Rembrandt Wireless Technologies, LP v. Broadcom Incorporated et al.

I'll research this case and its context before drafting the overview.

Case Overview

Parties. Rembrandt Wireless Technologies, LP is a patent-holding entity (widely characterized as an NPE/PAE) with its principal place of business at 401 City Ave., Bala Cynwyd, Pennsylvania; the complaint describes it as a Virginia limited partnership (Compl. ¶1, Dkt. 1). It does not make or sell products — it acquires and licenses patents, and the asserted patents here came to it indirectly from Paradyne/Zhone Technologies, where the named inventor, Gordon F. Bremer, developed the technology (Bremer's 2015 trial testimony confirms Rembrandt bought the patents from Zhone and then engaged him as a paid consultant with a royalty share). Defendants are Broadcom Incorporated (Delaware) and Broadcom Corporation (California), both headquartered at 1320 Ridder Park Drive, San Jose, with substantial operations in Irvine, California — the semiconductor supplier whose Bluetooth combo/SoC chips are accused (Compl. ¶¶3–4, 8). Broadcom is thus the "true defendant" in a supply chain where Rembrandt has also sued the chip customers: it filed a parallel case against Qualcomm (8:19-cv-00705-JLS-JDE) the same day and had already sued Apple in E.D. Tex. (2:19-cv-00025-JRG) on January 24, 2019, accusing Apple products containing Broadcom and Qualcomm Bluetooth chips.

Accused technology. The accused instrumentalities are Broadcom's "BCM"-series semiconductor products that implement Bluetooth Enhanced Data Rate (EDR) under specifications 2.0+EDR, 2.1+EDR, 3.0+HS, 4.0+LE, 4.1, 4.2, and 5.0 — essentially any Broadcom Bluetooth chip practicing EDR (Compl. ¶¶28–29). The pleaded theory is that ordinary Bluetooth EDR operation maps onto the claims: the basic-rate packet header/access code is modulated in Gaussian Frequency Shift Keying (GFSK) and signals the switch to a higher-rate payload modulated in DPSK/PSK, with the master device in the Bluetooth master/slave relationship performing the claimed "impending change in modulation" signaling. Rembrandt's infringement contentions in the parallel Apple case stated the identical theory verbatim across all three suits, which is why Apple argued that the chip cases were the efficient vehicle. Notably, both patents expired — the '228 on December 4, 2018 and the '580 on December 5, 2018 — so the case is a past-damages-only action (Compl. ¶9).

Patents asserted. U.S. Patent No. 8,023,580 ("System and Method of Communication Using At Least Two Modulation Methods," filed Aug. 19, 2009, issued Sept. 20, 2011) and U.S. Patent No. 8,457,228 (same title, filed Aug. 4, 2011, issued June 4, 2013, a continuation of the '580), both claiming priority to Dec. 5, 1997. Technical sketch: a master/slave communication device that transmits messages having a header/first portion modulated under a first modulation method (e.g., FSK/GFSK) that indicates an impending change to a different modulation method (e.g., PSK/DPSK or QAM) used for the payload, with addressing for the intended slave — i.e., in-band signaling of a modulation switch within a single packet stream. Rembrandt asserted claims 2 and 59 of the '580 and claim 21 of the '228.

Procedural Posture and Venue

Filed April 15, 2019 in the Central District of California, Southern Division (Santa Ana), before Judge Josephine L. Staton, with Magistrate Judge John D. Early on discovery; the case was designated related to the Qualcomm suit (Dkt. 15, 17), and the court set a schedule on July 31, 2019 (Dkt. 58) with claim construction on January 21, 2020 and trial contemplated for late October 2020 in Santa Ana. Broadcom moved to dismiss under Rule 12(b)(6) on June 10, 2019 (Dkt. 52, hearing set Aug. 23, 2019); a Civil Minutes order dated August 22, 2019 in 8:19-cv-00708-JLS-JDE quotes the '580 claim language, indicating the court engaged the claim terms at that stage. Venue matters here for a specific, well-documented reason: this is the rare Rembrandt case filed outside the Eastern District of Texas, and it became the pivot of the multi-front forum fight. Apple moved in E.D. Tex. to transfer or stay in favor of the California chip suits, arguing that "almost all sources of proof associated with Broadcom or Qualcomm are located in California," including Broadcom's Irvine facilities inside CDCA and witnesses such as Burhan Masood and former Technical Director Steven Hall; Judge Gilstrap denied both the transfer motion and the customer-suit stay (E.D. Tex. Dkts. 94, 95), reasoning among other things that Apple's filing of IPR petitions four days after its stay motion undercut its claim to equitable relief. Broadcom, by contrast, is a California defendant with no plausible venue objection — Rembrandt pleaded venue on Broadcom's Irvine offices at 15101 Alton Parkway and 5300 California Avenue (Compl. ¶8).

