Rembrandt Wireless Technologies, LP v. Qualcomm Inc.

I'll research this case across the docket, PTAB, and trade press before drafting.

Case Overview — Rembrandt Wireless Technologies, LP v. Qualcomm Inc., No. 8:19-cv-00705-JLS-JDE (C.D. Cal., Santa Ana)

The parties. Rembrandt Wireless Technologies, LP is a non-practicing patent-holding entity — a Virginia limited partnership with its principal place of business at 401 City Ave., Bala Cynwyd, Pennsylvania (Compl. ¶ 1, Dkt. 1). It does not make or sell anything; Apple described it in parallel briefing as "a non-practicing entity that seeks only damages, not injunctive relief," and its infringement theory rests entirely on licensing a portfolio it acquired out of the Zhone Technologies/Paradyne lineage (inventor Gordon F. Bremer; the prior owner/licensee Zhone and its former GC Paul Castor are recurring figures in the record). Rembrandt is a serial, single-portfolio assertor: it first sued Samsung and BlackBerry/Research In Motion on these same two patents in 2013 in the Eastern District of Texas, winning a February 13, 2015 jury verdict of infringement and no invalidity that was largely affirmed in Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., 853 F.3d 1370 (Fed. Cir. 2017) (reversing/remanding on the § 287(a) marking–damages issue), and in January 2019 it sued Apple in E.D. Tex. before filing against Broadcom and Qualcomm in California on April 15, 2019. Qualcomm Inc. is the operating-company defendant: a Delaware corporation headquartered in San Diego that designs and sells the Bluetooth baseband/system-on-chip products (and related software and reference designs) that handset and device OEMs incorporate — the classic upstream supplier position in an NPE campaign aimed at the chip layer rather than at end products.

The accused technology and the patents. Rembrandt did not accuse any Qualcomm end product; it accused Qualcomm's Bluetooth Enhanced Data Rate (EDR) chipset functionality, pleading that any Qualcomm product practicing Bluetooth 2.0 + EDR, 2.1 + EDR, 3.0 + HS, 4.0 + LE, 4.1, 4.2 or 5 infringes. The technical hook is the EDR scheme in which a packet's preamble/header (access code, header) is transmitted using a first modulation family — Gaussian Frequency Shift Keying (GFSK) — while the payload is transmitted using a second, different family — Differential Phase Shift Keying (DPSK) — after an indication of the impending modulation change. RPX indexes 70 accused Qualcomm products. The two asserted patents share a specification and a December 5, 1997 priority date (provisional 60/067,562; application 09/205,205 filed Dec. 4, 1998): U.S. 8,023,580 ("System and Method of Communication Using At Least Two Modulation Methods," issued Sept. 20, 2011; claims 2 and 59 asserted) claims a master/slave transceiver that sends discrete transmissions with a first portion modulated per a first modulation method indicating an impending change to a second method used for the payload; U.S. 8,457,228 (same title, issued June 4, 2013, a continuation of the '580; claim 21 asserted) claims a master communication device that transmits a first message in a first modulation method and then a second message whose payload uses a different-type, higher-data-rate modulation method, with address information identifying the intended slave. The C.D. Cal. and E.D. Tex. courts both construed "different types of modulation methods" as "different families of modulation techniques, such as the FSK family … and the QAM family." Critically, both patents expired on December 4, 2018 — before this suit was filed — so Rembrandt could seek only back damages (its complaint expressly claims damages for the '228 from issuance to Aug. 27, 2018, when Samsung's license and marking obligations began), plus willfulness based on Qualcomm's knowledge, which Rembrandt alleged dates to a December 3, 2013 third-party subpoena in the Samsung case. Because Qualcomm sells components rather than the accused end-user systems, the case was pleaded as direct infringement plus inducement of Qualcomm's customers.

