In re MediaTek, Inc.

Overview

The parties. Both sides were large Asian operating companies, not NPEs or universities. MediaTek, Inc. (also spelled MediaTek Inc.) is a Taiwanese fabless semiconductor designer based in Hsinchu, founded in 1997, whose core business in this era was optical-storage controller chips and integrated audio/video decoder chipsets for DVD players/recorders, digital TVs, set-top boxes and cameras. Sanyo Electric Co., Ltd. (Osaka) is the Japanese consumer-electronics manufacturer; its U.S. affiliate Sanyo North America Corp. (San Diego) was the domestic defendant. In the California action Sanyo also sued MediaTek's customers ASUSTek Computer and ASUS Computer International. In the Federal Circuit proceeding MediaTek appears as petitioner and Sanyo Electric as respondent. See In re MediaTek, Inc., Misc. Docket No. 844, 230 F. App'x 970 (Fed. Cir. 2007) (nonprecedential order); Justia docket, No. 07‑M844 (https://dockets.justia.com/docket/circuit-courts/cafc/07-M844); Sanyo/MediaTek settlement release, CDRinfo (https://cdrinfo.com/d7/content/sanyo-and-mediatek-reach-settlement-patent-infringement-litigation).

The technology and patents. Two mirrored suits were filed. (1) MediaTek, Inc. v. Sanyo Electric Co. and Sanyo North America Corp., No. 6:05‑cv‑323 (E.D. Tex., Tyler Div.), filed Aug. 31, 2005, asserted three MediaTek patents: U.S. 5,751,356, "Video/Audio Signal Coding System and Method" (issued May 12, 1998) — an MPEG-based video/audio encoder that generates header and picture bit-length ("data number information") to offload the processor; U.S. 5,867,819, "Audio Decoder" (Feb. 2, 1999) — frequency-domain down-mixing and IMDCT circuitry for multi-channel audio with reduced memory; and U.S. 6,118,486, "Synchronized Multiple Format Video Processing Method and Apparatus" (Sept. 12, 2000) — multi-format video processing for digital TVs/set-top boxes. Accused products included Sanyo DVD recorders and players, video camcorders and digital cameras (e.g., model VPC‑C5), DTVs, set-top boxes and the integrated circuits inside them, with willfulness, contributing/inducing infringement, treble damages and injunctive relief pleaded. See Second Amended Complaint (RPX Insight, https://insight.rpxcorp.com/litigation_documents/[2377627](/patent/2377627)). (2) Sanyo's parallel California action, Sanyo Electric Co. v. MediaTek Inc., No. CV 05‑2580 RSWL (JTLx) (C.D. Cal.), asserted Sanyo's CD‑ROM-chip patents against MediaTek and ASUS — U.S. 5,818,801 is documented in the Aug. 17, 2006 claim-construction/MSJ order (https://ipmall.law.unh.edu/sites/default/files/hosted_resources/Markman/pdfFiles/2006.08.17_SANYO_ELECTRIC_CO_LTD_v._MEDIATEK.pdf).

Procedural posture — what the Federal Circuit case actually was. 07‑M844 is not an appeal on the merits and construed no patent claim. MediaTek petitioned for a writ of mandamus (petition filed Feb. 7, 2007) directing the Central District of California (Judge Ronald S. W. Lew) to vacate orders compelling production of attorney-client communications. Because MediaTek relied on advice of counsel to defeat Sanyo's willfulness charge, the magistrate judge found (on deposition testimony) that the withheld opinions in fact addressed infringement/validity of the patents in suit and ordered them produced; the district court affirmed. MediaTek argued the opinions concerned non-accused chips and unimplemented designs, that it did not rely on them, and that production would chill design-arounds, and alternatively asked the court to hold the petition pending In re Seagate Technology, Misc. No. 830. The panel (Bryson, Friedman (Sr.), Prost) denied both the petition and the deferral motion by order dated March 27, 2007 and filed April 3, 2007, holding MediaTek had no "clear and indisputable" right to relief because willfulness turns on the totality of circumstances and design-around evidence may

I'll research this matter across the Federal Circuit, district court docket, and PTAB records.

