LSI Corporation v. International Trade Commission

I'll research this case to verify the specifics before drafting.

Case Overview & Background

Parties and posture. This is an appeal from a Section 337 investigation, not a district court case — LSI Corp. v. ITC, No. 2014‑1410, 604 F. App'x 924 (Fed. Cir. Mar. 20, 2015) (nonprecedential; Taranto, Mayer, Hughes, JJ.), reviewing In re Certain Audiovisual Components & Products Containing the Same, Inv. No. 337‑TA‑837. The complainants/appellants were LSI Corporation (Milpitas/San Jose, CA) and its wholly owned subsidiary Agere Systems (Allentown, PA) — both operating semiconductor companies, not NPEs. Agere is the former Lucent/AT&T microelectronics business that LSI acquired in 2001 (LSI itself was acquired by Avago Technologies in 2014, corporate background I state without a specific docket citation). The respondents were Funai Electric and its U.S. affiliates, MediaTek, Ralink Technology, and Realtek Semiconductor of Hsinchu, Taiwan — i.e., the Taiwanese Wi‑Fi chipset suppliers and the Japanese OEM that bought their chips. LSI filed its complaint March 12, 2012; the Commission instituted on April 11, 2012, 77 Fed. Reg. 22,803 (Apr. 17, 2012). ALJ David P. Shaw held a hearing in April 2013 and issued a final initial determination on July 18, 2013, followed by a recommended determination on remedy/bonding on July 31, 2013 (78 Fed. Reg. 48,190 (Aug. 7, 2013)). The Commission reviewed the ID in its entirety (Oct. 17, 2013), then issued a final determination of no violation on March 4, 2014 (79 Fed. Reg. 13,328 (Mar. 10, 2014)). Because this is an agency appeal under 28 U.S.C. § 1295(a)(6), review was under the APA (5 U.S.C. § 706(2)(A)) on the administrative record — there was no jury, no Markman hearing in the district-court sense, and the remedy sought below was an in rem exclusion order against imports, which is precisely why LSI chose the ITC: fast timeline, border relief, and no eBay/Eldred inconvenience. That choice is the whole story here, because it also triggered Realtek's RAND counterattack in district court.

The technology and patents. The investigation originally asserted four patents against Wi‑Fi (IEEE 802.11) chipsets and the DTVs, Blu‑ray/DVD players and recorders, home‑theater systems, and streaming players that incorporated them. (1) U.S. Patent No. 6,452,958, "Digital modulation system using extended code set" (van Nee; assigned to Agere Systems Guardian Corp.) — the lead patent and the only one still live on appeal; it claims a modulation scheme using a code set of M codes of length N where M>N, with near‑orthogonal/complementary codes, to reach 10 Mbps while preserving coding gain, and it was declared essential to IEEE 802.11b/g. (2) U.S. Patent No. 6,707,867 — WLAN power‑management/timer synchronization using TIM timestamps, also an 802.11 SEP; it expired February 23, 2014, which mooted that branch. (3) U.S. Patent No. 5,870,087 (LSI Logic) — an MPEG decoder with a single unified memory for transport, decode, and system‑controller functions; and (4) U.S. Patent No. 6,982,663 — an Agere H.264/ITU video‑coding SEP. The '087 and '663 patents were terminated by settlement with Funai in January 2014 and were not part of the appeal. On the '958 patent, the ALJ had found no infringement; the Commission affirmed that and, more consequentially, reversed the ALJ's domestic‑industry finding, holding LSI had failed the technical prong of § 337(a)(3)(C) because its licensing revenues were not tied to a domestic article practicing the '958 claims — applying InterDigital Commc'ns v. ITC, 707 F.3d 1295 (Fed. Cir. 2013) ("InterDigital II") and Certain Computers, Inv. No. 337‑TA‑841, 2014 WL 5380098 (Jan. 9, 2014). The Federal Circuit affirmed on that ground alone, holding LSI suffered no unfair surprise because InterDigital II issued before discovery closed and before the hearing, so it supplied ample notice; the court also rejected LSI's retroactivity theory (distinguishing prospective exclusionary relief from Title 35 rights) and found no abuse of discretion in the Commission's refusal to vacate the ALJ's non‑infringement findings on the expired '867 patent. The court's opinion also recited the "well‑settled rule" that ITC patent determinations have no preclusive effect in other forums — a passage later picked up in briefing in TPL/Barnes & Noble. Caveat: Realtek's counsel (Finnegan) describes the ITC outcome as favoring Realtek on "non‑infringement, invalidity, and … failure to prove … a domestic industry," but the Federal Register notice states only that "no violation … has been proven," and the Federal Circuit did not reach validity, so I would not treat the invalidity holding as firmly established from primary sources. I also found no verified IPR against the '958 patent arising from this dispute — the validity fight was litigated inside the 337 proceeding, and I could not confirm any PTAB petition, so treat "no IPR" as an absence