Posture, venue, and why the case matters. Filed April 15, 2019 in the Southern Division at Santa Ana and assigned to Judge Josephine L. Staton (Magistrate Judge John D. Early), the case was deliberately filed in the manufacturers' home district alongside Rembrandt v. Broadcom Inc., No. 8:19-cv-00708 (same day, same patents, same chip-level theory) — Rembrandt's choice of C.D. Cal. is itself notable, as it inverted the usual NPE playbook and pre-empted the transfer fights that plagued the E.D. Tex. Apple case, where Judge Gilstrap refused Apple's § 1404 transfer and customer-suit stay in November 2019, reasoning in part that Apple's own IPR filings undercut its claim to be relieved of litigation burdens. Qualcomm answered and counterclaimed on June 24, 2019 (Dkt. 47), and the case proceeded through a protective order, fact discovery, and claim-construction briefing; Qualcomm moved to stay pending IPR (Dkt. 79, noticed for an April 10, 2020 hearing) and separately moved for judgment on the pleadings (noticed for May 1, 2020), while the Markman hearing was pushed from the spring to June 9, 2020 because of COVID-19 (Dkt. 87). The PTAB track ran on three fronts: (i) Samsung's 2014–15 petitions against both patents, most of which were denied institution (including, notably, IPR2014-00892, IPR2014-00889/891 (draft IEEE 802.11 standard not a printed publication), and IPR2015-00555 (discretionary denial under § 325(d)); (ii) Apple's four petitions filed November 5, 2019 (IPR2020-00033, -00034 on the '580; -00036, -00037 on the '228), which were terminated in late March 2020 after the Apple–Rembrandt settlement and dismissal of the E.D. Tex. case; and (iii) Qualcomm's own petition, IPR2020-00509, filed February 3, 2020 against claim 21 of the '228 (panel: McKone, Smith, Jivani), which was denied institution on September 14, 2020. The docket then shows a "Status Report After IPR Denials," supplemental claim-construction briefing, and a joint motion to dismiss, with the case closed on February 5, 2021 — roughly 663 days after filing. Why it is worth studying: it is a compact case study in (a) an NPE pivoting from a won jury verdict against an OEM to a supplier-level, standard-practice theory against Bluetooth chipmakers; (b) assertion of expired patents where the only exposure is past damages and § 287 marking/licensing dates drive the damages window; (c) the interplay between parallel district-court

I'll research this case's docket history, rulings, and parallel PTAB proceedings.

Good initial results. Now let me dig into the specific rulings — the stay motion, judgment on the pleadings, claim construction, and the IPR denials.

Key finding: the stay was actually granted, not just sought. Let me get the full docket to nail down ordering, the JPOL motion, and claim construction.

Rembrandt Wireless Techs., LP v. Qualcomm Inc., No. 8:19-cv-00705-JLS-JDE (C.D. Cal.)

Court/posture: Judge Josephine L. Staton; Magistrate Judge John D. Early (all discovery referred). Case flags on the docket: ACCO, CLOSED, DISCOVERY, MANADR, PROTORD, RELATED-G — the last reflecting that the case was designated related to Rembrandt v. Broadcom, No. 8:19-cv-00708-JLS-JDE, filed the same day before the same judge on the same two patents.

Important correction to the existing summary: the stay was not merely moved for — it was granted on 2020-04-09 (Doc. 79), and the case was later lifted from stay and rescheduled before the joint dismissal. That sequencing matters to the strategic story.

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1. Filing and initial pleadings

• 2019-04-15 — Complaint filed (Doc. 1). Rembrandt asserts U.S. 8,457,228 and 8,023,580 ("System and Method of Communication Using at Least Two Modulation Methods," inventor Gordon F. Bremer, priority to 1997-12-05, both expired 2018-12-04). Accusation targets Qualcomm's Bluetooth EDR chip functionality — GFSK as the "first" modulation and DPSK as the "second." Asserted claims track those Rembrandt had already litigated: claims 2 and 59 of the '580 and claim 21 of the '228. Willfulness pleaded; damages limited to pre-expiration conduct.
• 2019-04-18 — Service on Qualcomm (proof of service filed 2019-04-30, Doc. 34).
• 2019-05-02 / 2019-06-06 — Two answer extensions (Docs. 35, 45, 46), ultimately to 2019-06-24. Standard, but it pushed the case's first substantive event into the summer.
• 2019-06-24 — Qualcomm's Answer, affirmative defenses, and Counterclaim (Doc. 47, with Exhibits 1–5; corporate disclosure statement at Doc. 48). Qualcomm sought declaratory relief on the two patents alongside its defenses. Note: I could not verify from available sources whether the counterclaim was limited to non-infringement/invalidity or included inequitable conduct or antitrust/abuse theories — that detail should be confirmed against the pleading itself.
• 2019-06-25 — Scheduling conference set for 2019-08-09 (Doc. 49); 2019-08-07 — Civil Trial Order (Doc. 53).

