Order of Dismissal Upon Settlement, D.I. dated Oct. 6, 2017), and the parallel IPR on the '087 patent, IPR2017-01816, was terminated at the parties' joint request on 2017-11-06. There was no Markman ruling on the merits of infringement, no trial, no verdict, and no appeal. The case lived 379 days (RPX: filed 2016-09-23, closed 2017-10-06).

One framing correction worth making explicit: although the file is indexed to U.S. Pat. No. 5,870,087, the complaint and the claim-construction briefing covered a much larger asserted portfolio — RPX records 11 patents-in-suit and 22 accused products, and the July 2017 Joint Appendix for claim construction included eight patents: the '087, '805, '636, '387, '663, '844, '389, and '375. The '087 was the count that drew the PTAB petition.

1. Filing and initial pleadings

2016-09-23 — Complaint filed. Plaintiffs Broadcom Corporation and Avago Technologies General IP (Singapore) Pte. Ltd. sued Amazon.com, Inc. and Amazon Web Services, Inc., pleading willful patent infringement. Count 1 asserted the '087 patent ("MPEG Decoder System and Method Having a Unified Memory for Transport Decode and System Controller Function," inventor Kwok Kit Chau, issued 1999-02-09) against, inter alia, the Amazon Fire HD 10 tablet (MediaTek MT8135 SoC / PowerVR G6200 GPU) and more broadly against "products that are adapted to or are capable of decoding electronic video files or video data streams."

The complaint's narrative is a licensing-negotiation story, not a cold assertion: it traces the portfolio to LSI/Avago and, before that, Agere, Lucent, AT&T and Bell Labs, and alleges that representatives of Broadcom/Avago/LSI "repeatedly attempted to engage Amazon in licensing discussions," with a final written request on 2016-06-22 that Amazon allegedly did not answer. Amazon's own Form 10-K later confirmed the September 2016 suit by Broadcom and Avago General IP against Amazon.

Answer / counterclaims — partially verified only. I was not able to retrieve Amazon's answer or confirm whether Amazon pleaded declaratory-judgment counterclaims of non-infringement/invalidity. What is documented is that Amazon pleaded at least eleven affirmative defenses, including a Tenth Defense (breach of contract / license) and an Eleventh Defense (arbitration) — defenses that became the focal point of the early motion practice described below. Treat the counterclaim question as open.

2. Pre-trial motions of substance

Case management (2016-12-12 / 2017-02-01). The Rule 26(f) report estimated a 15–26 day trial. At the 2017-02-01 scheduling conference Judge Selna set: Markman/claim construction hearing 2017-07-31; discovery cut-off 2017-12-15; final pretrial conference 2018-09-04; jury trial 2018-09-25.

Arbitration / judgment on the pleadings (briefed Jan.–Feb. 2017; decided 2017-03-22). This was the most substantive ruling in the case. Broadcom moved for judgment on the pleadings as to Amazon's Tenth and Eleventh Defenses (D.I. 36/37, filed 2017-01-30); Amazon cross-moved to compel arbitration (D.I. 47), arguing that Counts 2, 8, 10 and 11 fell within the arbitration clause of the AWS Customer Agreement (2016 version). The Court denied arbitration in a written order dated 2017-03-22, holding:

  • the 2013 Amendment No. 1 to the AWS Customer Agreement applies to all later versions of the agreement (same URL, "as updated from time to time");
  • the Amendment (litigation in court) conflicts with the 2016 Agreement (arbitration), and the Amendment controls by its own terms;
  • therefore "Broadcom is not required to arbitrate its claims against AWS"; and
  • independently, the 2016 Agreement does not bind Avago or Amazon.com, because "arbitration is a matter of contract."

This ruling removed Amazon's best chance to move the dispute out of the C.D. Cal. and kept the case on the Selna docket.

No stay pending IPR. I find no motion to stay the district case pending IPR on the docket — consistent with timing: Amazon's '087 petition was filed 2017-07-18, the Board never instituted, and the case settled roughly eleven weeks later. There was likewise no Rule 12(b)(6) motion to dismiss of note in this action (contrast the N.D. Cal. Asustek case, below, where a § 101 motion to dismiss was denied).

No summary judgment, JMOL, new-trial, or fee motion was ever reached — the case settled before the 2017-12-15 discovery cut-off and well before the 2018 trial date.

