Litigation

LSI Corporation et al. v. Funai Electric Co., Ltd. et al.

terminated

337-TA-837

Filed
2012-03-12
Terminated
2014-03-26

Patents at issue (4)

6452958
5870087
6707867
6982663

Summary

ITC Section 337 investigation brought by LSI and Agere against Funai, MediaTek, Ralink, and Realtek. The Commission found no violation as to any asserted claim of the '958 patent and terminated the investigation in March 2014.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this investigation before drafting.

Key legal developments & outcome

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

LSI Corp. / Agere Systems v. Funai, MediaTek, Ralink & Realtek — Inv. No. 337-TA-837

Chronology of key legal developments

Scope note: This was a Section 337 investigation at the USITC, not a district-court case, so the procedural vocabulary maps differently: there was no "answer/counterclaim" phase (counterclaims are unavailable in § 337), no jury, and no JMOL/new-trial practice. The functional equivalents are (i) responses to the complaint and notice of investigation, (ii) pre-hearing dispositive and evidentiary motions before the ALJ, (iii) petitions for Commission review of the ALJ's initial determination ("ID"), and (iv) appeal to the Federal Circuit. The genuinely parallel litigation was Realtek's own N.D. Cal. FRAND contract suit, which materially interacted with the ITC case and is covered below.

1. Filing and institution (2012)

Date Event
2012-03-12 LSI Corporation (Milpitas, CA) and Agere Systems Inc. (Allentown, PA) file the § 337 complaint against Funai (4 entities), MediaTek (3), Ralink (2) and Realtek, asserting U.S. Patent Nos. 5,870,087 ('087, memory/data storage), 6,452,958 ('958, CCK modulation – alleged 802.11-essential), 6,707,867 ('867, 802.11-essential) and 6,982,663 ('663, H.264/ITU-essential). Requested relief: limited exclusion order and cease-and-desist orders.
2012-03-28 Amended complaint filed.
2012-04-11 Commission institutes investigation, 77 Fed. Reg. 22803 (Apr. 11, 2012), naming all ten respondents. OUII (Staff) did not participate — no Commission investigative attorney was a party. Assigned to ALJ David P. Shaw.
2012-05-10 ALJ target-date order (Order No. 3) sets a 16-month target date of 2013-08-19.

Sources: USITC News Release 12-036 (Apr. 11, 2012), https://www.usitc.gov/press_room/news_release/2012/er0411ll107.htm; ITC IDS docket sheet for 337-837, https://ids.usitc.gov/case/3370/investigation/3370.

Initial pleading practice: Respondents filed responses to the complaint and (later) to LSI's second amended complaint, contesting infringement, validity, domestic industry, and asserting RAND/FRAND breach, equitable estoppel, and patent-unenforceability defenses based on Agere's 2003–2004 IEEE and ITU assurance letters. No counterclaims were possible at the ITC; the affirmative FRAND claim was instead brought by Realtek in district court (see § 4).

2. Case-narrowing motions and target-date extensions (2012–2013)

Date Event
2012-06-29 Realtek files Realtek Semiconductor Corp. v. LSI Corp. & Agere Systems, No. 5:12-cv-03451-RMW (N.D. Cal.) — a declaratory/contract action alleging LSI breached its IEEE FRAND commitments by seeking ITC exclusion relief before making a RAND offer. This becomes the central parallel proceeding.
2012-10-25 Order No. 47 extends the target date three months, to 2013-11-18; Commission declines review 2012-11-07.
2013-01-24 Order No. 57: ALJ grants LSI's motion to terminate the investigation as to MediaTek and Ralink based on withdrawal of all allegations (a de facto settlement/license). Commission declines review 2013-02-13.
2013-02-19 Funai and Realtek jointly move to terminate as to specified claims — '958 claims 1-7, 10-11, 30, 36; '867 claims 1, 4-7, 9-19, 21, 36, 44-45, 57, 62-74; '663 claim 10. LSI does not oppose.
2013-03-07 Order No. 72 grants the partial termination. Commission declines review 2013-03-26 (see Notice, https://www.usitc.gov/secretary/fed_reg_notices/337/337_837_notice03262013sgl_0.pdf).