2. Discovery milestones of note

• 2019-09-11 — Magistrate Judge Early denied the parties' first stipulated protective order as deficient (Doc. 58), requiring re-submission.
• 2019-10-02 — Protective Order (Doc. 62) and Order Governing Electronic Discovery (Doc. 63) entered.
• 2019-12-20 — Stipulated extension of Qualcomm's responsive damages contentions to 2019-12-27 (Doc. 75), indicating damages contentions were exchanged in late 2019.
• Strategic significance: Because both patents expired 2018-12-04, this was a backward-looking damages case only — no injunction vector — so discovery economics centered on past royalties and the accused-chip functionality that Qualcomm's customers (and co-defendant-in-substance Broadcom) implemented. Rembrandt's parallel Apple suit was fought over the same chip-level functionality, and Apple's transfer briefing in E.D. Tex. expressly argued that "the very same issues — i.e., whether Broadcom's and Qualcomm's chips implement Bluetooth EDR in a manner that infringes the three asserted claims" were being litigated in C.D. Cal. (Apple IPR exhibit, E.D. Tex. transfer briefing).

3. Claim construction — reached briefing and tutorial, but no Markman ruling issued

• 2019-11-15 — Joint Statement Regarding Technology Tutorial (Doc. 64); the Court scheduled a live technology tutorial for 2020-01-21 and continued the claim construction hearing to 2020-03-31.
• 2019-11-22 — Joint P.R. 4-3 Claim Construction Statement (Doc. 66).
• 2019-12-06 / 2019-12-20 — Opening and responsive claim construction briefs (Docs. 69, 73, 74), with supporting declarations and exhibits.
• 2020-03-23 — Order continuing the Markman hearing to 2020-06-09 on COVID-19 grounds (Doc. 87) (order text).
• Outcome: the Markman hearing never occurred. The April 9 stay vacated it, and although the Court later re-set claim construction for 2021-05-04 with supplemental exchanges beginning 2021-01-29, the case was dismissed first. No claim construction order was ever entered in this case. Substantively, the parties were litigating against the backdrop of the Federal Circuit's affirmance of the E.D. Tex. construction in Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 16-1729 (Fed. Cir. Apr. 17, 2017), which had affirmed the July 10, 2014 construction and the jury's finding that claims 2 and 59 of the '580 and claim 21 of the '228 were not invalid. Both sides filed "Notice of Supplemental Authority Regarding Claim Construction" — i.e., they were skirmishing over the preclusive/authoritative weight of the Samsung and other rulings rather than building a fresh construction record.

4. Dispositive motions

• Qualcomm's Motion to Stay Pending Inter Partes Review (Doc. 79), noticed for 2020-04-10. Rembrandt opposed; Qualcomm replied.
• 2020-04-09 — Stay GRANTED. Minute order granting Doc. 79, staying the action and vacating all pending hearings, requiring a joint status report

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

Plaintiff's Counsel of Record — Rembrandt Wireless Technologies, LP v. Qualcomm Inc., No. 8:19-cv-00705-JLS-JDE (C.D. Cal.)

Bottom line: Rembrandt used a three-firm structure it had deployed in its earlier Bluetooth campaign: a Houston patent boutique (Heim, Payne & Chorush LLP) and a Houston trial firm (Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing, P.C., "AZA") as outside counsel appearing pro hac vice, plus a Costa Mesa litigator (David M. Stein, Greenberg Gross LLP) as local counsel of record who filed the complaint and sponsored every PHV application. Eleven attorneys appear on the plaintiff's side in the docket's attorney list.

A threshold caveat: C.D. Cal. does not formally designate "lead counsel" on the docket. The roles below are reconstructed from (a) the signature block of the complaint, (b) the pro hac vice orders naming Stein as local counsel, and (c) how the same lawyers were docketed as "Lead Attorney" in the parallel Rembrandt matters.