3. Claim construction (Markman)

The Markman hearing was calendared for 2017-07-31; the Court's claim construction order issued 2017-09-01 (Civil Minutes, SACV 16-01774 JVS (JCGx)). Key outcomes for the '087 and its companion patents:

  • '087, "transport logic" (claims 1, 2, 7, 16, 17) — Broadcom prevailed. Amazon argued the term was a § 112 ¶ 6 means-plus-function term with no corresponding structure, hence indefinite; the Court rejected that, found the term conveys sufficiently definite structure (analogizing to Linear Technology), and — noting that both parties at the hearing agreed "transport logic" means "a demultiplexer" — construed it as "demultiplexer." This was a materially favorable construction for Broadcom and likely drove the settlement value.
  • '387 ("bridge circuit") — Court adopted "a circuit coupled to the bus and to at least one interface circuit," rejecting Amazon's "spans a bus and the interface circuit" formulation but also rejecting Broadcom's plain-meaning/no-construction position.
  • '663 (claims 11 and 21) — Court construed the order-of-steps dispute and treated the binarization limitation as means-plus-function, identifying structure as "binarization module 62 and steps 102, 106, 108, 110, and 112 of Figure 4 as described in 7:40–8:10."
  • '805 / '636 — the same order resolved § 112(6) indefiniteness challenges to three disputed terms across the '805, '636 and '087 patents, applying Williamson v. Citrix and Advanced Ground Information Systems.

Net: Broadcom won the indefiniteness fight on the '087's central structural term — a ruling that undercut the invalidity theory Amazon was simultaneously pressing at the PTAB.

4. Discovery milestones with strategic significance

  • 2017-02-22 — Court ordered a meet-and-confer on the parties' production disputes; Broadcom filed reports on 2017-02-28 (D.I. 58) and 2017-03-03 (D.I. 62), with Amazon responding (D.I. 60, 64). The exhibits show the fight was over Broadcom's P.R. 3-1/3-2 infringement contentions and Amazon's responses to Broadcom's first and second sets of document requests and first interrogatory set.
  • 2017-03-06 — Mag. Judge Gandhi granted Broadcom's motion to compel discovery responses (D.I. 45) after hearing, and — notably — waived L.R. 37-2 and 37-3 and directed that future discovery disputes be presented by letter brief rather than formal motions. Broadcom was ordered to submit a fee/cost declaration (D.I.

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll research press coverage of this case across multiple search angles.

Press coverage: what I found (and didn't)

Press coverage of Broadcom Corp. v. Amazon.com is thin and essentially confined to one trade outlet plus a display-industry blog. I searched the case caption, party names, the '087 patent number, "Fire TV"/"Fire tablet," and the arbitration and settlement angles; I found no Reuters, Bloomberg Law, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or JD Supra piece on this case. The most substantive coverage is Law360's case page, which indexes four stories (headlines and short summaries are public; the full articles are paywalled and I could not read the bodies): "Amazon Hit With Patent Suit By Broadcom Over Tablets, Tech" (2016‑09‑26), "Amazon Seeks Arbitration In Broadcom Tablet, Tech IP Suit" (2017‑02‑13), "Amazon Loses Bid To Arbitrate Broadcom Tablet, Tech IP Row" (2017‑03‑23), and "Amazon, Broadcom Settle Patent Suit Over Tablets, Other Tech" (2017‑10‑10).

According to Law360's summaries, Avago Technologies and its newly acquired Broadcom Corp. sued Amazon in C.D. Cal. on Friday, September 23, 2016, accusing it of infringing 11 patents with the Amazon Fire HD 10 tablet and other products — a broader framing than the single '087 patent in this case's metadata, which reflects that the '087 patent was one of a portfolio asserted in the same complaint. Law360 reported that Amazon moved in February 2017 to compel arbitration of four of the infringement claims based on a Broadcom–AWS customer agreement containing an arbitration clause, and then reported on 2017‑03‑23 that Judge James V. Selna "rejected Amazon's bid to force Broadcom and Avago to arbitrate," holding that Broadcom did not agree to arbitrate its claims when it signed the AWS customer agreement. That ruling is consistent with the court's March 22, 2017 order (No. SACV 16‑01774 JVS (JCGx)), which found the 2013 amendment superseded the 2016 agreement's arbitration clause and that Avago and Amazon.com were not signatories bound to arbitrate.

