Raytheon Company v. Sony Corporation et al.

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

I have strong primary-source material. Let me verify the parallel district court litigation and related cases.

Case Overview and Background

Parties. This is not a classic NPE/PAE assertion. The plaintiff-appellant, Raytheon Company, is a large U.S. defense, aerospace, and electronics operating company that also held an in-house microelectronics/imaging business — the Stanford NPE database classifies Raytheon in the "product company" (category 8) bucket for this filing, not as a patent monetization entity (Stanford NPE Database). Raytheon acquired the asserted patent indirectly through its December 1997 acquisition of HE Holdings, Inc. (the Hughes Aircraft Company successor) — the patent issued to Hughes and was assigned to HE Holdings before Raytheon took title (iKnow/STPI case note). The defendants-appellees are the Sony entities (Sony Corporation/Sony Kabushiki Kaisha, plus U.S. and semiconductor affiliates) and the Samsung entities (Samsung Electronics Co., Ltd.; [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.); Samsung Semiconductor, Inc.). The accused technology was image-sensor manufacturing, specifically the backside-thinned, wafer-bonded ("backside-illuminated"/stacked) CMOS/CCD sensor process flows used in smartphone camera modules. Raytheon filed three coordinated suits on March 6, 2015 in the Eastern District of Texas: 2:15-cv-00341 against Samsung, 2:15-cv-00342 against the Sony entities, and a companion action against Apple and OmniVision. Because the asserted claims are process claims and the accused sensors were fabricated abroad, Raytheon's theory rested substantially on 35 U.S.C. § 271(g) — importation into the U.S. of products made by a patented process — and it pleaded that the defendants refused to disclose their fabrication steps, triggering a statutory presumption of infringement, along with willfulness. Notably, Raytheon targeted essentially the entire image-sensor industry: Sony, Samsung, and OmniVision were the world's three largest sensor suppliers at the time, and Apple was the principal downstream handset purchaser (iKnow/STPI; PTAB institution decision, IPR2016-00962).

The patent. Only one patent was at issue: U.S. Patent No. 5,591,678 (application 08/482,172, filed June 7, 1995; earliest priority January 19, 1993; issued January 7, 1997; inventors Joseph J. Bendik, Gerard T. Malloy, and Ronald M. Finnila), titled "Process of Manufacturing a Microelectric Device Using a Removable Support Substrate and Etch-Stop." In one line: it claims a "back-side" fabrication method in which a multi-layer first substrate (etchable layer / etch-stop layer / device wafer) is processed, then bonded face-down to a second "handle" substrate that mechanically supports the fragile thinned wafer before the sacrificial etchable layer is etched away down to the etch-stop, enabling compact through-device interconnects and sequential 3D stacking of devices. Representative claim 1 recites furnishing the etchable/etch-stop/wafer stack, forming a circuit element, "attaching the wafer of the first substrate to a second substrate," and "etching away the etchable layer … down to the etch-stop layer"; claim 5 narrows the materials to silicon / silicon dioxide / single-crystal silicon (Fed. Cir. slip op. at 3–4; Fed. Cir. op., 727 F. App'x 662). The court noted the patent expired before the IPRs were filed — consistent with a January 2014 expiration (17 years from the January 7, 1997 issuance under pre-URAA rules), which means the E.D. Tex. suits were effectively past-damages-only actions filed more than a year after expiry (Fed. Cir. op.).

Procedural posture, venue, and why it matters. The three appeals (Nos. 2017-1554, -1556, -1557, filed February 1, 2017) were consolidated and decided together by a Lourie/O'Malley/Wallach panel, with Judge O'Malley writing; argument was March 12, 2018, and the nonprecedential affirmance issued April 2, 2018 (CAFC docket, 17-1554; CAFC opinion page). Raytheon had appealed two PTAB final written decisions, both dated November 30, 2016 — IPR2015-01201 (Sony, Bertin/Morimoto grounds) and IPR2016-00209 (Sony, Liu-based grounds), with Samsung's IPR2016-00962 joined into the latter; a further Samsung petition, IPR2016-00739, was instituted but terminated in February 2017 (see IPR2015-01201 and IPR2016-00209 FWDs; IPR2016-00962 institution/joinder decision; [GreyB IPVerse, IPR2016-00739](https://ipverse.greyb.com/ptab-web

I'll research this case thoroughly. Let me start with the Federal Circuit appeal and underlying district court litigation.