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Roster

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Grounding and docket references

• Complaint, Dkt. 1 (filed 4/15/2019) — caption/ signature block names David M. Stein (State Bar No. 198256), Greenberg Gross LLP, Costa Mesa, with Michael F. Heim, Eric J. Enger, Christopher M. First, Blaine A. Larson (Heim, Payne & Chorush) and Demetrios Anaipakos, Amir Alavi, Alisa Lipski, Kyril Talanov (AZA), all "Attorneys for Rembrandt Wireless Technologies, LP," with PHV applications "to be filed." See the reproduced complaint at ptacts.uspto.gov exhibit copy (docket text of 8:19-cv-00705 embedded as an exhibit).
• Dkt. 6 (4/16/2019) — Notice of Related Case (8:19-cv-00708, Broadcom) filed by Stein.
• Dkts. 15–22 (4/19/2019) — PHV applications for Heim, First, Larson, Enger, Anaipakos, Talanov, Liao, and Alavi, each filed by Stein on behalf of plaintiff, each with the $400 fee paid.
• Dkt. 23 (4/22/2019) — Notice of Deficiency as to all eight applications (L.R. 83-2.1.3.3(a): courts of admission not listed).
• PHV orders (April–May 2019) — Judge Staton granted each application, each order "designating David M Stein as local counsel." See the docket text reproduced at Unified Patents portal and Justia docket.
• Dkt. 34 (4/30/2019) — Proof of service executed on Qualcomm, signed by Blaine Larson.
• Dkt. 87 (3/23/2020) — minute order from the § 285 / case-management proceedings listing "Attorneys Present for Plaintiff" (order PDF) — the names are not legible in the public copy I could retrieve.
• Case closure — joint dismissal, terminated 2/5/2021 (RPX Insight docket summary).

Experience notes (sourced)

• Heim / Enger / HP&C were counsel of record on Rembrandt's Federal Circuit appellee brief in Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., No. 2016-1729 (Fed. Cir.), appeal from E.D. Tex. No. 2:13-cv-00213 (Gilstrap, J.), and the same team handled Rembrandt's PTAB work (e.g., IPR2015-00114 on the '580 patent, where Pepper Hamilton's Thomas Engellenner was patent-owner lead counsel).
• AZA (Anaipakos, Alavi, Lipski, Talanov, Liao) were the co-counsel firm on that same E.D. Tex. campaign; the Fed. Cir. brief's Rule 26.1/ counsel certificate lists both firms plus Ward, Smith & Hill PLLC (Longview, TX) — the Ward firm did not appear in this C.D. Cal. case.
• Stein is the Greenberg Gross litigator who acted as Rembrandt's California anchor for both the Qualcomm (00705) and Broadcom (00708) complaints filed the same day.

Explicit gaps / unverified items

1. "Lead counsel" is inferred, not docketed. Heim and Anaipakos are described as lead because the related Rembrandt dockets list "Demetrios Anaipakos, Lead Attorney" and because Heim led the Federal Circuit briefing; the 00705 docket itself carries no lead-counsel designation.
2. Alisa Lipski's withdrawal. A "Motion of Alisa A. Lipski to Withdraw as Attorney filed by Plaintiff Rembrandt Wireless Technologies, LP" appears in plaintiff-side filing lists associated with the 2019 C.D. Cal. Rembrandt filings, but I could not confirm from the retrieved sources whether it was entered in 00705, in the companion Broadcom case (00708), or in the later Apple matter. Treat the date as unverified.
3. Two additional plaintiff-side PHV names I could not place. A PHV application for Scott W. Clark (receipt 0973-24820894) and one for Kyung ("Drew") Kim appear in plaintiff-side dockets in this family of cases; I could not confirm their firms or that they were admitted in 00705 specifically. Do not treat them as counsel of record in 00705 without a PACER check.
4. No in-house counsel of record. Rembrandt is an NPE; the only entity-side figure identified in the record is Derek Wood, Secretary of the general partner of R

I'll research the counsel of record for Qualcomm in this case.

Good initial data. Let me verify firm affiliations and check the IPR petitions for Qualcomm's full counsel team.

Now let me verify Eric C. Green and Marc B. Collier, and check Qualcomm's IPR counsel team.

Counsel of Record for Defendant Qualcomm Inc.