The mandamus is part of a two-court litigation family. Let me pin down the underlying district court cases, docket events, and final disposition.

Now let me nail down the California action, the transfer fight, settlement/dismissal dates, and any reexamination history.

Threshold clarification: what this docket actually is

In re MediaTek, Inc., Misc. Docket No. 844, 230 F. App'x 970 (Fed. Cir. Apr. 3, 2007) (nonprecedential; Bryson, Friedman (Sr.), Prost, JJ.) is not an infringement appeal. It is a petition for a writ of mandamus asking the Federal Circuit to direct the U.S. District Court for the Central District of California to vacate magistrate/district-court orders compelling production of attorney–client communications. Opinion PDF; docket.

Two consequences for the case summary:

1. The '356 patent is a family-level link, not the patent at issue in Misc. 844. The order states the mandamus target was C.D. Cal., where Sanyo was plaintiff and the asserted patents were Sanyo's CD-ROM decoder patents (U.S. 5,499,252 and 5,818,801 per the C.D. Cal. record below). The '356 patent (and '819, '486) were asserted by MediaTek against Sanyo in E.D. Tex., No. 6:05-cv-323. The mandamus record therefore concerns opinion-of-counsel documents spanning "the patents in suit" in the California action.
2. "Filed 2007-02-07 / terminated 2007-04-03" are the mandamus dates, not the litigation's. The underlying dispute ran from April 2005 to June 2007.

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Chronology of the litigation family

1. Filing and initial pleadings (2005)

Pleadings content (E.D. Tex.): MediaTek alleged literal and DOE infringement plus willfulness, seeking treble damages, § 285 fees, and an injunction against DVD recorders, camcorders, digital cameras and other mobile devices (e.g., Model DRW-1000). Sanyo answered and counterclaimed for declaratory judgment of noninfringement/invalidity — a standard mirror-image posture; I found no reported ruling on a Rule 12 motion in either case.

2. Pre-trial motions of substance

• 2006-07-27 / 2006-08-17 — C.D. Cal. summary judgment (Sanyo's '801 patent). MediaTek moved for summary judgment of noninfringement of claim 5 of U.S. 5,818,801, arguing "allows … when" meant the microprocessor must enable audio playback every time audio data is present. Judge Lew denied the motion, construing "allows" as "to permit" and "when" as "at the time," and found genuine issues of material fact on literal infringement and DOE. He also denied Sanyo's embedded request for a finding of infringement as a matter of law. Order, 2006-08-17
• No motion to dismiss, transfer, or stay appears in the record I could verify for the Texas case. Notably, the race between the two fora (California filed first; Texas reached trial first) was managed through case-management/scheduling orders rather than a § 1404(a) fight — MediaTek's counsel later described securing a Texas trial date **four months ahead of the California

I'll research this Federal Circuit miscellaneous/mandamus proceeding and the underlying litigation to identify counsel.

The case metadata needs a correction that affects who "plaintiff's counsel" even is here — let me pin down the underlying dockets and the Federal Circuit filing counsel.

Now let me confirm the E.D. Tex. plaintiff's team and find the Federal Circuit docket entries for Misc. No. 844.

Threshold correction: who the "plaintiff" is in 07-M844

Before naming anyone, the posture in the metadata needs flagging, because it changes whose counsel you're asking about:

• 07-M844 / Misc. Docket No. 844 is not an infringement case. It is MediaTek's petition for a writ of mandamus, denied on April 3, 2007. In re MediaTek, Inc., 230 F. App'x 970 (Fed. Cir. 2007) (Bryson, Friedman (Sr.), Prost, JJ.) (opinion; slip order PDF). MediaTek appears as petitioner, not plaintiff; Sanyo Electric Co., Ltd. opposed.
• The orders MediaTek asked the Federal Circuit to vacate were entered by the U.S. District Court for the Central District of California — i.e., in Sanyo Electric Co. v. MediaTek, No. CV 05-2580 RSWL (JTLx), where MediaTek was the defendant. So in the proceeding that generated this appellate number, MediaTek's litigation team was a defense team, plus a separate team from the parallel E.D. Tex. case where MediaTek actually was plaintiff.