Threshold note on framing

This is not a district-court infringement action; it is an appeal from a Section 337 investigation at the U.S. International Trade Commission. Several of the categories you asked about therefore have ITC analogues rather than direct equivalents, and I flag those explicitly below rather than inventing a complaint/answer/Markman/JMOL sequence that never happened. The district-court litigation that did run in parallel — Realtek's RAND/contract suit in N.D. Cal. — supplies most of the motion practice, trial, and post-trial activity, so I have integrated it as the "parallel proceeding" strand, distinguished from the ITC strand.

Parties: Complainants LSI Corporation and Agere Systems Inc./LLC (collectively "LSI"). Respondents Realtek Semiconductor Corp. and the Funai entities (Funai Electric Co., Funai Corp., P&F USA, Funai Service Corp.), with MediaTek/Ralink named initially and later terminated. ALJ David P. Shaw. Investigation instituted 2012-04-11; terminated 2014-03-04; Federal Circuit affirmed 2015.

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Chronology

1. Filing and institution (ITC equivalents of complaint/answer/counterclaims)

I'll search for press coverage from several angles.

Press coverage of LSI Corp. v. ITC (Fed. Cir. 2014-1410)

Coverage of the appeal itself was thin and trade-focused. I found no Reuters, Bloomberg, Law360, Ars Technica, The Verge, or Patently-O piece devoted to the Federal Circuit's March 2015 affirmance. What exists is law-firm client-alert material. The CAFC Blog digest (authored by Jeffrey S. Ginsberg, Caryn Harsche Cross, and Qi Zhao) summarized the nonprecedential decision of Judges Taranto, Mayer, and Hughes as rejecting LSI's argument that the Commission arbitrarily applied a "brand new legal standard" retroactively to a record compiled in early 2013, and separately holding that the Commission did not abuse its discretion in refusing to vacate the ALJ's non-infringement finding on the expired '867 patent. A second, later alert published via Lexology (April 16, 2015) framed the holding more broadly — that InterDigital II, 707 F.3d 1295, decided before discovery closed, gave LSI adequate notice that licensing-based domestic industry requires proof of "articles protected by the patent" — and cited the ruling as 2015 WL 1260672. Note a dating wrinkle the digests do not flag: the opinion PDF is dated March 18, 2015, while the CAFC Blog and Casetext date it March 20, 2015 (604 F. App'x 924). No outlet reported a damages figure, settlement, or market impact from the appeal itself — consistent with the record, since the appeal concerned the domestic-industry requirement and the Commission had found no violation, so no exclusion order or money award was at stake in the appeal.

The real press attention went to the companion district court case, which is where the reported numbers live. Law360 covered the N.D. Cal. RAND litigation (Realtek Semiconductor Corp. v. LSI Corp., No. 5:12-cv-03451, Judge Ronald M. Whyte) in a series of headlines: "LSI Tried To Pump Up Royalties With ITC Probe, Judge Says" (May 20, 2013), "Calif. Jury Sets RAND Rate For Licensing Wi-Fi Patents" (Feb. 27, 2014), and "Realtek Secures $3.8M Final Judgment In Wi-Fi RAND Row" (June 16, 2014). IP Today, reporting Reed Smith's account on Feb. 27, 2014, gave the specific rates: the jury set 0.12% for the '958 patent and 0.07% for the '867 patent — a combined 0.19%, "nearly half the total royalty rate sought by LSI," which had asked for 0.185% per patent (0.37% combined) at trial and, per Reed Smith, had initially sought royalties that "would have far exceeded the sales price of Realtek's chips." The same piece reported the jury awarded Realtek $3.825 million in attorneys' fees on the breach-of-contract claim. A Lexology Section 337 update tied the two proceedings together, reporting that Judge Whyte had preliminarily enjoined LSI from enforcing any ITC exclusion order on the asserted patents pending the FRAND determination, and noting the jury's RAND verdict was described as the first of its kind.