On the outcome, Law360 reported on 2017‑10‑10 that Amazon "has settled claims lodged by Avago Technologies and subsidiary Broadcom Corp." over products "including Amazon Fire tablets and Fire TV devices." The display-industry site DisplayDaily likewise reported that the case "has been settled," recapping that Broadcom's September 2016 complaint alleged the Fire tablets and TV devices violated several of its patents. No outlet I found reported any damages figure, royalty rate, or settlement amount — the terms were never disclosed in press accounts, and the court's October 6, 2017 order dismissed the action without prejudice upon settlement, with no monetary terms recited.

Two caveats are worth flagging. First, no press account I located discusses the '087 patent specifically or Amazon's parallel IPR petition on it (IPR2017‑01816, filed July 18, 2017); that dismissal appears only in PTAB filings, where the parties' October 25, 2017 joint motion states they "reached an agreement to settle all of their disputes concerning the '087 Patent" and references "a broader settlement of disputes between Broadcom and Amazon." Second, because the Law360 pieces are paywalled I can only characterize them from their published headlines and deks; I found no analyst commentary, executive statements, or market-impact analysis from any outlet, so the reporting I located does not go meaningfully beyond the docket record aside from framing the dispute as part of Broadcom/Avago's broader assertion campaign against device makers.

Sources

Plaintiff representatives

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

Counsel of record for the plaintiffs — Broadcom Corp. (and Avago Technologies General IP (Singapore) Pte. Ltd.) v. Amazon.com, Inc. / Amazon Web Services, Inc., No. SACV 16‑01774‑JVS‑(JCGx) (C.D. Cal.)

Party note first: although the case metadata lists only Broadcom Corporation, the docket caption is Broadcom Corporation et al. v. Amazon.com, Inc. et al., and the plaintiffs were Broadcom Corporation and Avago Technologies General IP (Singapore) Pte. Ltd. (both Broadcom-family entities). All plaintiff-side appearances below were entered for both plaintiffs.

Attorneys of record

Attorney Role Firm / office Notes
Jason S. Angell Lead counsel in practice — he is the e‑filer on essentially every plaintiff-side filing in the case (e.g., the Joint Rule 26(f) Report, Doc. 30; the sealing application, Doc. 35; the motion to compel, Doc. 45; the protective order stipulation, Doc. 70) and was designated lead counsel for Avago/Broadcom in the parallel IPR Freitas Angell & Weinberg LLP, 350 Marine Parkway, Suite 200, Redwood Shores, CA 94065 (Cal. Bar No. 221607; Reg. No. 51,408) IP‑litigation boutique founded in 2011 by ex‑Orrick lawyers; Angell handles the Broadcom/Avago patent portfolio enforcement program (Broadcom v. Sony, No. 8:16‑cv‑01052; later Broadcom v. Netflix, No. 8:20‑cv‑00529, after he became of counsel at Hopkins & Carley).
Robert E. Freitas Partner / lead trial counsel; named first on the complaint signature block and listed by the docket aggregators as a plaintiff attorney of record Freitas Angell & Weinberg LLP, Redwood Shores, CA Founding partner of the boutique; veteran IP/antitrust trial lawyer (formerly Orrick), routinely first-chair on the firm's Broadcom/Avago matters.
Jessica N. Leal Associate / case team (third name on the complaint signature block; listed as a plaintiff attorney of record) Freitas Angell & Weinberg LLP, Redwood Shores, CA Member of the same Broadcom/Avago trial team; junior role consistent with the docket, where she does not appear as an e‑filer.
Jing H. Cherng Of counsel / supporting attorney — not a case-running appearance, but she is the only other plaintiff-side lawyer appearing in the record (Declaration of Jing H. Cherng in support of the plaintiffs' sealing application, Doc. 36/37; Declaration in support of the motion to compel, filed with Doc. 45), and she was designated backup counsel to Angell in the parallel IPR Freitas Angell & Weinberg LLP, Redwood Shores, CA (Reg. No. 68,144) Patent prosecutor/litigator at FAW who supported both the district court and PTAB sides of the Broadcom/Avago campaign.