Because of that split, I give you both teams, with sourcing, and I flag what I could not verify.

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A. Federal Circuit, Misc. No. 844 — petitioner's counsel of record: NOT VERIFIABLE from available sources

I could not retrieve the Federal Circuit docket sheet for Misc. 844 (PACER is paywalled, and CourtListener's RECAP does not carry this 2007 miscellaneous appellate docket), and the nonprecedential order itself does not carry a counsel block. I therefore cannot name the attorneys who signed the petition or entered appearances at the Federal Circuit, and I will not guess. The only reasoned inference available is that the petition would have been prosecuted by the C.D. Cal. trial team below (Section C), since the challenged discovery orders issued there — but treat that as an inference, not a docket-verified fact. No in-house MediaTek counsel is identified anywhere in the retrieved materials.

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B. MediaTek, Inc. v. Sanyo Electric Co., No. 6:05-cv-323-LED (E.D. Tex.) — MediaTek as plaintiff; '356 patent asserted here

This is the case where MediaTek is the plaintiff and where U.S. Patent No. 5,751,356 was actually in suit (with the '819 and '486 patents). MediaTek's Second Amended Complaint pleads ownership of the '356 patent by assignment (complaint); the '356 claims were construed by Judge Leonard Davis on March 26, 2007 (Dkt. 344).

Important gaps on this team:

• Beyond Korniczky, the E.D. Tex. appearance list is not established in the materials I could retrieve. Sheppard Mullin's standard staffing on comparable matters in that era included Daniel N. Yannuzzi and Martin Bader (San Diego), but I have only confirmed those names from a different Sheppard Mullin E.D. Tex. filing (a 2010 case), not from the 6:05-cv-323 docket — so I am not attributing them to this case.
• A separate E.D. Tex. filing in the same docket shows a later, related MediaTek-favorable discovery order described in Korniczky's Law360 interview; the docket sheet (Dkt. 1–400+) was not retrievable in full.

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C. Sanyo Electric Co. v. MediaTek, No. CV 05-2580 RSWL (JTLx) (C.D. Cal.) — MediaTek as defendant; this is the case the mandamus arose from

The August 17, 2006 opinion by Judge Ronald S.W. Lew states the appearances verbatim, and is the best-sourced counsel list in the family (slip op.):

Caveats I want to be explicit about:

• The opinion lists appearances as of August 2006; it does not designate lead vs. of-counsel, so the "lead"/"team" labels above are my inference from the caption order and the attorneys' later bios, not a docket designation.
• I could not pull the C.D. Cal. docket sheet (05-2580 RSWL) or the related consolidated C.D. Cal. actions (e.g., No. 2:06-cv-01225) to confirm pro hac vice orders, later substitutions, or whether additional WSGR attorneys appeared after August 2006. The 2007 discovery/willfulness dispute underlying the mandamus (magistrate-judge order compelling production of advice-of-counsel opinions, affirmed by Judge Lew) is described in the Federal Circuit's order, but the counsel who argued that discovery motion in 2007 is not identified in any source I retrieved.
• No sealed-material issue is apparent, but the underlying advice-of-counsel opinions at the heart of Misc. 844 were the subject of a protective/discovery dispute, and the mandamus papers themselves are not available online.

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D. Do not confuse: this name is adverse counsel

Patricia A. Martone (Ropes & Gray, New York) appears in some bios as "lead trial counsel in … MediaTek v. Sanyo Electric Co., No. 6:05 CV 323 (LED) (E.D. Tex.); Sanyo Electric Co. v. MediaTek, No. 05-2580 (RSWL) (C.D. Cal.)" (Justia profile). The 2006 C.D. Cal. opinion lists Ropes & Gray — Martone, Neal K. Dahiya, Sona De, Robert W. Morris, Hiroyuki Hagiwara, Hojin Chang — **for Plaintiff Sany

I'll research this mandamus proceeding and the underlying litigation to identify counsel of record.

Let me pull the Federal Circuit docket details and identify the underlying district court case.

Now let me identify the district court docket and counsel on both sides.