3. Evidentiary hearing and the ALJ's Final ID (2013)

  • 2013-04-02 → 2013-04-10: Pre-hearing conference and the evidentiary hearing before ALJ Shaw (Hearing Tr. 1–2189); post-hearing briefs capped at 600 pages, replies at 200.
  • Key evidentiary ruling: The ALJ struck LSI's late infringement evidence on certain accused products because it was served the same day pre-hearing briefs were due. The Commission later affirmed that exclusion — a strategically decisive ruling, since it removed LSI's proof as to several accused products.
  • Claim construction ("Markman" analogue): There was no separate Markman order of the kind used in district court; claim construction was resolved in the Final ID. The dispositive term was "code" in the '958 claims ("a modulator that chooses a code having N chips…"), construed as "a sequence of chips representing a real value" — i.e., excluding complex codes. LSI's broader proposed construction (covering complex codes) was rejected, and this construction drove the non-infringement finding because the accused CCK codewords represent complex values. (The ITC IDS docket shows no Markman hearing date recorded for this investigation.)

Final Initial Determination — 2013-07-18:

  • Violation found only on the '087 patent: claims 1, 5, 7-11 and 16; Funai's accused products directly infringed claims 1, 5, 7-9 and 16, and Funai induced infringement of claims 10-11. This is the non-standard-essential patent.
  • No violation as to any asserted claim of the '958, '867 and '663 patents.
  • Asserted claims not shown invalid; **domestic industry

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 investigation across multiple angles.

Primary sources dominate so far. Let me search specifically for press coverage.

Good — real press coverage emerging. Let me find mainstream and trade coverage.

Press and analyst coverage — Inv. No. 337-TA-837

Bottom line: the ITC investigation itself generated very little standalone news coverage. I searched the caption, the party names, each patent number, and the outcome from multiple angles and did not retrieve any article on this investigation from Reuters, Bloomberg/Bloomberg Law, Law360, Ars Technica, The Verge, The Wall Street Journal, IPWatchdog, Patently-O, EFF Deeplinks, or JD Supra. What the press did cover — heavily, in the trade and legal-analyst press — was the parallel N.D. Cal. FRAND case, Realtek v. LSI, which outlets treated as the story and in which the ITC investigation appears mainly as background. The most substantive contemporaneous pieces I could actually retrieve are a Reed Smith-authored trial report in IP Today, a firm newsletter carried on Lexology, posts on Essential Patent Blog, and two Chinese-language industry write-ups from Taiwan's STPI/"iKnow" service (2012 complaint analysis; 2014 verdict analysis).

On the numbers, the reporting is consistent and specific. IP Today reported on 2014-02-27 that Judge Whyte's May 20, 2013 summary-judgment order found LSI had breached its RAND obligation by filing the ITC complaint days after a cease-and-desist letter, and that the court enjoined LSI from enforcing any ITC exclusion order; it reported that LSI at trial asked for 0.185% per patent (0.37% combined), and that the jury awarded Realtek 0.12% on the '958 patent and 0.07% on the '867 patent — 0.19% combined, "nearly half the total royalty rate sought by LSI" — plus $3.825 million in fees incurred defending the ITC case. iKnow framed the same result as LSI's Wi-Fi royalty falling from an original 5% of end-product price to 0.19%, and did the per-chip math: roughly US$0.19–0.33 cents per Wi-Fi chip at chip prices of $1–$1.74. On the ITC side, the Lexology 337 update reported that the Commission terminated the investigation for no violation, affirming non-infringement of the '958 patent while reversing the ALJ on validity and domestic industry. No outlet reported any damages sought or awarded in the ITC proceeding itself — consistent with the ITC's prospective-relief-only jurisdiction — and I found no reporting of the terms of the '087/'663 Funai settlement, which the Commission's notice describes only as a "settlement agreement."