Where accounts diverge or go beyond the record. The Lexology Section 337 update contains an evident date error — it says the ITC "decided on March 4, 2013" to terminate Inv. No. 337-TA-837, but the verdict it describes issued in February 2014, and the Commission's final determination was March 4, 2014 (Taiwan's IP office case tables list the investigation closing in March 2014). Advocate framing is also visible: the IP Today piece is built on quotes from Reed Smith trial lead Steven S. Baik, who called the rates "the lowest ever to be set for comparable technologies related to declared standard essential patents" and argued "[t]rue RAND rates should be even lower" — argument, not holding. A Chinese-language iKnow/STPI analysis (March 10, 2014) framed the outcome as LSI's Wi-Fi royalty falling "from 5% to 0.19%," referencing LSI's 2002 offer of 5% of the end-product price, and reported roughly US$3.8 million in litigation costs shifted to LSI. The Essential Patent Blog (David Long, June 16, 2014) added a useful causal link the news items did not: Judge Whyte 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," reasoning that several events — including a Federal Circuit reversal on three issues — would have to align before an exclusion order threatened Realtek. That is effectively a contemporaneous prediction of the appeal LSI then lost.

Caveats. Law360's items are paywalled, so I could verify only headlines and dek-level summaries, not full article text; no damages award or settlement was reported in the Federal Circuit appeal because none occurred. Law-firm experience pages from Finnegan (Realtek's counsel) and McDermott (Funai's lead counsel, Paul Devinsky) confirm the outcome and counsel but are marketing materials, not press, and should be treated as party-side characterizations.

Sources

• 2014-1410: LSI Corporation v. ITC - U.S. Court of Appeals for the Federal Circuit
• July 20, 2015 - Page 30 of 126 - U.S. Court of Appeals for the Federal Circuit
• because it will have standing to appeal and present this specific issue
• Lsi Corporation v. Itc – CourtListener.com - Lsi Corporation v. Itc, 14-1410 (Fed. Cir. 2015)
• CAFC BLOG
• LSI Corp. v. United States International Trade Commission - From Casetext: Smarter Legal Research
• Federal Circuit affirms Commission’s finding of no domestic industry - Register now for your free, tailored, daily legal newsfeed service.
• TPL refutes Barnes & Noble’s Motion to Dismiss district court action based on ITC non-infringement determination - Register now for your free, tailored, daily legal newsfeed service.
• LSI Corp. v. United States International Trade Commission, 604 F. App'x 924 – CourtListener.com - LSI Corp. v. United States International Trade Commission, 604 F. App'x 924 (Fed. Cir. 2015)
• NOTE: This disposition is nonprecedential
• This case ultimately involves two important questions concerning the ITC's authority to remedy acts of patent infringement invol...
• 聲請人LSI向委員會主張答辯人Realtek、Funai、MediaTek以及MediaTek/Ralink等所為之進口，為進口而銷售及進口後於國內銷售之行為侵害其美國第5,780,087號專利（'087專利）、第6,452,958號專利（'958專利）、...

I'll research the counsel of record for LSI Corporation in the Federal Circuit appeal and underlying ITC investigation.

Counsel of record — LSI Corporation (appellant)

Sourcing caveat up front. The Federal Circuit's docket sheet for No. 2014‑1410 was not retrievable in this session (no PACER/RECAP pull succeeded), and the nonprecedential slip opinion (604 F. App'x 924) as reproduced on CourtListener and Casetext does not print an appearances block — Fed. Cir. Rule 47 practice omits it. So the appellate appearance list below is reconstructed from the underlying ITC team, firm biographies, and parallel-litigation filings rather than from a docket entry. I flag each item's evidentiary basis.

