Funai Electric Company Ltd. v. Avago Technologies General IP (Singapore) Pte. Ltd.

I'll research this case across sources before drafting.

Initial results reveal the docket's actual caption is inverted from the metadata. Let me verify the details.

Correction to the caption before the overview

The case number in the metadata, 3:15-cv-04307 (N.D. Cal., San Francisco Division), is docketed as LSI Corporation, Agere Systems LLC, and Avago Technologies General IP (Singapore) Pte. Ltd. v. Funai Electric Co., Ltd.; Funai Corporation, Inc.; P&F USA, Inc.; and Funai Service Corporation, Case No. 15-cv-04307-EMC — i.e., Avago/LSI/Agere were the plaintiffs and Funai the defendant (Dkt. 91, Dkt. 102). Funai appears as plaintiff in the derivative FRAND/antitrust action, No. 5:16-cv-01210-BLF, filed March 11, 2016 in the San Jose division before Judge Beth Labson Freeman ([docket](https://dockets.justia.com/docket/california/candce/

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

Key discovery: the docket reveals this case number is actually LSI Corp. v. Funai (Avago/LSI as plaintiff), and it originated in C.D. Cal. Let me dig into the history and the '087 patent specifically.

Now let me research the ITC/ Federal Circuit history, PTAB proceedings on the '087 patent, and the resolution of the companion antitrust case.

Threshold correction: the caption in the case metadata is inverted

Before the chronology, a material correction that affects everything downstream. Case No. 3:15-cv-04307-EMC is not Funai v. Avago — it is LSI Corporation, Agere Systems LLC, and Avago Technologies General IP (Singapore) Pte. Ltd. v. Funai Electric Co., Ltd., Funai Corporation, Inc., P&F USA, Inc., and Funai Service Corporation. Avago/LSI/Agere were the plaintiffs asserting the patents; Funai was the defendant. The docket, the pleadings, and the stipulations all confirm this (e.g., Dkt. 91, 102, 113 on the N.D. Cal. docket, all styled with LSI/Agere/Avago as Plaintiffs). See Justia docket, LSI Corp. v. Funai Electric Co., 5:15-cv-04307.

The pro se Funai v. LSI action is a separate, later case — Funai Electric Co., Ltd. et al. v. LSI Corporation et al., No. 5:16-cv-01210-BLF (N.D. Cal., filed 2016-03-11), an antitrust/FRAND suit. The two are tightly linked (same parties reversed, same patents), so I cover both, but the infringement case you asked about is 15-cv-04307, and it was Avago's suit.

Second correction: the metadata's "filed 2015-09-21" is the date the N.D. Cal. docket opened. The action actually commenced 2012-03-12 in the Central District of California as LSI Corp. v. Funai Electric Co., No. 2:12-cv-02047 (originally before Judge Manuel L. Real). 15-cv-04307 is the transferred successor case. The Google "5:15-cv-04307" reference is just the San Jose division prefix later redesignated to San Francisco (3:15-cv-04307).

Third: U.S. Patent No. 5,870,087 ("MPEG Decoder System and Method Having a Unified Memory for Transport Decode and System Controller Function," inventor Kwok Kit Chau, filed 1996-11-13, issued 1999-02-09, originally LSI Logic) was one of five patents in the case, not the sole patent. The full set: the '087 and '663 patents (MPEG decoding) and the '958, '867, and '148 patents (802.11/Wi-Fi).

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Chronological developments

1. Filing and initial pleadings (2012 – 2015)

2012-03-12 — LSI and Agere file two parallel actions on the same four patents ('087, '958, '867, '663): an ITC complaint (Inv. No. 337-TA-837, instituted 2012-04-17, 77 Fed. Reg. 22803) and a C.D. Cal. district court complaint, No. 2:12-cv-02047, against Funai (and, at the ITC only, MediaTek, Ralink, and Realtek). See ITC Final ID, 337-TA-837; iKnow/STPI case summary.

2012–2013 — The parties stipulate to stay the C.D. Cal. action pending resolution of the ITC investigation. This is the single most consequential early procedural event: it parked the district court case for roughly three years.

2013-07-18 — ALJ David P. Shaw issues the Final Initial Determination in 337-TA-837: Funai's accused products directly infringe claims 1, 5, 7-9, and 16 of the '087 patent and Funai is liable for induced infringement of claims 10 and 11; no infringement of the '663, '958, or '867 patents; no invalidity shown; domestic industry satisfied. This is the only adjudicated infringement finding ever entered on the '087 patent against Funai.

2014-01-06 — Funai and LSI execute a license and settlement agreement covering the '087 and '663 patents: mutual release of liability as of the execution date plus a license to Funai through 2015-09-30. The district court dismisses with prejudice all claims on the '087 and '663 patents. (The '087 patent's term had also run; the Commission noted the '087 and '663 issues were dropped "因專利有效期屆滿及雙方和解" — expiration and settlement.)