The significance framing in the press is almost entirely about FRAND, not about the ITC merits. IP Today called it the first California trial in which jurors decided licensing terms for declared standard-essential patents, and quoted Reed Smith's Steven S. Baik saying "we believe these royalties are the lowest ever to be set for comparable technologies related to declared standard essential patents" and "True RAND rates should be even lower; and, as a whole, the industry must continue to hold standards essential patent holders accountable to their RAND commitment," adding that "patent litigants know there can be repercussions in U.S. courts for pursuing sue-first-for-injunction-and-[license-later]." That piece also asserted the case "has been closely watched by industry leaders, especially the manufacturers of end products that incorporate WiFi technology" and characterized Realtek's win as turning on royalty-base arguments (end-product price versus chip price) and 'royalty stacking'/hold-up. Essential Patent Blog (David Long, 2014-06-16) is the most careful analyst account: it reported that Judge Whyte denied both sides' JMOL motions, denied Realtek's permanent injunction because "the ITC's Final Determination of no domestic industry, invalidity, and no infringement extinguishes the likelihood of immediate irreparable harm," but granted modified declaratory relief — explicitly reasoning that the threat of an exclusion order had become too speculative because LSI would need Federal Circuit reversal on three issues, an exclusion order on remand, and presidential acquiescence.

Where accounts differ, or go beyond the record: (1) The "first jury ever" claim is stated more broadly by Lexology ("first time a jury has made a FRAND royalty rate determination") than by IP Today, which limits it to the first such trial "in California" — a meaningful distinction given Judge Robart's earlier bench ruling in Microsoft v. Motorola. (2) The Lexology update contains a plain date error, stating the ITC terminated "on March 4, 2013" — the Commission's determination was in March 2014. (3) Dates in the reporting and metadata diverge: press accounts date the Commission's decision to 2014-03-04, the Federal Register notice issued 2014-03-10, and the case metadata gives termination as 2014-03-26 — these appear to be determination date, publication date, and formal closure, but the record I retrieved does not reconcile them. (4) The Reed Smith/Finnegan/McDermott materials are firm marketing, not independent journalism — e.g., Finnegan and McDermott both characterize the outcome as a complete defense win; useful for confirmation of result and representation, not for neutral assessment. (5) I found no press coverage at all of the March 20, 2015 Federal Circuit affirmance (LSI Corp. v. ITC, 604 F. App'x 924);

Sources

Plaintiff representatives

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

I'll research the counsel of record for the complainants in this ITC investigation.

Good initial hit. Let me dig deeper into the docket, Federal Circuit briefs, and firm records.

Let me find primary-source counsel listings and confirm the full Kilpatrick team.

Counsel of Record for the Complainants (LSI Corp. and Agere Systems LLC)

Bottom line

Two firms staffed the complainants' side: Foster, Murphy, Altman & Nickel, PC (a Washington, D.C. Section 337 boutique that served as the ITC-facing counsel) and Kilpatrick Townsend & Stockton LLP (the substantive/lead trial team, run out of its Denver office). The Commission's public notices and the Federal Circuit opinion do not themselves print an appearances list, so the roster below is reconstructed from a contemporaneous government-sponsored study of the investigation (Taiwan IPO, 2014) that reproduced the parties' litigation teams, cross-checked against Kilpatrick's own experience disclosures and later court filings in the follow-on California litigation where the same team appeared for LSI/Agere.