Why the Case Is Notable

1. A serial, high-value Bluetooth EDR campaign. These are the same two patents Rembrandt tried to verdict against Samsung in E.D. Tex. (2:13-cv-213-JRG), winning a $15.7 million jury verdict on February 13, 2015, later reduced to roughly $11.1 million, plus an ongoing royalty. BlackBerry settled before trial and licensed. The Federal Circuit's Rembrandt Wireless Techs. v. Samsung Elecs., 853 F.3d 1370 (Fed. Cir. 2017), construed "modulation method[] of a different type" to require different families of modulation (e.g., FSK vs. QAM) — the construction on which the Bluetooth EDR theory (GFSK vs. DPSK) ultimately rests — and also held that statutory disclaimer cannot retroactively cure a § 287(a) marking failure. The patents' contentious history also includes In re Rembrandt Techs. LP Patent Litig., 899 F.3d 1254 (Fed. Cir. 2018), on Zhone/Paradyne spoliation of roughly 3,200 documents.
2. Administrative-layer trench warfare. Both patents were in ex parte reexamination (90/013,808 and 90/013,809), with a Notice of Intent to Issue Reexamination Certificate dated December 21, 2018 confirming the '580 claims under Phillips. Samsung had filed a long series of IPRs on the '228 (Rembrandt's 2015 preliminary response describes the petition at issue as the seventh), and Apple filed IPR2020-00033, -00034, -00036, and -00037 on November 5, 2019; Samsung filed further petitions (IPR2020-00509, -00510) in early 2020. The validity of these two claims families was thus being litigated simultaneously in three district courts and at the PTAB.
3. Standard-implementation risk for the whole Bluetooth ecosystem. Because the theory is that practicing the Bluetooth EDR specification is infringement, the practical target is not a Broadcom design choice but the standard itself — and the accused downstream universe is enormous (Apple alone accused essentially every Bluetooth 2.0+ device back to the iPhone 3GS). A finding either way would have telegraphed outcomes across the chip-supplier cases, the Apple customer case, and future Bluetooth implementer demands, on patents that generate only past-damages exposure given their December 2018 expirations.

Sourcing caveat on disposition. I could not confirm the final disposition of 8:19-cv-00708 from a primary docket source. The materials I retrieved show the case pending as of mid-2019 (UniCourt's last update, July 10, 2019), the July 31, 2019 scheduling order (Dkt. 58), and the August 22, 2019 minute order; contemporaneous PTAB filings state the California trials were set for late October 2020. Beyond that, the docket trail I can source does not establish whether the case settled, was dismissed, or proceeded to judgment, and the outcome of Broadcom's Rule 12(b)(6) motion (Dkt. 52) is likewise unconfirmed. RPX has reported that a Rembrandt affiliate continued filing Bluetooth cases while "another still faces a large attorney fees award" from the Samsung litigation, but that does not resolve this docket. Treat the "unconfirmed" status in the case metadata as accurate and verify against PACER (CACD 8:19-cv-00708) before relying on any disposition.

I'll research this case across dockets, opinions, and PTAB records.

I'll research the counsel of record for Rembrandt Wireless Technologies in this case, starting with docket-level sources and firm/related-case records.

Good initial harvest. Now let me pin down the remaining attorney-firm affiliations and the case's disposition/whether counsel remained of record.

Now let me nail down the remaining names' firms and the later docket activity (dismissal/withdrawals).

Bottom line

Rembrandt's CDCA team was a two-firm Houston trial group (Heim, Payne & Chorush LLP and Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C. ("AZA")) fronted by Greenberg Gross LLP in Costa Mesa as local counsel of record. The composition is essentially the same team that won the $15.7M Rembrandt v. Samsung verdict in February 2016 on these same two patents.

One caveat that matters for citations: I could not reach the PACER docket sheet itself. The docket-level facts below come from the Justia and UniCourt docket mirrors and from primary document PDFs (the complaint and PHV applications) reproduced in PTAB/RPX exhibit files. Counsel of record for this case are well documented; nothing in this case appears to have been filed under seal, and counsel appeared promptly (the complaint was signed by counsel and the PHV wave came four days later).