2014-03-26 — Commission determination in 337-TA-837: affirms non-infringement of '958/'867, finds the '958 claims invalid, and reverses the ALJ on domestic industry (no articles practicing the '958 patent). Investigation terminated with no violation.

2015-03 (per Funai's later pleading) — The Federal Circuit affirms the ITC's no-violation finding on domestic-industry grounds and declines to reach the liability issues.

2015-06 — LSI/Agere file a first amended complaint in the stayed C.D. Cal. action to (i) add Avago as plaintiff, (ii) add the '148 patent, and (iii) add counts for "Declaratory Judgment for Future Infringement" of the '087 and '663 patents — i.e., re-opening patents that had been dismissed with prejudice, on the theory that the license would expire 2015-09-30. A second amended complaint follows the same month.

2015-09-21 — Case transferred to N.D. Cal.; docketed as 3:15-cv-04307-EMC, assigned to Judge Edward M. Chen (Magistrate Judge Paul Singh Grewal). A parallel Avago case against ASUSTeK, No. 3:15-cv-04525-EMC, was treated as related and later coordinated for claim construction.

2015-10 / 2015-12 — Third amended complaint (Oct. 2015) and fourth amended complaint (Dec. 2015), each re-alleging actual infringement of the '663 patent post-license-expiration, and (per the Dec. 2015 representative-products stipulation) accusing MPEG products of infringing both the '663 and '087 patents.

2015-12-07 — Hearing on Funai's motion to dismiss the third amended complaint. Judge Chen's ruling: induced infringement claim survives (LSI adequately identified Funai's customers as direct infringers and the manner of infringement); willful infringement dismissed with leave to amend as conclusory, particularly as to pre-filing knowledge. (Summarized at Studicata, LSI Corp. v. Funai Elec. Co. (N.D. Cal. 2015).) That is the only substantive merits ruling in 15-cv-04307 I have been able to locate.

2. Pre-trial motions of substance

• Stay pending ITC: granted by stipulation in C.D. Cal. (2012), the defining early motion practice.
• Motion to dismiss (induced/willful infringement): 2015-12-07 hearing; granted in part as to willfulness, denied as to inducement.
• Motion to dismiss the fourth amended complaint (Dkt. 116, filed Jan. 2016): fully briefed — opposition Dkt. 123 (2016-01-28), reply Dkt. 126 (2016-02-04) — but never decided. Avago dismissed the case one day after the reply was filed.
• No motion to transfer, no stay-pending-IPR motion, and no summary judgment motion appear on this docket. There was no IPR on the '087 patent pending during the case's life (the first '087 IPR petitions post-date the dismissal — see §6).
• Claim construction scheduling disputes: the court twice reset the Markman hearing (Dkt. 102, 2015-12-08, setting 2016-05-02/03; Dkt. 115, 2016-01-11, resetting to 2016-05-09/10/13).

3. Claim construction (Markman)

The court entered an Order Regarding Claim Construction Schedule (Dkt. 102, 2015-12-08), coordinating 15-cv-04307 with Avago v. ASUSTeK, 15-cv-04525-EMC. Structure:

• "Common Patents" ('087, '148, '663): 7 terms total, with Funai and ASUS jointly briefing and arguing; term allocation ASUS (2), Funai (2), Plaintiffs (3).
• Deadlines: P.R. 4-1 exchange 2015-12-21; P.R. 4-2 2016-01-11; P.R. 4-3 joint statement 2016-02-05; P.R. 4-4 claim construction discovery close 2016-03-07; opening brief 2016-03-21; joint responsive brief 2016-04-04; reply 2016-04-11.
• Technology tutorial 2016-04-18 (common patents) and 2016-04-19 (non-common); Markman hearing 2016-05-02/03, with 2016-05-06 reserved.

No Markman ruling issued in 15-cv-04307. The case was dismissed in February 2016, before the tutorial and hearing ever occurred. The '087 claim construction that did issue came 20 months later, in the companion antitrust case: Order Construing Claims in U.S. Patent No. 5,870,087, Funai v. LSI, No. 16-cv-01210-BLF, Dkt. 127 (N.D. Cal. 2017-10-23) — which construed claims 1, 10, and 16 of the '087 patent in the course of Funai's declaratory-judgment non-infring

I'll research the docket and counsel of record for this case.

Important: the docket for 3:15-cv-04307 shows the parties reversed from the caption in my case metadata (there, LSI/Agere/Avago were plaintiffs and Funai was defendant). Let me pin down which case matches patent 5,870,087 and who represented Funai.