Attorney roster

Name Role Firm / office Notes
David F. Nickel Lead counsel; ITC counsel of record Foster, Murphy, Altman & Nickel, PC — Washington, D.C. Designated the complainants' lead (flagged with the "leader" marker in the IPO team chart, and listed as the complainants' representative of record in that study's case-summary table). The firm is a Section 337 specialty boutique; the IPO report credits it with participation in roughly 130 ITC investigations (~20% of all § 337 cases since 1974).
David E. Sipiora Lead trial counsel (Kilpatrick team) Kilpatrick Townsend & Stockton LLP — Denver, CO First-chair patent trial lawyer; Co-Chair of KTS's Patent Litigation Group 2011–2016; lead counsel in more than a dozen ITC investigations; Chambers USA Tier 1 (IP, Colorado); retired from the firm in April 2020. Kilpatrick's own experience page lists 337-TA-837 among his representations of LSI/Agere. He also served as lead counsel for LSI/Agere/Avago in the follow-on N.D. Cal. case, LSI Corp. v. Funai Elec. Co., No. 3:15-cv-04307-EMC.
Kristopher L. Reed Team member (senior associate/partner) Kilpatrick Townsend & Stockton LLP — Denver, CO Continued as LSI/Avago counsel after the investigation, including signature blocks in the N.D. Cal. Funai case and a 2019 cert-stage certificate of service for LSI/Avago in the Supreme Court (No. 19-337).
Matthew C. Holohan Team member Kilpatrick Townsend & Stockton LLP — Denver, CO Same continuity — signed stipulations as "Attorneys for Plaintiffs LSI Corporation, Agere Systems LLC" in No. 3:15-cv-04307-EMC.
Kenneth S. Chang Team member Kilpatrick Townsend & Stockton LLP — Denver, CO (California bar, SBN 211925) Name is partially OCR-truncated in the IPO chart ("Kenneth S. ___") but matches the LSI/Agere/Avago signature block in the related N.D. Cal. litigation, which lists Sipiora, Chang, Reed and Holohan together.
Jeffrey M. Connor Team member Kilpatrick Townsend & Stockton LLP — office not stated in source Listed on the complainants' team in the IPO chart only; I could not independently corroborate his specific role or office in this investigation.
Laura K. Mullendore Team member Kilpatrick Townsend & Stockton LLP — office not stated in source Same caveat — single-source listing.
Jordan Trent Jones Team member Kilpatrick Townsend & Stockton LLP — office not stated in source Same caveat — single-source listing.
Michael Kirby, Jr. Not an attorney — senior paralegal Foster, Murphy, Altman & Nickel, PC — Washington, D.C. Included here only to prevent mis-listing; the IPO chart identifies him expressly as a senior paralegal.

Role division between the two firms

  • Foster Murphy carried the ITC-side role — the § 337 procedural docket, the Commission-facing advocacy on remedy, public interest and bonding, and the RAND/domestic-industry briefing during the Commission's October 2013–January 2014 review. Its lead, David Nickel, is the individual the IPO study treats as the complainants' attorney of record.
  • Kilpatrick Townsend is described in that same study as LSI's principal retained firm and supplied the trial team for the July 2013 evidentiary hearing before ALJ David P. Shaw, plus the technical/claim-construction work on the '087, '958, '867 and '663 patents.

Caveats and sourcing limits

  • No in-house counsel identified. Nothing in the public record I could retrieve names LSI or Agere legal-department personnel who appeared in the investigation. I am not going to guess at names.
  • The roster is not from an EDIS filing. The authoritative source would be the notices of appearance and the appearances page of the ALJ's final initial determination in EDIS (Inv. No. 337-TA-837). I was working from secondary reproductions; if you need litigation-grade confirmation, pull the July 18, 2013 final ID and the complaint's signature pages from EDIS.
  • One name unresolved. The IPO chart's final entry for the Kilpatrick team is truncated to "Jonathan D. ___"; I could not resolve it and have not guessed.
  • Appeal counsel unverified. The Federal Circuit affirmed on March 20, 2015, LSI Corp. v. ITC, 604 F. App'x 924 (Fed. Cir. 2015), No. 2014-1410, but the retrieved opinion text does not include a counsel block. It is likely the same two firms, but I have not confirmed the appellate appearances.
  • Minor date discrepancy in a source, flagged: Kilpatrick's Sipiora bio page describes 337-TA-837 as "commenced 2011," which conflicts with the authoritative institution date of April 11, 2012 (complaint filed March 12, 2012; 77 Fed. Reg. 22803). The case metadata governs.

Sources

Defendant representatives

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

I'll research counsel of record for the respondents in this ITC investigation. Note up front: § 337 investigations don't run through PACER — filings are on the ITC's EDIS system and the Commission's own docket — so I'll search those sources plus firm announcements and press coverage.

The Taiwanese TIPO research report appears to reproduce the actual litigation teams. Let me get the full table and cross-check with primary sources (Commission opinion, EDIS filings, Federal Circuit briefs).

Need to fill gaps: MediaTek/Ralink counsel, exact names/spellings, firm offices, and appellate counsel. Let me dig.