Plaintiff's counsel of record

Local counsel — Greenberg Gross LLP, Costa Mesa, CA (650 Town Center Drive, Suite 1700)

Trial counsel — Heim, Payne & Chorush LLP, Houston, TX (1111 Bagby St., Suite 2100)

Trial counsel — Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C., Houston, TX (1221 McKinney St.)

Greenberg Gross (apparent local support)

• Hojoon "Josh" Ji (Cal. Bar No. 312874) is listed among plaintiff's counsel on the CDCA docket. He is now a litigation associate at Latham & Watkins, Costa Mesa (same 650 Town Center Drive address). I could not verify which firm he was with when he appeared here, so treat his firm affiliation in this case as unconfirmed; his docket listing shows him terminated 8/13/2019 (that termination entry appears in the attorney list reproduced from the parallel E.D. Tex. Apple/Rembrandt docket, so confirm against the CDCA docket before relying on it).

Explicitly not counsel in this case

• Jill M. Browning and Michael J. Fink, Greenblum & Bernstein, P.L.C. (Reston, VA) are Rembrandt's PTAB lead/backup counsel in Qualcomm v. Rembrandt, IPR2020-00509 and -00510 (covering the '228 and '580 patents), per Rembrandt's updated mandatory notices filed March 13, 2020. They are patent-owner counsel before the Board, not counsel of record in 8:19-cv-00708.
• Scott W. Clark appears as PHV counsel for Rembrandt in the parallel E.D. Tex. Apple litigation (Fed. Cir. No. 20-112 record), not in this CDCA docket.

Disposition — what the record does and doesn't show

The existing case summary flags this as unconfirmed, and I can add only docket-level texture, not a resolution:

• Broadcom moved to dismiss under Rule 12(b)(6) on 6/10/2019 (Dkt. 52), noticed for hearing 8/23/2019, with the Mayle declaration and seven exhibits.
• The Court (Judge Josephine L. Staton, Magistrate Judge John D. Early on discovery) set a scheduling conference for 8/2/2019 (Dkt. 54) and issued a minute order dated 7/31/2019 directing attention to the Civil Trial Order.
• UniCourt's last sync (7/10/2019) still showed "Pending." I found no notice of voluntary dismissal, dismissal order, settlement entry, or transfer order, and no withdrawal of plaintiff's counsel, in the sources available to me. My search budget ran out before I could pull the post-August 2019 docket, so the case's terminal event remains unverified — I'd recommend a direct PACER pull of Dkts. 57 onward (and a cross-check of the consolidated/related 8:19-cv-00705 Qualcomm file) before stating an outcome.

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

Good lead. Let me pull the full docket and verify firm affiliations for each defense attorney.

Counsel of Record for Broadcom Incorporated and Broadcom Corporation

Bottom line: Broadcom's defense was handled by a Kilpatrick Townsend & Stockton LLP team, with partner Emil W. Herich (Los Angeles) serving as the designated local counsel for every pro hac vice admission. Kristopher L. Reed appears to have functioned as lead counsel (he signed the case-dispositive Rule 12(b)(6) motion), with Edward J. Mayle, Andrew N. Saul, Russell A. Korn, and David E. Sipiora admitted pro hac vice, and Matthew C. Holohan appearing briefly before withdrawing. No in-house Broadcom counsel appears on the public docket.

Summary table

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Per-attorney notes

Kristopher L. Reed — lead counsel (Kilpatrick Townsend, Dallas)
Co-leader of the firm's Patent Litigation Practice Group and a registered patent attorney; his firm bio credits him with lead-counsel roles in roughly 40 IPRs. Directly relevant Broadcom experience: he defended Broadcom Inc. and six downstream customers (Technicolor, HTC, Comcast, Arista, NETGEAR, ARRIS) in In re Certain Semiconductor Devices, ITC Inv. No. 337-TA-1010 (Tessera), and argued the Federal Circuit appeal in Regents of the Univ. of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019). He also led the defense of Chicago Transit Authority in Smart Systems Innovations v. CTA (N.D. Ill.), where four of five patents were invalidated. (Firm bio)