The docket shows the caption in my metadata is inverted — the '087 patent (MPEG decoder, Kwok Kit Chau) is Avago's patent, and in 3:15-cv-04307 LSI/Agere/Avago were the plaintiffs suing Funai. Let me confirm the appearing counsel from the docket itself, including the complaint and pro hac vice orders.

Threshold issue: the caption in my case metadata is inverted relative to the docket

Before listing counsel, one correction that changes who "plaintiff's counsel" even is:

• What the docket actually says. Case No. 3:15-cv-04307-EMC (N.D. Cal., Judge Edward M. Chen) is captioned LSI Corporation, Agere Systems LLC, and Avago Technologies General IP (Singapore) Pte. Ltd. v. Funai Electric Co., Ltd.; Funai Corporation, Inc.; P&F USA, Inc.; and Funai Service Corporation, filed 9/21/2015. Funai was the defendant; LSI/Agere/Avago were the plaintiffs. (Dkt. 91 signature block; docket summary)
• The '087 patent is Avago's, not Funai's. U.S. Pat. No. 5,870,087 ("MPEG Decoder System and Method Having a Unified Memory for Transport Decode and System Controller Functions," inventor Kwok Kit Chau) is assigned to Avago Technologies General IP (Singapore) Pte. Ltd. and was asserted by Avago/LSI against Funai here. (IPR2017-00520 mandatory notices)
• Funai's own affirmative suit against LSI/Avago was a separate, later case — Funai Elec. Co. v. LSI Corp., No. 16-cv-01210-BLF (N.D. Cal., filed 3/11/2016) — and it was an antitrust/FRAND case, not an '087 infringement case. (docket; Law360 case page)

So I give both sides below: (A) the counsel who actually appeared as plaintiff-side counsel of record in 3:15-cv-04307 (the '087 case), and (B) Funai's counsel, since Funai is the party my metadata labels plaintiff.

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A. Plaintiff-side counsel of record in 3:15-cv-04307 (LSI / Agere / Avago — owner of the '087 patent)

All plaintiff-side appearances were by Kilpatrick Townsend & Stockton LLP. Every stipulation, joint status report, and signature page in the docket identifies this firm as "Attorneys for Plaintiffs LSI Corporation, Agere Systems LLC and Avago Technologies General IP (Singapore) Pte. Ltd."

Sources: Dkt. 91 (11/17/2015 stipulation, full letterhead); Dkt. 112 (12/28/2015 stipulation); Dkt. 86 (10/30/2015 complete counsel list); Dkt. 118 PHV motion.

Practical notes on this team

• No in-house counsel for LSI/Agere/Avago appears on the docket signature blocks; all named appearances are Kilpatrick Townsend. (Avago's parent Broadcom used Akin Gump in the parallel ITC matters, but not here.)
• The case was coordinated for claim construction with Avago's suits against ASUS (3:15-cv-04525-EMC) and Acer (3:15-cv-05427-EMC) under Judge Chen — see the 12/8/2015 consolidated claim construction order. The '087 patent was one of the two "Non-Common Patents in the Funai Case" (with the '959 patent) in that schedule.
• The same Kilpatrick team (Sipiora, Holohan) also defended Avago/LSI in Funai's later antitrust suit, 16-cv-01210-BLF — see the 3/28/2017 Vitallaw report listing "David E. Sipiora (Kilpatrick) for LSI Corp. and Agere Systems LLC."

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B. Funai's counsel (the party my metadata names as plaintiff)

If the intent was "counsel for Funai," those attorneys appeared as defense counsel in 3:15-cv-04307:

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

The docket reveals an important caption issue — let me dig into the full docket sheet and attorney appearances.

Now let me verify the specific defense attorneys and check whether the caption in the metadata maps to a different related case.

Threshold issue: the caption in the case metadata is inverted relative to the docket

Before naming counsel, I have to flag a substantive discrepancy, because it changes who "the defendant(s)" actually are.

The docket for No. 3:15-cv-04307-EMC (N.D. Cal., Judge Edward M. Chen) is captioned:

LSI Corporation, Agere Systems LLC, and Avago Technologies General IP (Singapore) Pte. Ltd. v. Funai Electric Co., Ltd.; Funai Corporation, Inc.; P&F USA, Inc.; and Funai Service Corporation

That is, Avago was a plaintiff (and later a counterclaim-defendant), not a defendant, in 3:15-cv-04307. See Dkt. 91 (Nov. 17, 2015), signed by Kilpatrick Townsend "Attorneys for Plaintiffs LSI Corporation, Agere Systems LLC and Avago Technologies General IP (Singapore) Pte. Ltd." and by Baker & Hostetler "Attorneys for Defendants Funai Electric Co., Ltd.; Funai Corporation, Inc.; P&F USA, Inc., and Funai Service Corporation" (Dkt. 91/92).

