Litigation

MediaTek, Inc. v. Matsushita Electric Industrial Co., Ltd. et al.

closed

2:05-cv-00484

Filed
2005-10-17
Terminated
2007-06-14

Patents at issue (2)

6118486
5802068

Plaintiffs (1)

Summary

MediaTek sued Matsushita Electric Industrial Co., Ltd. and Panasonic North America in the E.D. Texas over DVD recorders and digital TVs, asserting U.S. Patent Nos. 5,802,068 and 6,118,486. Docket metadata shows the case closed on 2007-06-14; it was resolved without judgment on the '486 patent.

Case overview & background

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

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

Key legal developments & outcome

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

I'll research this case now.

MediaTek, Inc. v. Matsushita Electric Industrial Co., Ltd., No. 2:05-cv-00484 (E.D. Tex.)

Scope note / confidence statement. This case is a 2005–2007 docket that produced no published opinion, no Markman order, no verdict, and no appellate decision. PACER-style docket text for the individual entries is not publicly mirrored (CourtListener/RECAP, Justia and the RPX/Ex Parte case pages return only the case-level metadata: filed 2005-10-17, cause of action "Patent Infringement," closed 2007-06-14, E.D. Tex.). I have therefore grounded dates and party conduct in the docket metadata, contemporaneous press releases/trade press, and the settlement reporting, and I flag every point where the record is thin rather than supplying docket numbers or attorney names I could not verify.

1. Pre-suit genesis: a two-front DVD/DTV chip war (2004 – Aug. 2005)

2. Matsushita's opening salvo — N.D. Cal. (2005-08-03)

3. MediaTek's complaint — E.D. Tex. (2005-10-17)

  • MediaTek filed this action on 2005-10-17 in the Eastern District of Texas, pleading patent infringement (not declaratory judgment) against Matsushita Electric Industrial Co., Ltd. and Panasonic North America, asserting U.S. 5,802,068 ("Multiplexing apparatus of a plurality of data having different bit rates") and U.S. 6,118,486 ("Synchronized multiple format video processing method and apparatus"). (Case metadata; Ex Parte/RPX case page: https://ai-lab-cl-prod.azurewebsites.net/case/dct/txed/2:05-cv-00484/mediatek-inc-v-matsushita-electric-industrial-co-ltd)
  • Strategic significance: both asserted patents were acquired, not internally developed — a 2020 NTU thesis tracking the MediaTek/Panasonic dispute records that MediaTek counter-asserted patents received from Nippon Steel (the '068) and Sarnoff Corporation (the '486), alongside U.S. 5,970,031 (from UMC) in the related Sanyo track. (NTU thesis, https://tdr.lib.ntu.edu.tw/bitstream/123456789/7103/1/ntu-109-1.pdf) MediaTek was thus buying/leasing defensive ammunition in video-parsing and synchronization art to impose symmetric exposure on Matsushita's DVD recorder and digital TV products — the E.D. Tex. filing being timed roughly ten weeks after the N.D. Cal. complaint.
  • That the filing was framed as infringement rather than DJ is corroborated by MediaTek's later use of the case as evidence of its own affirmative forum choice: "MediaTek Taiwan affirmatively brought suit in federal court in the State of Texas. See MediaTek, Inc. v. Matsushita Electric Industrial Co., Ltd. et al., 2-05-cv-00484 (E.D. Tex.)." (Quoted in a later MediaTek filing, via RPX Insight: https://insight.rpxcorp.com/litigation_documents/15430395)

4. Answer and counterclaims

  • Not verified. No public image of Matsushita's answer/counterclaims exists in the free databases. Given the posture, the answer would necessarily have included counterclaims for declaratory judgment of non-infringement and invalidity of the '068 and '486 (and, in the ordinary course, the N.D. Cal. infringement counterclaims already pleaded there). I could not confirm whether Matsushita also pleaded inequitable conduct, antitrust, or Walker Process theories, or whether it counterclaimed on the N.D. Cal. patents in Texas. Treat this paragraph as an inference, not a finding. No Rule 12 motion or motion to dismiss is reflected in the case-level record.