Bottom line up front

"In re MediaTek" (Fed. Cir. Misc. No. 844, 230 F. App'x 970) is not an infringement suit and has no "defendant" in the technical sense — MediaTek was the petitioner and Sanyo Electric Co., Ltd. the respondent in a mandamus petition over a privilege/willfulness discovery order. The infringement action it arose from is Sanyo Electric Co., Ltd. v. MediaTek Inc., et al., No. CV 05-2580 RSWL (JTLx) (C.D. Cal.) (Judge Ronald S.W. Lew), where MediaTek and its co-defendants were the defendants. So the "defendant's counsel" in this litigation family means MediaTek's defense team.

One flag before the roster: the case metadata lists U.S. Patent 5,751,356 (MediaTek's "Video/Audio Signal Coding System and Method" patent). That patent was asserted by MediaTek as plaintiff in the parallel E.D. Tex. action, MediaTek, Inc. v. Sanyo Electric Co., Ltd., No. 6:05-cv-00323 (E.D. Tex., Judge Leonard Davis). The C.D. Cal. case that generated the mandamus involved Sanyo's patents (e.g., the '801 patent). I note both because "defendant" means opposite parties in the two suits.

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Defendants' counsel (MediaTek side) — Sanyo v. MediaTek, No. CV 05-2580 RSWL (JTLx)

Sourced from the caption block of the court's Aug. 17, 2006 order (Dkt. entry reproduced in the published Markman/MSJ order, Sanyo Electric Co. Ltd. v. MediaTek Inc., 2006 WL 2504430-style slip op. at 1):
https://ipmall.law.unh.edu/sites/default/files/hosted_resources/Markman/pdfFiles/2006.08.17_SANYO_ELECTRIC_CO_LTD_v._MEDIATEK.pdf

No in-house counsel for MediaTek appears in the orders or the Federal Circuit cc line; none is identifiable from public sources.

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Plaintiff/respondent's counsel (Sanyo side) — included because they are the only other counsel of record in the CAFC proceeding

The Federal Circuit order's cc line names exactly two attorneys — Otteson (MediaTek) and Patricia A. Martone — indicating they were the counsel of record in Misc. No. 844. Martone argued/opposed for Sanyo.

• Patricia A. Martone — lead counsel for Sanyo, Ropes & Gray LLP, New York, NY (formerly a partner at Fish & Neave before its 2005 combination with Ropes & Gray); veteran life-sciences/electronics patent trial lawyer.
• Neal K. Dahiya, Sona De, Robert W. Morris, Hojin Chang, Hiroyuki Hagiwara — Ropes & Gray LLP, New York, NY (Hagiwara's presence likely reflects Japanese-language document/witness work for a Japanese client).
• Craig N. Hentschel and Naomi A. Carry — Dykema Gossett, Los Angeles, CA, local counsel for Sanyo.

(Source for Sanyo's side: same Aug. 17, 2006 order caption block.)

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Confidence and gaps — please read

• Well sourced: the Aug. 17, 2006 C.D. Cal. order appearance block (all names, firms, cities above), the Federal Circuit order's cc line (Otteson and Martone only), Justia's docket summary for No. 07-M844 (Petitioner MediaTek, Respondent Sanyo; "Represented By: OTTESON, JAMES C."), and Otteson's Dechert bio (which independently confirms he represented MediaTek against Sanyo in the C.D. Cal. case).
• Not verified: I could not open the actual PACER docket sheet for No. 07-M844 or for CV 05-2580 in this session (PACER is paywalled; free mirrors showed only partial data). Additional counsel may have entered appearances in the mandamus after February 2007 that are not reflected in the April 3 order's cc line.
• Unverified "et al." defendants: the caption reads "MediaTek Inc., et al." I could not confirm from an authoritative source the full list of named defendants (commonly MediaTek Inc. and a U.S. affiliate such as MediaTek USA Inc.), so I am not asserting specific entity names. Nothing in the record I reviewed suggests separate counsel for any co-defendant.
• Roles are inferred from the caption ordering, the Federal Circuit cc line, and the Otteson firm bio — the dockets do not formally label "lead" vs. "of counsel."
• Nothing here is sealed-related: the privilege dispute involved documents produced under the magistrate judge's order; the counsel identifications themselves come from public orders, not sealed filings.