Funai Electric Co., Ltd. v. LSI Corporation

I'll research this case across multiple sources before drafting.

Key finding: the docket shows this is broader than the summary suggests. Let me dig deeper.

Now let me verify the outcome, the counterclaim structure, and the IPR fates.

I'll research this case across docket sources, court opinions, and PTAB records.

The docket shows this is actually a Funai antitrust/declaratory-judgment action against LSI, Agere, and Avago. Let me pull the full docket and later rulings.

Key finding: the case was dismissed with prejudice on 2017-10-27, four days after the Markman order. Let me get the full docket and check for parallel PTAB proceedings.

Funai Electric Co., Ltd. v. LSI Corp., No. 5:16-cv-01210-BLF (N.D. Cal.)

One threshold correction to the working case summary

The existing summary describes this as "a declaratory judgment action against LSI Corporation" about the '087 patent. That undersells and partly mischaracterizes the case. As the docket and the two substantive opinions show, this was principally a FRAND/antitrust case — Sherman Act § 2 monopolization, California UCL, breach of contract (third‑party beneficiary of the MPEG LA AVC pool license), promissory estoppel, and declaratory judgment — brought by Funai Electric Co., Ltd., Funai Corp., Inc., Funai Service Corp., and P&F USA, Inc. against LSI Corp., Agere Systems LLC, and Avago Technologies General IP (Singapore) Pte. Ltd. The '087 patent entered the case sideways: LSI asserted it (claims 1, 10, and 16) by counterclaim, and Funai sought declaratory relief. Case type in the N.D. Cal. docket is "Other – Antitrust," not patent. Judge Beth Labson Freeman presided (San Jose), with Magistrate Judge Nathanael Cousins on discovery.

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1. Filing and initial pleadings

2016-03-11 — Complaint filed (Dkt. 1), N.D. Cal., San Jose, No. 5:16-cv-01210. Filed just weeks after LSI/Agere/Avago voluntarily withdrew their patent infringement case against Funai in the Central District of California (LSI Corp. v. Funai, No. 2:12-cv-02047, filed 2012-03-12), as reported by Courthouse News (2017-03-29). That sequence matters: Funai converted what had been a defensive patent posture into an offensive FRAND/antitrust case once the infringement suit was dismissed.

Background against which the case was pleaded — the same four patents ('087, '958, '867, '663) had already been litigated in ITC Inv. No. 337-TA-837, and in the C.D. Cal. action, which Funai alleges was amended on 2015-06-02 to add declaratory judgment counts for future infringement of the '663 and '087 patents (FAC ¶ 105). A separate N.D. Cal. action, Avago/LSI/Agere v. Funai, ASUS and Acer, No. 3:15-cv-04307 (filed 2015-09-21), ran in parallel.

2016 — First Amended Complaint and motion to dismiss. Defendants moved to dismiss the FAC (Dkt. 48); Funai opposed; Defendants replied 2016-10-06 (Dkt. 60). A hearing was held before Judge

I'll research the counsel of record for Funai Electric in this N.D. Cal. declaratory judgment action.

Let me pull the actual docket sheet and look for the Markman order.

Now let me verify the signature blocks from the actual filings to confirm which attorneys appeared for Funai.

Bottom line

Funai's side of this docket was staffed almost entirely by two outside firms — Baker & Hostetler LLP (the team that had defended Funai in LSI's ITC case and the earlier N.D. Cal. actions) and a Cravath, Swaine & Moore LLP antitrust group. No Funai in-house lawyer and no separate California "local counsel" boutique appears in the recorded appearances. Below is what is documented, with the verification gaps called out.

⚠️ Sourcing caveat up front: My docket-level verification for this answer came from the RECAP/Justia/UniCourt/PlainSite mirrors of the 5:16-cv-01210 docket (129 entries, closed 10/27/2017) and from signature blocks in the related N.D. Cal. and ITC/PTAB matters. I was cut off by a tool-call limit before I could pull the PACER docket report or the Dkt. 1 complaint signature block itself, so I have not been able to confirm first-appearance dates, pro hac vice orders, or which attorney the court formally designated "lead" for trial. Items flagged [verify] should be checked against the PACER docket report before being relied on in a filing or client memo.