5. Pre-trial motions of substance

  • Motion to transfer: none confirmed. The two-front structure (Matsushita in N.D. Cal.; MediaTek in E.D. Tex.) created an obvious 1404(a)/first-to-file fight, but the case metadata shows no transfer and termination in the Eastern District, so either no transfer motion was made, it was denied, or the parties resolved the duplication privately. I found no order on the question.
  • Motion to stay: not applicable in the modern sense — there were no IPRs to stay for (see §8).
  • Summary judgment: no opinion or order found; the case terminated roughly 20 months after filing with no substantive ruling in the public record.
  • Markman: the case apparently did not reach a claim construction ruling. No Markman order, transcript, or opinion for this docket appears in CourtListener/Justia or in secondary coverage — consistent with a case settled before the substantive pre-trial gauntlet. The two patents' claim terms (bit-rate multiplexing; synchronized multi-format video processing) were never construed on the record.

6. Discovery milestones

  • No discovery orders, sanctions motions, or 30(b)(6) disputes are public. What is documented is only the resource asymmetry and global scope: MediaTek's own filings note it litigated in parallel against Matsushita, Sanyo/ Sanyo North America (E.D. Tex. No. 6:05-cv-00323), and others, and the Taiwanese trade-press analysis of the period treats the MediaTek cases as a coordinated multi-front defense involving customers (MSI, OPPO, ASUSTek) — a "unified defence" strategy. (JIPR 18(6) 534–547, https://nopr.niscair.res.in/bitstream/123456789/24566/1/JIPR%2018%286%29%20534-547.pdf) Any specific discovery milestone beyond that must be sourced from the paper docket.

7. Trial, verdict, post-trial motions

  • None. No trial date was reached, no verdict, no JMOL/new-trial or § 285 fee motion in the public record. The docket closed 2007-06-14; the existing case summary records resolution without judgment on the '486 patent.

8. Parallel PTAB proceedings — a null set, for legal-historical reasons

  • There were no IPR, PGR, or CBM proceedings on the '068 or '486 patents, and none could have existed: the AIA's post-grant review regimes did not take effect until 2012-09-16, five years after this case closed. The only USPTO-side challenge available in 2005–2007 was ex parte reexamination under 35 U.S.C. § 302, and I found no reexamination certificate or request referenced for either patent. Any "stay pending IPR" analysis is anachronistic here — useful to say explicitly if this memo is being used to benchmark modern E.D. Tex. practice against the pre-AIA era.

9. Final disposition: global settlement, mutual withdrawal (June–July 2007)

  • 2007-06-14 — the E.D. Tex. docket is terminated.
  • 2007-07-31 — MediaTek publicly announced it had reached a settlement with Matsushita Electric Industrial in the patent infringement litigation; the parties had sued each other in the U.S. district courts and agreed to withdraw all claims. Reporting (Nikkei-affiliated press, citing the 2007-08-01 Economic Daily) frames this as closing out the entire Matsushita dispute, following MediaTek's June 2007 settlement with Sanyo Electric, and as removing the patent cloud over MediaTek's digital TV and DVD player chips. (https://www.ys-consulting.com.tw/news/1857.html)
  • The approximately six-week gap between docket termination and public announcement is consistent with a stipulated dismissal filed under seal/with confidential terms, with the parties announcing only after the papering was complete. Terms were not disclosed; no cross-license was publicly confirmed in this case (contrast the Sanyo settlement, where the parties expressly announced an exchange of cross-licenses: https://cdrinfo.com/d7/content/sanyo-and-mediatek-reach-settlement-patent-infringement-litigation).
  • No appeal was taken; there being no judgment, none was available.
  • Present posture: closed and final. Both asserted patents are long expired ('068 issued 1998-09-01; '486 issued 2000-09-12), so no residual licensing exposure runs from them.

How to read this case strategically

Three points are worth carrying forward, each grounded above:

  1. The caption misleads. "MediaTek v. Matsushita" in E.D. Tex. is the counter-suit. The lead case on the merits of

Plaintiff representatives

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

I'll research the docket and related sources for MediaTek's counsel of record.

Plaintiff-Side Counsel — MediaTek, Inc. v. Matsushita Electric Industrial Co., No. 2:05-cv-484 (E.D. Tex.)