No local counsel appears for plaintiffs: FAW (Redwood Shores) acted as sole counsel in the C.D. Cal. case; C.D. Cal. does not require local counsel, and no separate local firm entered an appearance. The only pro hac vice applications and "local counsel" designations in this docket were on the defense side (Alan M. Fisch and Roy William Sigler of Fisch Sigler LLP, with L. Katie Machado as local counsel — Docs. 55–56).

Sourcing and caveats

  • The three-attorney identification (Angell, Freitas, Leal) matches the PACER-derived docket aggregators (UniCourt; Patexia) and contemporaneous press coverage of the complaint, which states plaintiffs were "represented by Robert E. Freitas, Jason S. Angell and Jessica N. Leal of Freitas Angell & Weinberg LLP in Redwood Shores" (NorCal Record, Sept. 2016).
  • Lead/backup designations are confirmed by Avago's mandatory notice in IPR2017‑01816 (the Amazon IPR on the '087 patent, filed Aug. 30, 2017), which lists Angell as lead and Cherng as backup and gives service addresses at FAW, Redwood Shores. The same filing identifies this district case (No. 8:16‑cv‑01774‑JVS‑JCGx) as a related matter.
  • Individual itemized role labels (e.g., "lead trial counsel" vs. "associate") are inferred from signature-block order, e‑filing patterns, and firm bios, not from a formal C.D. Cal. "[Designation of Lead Counsel]" entry, which I could not locate in the public docket. I also could not confirm any in-house Broadcom/Avago attorney appearing on the record in this case — none is listed in the docket data I could access, and nothing suggests in-house counsel entered an appearance.
  • I did not find any sealed appearance applications for plaintiffs; the filings that were sealed in this case (Docs. 35–37, 42–43) were substantive motion papers and declarations, and the sealing applications themselves identify the same FAW attorneys.
  • One related open item: RPX records the case as closed on 10/6/2017 (despite a trial date of 9/25/2018 having been set at the initial scheduling conference), but I could not verify the closing document or its stated basis from the sources available to me, so I am not characterizing the outcome.

Key docket anchors for the plaintiff-side appearances: Complaint (Doc. 1, filed 9/23/2016); Joint Rule 26(f) Report (Doc. 30, 12/12/2016); Sealing application + Cherng declaration (Docs. 35–37, 1/27–28/2017); Motion to compel with Cherng declaration (Doc. 45, 2/9/2017); Protective order stipulation (Doc. 70, 3/10/2017); Claim construction order (Doc. 118, 9/1/2017).

Defendant representatives

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

Counsel of record for the defendants (Amazon.com, Inc. and Amazon Web Services, Inc.)

A threshold note on party structure: although the case metadata lists only Amazon.com, Inc., the docket caption is Avago Technologies General IP (Singapore) Pte. Ltd. et al. v. Amazon.com, Inc. et al., and Amazon Web Services, Inc. was a co-defendant until the plaintiffs' stipulation of dismissal as to AWS (Dkt. 122, filed 9/14/2017). Every defense attorney below appeared for both defendants. The defense team was a two-firm structure: Fisch Sigler LLP (Washington, D.C./San Jose) as national patent trial counsel, and Doll Amir & Eley LLP (Los Angeles) as local counsel of record under C.D. Cal. practice.

