Sanyo Electric Co., Ltd. v. MediaTek Inc.

I'll research this case across multiple sources before drafting.

Case Overview: Sanyo Electric Co., Ltd. v. MediaTek Inc., No. 2:06-cv-01225 (C.D. Cal.)

Parties and their business. Sanyo Electric Co., Ltd. is a Japanese consumer-electronics and components manufacturer based in Osaka — in the mid-2000s it was one of the world's largest suppliers of optical pickup units for DVD players (roughly a 36% share of that market in 2006), and also made DVD recorders/players, batteries, and projectors. It is squarely an operating company, not an NPE: the Stanford NPE Litigation Database classifies Sanyo as a "product company" asserter in this very action rather than a patent-assertion entity (Stanford NPE database, case 2:06-cv-01225). The defendant, MediaTek Inc., is a Taiwanese fabless semiconductor designer headquartered in Hsin-Chu City, Taiwan, whose business at the time was "the designing, manufacturing, and supply of integrated circuit chips and decoders" — principally optical-disc controller and MPEG decoder SoCs for CD-ROM/DVD drives and players (MediaTek's own party allegations and annual report language are set out in its parallel Texas complaint, E.D. Tex. No. 6:05-cv-323, Second Amended Complaint; MediaTek Q4-2006 report). The two companies were not strangers: they had been DVD-platform collaborators — Sanyo supplying the traverse/optical pickup unit and MediaTek the LSI chip and PCBA — before becoming adversaries; a 2007 University of Tokyo MMRC working paper estimates MediaTek silicon sat in more than 90% of Chinese-brand DVD players by 2003, a market the Sanyo-MediaTek platform helped create (MMRC Discussion Paper 146). That combination — a Japanese component giant whose customer base was being commoditized by Taiwanese chip platforms — is the commercial engine behind the suit.

Accused technology and patents. Sanyo's California complaint targeted MediaTek's optical-disc controller / AV-decoder chipsets and the drives and players built around them; the Federal Circuit's later mandamus order describes the case in exactly those terms: "Sanyo sued MediaTek et al. for infringement of Sanyo's patents related to CD-ROM chips" — and it confirms the case turned on willfulness and advice-of-counsel opinions concerning "the allegedly infringing chips" (In re MediaTek, Inc., 230 F. App'x 970 (Fed. Cir. Apr. 3, 2007)). The case metadata lists six asserted patents — U.S. Nos. 5,751,356; 5,499,252; 5,818,801; 6,594,213; 6,487,616; and 6,003,151. Technical sketches, with sourcing cave

I'll research this case across dockets, opinions, and secondary sources before building the chronology.

I'll research the docket and related sources for plaintiff-side counsel in this case.

Sourcing caveat first

I could not pull the actual PACER docket sheet for 2:06-cv-01225 in this session, so counsel identification below is drawn from court opinions issued in the Sanyo–MediaTek California litigation and from the Federal Circuit's mandamus order — not from a docket-entry-by-docket-entry review. Two things follow from that:

1. Case-number discrepancy you should know about. The published C.D. Cal. claim-construction/summary-judgment opinions in the Sanyo v. MediaTek litigation carry docket number CV 05-2580 RSWL (JTLx) before Judge Ronald S.W. Lew — not 2:06-cv-01225. See Sanyo Elec. Co. v. MediaTek Inc., No. CV 05-2580 RSWL (JTLx) (C.D. Cal. Aug. 17, 2006) (order denying MediaTek's MSJ of noninfringement of U.S. Patent No. 5,818,801), https://ipmall.law.unh.edu/sites/default/files/hosted_resources/Markman/pdfFiles/2006.08.17_SANYO_ELECTRIC_CO_LTD_v._MEDIATEK.pdf. Either the California action was filed under 05-2580 with 06-1225 as a related/second-filed case (consistent with the multiple-patent, multi-round structure described in the Sheppard Mullin practitioner account, https://www.sheppardmullin.com/assets/htmldocuments/1191.pdf), or the metadata's number reflects a separate filing. The attorney roster below is the same core Sanyo team across both California and the parallel Texas action, so it is reliable for "who represented Sanyo," and I flag the role labels as inferred.
2. Roles are not stated in the sources. No opinion I found labels anyone "lead counsel" or "local counsel." The role designations below are my inference from (a) which firm signed the substantive briefs, (b) the C.D. Cal. local-counsel practice requiring a California-barred attorney of record alongside pro hac vice counsel, and (c) the Federal Circuit's service list.