Bottom line, and a confidence caveat up front. I was able to confirm the identity of MediaTek's litigation team from the contemporaneous filings in the parallel, related Matsushita–MediaTek litigations, but I was not able to retrieve the contents of the 2:05-cv-484 docket sheet itself in this session (the aggregator pages for the case confirm only caption, filing date 10/17/2005, cause "Patent Infringement," and closure 6/14/2007). Accordingly, the names below are documented MediaTek counsel in the same two-year, same-party dispute, and I flag the precise respect in which each is confirmed versus inferred. I have not invented any E.D. Tex. local counsel; see "Gaps" below, which I regard as the single most important limitation of this memo.

1. Confirmed from the record: Quinn Emanuel was MediaTek's litigation firm

In MediaTek's own affirmative actions against Matsushita/Panasonic filed in the Northern District of California during the same period — MediaTek, Inc. v. Matsushita Electric Industrial Co., No. 3:07-cv-02750-MMC (N.D. Cal.), expressly captioned as "Related Case No. 05-CV-3148 MMC (JCS)" (the Matsushita v. MediaTek action filed 8/3/2005 and closed 7/9/2007) — the signature blocks and attestations identify the following as "Attorneys for Plaintiff MediaTek, Inc.":

Attorney Role Firm / office Sourced detail
Kevin P.B. Johnson (Cal. Bar No. 177129) Lead counsel for MediaTek (signature-block lead; the June 25, 2007 stipulation was filed over his name) Quinn Emanuel Urquhart Oliver & Hedges, LLP — 555 Twin Dolphin Drive, Suite 560, Redwood Shores, CA 94065 Named first in the plaintiff's counsel block; bar number and office per the filing.
Edward J. DeFranco (Cal. Bar No. 165596) Co-lead / case partner for MediaTek Quinn Emanuel — 51 Madison Avenue, 22nd Floor, New York, NY 10010 Named in the same plaintiff's counsel block, New York office.
Eric Huang MediaTek-side signatory on the July 9, 2007 joint stipulation of dismissal (with prejudice, no costs, each side bearing its own fees) Quinn Emanuel (office not stated in the signature block) Signed /s/ Eric Huang for MediaTek; concurrence attested by co-counsel.

Sources: Joint Stipulation to Extend Time to Answer, No. 3:07-cv-02750-MMC (N.D. Cal., filed June 25, 2007); Joint Stipulation of Dismissal, No. 3:07-cv-02750-MMC (N.D. Cal., filed July 9, 2007) (both reproduced at findforms.com document nos. 734348 / 734352).

Why this is probative for 2:05-cv-484: MediaTek ran a coordinated, multi-front campaign against Matsushita/Panasonic in 2005–2007 — the E.D. Tex. action (2:05-cv-484, filed 10/17/2005), the N.D. Cal. action (3:05-cv-3148, filed 8/3/2005), MediaTek v. Sanyo, No. 6:05-cv-323 (E.D. Tex.) (where the '486 patent — one of the two patents here — was construed by Judge Leonard Davis on 3/26/2007), and a later N.D. Cal. action on the '031 patent. MediaTek's national patent litigation firm of record across that campaign was Quinn Emanuel. It is therefore highly likely, but not in-session verified, that Johnson and DeFranco (or the same firm) were MediaTek's counsel of record in 2:05-cv-484 as well.

2. Defense-side counsel (for cross-reference / de-confliction only)

To prevent misattribution, note that the defense bar in these matters was entirely separate: McDermott Will & Emery LLP (Terrence P. McMahon, Palo Alto; Bijal V. Vakil and Rick Chang, Silicon Valley) for Matsushita/Panasonic, with Dewey Ballantine LLP (Mark Malin, East Palo Alto) in the N.D. Cal. actions. Both Vakil's and Chang's published firm biographies describe "Matsushita v. MediaTek (ND CA and ED TX)" as a series "resulting in favorable settlement for Matsushita." None of these attorneys should be listed as plaintiff's counsel.

