LSI Corporation v. Funai Electric Co., Ltd.

I'll research this case thoroughly before writing the overview.

Good foundation. Let me dig into the C.D. Cal. docket specifics and the parallel ITC/PTAB proceedings.

Let me look at the actual docket and the complaint's asserted patents.

Case Overview — LSI Corp. v. Funai Electric Co., No. 2:12-cv-02047 (C.D. Cal.)

The parties. Plaintiffs are LSI Corporation (Delaware; HQ Milpitas, California) and its wholly owned subsidiary Agere Systems Inc. (Delaware; Allentown, Pennsylvania), the former Lucent microelectronics business that LSI acquired in 2007. These are operating companies, not NPEs — LSI was a fabless semiconductor and storage/networking SoC supplier with a large legacy patent estate inherited from LSI Logic and Agere — though by 2012 licensing revenue was an important and aggressively pursued profit center for LSI. Defendants are the Funai group: Funai Electric Co., Ltd. (Osaka, Japan), the Japanese consumer-electronics OEM best known as the volume manufacturer of VCRs and of TVs/Blu-ray and DVD players sold in the U.S. under licensed brand names; plus its U.S. distribution and service affiliates Funai Corporation, Inc. (Rutherford, NJ), P&F USA, Inc. (Alpharetta, GA), and Funai Service Corporation (California corporation; operations in Groveport, OH). Funai is a downstream integrator, not a chip designer — a fact that shaped the whole dispute, because the accused decoders and Wi-Fi chipsets came from third parties (MediaTek, Ralink, Realtek), several of whom LSI named as co-respondents at the ITC but did not sue in the district court (ITC institution notice, 77 Fed. Reg. 22803 (Apr. 17, 2012); Funai's FAC allegations summarized in Funai Elec. Co. v. LSI Corp., No. 5:16-cv-01210 (N.D. Cal.), Doc. 75).

Accused technology and patents. The accused products were Funai's digital televisions, Blu-ray disc players, DVD players, DTV/DVD and DTV/BD combination units, multimedia streaming players, and home-theater systems. The complaint asserted four patents aimed at two distinct technology stacks (note: the case metadata lists only the '087 patent, but the as-filed complaint pleaded all four, and Funai's later pleading confirms "the same four patents at issue in the ITC action"): U.S. Patent No. 5,870,087 — "MPEG decoder system and method having a unified memory for transport decode and system controller functions," i.e., collapsing the frame-store, transport, and system-controller memories into one shared 16 Mbit unified memory to cut decoder cost (assigned to LSI Logic; claims 1, 5, 7–11, 16 asserted); U.S. Patent No. 6,452,958 — "digital modulation system using extended code set," an IEEE 802.11b WLAN physical-layer patent (Agere Systems Guardian); U.S. Patent No. 6,707,867 — "wireless local area network apparatus," directed to WLAN transceiver synchronization (Agere; expired February 23, 2014); and U.S. Patent No. 6,982,663 — "method and system for symbol binarization," an H.264/AVC variable-length coding patent that LSI had declared to the ITU as standard-essential. On the '087 patent, ALJ David P. Shaw found in his July 18, 2013 final initial determination that Funai's accused products directly infringed claims 1, 5, 7–9 and 16 and induced infringement of method claims 10–11, and rejected Funai's invalidity and equitable defenses; he found no violation on the '958, '867, and '663 patents (78 Fed. Reg. (Oct. 23, 2013); ITC final ID excerpts at ptacts.uspto.gov).

Posture, venue, and why it matters. The district court complaint was filed March 12, 2012 in the Central District of California — the same day LSI and Agere filed the ITC complaint that became Inv. No. 337-TA-837 — and was assigned to District Judge Andrew J. Guilford (Santa Ana) with Magistrate Judge Andrew J. Wistrich. The parties stipulated to stay the district court case pending the ITC investigation, so the C.D. Cal. action was essentially dormant for years; the C.D. Cal. docket is thinly indexed on free sources (Justia shows only a 2015 protective order, Doc. 61), so I could not independently verify every entry. In January 2014 LSI and Funai settled as to the '087 and '663 patents (license through September 30, 2015), and the district court dismissed those claims with prejudice; the ITC granted partial termination on that basis in March 2014, the '867 patent expired and became moot, and the Commission affirmed non-infringement and held the '958 claims invalid for lack of a licensing-based domestic industry (79 Fed. Reg. (Mar. 10, 2014)). The Federal Circuit affirmed the domestic-industry holding without reaching the merits, LSI Corp. v. ITC, No. 2014-1410 (Fed. Cir. Mar. 18, 2015) (nonprecedential) (opinion). LSI then revived the case in June 2015 — adding Avago Technologies as plaintiff and a fifth patent, and adding declaratory-judgment counts for "future infringement" of the '087 and '663 patents — and in September 2015 the action was transferred to the Northern District of California as No. 3:15-cv-04307-EMC before Judge Edward M. Chen, where LSI refiled infringement allegations on the '663 patent in October and December 2015; LSI voluntarily dismissed the case in February 2016 (per Funai's allegations in No. 5:16-cv-01210, Doc. 75). Funai immediately counter-punched with its own N.D. Cal. action (No. 5:16-cv-01210, Judge Beth Labson Freeman) alleging Sherman Act and California UCL violations — that LSI/Agere/Avago made false FRAND commitments to the IEEE (802.11) and ITU (H.264) while

I'll research this case systematically, starting with the docket and any court opinions.