A. Appellate counsel (Fed. Cir. No. 2014‑1410)

Note the appellate posture: the notice of appeal was filed by LSI Corporation and Agere Systems LLC jointly (caption as reported by Casetext: "LSI CORPORATION, AGERE SYSTEMS LLC, Appellants v. UNITED STATES…"). Any full appearance list should include Agere's counsel, who appear to have been the same Kilpatrick team.

B. Trial-level counsel in the underlying investigation, Inv. No. 337‑TA‑837

This is the best-documented layer, drawn from the comparative litigation-team table in the Taiwan Intellectual Property Office's 2014 report on the case (表20, communication_103_3.pdf, and the companion communication_103_3_2.pdf), cross-checked against Kilpatrick's own experience descriptions:

• Foster, Murphy, Altman & Nickel, PC (Washington, DC) — boutique § 337 firm; the report describes it as among the most experienced ITC practices, having participated in roughly 130 § 337 investigations.
  • David F. Nickel — lead/authorized representative for LSI.
  • Michael Kirby, Jr. — senior paralegal (not an attorney).
• Kilpatrick Townsend & Stockton LLP (Denver, Menlo Park, Atlanta) — "primary firm" for LSI.
  • David E. Sipiora, Kristopher L. Reed, Matthew C. Holohan, Jeffrey M. Connor, Laura K. [—].

The Kilpatrick bios independently corroborate the representation (Sipiora: "represented the complainants LSI Corporation and Agere Systems LLC in this investigation…"; Reed: same), though both bios describe only the ALJ's recommended exclusion order and omit the Commission's reversal — party-side advocacy worth noting, as with the Finnegan and McDermott pages already discussed in the news section.

C. Same counsel in the parallel RAND case (context, and another verification path)

LSI/Agere's defense of Realtek Semiconductor Corp. v. LSI Corp., No. 5:12‑cv‑03451‑RMW (N.D. Cal.) was handled by the same Kilpatrick team, which is useful because it is docket-verifiable:

• David E. Sipiora (SBN 124951), Kilpatrick Townsend, Denver — signature block on the Sept. 13, 2012 filing.
• Robert J. Artuz (SBN 227789), Kilpatrick Townsend, Menlo Park, CA — same filing. Artuz's involvement in the ITC matter is not shown in my sources.
• Charles Adam Pannell, III, Kilpatrick Townsend — identified as appellate counsel for LSI/Agere in the subsequent appeal of the RAND judgment (VitalLaw). This is the Ninth Circuit track, not 2014‑1410.

D. What is not established

• No in-house counsel for LSI appears in any source I could reach; ITC practice usually proceeds through outside counsel, and I found no corporate attorney named.
• No sealing issue is apparent — the appeal was publicly briefed and argued (oral argument audio posted by the Federal Circuit, which dates the argument posting to July 2015 per the site's archive path, while the decision issued March 2015 — a small internal inconsistency in the court's own posting metadata).
• The Commission's own litigating counsel (Office of the General Counsel, § 337 staff attorneys) and intervenor-respondents' appellate counsel (Finnegan for Realtek — Elizabeth A. Niemeyer per 表20; McDermott Will & Emery for Funai — Paul Devinsky, per the same table and the firm's own page) are outside the scope of this task but are the natural cross-check: the respondents' briefs in 2014‑1410 would name LSI's appellate counsel in their certificates of service.

Recommended verification step: pull the 2014‑1410 docket via PACER (the Federal Circuit's CM/ECF docket report lists "Attorneys" for each party and the Docketing Statement filed at case opening), or the certificate of service in LSI's opening brief, which is not reproduced in the free aggregators I could reach.

I'll research the counsel of record for the ITC (the appellee/defendant) and any intervenors in Fed. Cir. 2014-1410.

Let me pull the opinion PDF's counsel block and the docket.

Threshold point: who the "defendant" is in 2014‑1410

This is an appeal from a § 337 determination, so the alignment is not the usual patent-case one. The caption as it appears in the opinion is LSI Corporation and Agere Systems LLC, Appellants v. United States International Trade Commission, Appellee (604 F. App'x 924 (Fed. Cir. 2015)). The ITC is the appellee/respondent, not a party accused of infringement; the accused importers (Realtek, Funai, and formerly MediaTek/Ralink) were respondents before the Commission, not defendants in the Article III sense, and would appear on appeal only as intervenors. That distinction matters for your question, because the "counsel of record for the defendant" is really (a) the Commission's own litigating staff and (b) any respondent-intervenors.