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Plaintiffs and the record

The docket caption is Funai Electric Co., Ltd.; Funai Corporation, Inc.; P&F USA, Inc.; and Funai Service Corporation v. LSI Corporation; Agere Systems LLC; Avago Technologies General IP (Singapore) Pte. Ltd., No. 5:16-cv-01210-BLF (N.D. Cal., filed March 11, 2016), assigned to Judge Beth Labson Freeman with Magistrate Judge Nathanael Cousins. It was docketed as an "Other – Antitrust" case — Funai's affirmative FRAND/antitrust and contract claims, with LSI's infringement case on the '087 patent (and the '958/'867/'663 patents) proceeding in parallel at the ITC. Claim construction on the '087 patent issued as Dkt. 127, Order Construing Claims in U.S. Patent No. 5,870,087 (Oct. 23, 2017), and the whole case was dismissed with prejudice by Dkt. 129 (Oct. 27, 2017).

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Counsel of record for the Funai plaintiffs

Not on this docket (avoid conflating): Paul Devinsky (now McDermott Will & Emery, Washington, D.C.) was, per his firm biography, lead counsel for Funai Electric, Funai Corporation, P&F USA and Funai Service in ITC Inv. No. 337-TA-837 — the case that produced the Federal Circuit's March 2015 affirmance on LSI's Wi-Fi patent. T. Cy Walker (Baker & Hostetler, Washington, D.C.) appears as Funai's counsel in the 2017 PTAB filings against Funai/Broadcom. Both are Funai-side lawyers in the same dispute cluster, but I found no evidence either entered an appearance in 5:16-cv-01210.

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What I could not confirm

• Formal "lead counsel" designation. The only record hint is Dkt. 29 (May 31, 2016), an order resetting the CMC because "Lead counsel for Plaintiff will be out of the country from June 20, 2016 through July 11, 2016" — it does not name the attorney. Kirsch's signature on Dkt. 128 and his filing history make him the practical lead; the Cravath lawyers may have held the formal designation on the antitrust claims. [verify]
• Cravath affiliations. The five New York names come from the UniCourt attorney listing for this case number; I could not open a filing in this case bearing their Cravath signature block before hitting the search limit. The firm attribution is consistent with known rosters but should be confirmed from the docket. [verify]
• Pro hac vice admission orders for Mancino, Brandyberry and the Cravath attorneys. [verify]
• Nothing was sealed in a way that hides counsel. The case had a stipulated protective order and a stipulated e-discovery order, and discovery-dispute orders (Dkt. 123, 124) resolved deposition issues, but appearances are of record. There was, however, a real gap on the defense side: the May 31, 2016 order notes "Defendants' counsel has not yet entered an appearance in this case," so LSI's Kilpatrick Townsend team (David E. Sipiora, Matthew C. Holohan, Kristopher L. Reed, Robert J. Artuz) appeared later than Funai's team.

Practical takeaway for the litigation posture

The staffing tells you how Funai framed the case: a BakerHostetler patent-defense core (the team that had already beaten LSI's Wi-Fi patent at the ITC and litigated the '087 family against LSI in Barnes & Noble and LSI v. Funai) paired with a Cravath antitrust/FRAND overlay for the affirmative claims. That combination is why Funai, not LSI, drove the claim-construction narrative on the '087 patent — including its unsuccessful indefiniteness attack on "single memory"/"first unified memory" (Dkt. 127 adopting LSI's "memory functioning as a unit" construction and rejecting indefiniteness under Nautilus), before the parties walked away from the case by joint stipulation three days later.

Recommended verification path: pull the PACER docket report for 5:16-cv-01210-BLF and read the signature blocks on Dkt. 1 (complaint), Dkt. 40 (amended complaint), Dkt. 122, and Dkt. 128, plus any "Notice of Appearance" and pro hac vice entries, to lock down roles and dates.

I'll research the docket and counsel appearances for the defendant, LSI Corporation.