Now let me dig into the district court docket, the claim construction order, and any IPR activity.

Key finds: an IPR on the '087 patent (IPR2016-00646) and a later N.D. Cal. case. Let me pull the docket records.

LSI Corp. v. Funai Electric Co., No. 2:12-cv-02047 (C.D. Cal.) — Chronology of Key Developments

Sourcing note up front: The C.D. Cal. docket (Dkt. 526348) is available only in fragmentary form on Justia; the district court's own filings are largely behind PACER/Law360. The best-documented record of this dispute is the parallel ITC investigation, Inv. No. 337-TA-837 (ALJ David P. Shaw), which ran on the same four patents and generated a public Initial Determination and Commission opinion, plus a Federal Circuit appeal and a later N.D. Cal. action in which the '087 patent was actually construed. I flag below which points are firm and which are not confirmed.

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1. Filing and initial pleadings

Patents actually asserted. The case metadata lists only the '087 patent (U.S. 5,870,087, "MPEG Decoder System and Method Having a Unified Memory for Transport Decode and System Controller Functions," filed 1996-11-13, issued 1999-02-09). In fact both the ITC complaint and the C.D. Cal. complaint asserted four patents: the '087, the '958 (6,452,958, Agere), the '867 (6,707,867, Agere) and the '663 (6,982,663, LSI). See 77 Fed. Reg. 22803; TIPO secondary compilation of case 2:12-cv-02047 listing the same four patents ("[t]he patents at issue are U.S. 5,870,087, 6,452,958, 6,707,867, 6,982,663"). An amended complaint later added U.S. Patent No. 7,047,148 (per a 2015 MTD ruling summary — see §6).

Answer/counterclaims. Funai answered and counterclaimed (declaratory judgment of noninfringement/invalidity; later, DJ counts for "future infringement" of the '663 and '087 were added by LSI in an amended pleading on **2015-06-02

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

Counsel of Record for Plaintiff(s) — LSI Corp. et al. v. Funai Electric Co., Ltd., No. 2:12-cv-02047 (C.D. Cal.)

Case posture note: This was the district-court companion to ITC Inv. No. 337-TA-837. LSI Corporation and Agere Systems Inc. filed both on March 12, 2012, asserting the '087 patent (the patent listed in this case's metadata) plus U.S. Pat. Nos. 6,452,958, 6,707,867 and 6,982,663. The C.D. Cal. action was assigned to Judge Andrew J. Guilford, with Magistrate Judge Andrew J. Wistrich. A license/settlement agreement covering the '087 and '663 patents was executed January 6, 2014 (recited in Funai Elec. Co. v. LSI Corp., No. 5:16-cv-01210-BLF (N.D. Cal.), ECF 75 at 14), and the district-court action was later dismissed without prejudice (id. at 17).

The roster below is drawn from the Justia/PACER-derived docket for No. 2:12-cv-02047 (Justia Docket No. 526348), which lists five attorneys appearing for LSI Corporation and four for Agere Systems Inc. PACER itself is paywalled and I could not independently re-pull the appearance entries; the specific admission dates of each appearance (Dkt. 1–10) are therefore not verified.

Lead / national patent counsel — Kilpatrick Townsend & Stockton LLP

Local counsel — Call & Jensen APC (Newport Beach)

Related counsel not shown on the C.D. Cal. docket

• David F. Nickel (Foster, Murphy, Altman & Nickel, PC, Washington, D.C.) served as lead trial counsel for LSI/Agere in ITC 337-TA-837 (the parallel investigation on the same four patents, including the '087 patent). He does not appear in the Justia counsel list for 2:12-cv-02047, so he should not be described as counsel of record in the district court case without pulling the actual appearances.
• Matthew C. Holohan and Jeffrey M. Connor (both Kilpatrick Townsend) appear on LSI/Agere pleadings in the related N.D. Cal. actions but are not listed on the 2:12-cv-02047 docket; I have not verified whether they entered appearances in the C.D. Cal. case.

Caveats

• No indication of sealed or ex parte appearances by plaintiff's counsel in this case; the only document surfaced in the free docket index is the August 20, 2015 protective order (Dkt. 61), which does not affect the counsel list.
• I could not verify any in-house LSI/Agere attorney appearing of record; the docket list contains none.
• Defendant Funai's side was handled by Christopher D. Bright (then McDermott Will & Emery) per the Justia docket, with Baker & Hostetler (Kevin W. Kirsch, David A. Mancino) appearing in later phases of the party's litigation — provided for context only.

Sources: Justia Docket, LSI Corp. et al. v. Funai Elec. Co. Ltd. et al., No. 2:12-cv-02047 (C.D. Cal.), https://dockets.justia.com/docket/california/cacdce/2:2012cv02047/526348; Justia filings in No. 3:15-cv-04307-EMC (ECF 91, 103, 112); Funai Elec. Co. v. LSI Corp., No. 5:16-cv-01210-BLF (N.D. Cal.), ECF 75 (Mar. 27, 2017); State Bar of California attorney profile for Aaron L. Renfro (#255086), https://apps.calbar.ca.gov/attorney/Licensee/Detail/255086; Call & Jensen firm bio, https://www.calljensen.com/attorney/aaron-l-renfro/.

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

Let me pull the actual docket entries and party counsel listings.