The "Funai v. Avago" alignment in your metadata most closely matches a separate, later N.D. Cal. case, No. 5:16-cv-01210 (Judge Beth Labson Freeman), Funai Electric Co., Ltd. et al. v. LSI Corporation et al. — where Funai was plaintiff and LSI/Agere/Avago were defendants. Because of that, I've given you both defense teams below rather than guess which side you need.

Also note: the case was closed on Feb. 5, 2016 by stipulated dismissal (Dkt. 127), after plaintiffs voluntarily dismissed their claims (Dkt. 125, Feb. 4, 2016). Nothing in the record suggests any appearance was sealed.

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A. Counsel of record for the actual defendants in 3:15-cv-04307 (the Funai entities)

All appearances were by Baker & Hostetler LLP, which served as Funai's national patent litigation counsel (and had represented Funai in TV Interactive Data Corp. v. Sony and later in ITC Inv. No. 337-TA-1047).

Cited sources: Dkt. 91/92 (Nov. 17, 2015); Dkt. 103 and Dkt. 112 (Dec. 2015) service lists, which enumerate "Kevin W. Kirsch (CA SBN 166184) … David A. Mancino (pro hac vice) … Scott R. Stanley (pro hac vice) … Jared A. Brandyberry (pro hac vice)" as "Attorneys for Defendants Funai Electric Co., Ltd.; Funai Corporation, Inc.; P&F USA Inc.; and Funai Service Corp." (Dkt. 103, Dkt. 112)

Caveat on additional names: Third-party docket aggregators (UniCourt's party/attorney table for this case) also list Takaaki Nagashima, Alexander P. Ott, and R. Scott Feldmann among "Defendant Attorneys." I was not able to verify their firms, offices, or roles from a primary docket entry or firm page before hitting my research limit — but based on their appearance in the ITC 337-TA-1047 Funai team, Nagashima and Ott are plausibly Baker & Hostetler. Treat those three as unconfirmed; they do not appear as signatories on any of the 3:15-cv-04307 filings I reviewed.

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B. Counsel for Avago (the party your metadata labels "defendant")

(i) As plaintiff / counterclaim-defendant in 3:15-cv-04307:

Source: Dkt. 91 at 1 (Kilpatrick Townsend caption block and signature), Dkt. 92 (order), Dkt. 112 at 1.

(ii) As named defendant in the later Funai-filed case, No. 5:16-cv-01210 (N.D. Cal.):
Minute entries identify Avago/LSI's defense counsel as David E. Sipiora and Kent T. Dallow, both of Kilpatrick Townsend & Stockton (Denver) — e.g., the Apr. 6, 2017 further CMC ("Defendant Attorney: Kent T. Dallow, David E. Sipiora") and the Oct. 13, 2017 Markman hearing. Dallow (Univ. of Denver J.D. 2011; later at Adsero IP and now Quarles & Brady) was a Kilpatrick associate during that period. That case was dismissed with prejudice by stipulation on Oct. 26, 2017 (Dkt. 128) following the global Avago–Funai settlement memorialized in the ITC 337-TA-1047 proceeding, which covenanted patents including U.S. Pat. No. 5,870,087 — the patent in your case metadata.

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C. Practical takeaways for a reader of this docket

1. Do not rely on the metadata caption. For No. 3:15-cv-04307, the defense side is Baker & Hostetler (Kirsch) for Funai; Kilpatrick Townsend (Sipiora) was adverse to Funai as Avago's counsel. The "Funai v. Avago" framing belongs to No. 5:16-cv-01210.
2. The "5:15-cv-04307" number in the Google family page is a mis-index of the same San Francisco case (3:15-cv-04307); there is no separate San Jose 5:-numbered 2015 case with this filing date.
3. The '087 patent was never adjudicated on the merits in 3:15-cv-04307 — the case ended by voluntary dismissal/stipulated dismissal in Feb. 2016, and the patent was later swept into the 2017 Avago–Funai covenant not to sue alongside U.S. Patent Nos. 6,430,148; 6,452,958; 6,707,867; 6,982,663; 7,310,104; 7,342,967; 7,590,059; 8,068,171; and 8,284,844.
4. No sealed or non-appearing counsel issue — all appearances above are from public filed documents.

Sourcing note: Everything in Section A and B(i) is grounded in filed documents (Dkts. 91, 92, 103, 112, 127) available via Justia's RECAP mirror. The 5:16-cv-01210 details come from the Justia docket's minute-entry text. The biographical notes on Dallow and the ITC 337-TA-1047 rosters come from public ITC filings and firm/lawyer-directory profiles. I could not independently confirm Nagashima, Ott, or Feldmann's firms, and I did not have a chance to pull the underlying PACER docket directly, so the attorney list may be incomplete for any late-appearing counsel.