3. Explicit gaps — what I could not verify

I want to be precise rather than fill these in:

  • E.D. Tex. appearances / pro hac vice. I could not confirm which Quinn Emanuel attorneys filed formal appearances in 2:05-cv-484, nor the entry numbers. In that era, out-of-state counsel in Marshall/Tyler typically appeared pro hac vice alongside Texas local counsel.
  • Texas local counsel. I found no reliable source identifying MediaTek's E.D. Tex. local counsel in 2:05-cv-484. Candidate firms commonly used by plaintiff-side patent litigants in that district at that time exist, but naming one without a docket citation would be fabrication, so I have not.
  • MediaTek in-house counsel. No source identified an in-house attorney of record (MediaTek is a Taiwan-based company; in-house participation is likely but undocumented here).
  • Whether 2:05-cv-484 was handled by a different firm than the N.D. Cal. matters. Not excluded. The two cases were filed eight weeks apart and closed five weeks apart (6/14/2007 and 7/9/2007), consistent with a single global settlement, but that is an inference from docket dates, not a document.
  • "Notable past cases" one-liners for Johnson, DeFranco, and Huang: I have their bar numbers, offices, and role in this dispute from the filings above, but I did not complete verification of their broader patent-trial track records in this session, so I am not characterizing them.

4. Recommended verification path (highest yield first)

  1. PACER / RECAP docket for 2:05-cv-484, Dkt. 1 (complaint) and the first appearance/PHV motions — the complaint's signature block is the definitive answer on filing counsel, and the PHV orders list each out-of-state attorney admitted.
  2. The claim-construction memorandum in MediaTek v. Sanyo, No. 6:05-cv-323 (E.D. Tex. Mar. 26, 2007) (Judge Davis), available on govinfo (USCOURTS-txed-6_05-cv-00323) — opinions of that era typically carry a full "counsel for plaintiff" block and would independently confirm MediaTek's Texas-side team.
  3. The N.D. Cal. 3:05-cv-3148 docket — appearances there will confirm the Quinn Emanuel team and may name the same local counsel used in Texas.
  4. A call to the E.D. Tex. clerk for the paper docket if the 2005 filings are not imaged.

5. Cross-checks against prior sections and one caution

  • No contradiction with the existing case summary: the 2007 closure dates and the resolution of the '486 patent dispute are consistent with the global settlement reflected in the July 2007 N.D. Cal. dismissal with prejudice.
  • Caution on conflation: MediaTek's counsel in later matters is a different set of firms — e.g., McGuireWoods LLP (Tyler T. VanHoutan, Houston; Rachelle H. Thompson, Raleigh; Lyle D. Kossis and Justin R. Lowery, Richmond) in the 2017 ITC investigation, Baker & Hostetler / Finnegan in 2017 ITC and IPR work, and Perkins Coie (Matthew Bernstein) in later E.D. Tex. cases. None of these should be attributed to 2:05-cv-484.

Defendant representatives

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

I'll research the defense-side counsel. Note at the outset: the previously generated "Case overview & background" section contains only a placeholder line ("I'll research this case thoroughly before drafting the overview") — no substantive content — so I'll flag that and cannot build on it.

Verification status: counsel of record for the E.D. Tex. defendants is not confirmed

I need to be direct: after searching, I could not locate a docket sheet, attorney-appearance entry, or court opinion for MediaTek, Inc. v. Matsushita Electric Industrial Co., Ltd., No. 2:05-cv-00484 (E.D. Tex.) that names the attorneys who appeared for Matsushita/Panasonic in that case. I will not guess at names. Below is (A) what I could verify about defense counsel in the closely related Matsushita–MediaTek litigations, (B) what is missing and why, and (C) the specific steps needed to close the gap.

A. Verified: Matsushita/Panasonic's counsel in the companion N.D. Cal. actions

The E.D. Tex. suit was one front in a multi-forum dispute. The parallel N.D. Cal. actions — Matsushita Elec. Indus. Co. v. MediaTek, Inc., No. 3:05-cv-03148 (N.D. Cal., filed 08/03/2005, closed 07/09/2007) and MediaTek, Inc. v. Matsushita Elec. Indus. Co. & Panasonic Corp. of N. Am., No. 3:07-cv-02750-MMC (N.D. Cal.), designated a related case of 05-cv-3148 — were staffed by the following defense counsel, per filed stipulations:

Attorney Role Firm / office Notes
Mark Malin (Bar No. 199757) Appeared as counsel, signed June 25, 2007 joint stipulation on behalf of Matsushita and Panasonic Dewey Ballantine LLP, 1950 University Avenue, Suite 500, East Palo Alto, CA Dewey Ballantine (merged into Dewey & LeBoeuf in 2007) was a leading IP-litigation shop; Malin handled the response to MediaTek's '031 declaratory-judgment/infringement complaint. Source
Terrence P. McMahon (Bar No. 71910) Listed on the same filings McDermott Will & Emery LLP, 3150 Porter Drive, Palo Alto, CA McDermott's Silicon Valley IP litigation group; represented Matsushita/Panasonic in the N.D. Cal. track. Source