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Plaintiff-side counsel of record — Sanyo Electric Co., Ltd.

Lead / merits counsel — Ropes & Gray LLP, New York, NY

Local counsel — Dykema Gossett PLLC, Los Angeles, CA

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Corroborating context (parallel E.D. Tex. action, Sanyo side)

In MediaTek, Inc. v. Sanyo Electric Co., No. 6:05-cv-00323-LED (E.D. Tex.), Sanyo's side was staffed by Ropes & Gray (Douglas E. Chin, Boston; Christopher J. Place, Gabrielle Higgins, Sasha Rao, East Palo Alto; J. Steven Baughman and Kaede Toh, Tokyo; Martone, De, Hagiwara, Chang, Chow, Herman, Chinta, New York), Dykema Gossett (Hentschel, Los Angeles), Townsend & Townsend & Crew (Andrew T. Oliver, Palo Alto), and Kramer Levin (Morris, New York). The 2007 E.D. Tex. order is the source: https://www.ipmall.info/sites/default/files/hosted_resources/Markman/pdfFiles/2007.05.03_MEDIATEK_INC_v._SANYO_ELECTRIC_CO_LT.pdf. The same two-firm core (Ropes & Gray as merits counsel, Dykema Gossett as California counsel) across both suits is the basis for my role inferences above.

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What I could not verify — stated explicitly

• No Sanyo in-house counsel appears anywhere in the opinions, the Federal Circuit order, or the firm-published accounts I found. If in-house lawyers were on the pleadings, they are not reflected in public sources.
• No appearance data or pro hac vice orders for 2:06-cv-01225 specifically. I did not confirm which of the above attorneys formally entered appearance in that numbered action, whether additional counsel appeared only in the 2006 case, or whether any filing was sealed. The roster should be treated as "documented counsel in the California Sanyo–MediaTek litigation," with 2:06-cv-01225 not independently docket-verified here.
• I did not locate a Law360 or Reuters item naming Sanyo's counsel; the settlement coverage I found addresses the deal terms (cross-licenses, dismissal with prejudice on June 1, 2007) but not the appearance list

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

Let me pull the docket and related filings.

Bottom line up front

I could not retrieve a PACER/RECAP docket sheet for C.D. Cal. No. 2:06-cv-01225 in the searches available to me, and pre-2008 Central District dockets are frequently outside RECAP's coverage. So I cannot give you a complete, docket-verified attorney roster (lead / local / in-house). What I can confirm is one lead defense-side name from a published Federal Circuit order in the companion mandamus proceeding, plus a probable second name that I believe is actually opposing counsel. I've flagged confidence levels explicitly rather than filling gaps.

MediaTek's counsel (defendant side)

James C. ("Jim") C. Otteson — lead counsel (confirmed)