Attorney Role Firm / office Experience note
Alan M. Fisch Lead trial counsel (pro hac vice; the substantive driver of the defense) Fisch Sigler LLP, 5301 Wisconsin Ave. NW, 4th Floor, Washington, D.C. 20015 Fisch Sigler managing partner; tried the Appistry v. Amazon patent case for Amazon through the Federal Circuit (Fed. Cir. 2017), and later led AWS's defense in Kove IO v. AWS (N.D. Ill.). Filed the defense's motion to compel arbitration (Dkt. 47, 2/10/2017) and the opening/responsive claim construction briefs (Dkts. 99, 109).
David M. Saunders First-appearing counsel of record (Fisch Sigler, San Jose) Fisch Sigler LLP, 96 N. Third St., Suite 260, San Jose, CA 95112 Filed defendants' answer with jury demand (Dkt. 23), Rule 7.1 interested-parties certificate (Dkt. 24), and the initial extension stipulations (Dkt. 21). Withdrew 8/16/2017 (Dkt. 115) after accepting an in-house position at Immersion Corp. — the reason is recited in his PTAB withdrawal motion in IPR2017-01816.
Roy William Sigler Of counsel / name partner (pro hac vice), replaced Saunders as the California-facing Fisch Sigler record counsel Fisch Sigler LLP, Washington, D.C. Admitted PHV 2/24/2017 (Dkt. 56); filed the notice of appearance substituting for Saunders (Dkt. 115) and handled the case-deadline stipulations in the settlement run-up (Dkts. 80, 84).
Joseph F. Edell Of counsel (pro hac vice), added for the claim construction phase Fisch Sigler LLP, Washington, D.C. Admitted PHV 7/31/2017 (Dkt. 106); was lead counsel of record for the Amazon petitioners in the parallel IPR2017-01816 on the '087 patent, where a Board order permitted Saunders's substitution by Richard Z. Zhang.
Jeffrey M. Saltman Of counsel (pro hac vice), added late in the case Fisch Sigler LLP, Washington, D.C. Admitted PHV 9/12/2017 (Dkt. 121), three weeks before settlement; also appeared for Amazon in the Appistry Federal Circuit appeal alongside Fisch and Sigler. Application filed twice (Dkts. 113, 114) to correct a filing defect.
Gregory L. Doll Local counsel Doll Amir & Eley LLP, 1888 Century Park East, Suite 1850, Los Angeles, CA 90067 Name partner in the Los Angeles litigation boutique; entered appearance 12/14/2016 (Dkt. 26) at the same time as Machado, and filed the errata to the claim construction record (Dkt. 101, 7/19/2017).
L. Katie Machado (Louise K. Machado, Cal. Bar No. 268491) Local counsel — the attorney formally designated as local counsel in every pro hac vice order Doll Amir & Eley LLP, Los Angeles Entered appearance 12/14/2016 (Dkt. 27); named as local counsel in the PHV orders admitting Fisch (Dkt. 30), Sigler (Dkt. 56), Edell (Dkt. 106) and Saltman (Dkt. 121). A frequent local-counsel appearance attorney for Amazon in C.D. Cal. consumer/IP matters.

Sourcing and what I could not verify

  • The attorney list is reconstructed from the docket entries themselves as reproduced in the Patexia docket report for No. 8:16-cv-01774 (services.patexia.com) and the Unified Patents litigation portal (portal.unifiedpatents.com), which set out the appearances, PHV applications and orders by docket number. I did not pull the PACER docket sheet directly, so the docket numbers above are second-hand descriptions rather than my own PACER review.
  • Firm/office affiliations are corroborated by Fisch Sigler's own PTAB filings in IPR2017-01816 (the '087 petition's power of attorney lists Saunders at the San Jose address and the D.C. address for the firm), by the Federal Circuit's counsel listing in Appistry, LLC v. Amazon.com, Inc. (Fed. Cir. Feb. 10, 2017) (Fisch argued; Sigler, Robinson, Saltman and Saunders on the brief), and by Machado's State Bar profile and Plainsite/Doll Amir & Eley attribution (calbar.ca.gov, plainsite.org).
  • Not verified / possible gaps: (1) I found no indication that any Amazon in-house attorney entered an appearance — the 2/10/2017 arbitration motion attached a "Declaration of Paul Giglio," who appears to be an Amazon-side declarant, but I have no source confirming his title or that he is Amazon legal, so I am not listing him as counsel. (2) I could not confirm whether any additional defense attorney appeared solely in sealed filings; the sealing practice in this case was limited (Dkts. 35–37, 42–43) and the appearances I list account for all publicly docketed defense notices. (3) The name "Matthew Hesser" appears in a defense transcript order with a fischllp.com address (Dkt. 67) — that is a firm contact, not counsel of record.
  • One flag consistent with the earlier press section: nothing in the counsel record supports the Law360 framing of the case as an Avago-led suit except that plaintiffs' counsel (Jason S. Angell of Freitas Angell & Weinberg, per the fawlaw.com address in Dkt. 68) signed the filings; the defense side was a single Fisch Sigler/Doll Amir team for both Amazon entities, which is consistent with the arbitration motion being brought jointly by "Amazon Web Services, Inc., Amazon.com, Inc."