Let me pull the docket sheet and the Markman order to confirm appearances.

Bottom line

Defendants LSI Corporation, Agere Systems LLC, and Avago Technologies General IP (Singapore) Pte. Ltd. were jointly represented throughout 5:16-cv-01210-BLF by a single trial team from Kilpatrick Townsend & Stockton LLP, working primarily out of the firm's Denver, Colorado office. The same Kilpatrick team had previously represented these three entities as plaintiffs in the mirror-image case, LSI Corp. v. Funai Electric Co., No. 3:15-cv-04307-EMC (N.D. Cal.), and handled the parallel ITC Investigation No. 337-TA-837 — which is why the same names recur across all three proceedings.

⚠️ Verification caveat: PACER itself is paywalled, so I worked from aggregated docket mirrors (Justia, PlainSite, UniCourt, Dockets.Justia) and reproduced signature blocks from court filings. Names, firms, and bar numbers below are grounded in actual filed documents; role designations ("lead," "local") are my characterization where no filing expressly labels them. I flag the two or three items I could not pin to a primary document.

Counsel of record for Defendants

No in-house counsel for LSI/Agere/Avago appears on the public docket in this action; the entity defendants litigated entirely through outside counsel. No defense counsel names were sealed — the appearances here are public.

Practical notes for your analysis

1. One team, three aligned defendants. LSI, Agere, and Avago are Broadcom-affiliated entities and were represented collectively without separate counsel. Every substantive defense filing in this case (the motion to dismiss the FAC at Dkt. 48 / reply at Dkt. 60; the joint discovery letter briefs at Dkts. 120–121; the Notice of Supplemental Authority at Dkt. 125) is captioned for all three and signed by Mr. Sipiora.

2. The Markman win was defense-side. In the Oct. 23, 2017 claim construction order (Dkt. 127), Judge Freeman adopted Defendants' proposed construction and construed "single memory"/"first unified memory" as "memory functioning as a unit," and also adopted Defendants' "coupled to" = "having an interdependence with." That order is the work product of the Sipiora/Reed/Holohan team, and it dovetails with the ITC's construction in 337-TA-837 — a proceeding in which the same Kilpatrick lawyers had represented LSI.

3. Don't confuse the two sides' firms. The Notices of Change in Counsel at Dkts. 64–65 (Nov. 14, 2016) were filed by Kevin W. Kirsch of Baker & Hostetler LLP (Cincinnati), who is Funai's counsel, not LSI's. UniCourt's attorney lists for this docket blend both sides' rosters — treat that listing with caution.

4. Pro hac vice posture. The Denver-based Kilpatrick lawyers appeared in N.D. Cal. via the firm's San Francisco office as the California anchor; Sipiora himself holds a California bar number (124951) and has appeared pro hac vice in PTAB proceedings (e.g., IPR2015-01453, IPR2016-00130), per his declaration in the Regents of the Univ. of Minnesota IPR.

Sources

• Docket, Funai Elec. Co. v. LSI Corp., No. 5:16-cv-01210 (N.D. Cal.) — Dockets.Justia; PlainSite; UniCourt
• Claim construction order, Dkt. 127 (Oct. 23, 2017) — Justia PDF
• Order on motion to dismiss, Dkt. 75 (Mar. 27, 2017), 2017 WL 1133513 — Justia PDF
• LSI/Avago signature blocks and caption, No. 3:15-cv-04307-EMC, Dkts. 86, 91, 92, 112 — Justia PDF
• LSI Corp. v. ITC, 604 F. App'x 924 (Fed. Cir. 2015) — CAFC opinion
• Kilpatrick Townsend firm announcement re Regents of the Univ. of Minnesota v. LSI Corp. — ktslaw.com

Not verified / open items: (a) exact office locations and titles for Bell, Kolassa, and Dallow; (b) whether Chang and Artuz entered formal appearances in 16-cv-01210 as opposed to only in 3:15-cv-04307; (c) any post-Markman substitution of counsel — the case appears to have been disposed of after the Oct. 2017 activity, but I could not confirm the disposition document (likely settlement/dismissal) within this search.