Let me dig into the district court dockets, the parallel IPRs, and the litigation milestones.

Let me get the district court docket details, the stay motion, and how the E.D. Tex. cases were resolved.

Raytheon Co. v. Sony Corp. — Key Legal Developments (Chronological)

Note on scope/sourcing. The case metadata frames this as the Federal Circuit appeal, which is well documented. The case is really the tail end of a larger E.D. Tex. campaign that I was able to source only partly. Where I could not confirm a district-court event (answers, counterclaims, Markman, stay rulings, exact dismissal entries), I say so explicitly rather than fill the gap.

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1. Filing and initial pleadings (district court)

• 1997-01-07 — U.S. Patent No. 5,591,678 ("Process of manufacturing a microelectronic device using a removable support substrate and etch-stop") issued; assignee chain Hughes Aircraft → HE Holdings → Raytheon. Priority 1993-01-19; application filed 1995-06-07. 18 claims (3 independent). The patent had expired before suit was filed — the complaints themselves plead that the patent "though now expired… is and was valid and enforceable… during… its term," which is why the case was about past damages only (subject to the § 286 six-year lookback).
• 2015-03-06 — Raytheon filed parallel complaints in the Eastern District of Texas, Marshall Division (Judge Rodney Gilstrap; Magistrate Judge Roy S. Payne):
  • Raytheon Co. v. Samsung Electronics Co., Ltd. et al., No. 2:15-cv-00341 (Samsung Electronics Co., Ltd.; Samsung Electronics America; Samsung Semiconductor).
  • Raytheon Co. v. Sony Kabushiki Kaisha et al., No. 2:15-cv-00342 — defendants included Sony Kabushiki Kaisha, Apple, Inc., OmniVision Technologies, Inc., Sony Corporation of America, Sony Semiconductor Corp., Sony EMCS Corp., Sony Electronics, Inc., and several Sony Mobile entities.
• Theory of infringement: Raytheon asserted a process patent under 35 U.S.C. § 271(g), alleging defendants imported into (or sold/used in) the U.S. microelectronic devices made abroad by the patented process — specifically back-illuminated CMOS image sensors (the Samsung complaint identifies the S5K2P1 and S5K3H2). Raytheon invoked the 35 U.S.C. § 295 presumption of infringement (process practiced abroad) and sought joinder under 35 U.S.C. § 299. (Complaint PDF; docket index)
• Answers/counterclaims: Not confirmed from the sources retrieved. Standard invalidity/non-infringement counterclaims would be expected, but I could not verify filings or dates.

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2. Parallel PTAB proceedings — the IPRs

I'll search several angles to find actual press coverage of this litigation.

Now let me search the trade press and legal-newswire angles, and verify whether any of the supplied "recent articles" actually discuss this case.

Press and analyst coverage

Bottom line: this case generated almost no mainstream or legal-newswire coverage that I could find. Searches across the caption ("Raytheon Co. v. Sony Corp."), the party combinations (Raytheon/Sony/Samsung/Apple/OmniVision), the patent number (5,591,678), and the appeal numbers (2017-1554/-1556/-1557) returned no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, or Patently-O piece on the dispute. What exists is (a) one contemporaneous industry-research write-up of the 2015 filing, (b) routine PTAB-filing listings, and (c) a law-firm appellate digest. I flag this rather than pad: there is no reported verdict, damages award, or settlement figure in any source I located.

The most substantive account of the filing is a Taiwanese industry-research note. iKnow / STPI (Science & Technology Policy Research and Information Center, published 2015-03-17) reported that Raytheon filed in the Eastern District of Texas on 2015-03-06 against four Samsung entities in one action and against eight Sony-related entities, Apple, and OmniVision in a companion action — ten companies total — over U.S. Patent No. 5,591,678, which it described as a process patent covering removal of a microelectronic device from a support substrate during manufacture. It reported the § 271(g) importation theory, Raytheon's invocation of the statutory presumption of infringement on the ground that the defendants would not disclose their fabrication processes, and its request for consolidated treatment. Notably, the note's framing goes beyond the court record: it emphasized that Sony, Samsung, and OmniVision were the world's top three image-sensor suppliers by 2014 market share and the principal iPhone suppliers, observed that Raytheon was itself an image-sensor supplier, and speculated that the suit was aimed at the three largest competitors — possibly to expand share or win supply-chain entry. That is analyst commentary, not a court finding, and no court document I retrieved adopts it.