Bottom line: Qualcomm was represented by a Norton Rose Fulbright US LLP team, with Houston partner Richard S. Zembek as lead counsel, Austin partner-level attorney Eric C. Green as the principal brief-writing/technical counsel, Marc B. Collier (admitted pro hac vice December 2019), and Los Angeles partner David H. Ben-Meir as designated local counsel for all Central District appearances. No Qualcomm in-house attorney appears as counsel of record in the docket entries I could retrieve. All four Qualcomm pro hac vice orders are on the public docket — nothing relevant to counsel appears to be sealed.

Roster

Docket grounding

• Dkt. 35 (May 2, 2019) — first appearance: David H. Ben-Meir added for Qualcomm via stipulation extending time to answer.
• Dkt. 36–37 (May 3, 2019) — C.D. Cal. notices to Zembek and Green that they are out-of-state attorneys of record requiring PHV applications.
• Dkt. 38–42 (May 6–8, 2019) — PHV applications filed (initial ones deficient under L.R. 83-2.1.3.3(a); amended versions filed May 8).
• Dkt. 43 and 44 (May 9, 2019) — Judge Staton grants PHV to Zembek and Green, each "designating David H Ben-Meir as local counsel."
• Dkt. 47–48 (June 24, 2019) — Qualcomm's Answer, jury demand, counterclaim, and corporate disclosure statement, E-filed by Zembek.
• Dkt. 68 / 72 (Dec. 4 and Dec. 10, 2019) — Marc B. Collier's ex parte PHV application and the order granting it, again designating Ben-Meir as local counsel.
• Dkt. 70 (Dec. 6, 2019) — Qualcomm's Opening Claim Construction Brief, E-filed by Ben-Meir (local counsel filing; declaration by Green).
• Dkt. 74, 79, 82, 85, 88 (Dec. 2019–Mar. 2020) — Responsive claim construction brief, motion to stay pending IPR, motion for judgment on the pleadings, notice of supplemental authority, and stay reply, all E-filed by Zembek, with declarations from Green.
• Dkt. 89 (Apr. 9, 2020) — stay granted; Dkt. 98–100 (Jan.–Feb. 2021) — joint dismissal, dismissed with prejudice Feb. 5, 2021.

Caveats / gaps

1. Additional attorneys likely exist. UniCourt's party listing for the defendant shows "10 More Attorneys Available" beyond Green, Ben-Meir, and Zembek. I could not enumerate those names from accessible sources; they are most likely NRF associates who appeared without separate PHV orders or who signed only in exhibits/declarations. Checking the full PACER docket's "ATTORNEY TO BE NOTICED" entries (or Dkt. 47's signature block and Dkt. 51/94 Rule 26(f) reports) would resolve this.
2. Marc B. Collier's firm is unverified. Treat his firm as unknown pending review of Dkt. 68.
3. No in-house counsel identified. Qualcomm legal-department attorneys may have appeared informally or on sealed filings, but none appears in the retrieved docket text.
4. IPR counsel not confirmed here. The stay motion rested on Qualcomm's February 2020 IPRs, which correspond to IPR2020-00509 (the '228 patent) and IPR2020-00510 (the '580 patent) — those PTAB proceedings were both denied institution, prompting the joint dismissal. I did not independently confirm the PTAB counsel-of-record signatures in those two petitions, though the NRF team is the natural match; verify via the PTAB docket before relying on it.

Primary sources: Patexia docket for 8:19-cv-00705 (https://services.patexia.com/lawsuits/Rembrandt-Wireless-Technologies-LP-v-Qualcomm-Inc-id-[124373](/patent/124373)/documents); Justia docket (https://dockets.justia.com/docket/california/cacdce/8:2019cv00705/[743068](/patent/743068)); Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/California%20Central%20District%20Court/case/8:19-cv-00705); NRF bios for Zembek (https://www.nortonrosefulbright.com/en-be/people/[1006431](/patent/1006431)) and Green (https://www.nortonrosefulbright.com/en-us/people/[1016758](/patent/1016758)); IPToday/Managing IP on Ben-Meir's 2013 move to NRF (https://www.iptoday.com/news-article.asp?id=8401); Super Lawyers/Best Lawyers profiles for Zembek.