• Firm at the time: not verified. His current Dechert LLP profile (Senior Counsel, Silicon Valley/Palo Alto — 3000 El Camino Real, Palo Alto, CA) lists among his representative matters: "MediaTek adv. Sanyo in patent case filed by Sanyo in the Central District of California involving patents relating to optical drive controller chips and consumer DVD chips. After winning two key summary judgment motions that severely limited Sanyo's damages claim, case settled a month before trial (in May 2007) for less than 1% of Sanyo's expected recovery." Dechert's bio expressly notes some listed matters were "handled at Dechert or prior to joining the firm," so do not assume Dechert was counsel of record in 2006–07 without checking the docket. (He was at Wilson Sonsini Goodrich & Rosati as of 2001 in the Oak Technology v. UMC matter, and later Howrey Simon Arnold & White appears in related filings — his firm moved during this period.)
• Source: Dechert attorney PDF (https://www.dechert.com/people/o/jim-otteson-.pdf); Federal Circuit order in In re MediaTek, Inc., Misc. No. 844 (Fed. Cir. Apr. 3, 2007), which cc's "James C. Otteson, Esq." as counsel in the C.D. Cal. proceeding.
• Experience note: 25+ years of IP litigation; tried a dozen-plus patent/IP cases in district court and the ITC; represented MediaTek both as defendant (against Sanyo, C.D. Cal.) and as plaintiff in the parallel E.D. Tex. action; also MediaTek v. Zoran/Oak and Broadcom v. Microtune.

Patricia A. Martone — do NOT list as MediaTek counsel (probable Sanyo/respondent counsel)

• She appears as the second cc on the same Fed. Cir. order in In re MediaTek, where MediaTek was petitioner and Sanyo the respondent. The conventional reading is Otteson for petitioner/MediaTek and Martone for respondent/Sanyo. I was unable to verify her firm for this matter, but she is a well-known Fitzpatrick Cella Harper & Scinto (New York) patent litigator with a Japanese-client practice. Treat this as unconfirmed — I did not find a filing placing her on MediaTek's side, and listing her as defense counsel would likely be an error.

Local counsel / in-house (unknown)

• No source identified any C.D. Cal. local counsel or MediaTek in-house attorney appearing in 2:06-cv-01225. Note that C.D. Cal. does not mandate local counsel, so an out-of-district firm such as Otteson's may have appeared alone.

Related counsel — same client, different case (do not conflate)

These names are MediaTek-side counsel but in the parallel Eastern District of Texas action, MediaTek, Inc. v. Sanyo Electric Co., No. 6:05-cv-323 (E.D. Tex., Judge Leonard Davis), not in the C.D. Cal. case where MediaTek was the defendant:

• Stephen S. Korniczky — Sheppard Mullin Richter & Hampton LLP, San Diego/Del Mar; lead counsel for MediaTek as plaintiff in the Texas action. Law360 Q&A, May 3, 2013 (https://www.sheppardmullin.com/assets/htmldocuments/1191.pdf). Because the two suits settled together on the eve of the Texas trial, he is likely to appear in the global settlement papers, but I found no evidence of an appearance in 2:06-cv-01225.
• Ali Shalchi — then Sheppard Mullin (now own practice, Newport Beach); lists MediaTek, Inc. v. Sanyo Elec. Co. (E.D. Tex.) on his Avvo case list, again plaintiff-side in Texas.

What is missing and how to close it

To make this answer docket-grade, pull the following from PACER (C.D. Cal., 2:06-cv-01225):

1. The Answer and Counterclaims (MediaTek's first responsive pleading, ~spring 2006) — signature block lists every defense attorney and firm.
2. Any Notice of Appearance / Substitution of Attorney and the Stipulation of Dismissal (entered June 1, 2007) — settlement papers normally carry full signature blocks for both sides.
3. The Civil Minutes / scheduling orders, which list "Appearing for Defendant" and any pro hac vice orders (useful for identifying local counsel).
4. The corporate disclosure statement (Fed. R. Civ. P. 7.1) for MediaTek's in-house signatory.

Sourcing caveats

• Confirmed: Otteson acted for MediaTek against Sanyo in the C.D. Cal. case (his own firm bio), and he was on the Federal Circuit service list in the mandamus arising from that case.
• Unconfirmed: his firm affiliation in 2006–07; Martone's side and firm; existence or identity of local trial counsel; any in-house MediaTek attorney.
• Not found / not claimed: I did not locate a sealed-vs-unsealed determination for the appearances, nor any Law360 or Reuters item naming the C.D. Cal. defense team. I have not invented any names to fill those slots.