Filing-stage tracking was confined to PTAB docket roundups. National Law Review's "PTO Litigation Center Report – May 15, 2015" listed the 2015-05-14 filing of IPR2015-01201 (Sony Corp. v. Raytheon Co., Patent 5,591,678, Tech Center 1100) among new PTAB petitions — a one-line listing with no analysis.

At the appellate stage, the only commentary I found is a practitioner digest. Patterson + Sheridan summarized the April 2, 2018 nonprecedential decision in its "Federal Circuit Court Decisions For Week Ending April 6, 2018," distilling three takeaways: that modifying a prior-art reference so the resulting structure is less efficient or less desirable does not necessarily establish inoperability or teaching away; that corroborating evidence for an actual reduction to practice, while not required for every claimed element, should not contradict the assertion that all elements were reduced to practice; and that under Phillips a "comprising" preamble permits neither a claim construction inconsistent with the specification nor deletion of limitations. The digest reports the holdings, not the outcome's commercial significance, and no outlet I found reported on the subsequent wind-down — the E.D. Tex. cases, which had been stayed pending the IPRs and appeals, were dismissed on a joint motion (Dkt. 126), with the dismissal order entered 2018-06-08 (Dkt. 127) per the UniCourt docket.

Two sourcing notes. First, none of the ten "recent articles" supplied in the news index discusses this litigation. On their stated subjects — a news-aggregator launch, 2025 audio-gear awards, IEEE patent-portfolio rankings, transistor-radio history, two Snopes fact-checks on Terrence Howard, Japanese semiconductor history, an IPWatchdog weekly roundup from 2023, IBM losing the U.S. patent-grant lead to Samsung, and a multi-function-display market report — they are unrelated on their face, and my searches did not surface any of them in connection with this case; I've therefore not cited them as coverage. Second, a correction/addition to the earlier "Plaintiff representatives" section: the Federal Circuit docket for 17-1554 records that John J. Molenda presented oral argument for Raytheon on 2018-03-12 before the Lourie/O'Malley/Wallach panel, with Matthew A. Smith arguing for the Sony and Samsung appellees (CAFC docket 17-1554, Dkt. 86) — which closes the Raytheon-counsel gap flagged there, though I still could not confirm firm affiliations from the docket text.

Sources

• Trials@uspto
• UNITED STATES PATENT AND TRADEMARK OFFICE
• NOTE: This disposition is nonprecedential
• Raytheon Company v. Sony Corporation – CourtListener.com - Combined Opinion
• 影像感測器專利訴訟 Raytheon控告Samsung等多家廠商 - ︿Top
• PUBLIC VERSION
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
• Search court records on patent:(5591678)
• Raytheon Co. v. Sony Corp. - From Casetext: Smarter Legal Research
• Federal Circuit Court Decisions For Week Ending April 6, 2018 - Patterson + Sheridan
• Raytheon Company v. Samsung Electronics Co., Ltd. et al - This case was last updated from U
• Raytheon Company v. Sony Kabushiki Kaisha et al

I'll research the counsel of record for Raytheon (the appellant/patent owner) in these Federal Circuit appeals.

Let me look at the Federal Circuit docket for the entries listing Raytheon's counsel (the appellant).

Let me access the full docket sheet and brief filings to find Raytheon's counsel signatures.

Bottom line

I was able to pull the Federal Circuit docket for 17-1554 and identify the appellees' counsel of record (Sony and Samsung), but my searches did not surface the entry-of-appearance entries for Raytheon (the appellant, and the "plaintiff" in the underlying litigation). Because the operating rules forbid me from naming attorneys I cannot source, I will not guess at Raytheon's appellate team. Below is what is verified, what is not, and exactly where to look to close the gap.