Disclosure up front: I was unable to retrieve the docket sheet or the counsel block from the 14‑1410 opinion PDF in this session (the searches returned opinion text but not the front-matter appearances, and the Federal Circuit's own docket is not accessible without PACER credentials). What follows separates verified facts from what I could not confirm. I have not invented any attorney names.

(a) Counsel for the appellee ITC — Office of General Counsel

The Commission appears through its own Office of General Counsel, 500 E Street SW, Washington, D.C. — i.e., in-house government counsel, not a retained law firm. There is no "local counsel" role at the Federal Circuit.

The OGC attorneys holding the relevant titles in the 2014–2015 window were, based on ITC staff listings and contemporaneous Federal Circuit counsel blocks in companion ITC appeals:

What is verified vs. inferred: In the immediately preceding companion appeal, InterDigital Communications, LLC v. ITC, the Federal Circuit's counsel block reads: "Hughes, Attorney, Office of the General Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. Of counsel on the brief were Dominic L. Bianchi, Acting General Counsel, and Wayne W. Herrington, Assistant General Counsel. Of counsel was Andrea C. Casson." That establishes the OGC team and titles for the same court and the same period. I could not verify from the 14‑1410 record which of these individuals signed the Commission's brief or who argued on March 2015 (the Federal Circuit has posted the oral argument audio for 2014‑1410, but the page did not identify the arguing attorney in what I retrieved). Treat the specific 14‑1410 assignment as unconfirmed until you pull ECF Nos. 1–30 in the Federal Circuit docket or the brief's signature block.

(b) Respondent-intervenors at the Federal Circuit — likely, but not confirmed

Under 19 U.S.C. § 1337(c) and Fed. Cir. R. 15, respondents who prevailed below routinely intervene to defend a negative determination. For 337‑TA‑837 the respondents' ITC-level counsel were:

Caveat: the tables above are drawn from a Taiwanese IP-office (TIPO) case study of 337‑TA‑837 and from Finnegan/McDermott firm materials, not from the Federal Circuit appearance docket. I found no document confirming that Realtek or Funai formally moved to intervene in No. 2014‑1410, and the opinion text I retrieved refers only to "LSI" and the "Commission" — it never discusses an intervenor's separate argument. It is possible the Commission alone defended the appeal. Verify against the Federal Circuit docket (entries for Fed. Cir. R. 15(d) intervention notices) before relying on this.

(c) For contrast — appellants' Federal Circuit counsel

Useful because it confirms which firms were not on the defense side of the appeal: LSI/Agere were represented by David F. Nickel of Foster, Murphy, Altman & Nickel, P.C. (Washington, DC) and by Kilpatrick Townsend & Stockton LLP, with David E. Sipiora as a named attorney. That is also the pairing that handled the ITC trial below.

(d) What I could not verify, and where to look

• PACER / Federal Circuit docket for 2014‑1410: the authoritative source for appearances, intervention notices, and the arguing attorney. Not accessible in this session.
• The opinion's counsel block (page 1–2 of the March 18, 2015 PDF at cafc.uscourts.gov/sites/default/files/opinions-orders/14-1410.Opinion.3-18-2015.1.PDF): Federal Circuit nonprecedential opinions typically carry an "argued for appellee / with him on the brief" paragraph. I retrieved the body text but not that block.
• Sealed filings: nothing in the ITC proceeding was sealed as to counsel identity; the protective order covered confidential business information, not appearances. So the gap here is access, not sealing.
• No in-house counsel appeared for any party; the corporate parties acted through outside counsel and the Commission through its OGC.

One flag on the prior sections: nothing here contradicts them, but note that the previously generated summary's reference to the "expired '867 patent" is consistent with the ITC record while the case metadata lists only the '958 patent (6,452,958) — the '867 is discussed in the appeal's second holding but is not the patent the metadata treats as at issue.