Counsel of record — Respondents, Inv. No. 337-TA-837

Sourcing caveat (read first)

There is no PACER docket for this case. Section 337 proceedings live on the ITC's EDIS system (edis.usitc.gov) and the Commission's Secretary's Office; the only Article III proceeding was the Federal Circuit appeal (No. 2014-1410). I was not able to pull the EDIS "Notice of Appearance" entries (Form 210.16) directly in this session, so the per-attorney roster below is reconstructed from (i) a Taiwanese government (TIPO) case study that reproduces the actual party-by-party litigation-team table for 337-TA-837, and (ii) independent corroboration from firm experience pages and the Federal Circuit / Federal Register record. Items I could not corroborate independently are flagged. No attorneys below are inferred or invented; where the source is thin, I say so.

1. Funai entities (Funai Electric Co., Ltd.; Funai Corporation, Inc.; P&F USA, Inc.; Funai Service Corp.)

Firm: McDermott Will & Emery LLP — Washington, DC (lead).

Attorney Role Notes
Paul Devinsky Lead counsel McDermott partner, Washington, DC. His own firm biography expressly lists this matter: "Funai (2015): Served as lead counsel in In the Matter of Certain Audiovisual Components and Products Containing the Same, (ITC, Case No. 337-TA-837)," representing all four Funai entities. Long-standing IP litigation, PTAB/IPR and Federal Circuit practice. Best-corroborated counsel identification in the case.
Raphael V. ("Ray") Lupo Trial team / of counsel McDermott, Washington, DC. Veteran ITC § 337 and patent trial lawyer; the TIPO roster lists him second after Devinsky.
Joel M. Freed Trial team McDermott, Washington, DC. Patent litigator with substantial ITC and district-court trial experience.
Christopher L. May Trial team McDermott, Washington, DC (per source roster; not independently verified in this session).
"Christopher D. ___" Trial team A fifth McDermott lawyer appears on the source roster, but the surname is truncated in every copy of the document I could retrieve. Do not treat as verified — needs an EDIS Notice of Appearance check.

Sources: https://www.mcdermottlaw.com/people/paul-devinsky/ ; TIPO case study, https://tiponet.tipo.gov.tw/downloads/module030/communication_103_3_2.pdf

2. Realtek Semiconductor Corp.

Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP — Washington, DC (lead), with Taiwan-capable team members.

Attorney Role Notes
Elizabeth A. Niemeyer Lead counsel Finnegan partner, Washington, DC. TIPO's summary table names her as the respondents' representative of record generally, and as Realtek's team leader (*). Heavy ITC docket (smartphone, LED and semiconductor matters) plus district-court work in D. Del., N.D./C.D. Cal. and E.D. Tex.
E. Robert Yoches Trial team Finnegan partner, Washington, DC; one of the firm's most experienced ITC § 337 trial lawyers.
Ming-Tao Yang Trial team Listed on the Realtek roster; likely the Taiwan/Chinese-language client-contact lawyer. I could not independently confirm his firm affiliation at the time of the investigation — treat affiliation as unverified.
"C. ___ Ma" Trial team Fourth Finnegan name on the roster, surname-truncated in the source. Unverified.
Yanbin Xu, Ph.D. Trial team (technical) Corroborated directly by Finnegan's own bio: "Represented Realtek Semiconductor Corp. in a defensive patent suit relating to IEEE 802.11 (Wi-Fi) wireless technology… the investigation concluded with the ITC finding in Realtek's favor… and the Federal Circuit affirmed. 337-TA-837, ITC, Judge Shaw." https://www.finnegan.com/en/professionals/yanbin-xu-ph-d.html

Firm-level confirmation: Finnegan's own experience page for this investigation: "Represented Realtek Semiconductor Corp. in a defensive patent suit… ITC finding in Realtek's favor on non-infringement, invalidity, and complainant's failure to prove the existence of a domestic industry, and the Federal Circuit affirmed. Certain Audiovisual Components, 337-TA-837, ITC, Judge Shaw." https://www.finnegan.com/en/work/experience/certain-audiovisual-components-agere-systems-and-lsi-corp-v-realtek-semiconductor-corp-itc-337-ta-837-itc.html

3. MediaTek / Ralink entities (MediaTek Inc.; MediaTek USA Inc.; MediaTek Wireless, Inc.; Ralink Technology Corp.; Ralink Technology Corp. (USA))

Firm identified: Quinn Emanuel Urquhart & Sullivan LLP.