Important framing caveat

"Counsel representing the plaintiff" is slightly awkward for this case. There is no live district-court infringement action in this proceeding — 2017-1554/1556/1557 is a Federal Circuit appeal from consolidated PTAB IPR final written decisions (IPR2016-00209, IPR2015-01201, and the joined IPR2016-00962). Raytheon (the '678 patent owner) is the Appellant; Sony and Samsung are the Appellees. The district-court matters in which Raytheon was the plaintiff are the E.D. Tex. cases referenced in the Board's FWD:

• Raytheon Co. v. Samsung Electronics Co., No. 2:15-cv-00341 (E.D. Tex.)
• Raytheon Co. v. Sony Kabushiki Kaisha, No. 2:15-cv-00342 (E.D. Tex.)

Source: IPR2016-00209 Final Written Decision (Nov. 30, 2016), available at docketalarm.com.

What I could verify from the Federal Circuit docket (17-1554)

The dockets.justia.com docket sheet for 17-1554 shows these appellee-side appearances (context, not the answer to your question):

Appellee Sony Corporation:

• Matthew I. Smith (filings docketed via his ECF account)
• T. Cy Walker — of counsel (Dkt. 28, 2/17/2017)
• Robert Louis Hails, Jr. — of counsel (Dkt. 27, 2/17/2017)
• Jennifer Seraphine — of counsel (Dkt. 26, 2/17/2017)
• Zhuanjia Gu — of counsel (Dkt. 25, 2/17/2017)
• Jacob Zweig — of counsel (Dkt. 30, 2/27/2017)

Appellees Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; Samsung Semiconductor, Inc.:

• Ronald J. Pabis — principal counsel (Dkt. 14, 2/15/2017)
• Stephen K. Shahida — of counsel (Dkt. 21, 2/16/2017)
• Mark G. Davis — of counsel (Dkt. 18, 2/16/2017)
• Heath J. Briggs — of counsel (Dkt. 17, 2/16/2017)
• Patrick McCarthy (ECF filer)

Source: https://dockets.justia.com/docket/circuit-courts/cafc/17-1554

I am not attributing these names to specific firms, because the docket entries I retrieved do not show firm affiliations and I could not independently confirm them in the searches run. (The names are characteristic of the appellee trial teams — e.g., Sterne Kessler for Sony — but I will not state firm affiliations I did not verify.)

Raytheon's counsel — NOT verified

Despite targeted searches against Justia/CourtListener dockets, the Federal Circuit's own site, casetext, casemine, and RPX, I did not retrieve any entry of appearance, principal-counsel designation, or brief signature block identifying Raytheon's appellate counsel of record. Accordingly:

• I cannot name Raytheon's lead, of-counsel, local, or in-house counsel for this appeal with the sourcing the task requires.
• The Federal Circuit opinion itself (nonprecedential, Apr. 2, 2018) identifies the judges (opinion text retrieved) but the search results did not include the cover page signature block listing arguing/appearing counsel.
• No filing appeared to be sealed in the snippets I saw; the gap is a retrieval limitation, not a sealing issue.

Where the authoritative answer lives (recommended next steps)

To fill this gap from primary sources, check:

1. Federal Circuit docket 17-1554 via PACER (CM/ECF for the Federal Circuit) — the "Entry of Appearance" / "Principal Counsel" / "Notice of Appearance" entries and the docket's attorney list will name Raytheon's team and firm.
2. The merits briefs: Raytheon's Appellant Brief (cited in the opinion as "Appellant Br. 52–54") and its Reply Brief — the signature blocks list counsel of record. The opinion's citation to "Appellant Br." confirms the brief exists but the signature page was not in my retrieved text.
3. The underlying IPR docket sheets (IPR2016-00209, IPR2015-01201, IPR2016-00962) on PTAB P-TACTS/PATENTSVIEW — the mandatory notices under 37 C.F.R. § 42.8 list Raytheon's "Patent Owner" counsel (lead + backup) and firms, which typically carried over to the appeal.
4. CourtListener/RECAP docket for 17-1554, which mirrors PACER entries.

Honest summary table

I flag the Raytheon-side gap rather than fill it with plausible-sounding names, per the no-fabrication rule. If you can share the PACER docket text (or the appellant/reply brief PDFs) for 17-1554, I can extract and confirm Raytheon's counsel, roles, firms, and offices precisely.

I'll research the counsel of record for the defendants in this appeal.

Let me pull the full docket and the opinion's counsel listing.

Let me find the opinion's counsel listing and confirm the firms.