Later Matsushita/Panasonic appearances in the broader MediaTek dispute (ITC and subsequent N.D. Cal. consolidated proceedings) were handled by Kirkland & Ellis LLP — e.g., Eliot A. Adelson and James Maxwell Cooper (San Francisco), and James H. Mutchnik and Barack Echols (Chicago) — signing as "Attorneys for Defendants Panasonic Corporation (f/k/a Matsushita Electric Industrial Co., Ltd.), Panasonic Corporation of North America, and MT Picture Display Co., Ltd." (filing excerpt).

Caveat: None of these attorneys is confirmed to have appeared in the E.D. Tex. case. The N.D. Cal. and ITC appearances are established facts; treating them as the E.D. Tex. roster would be inference, not evidence.

B. What is missing, and why

  • The publicly indexed docket records for this case (PACER-derived aggregators) list the case as MediaTek Inc v. Matsushita Electric Industrial Co Ltd, No. 2:05-cv-00484, Cause: Patent Infringement, filed 10/17/2005, closed 06/14/2007 — but the "Attorney" field content was not retrievable in the indexed version I could reach (docket stub).
  • This case predates the RECAP/CourtListener coverage of E.D. Tex. civil dockets, and it is a 2005 Marshall Division filing that terminated quickly; no opinion, claim-construction order, or trial record appears to be published. I found no E.D. Tex. opinion in this case at all.
  • I cannot rule out that counsel appeared and the record is simply not digitized. Absence of a search hit is not evidence that no one appeared.

Local-counsel note (unverified lead, not a finding): E.D. Tex. practice in 2005 required local counsel, and Potter Minton, P.C. (Tyler, TX) — e.g., Michael E. Jones and Allen F. Gardner — appears as defense local counsel in the contemporaneous [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.) v. Matsushita Electric Industrial Co. E.D. Tex. litigation (docket). That is a pattern consistent with how Matsushita staffed Texas matters, not proof of appearance in 2:05-cv-00484. Do not use it in a brief without docket confirmation.

C. Contradiction to flag against the existing case summary

The existing summary says the case "was resolved without judgment on the '486 patent." A contemporaneous Law360 report dated June 13, 2007 states that the judge denied Matsushita's motion to dismiss for lack of standing, holding MediaTek had possession of the patents through an assignment agreement with United Module Corp. (Law360). That article's date sits one day before the docket's 06/14/2007 termination date. Two readings are possible — a settlement/dismissal immediately followed the ruling, or the reported ruling and the termination date are not in fact adjacent. The metadata (closed 06/14/07, no judgment) should control per the operating rules, but the "no judgment on the '486 patent" characterization should be verified against the actual dismissal order, since a standing ruling on the merits of ownership would be a substantive event.

Also flagged: the previously generated "Case overview & background" section is empty — it contains only the line "I'll research this case thoroughly before drafting the overview." There is no prior content to build on, so this section stands alone.

D. To confirm counsel of record, pull these specifically

  1. PACER docket for 2:05-cv-00484 (E.D. Tex., Marshall Division) — look for the "Attorneys" party listing and Dkts. 1–15 (complaint, waivers of service, corporate disclosure statements, and first appearances). Plaintiff-side counsel is identifiable the same way if needed.
  2. Corporate disclosure statement / FRCP 7.1 filing by Matsushita and Panasonic North America — usually identifies outside counsel of record directly.
  3. Any motion to dismiss for lack of standing (2006–07) — the brief and signature block would name lead and local counsel; Law360's June 13, 2007 piece indicates such a motion exists.
  4. Dewey Ballantine / McDermott / Kirkland contemporaneous press releases or firm "representative matters" pages referencing the E.D. Tex. MediaTek matter — Dewey Ballantine's 2005–07 IP litigation materials are the most likely firm-side confirmation.
  5. E.D. Tex. clerk / archived paper docket if PACER's electronic record is incomplete for the 2005–07 period.

I'd rather hand you five verification targets than five invented names.