Emil W. Herich — local counsel (Kilpatrick Townsend, Los Angeles)
The only California-barred member of the defense team, and the court's designated local counsel on each pro hac vice order (Dkts. 50, 53, 56). Caveat worth flagging: his published firm biography emphasizes complex commercial litigation, class-action defense, product liability and catastrophic injury — not patent prosecution or IP litigation — though he has appeared in patent matters such as MAG Aerospace Industries v. B/E Aerospace (C.D. Cal.) and Schaffer Family Investors (C.D. Cal.). His role here reads as traditional C.D. Cal. local-counsel support rather than substantive patent lead. (Firm bio PDF)

Edward J. Mayle — of counsel (Kilpatrick Townsend, Denver)
Admitted PHV on May 31, 2019 (Dkt. 50) after a deficiency cure (Dkt. 47). He was the declarant supporting Broadcom's Rule 12(b)(6) motion (Dkt. 52-1), so he did substantive work on the pleadings challenge rather than merely appearing. Confirmed Denver address: 1400 Wewatta St., Suite 600, Denver, CO 80202 (per a 2024 Supreme Court certificate of service listing him at Kilpatrick Townsend).

David E. Sipiora — of counsel (Kilpatrick Townsend, Denver)
First defense lawyer to appear in the case (Dkt. 40, May 6, 2019), the same day the corporate disclosure statement and answer-extension stipulation were filed (Dkts. 42–43). Long-tenured Kilpatrick Townsend patent litigator; his name appears alongside Reed and Holohan on the Avago/ASUS pleadings in N.D. Cal. (Case No. 3:15-cv-04525), consistent with the firm's semiconductor-licensing defense practice.

Andrew N. Saul — of counsel (PHV; office unconfirmed)
Admitted pro hac vice on June 11, 2019 (Dkt. 53), with Herich designated local counsel. The docket confirms he was an out-of-district attorney (hence the PHV route) appearing for both Broadcom entities. I was unable to verify his specific office location or practice description from the sources retrieved; the PHV papers themselves would establish it, and I'd rather flag that than guess.

Russell A. Korn — of counsel (PHV; Atlanta office per firm directories)
Admitted pro hac vice on June 27, 2019 (Dkt. 56). A career patent litigator at Kilpatrick Townsend who has been part of Broadcom's broader defense roster across multiple matters. Office location is inferred from firm directory listings rather than a primary source in this case file — worth a quick confirm against his PHV declaration if precision matters.

Matthew C. Holohan — withdrew (Kilpatrick Townsend, Denver)
Filed Broadcom's Corporate Disclosure Statement identifying Broadcom Inc. as parent (Dkt. 42) and the joint stipulation extending Broadcom's answer deadline to June 10, 2019 (Dkt. 43). Filed his Notice of Appearance/Withdrawal under G-123 on May 29, 2019 (Dkt. 45), i.e., roughly three weeks after appearing and before the motion to dismiss was filed — consistent with the Reed/Mayle team taking over the substantive defense.

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Procedural context for counsel identification

• Case assigned to Judge Josephine L. Staton, with Magistrate Judge John D. Early on discovery; case number reformatted to SACV 19-00708-JLS (JDEx) as related to Rembrandt v. Qualcomm, 8:19-cv-00705 (Dkt. 17).
• Broadcom answered the complaint's substance by motion: Motion to Dismiss under Rule 12(b)(6), filed June 10, 2019, noticed for hearing August 23, 2019 before Judge Staton (Dkt. 52).
• Judge Staton entered a Scheduling Order in a Patent Case on July 31, 2019 (Dkt. 58), and a scheduling conference was set for August 2, 2019 (Dkt. 54); a Civil Minutes entry dated August 22, 2019 appears in the court's file.
• The asserted '228 patent expired December 4, 2018 (Compl. ¶9), which framed the damages window and is the likely anchor for any Rule 12(b)(6) or § 101 argument.

Caveats on sourcing

1. No sealed or withheld appearances are indicated for defendants in the free docket mirrors I could reach; the defense appearances above are all publicly docketed. But my access was to aggregator dockets (UniCourt, Justia, Patexia) last updated in July 2019, not a live PACER pull — so a later substitution of counsel or post-2019 appearance (including any in-house Broadcom lawyer) cannot be ruled out.
2. Firm affiliation for Saul and Korn is strongly inferred from the pattern of the Broadcom defense team (every other defense attorney on this docket is Kilpatrick Townsend) and from Korn's public profile, but the PHV applications in Dkts. 51 and 55 are the authoritative source and I did not retrieve their full text.
3. I found no confirmation of a notice of appearance by Broadcom in-house counsel; if Broadcom used in-house counsel in a monitoring capacity, that would not ordinarily appear on the docket and I have no evidence of it.