Attorney Role Notes
David Bilsker Lead / sole name on roster Quinn Emanuel partner, San Francisco. Career patent/IP trial lawyer (jury trials in N.D. Cal., E.D. Tex. and elsewhere).

Important caveat: this is the thinnest entry in the file. MediaTek and Ralink were terminated early — Order No. 57 (Jan. 24, 2013), not reviewed, 78 Fed. Reg. (Feb. 13, 2013), https://www.usitc.gov/secretary/fed_reg_notices/337/337_837_notice02132013sgl_0.pdf — after LSI withdrew all allegations as to them, so their counsel of record appears only in the 2012 filings and does not appear in the Commission's 2014 opinion. The TIPO table lists a single Quinn Emanuel attorney for the whole MediaTek/Ralink group, which is plausible for an early-stage, quickly-settled respondent but is unusually sparse for a five-entity group; I would not state it as complete without the EDIS appearances.

4. Parallel N.D. Cal. litigation counsel (context — not ITC counsel of record)

In Realtek Semiconductor Corp. v. LSI Corp., No. 5:12-cv-03451-RMW (N.D. Cal.) — the FRAND/contract action in which Realtek obtained Judge Whyte's preliminary injunction barring LSI from enforcing ITC relief on the 802.11-essential patents — the TIPO study lists Call & Jensen Law Firm (Newport Beach, CA), Wayne W. Call and Aaron L. Renfro. The source table places this block adjacent to, but not inside, the Realtek ITC block, and in the N.D. Cal. case Realtek was the plaintiff (Finnegan again appearing for it). I could not definitively assign Call & Jensen to a party in the ITC matter, and I suspect the entry reflects the district-court proceeding. Do not list them as 337-TA-837 counsel without an EDIS check.

5. Appellate phase (Fed. Cir. No. 2014-1410) — not verified

LSI Corp. v. ITC, 604 F. App'x 924 (Fed. Cir. Mar. 20, 2015) (nonprecedential; opinion at https://cafc.uscourts.gov/sites/default/files/opinions-orders/14-1410.Opinion.3-18-2015.1.PDF). Funai and Realtek appeared as appellees/intervenors defending the Commission's determination. I was unable to retrieve the briefs' counsel blocks in this session, so appellate counsel should not be named here. Given Devinsky's bio lists the Federal Circuit affirmance under this matter, McDermott very likely continued for Funai; that is inference, not a citation.

6. Practical notes on the ITC counsel structure

  • No local-counsel requirement. Unlike district court, the ITC has no pro hac vice/local-counsel rule, so there is no "local counsel" tier in this investigation — every named lawyer above is counsel of record on the ITC pleadings.
  • No in-house counsel appears on the public record. Corporate in-house lawyers for Funai, MediaTek and Realtek are not listed on ITC filings.
  • No Commission Investigative Attorney (OUII/Staff) participated — confirmed in the Commission's March 10, 2014 Federal Register notice: "No Commission investigative attorney is participating in the investigation." https://www.govinfo.gov/content/pkg/FR-2014-03-10/html/2014-05072.htm. This is often overlooked and matters for reading the record: there was no Staff attorney shaping issues or briefing.
  • Complainants' side, for completeness (do not confuse with respondents): Foster, Murphy, Altman & Nickel, PC (David F. Nickel, lead) and Kilpatrick Townsend & Stockton LLP (David E. Sipiora, Kristopher L. Reed, Matthew C. Holohan, Jeffrey M. Connor, Laura K. — roster truncated).

7. Contradictions / flags against the earlier sections

  1. '087 patent number typo in the primary source. The Commission's own March 10, 2014 Federal Register notice twice refers to "U.S. Patent No. 5,780,087" and "the '087 patent," while the institution notice (77 Fed. Reg. 22803) and the patent-at-issue list use 5,870,087. This is a Commission typographical error, not a second patent. Worth a footnote if the case summary is ever published.
  2. **Prior section's