Litigation

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

settled/dismissed with prejudice

2:06-cv-01225

Patents at issue (1)

6118486

Summary

Sanyo sued MediaTek and its ASUS customers in C.D. California. The Stanford NPE Litigation Database, keyed to patent 6118486, lists the '486 patent as at issue in this case. It was settled/dismissed with prejudice as part of the same global Sanyo-MediaTek settlement.

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 before drafting. Let me start with parallel searches.

Interesting — the '486 patent appears in MediaTek's own suit against Sanyo in E.D. Tex. I need to untangle that. Let me dig further.

Key legal developments & outcome

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

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

Sanyo Electric Co. v. MediaTek, Inc., No. 2:06-cv-01225 (C.D. Cal.) — Litigation Timeline & Analysis

Source-quality note up front: this case is a 2006–2007 matter that settled before any Markman hearing or trial in California. Primary documents are thin on the open web; I was able to verify the Federal Circuit record and the E.D. Tex. companion-case record directly, but the C.D. Cal. docket itself (complaint, answer, counterclaims, scheduling orders, dismissal order) is not available in the free sources I could reach. Items below marked [verified] are grounded in a retrieved document; items marked [unverified] are inferences or open questions I could not close.

1. Filing and initial pleadings

  • 2006 — Sanyo files the California action [verified as to existence/venue]: Sanyo Electric Co., Ltd. sued MediaTek, Inc., ASUSTek Computer, Inc., and ASUS Computer International in C.D. Cal., No. 2:06-cv-01225. The Federal Circuit's mandamus order describes the subject matter as "Sanyo's patents related to CD-ROM chips." (In re MediaTek, Inc., 230 F. App'x 970 (Fed. Cir. 2007)). ASUSTek/ASUS were customer defendants — buyers of MediaTek optical-storage/video chipsets — the classic chipmaker-plus-OEM joinder structure.
  • Exact filing date, assigned judge, and the full patent list remain unconfirmed [unverified]. The Stanford NPE Litigation Database entry for case 2:06-cv-01225 is keyed to U.S. Pat. Nos. 5,867,819; 5,751,356; 6,487,616; and 6,118,486 (https://npe.law.stanford.edu/cases-by-patent). Note the important wrinkle below.
  • Pleadings-stage nuance worth flagging for the case summary: the '486 patent metadata in this case is likely a counterclaim artifact, not a Sanyo assertion. In MediaTek's parallel Texas suit, MediaTek pleaded that it "is the owner of the '819, '486, and '356 patents by assignment," and described the '486 as "Synchronized Multiple Format Video Processing Method and Apparatus," issued 2000-09-12 (MediaTek, Inc. v. Sanyo Elec. Co., No. 6:05-cv-323 (E.D. Tex.), Second Amended Complaint, https://insight.rpxcorp.com/litigation_documents/[2377627](/patent/2377627)). Three of the four patents Stanford keys to the California case ('819, '356, '486) are precisely MediaTek's Texas patents — strongly suggesting that MediaTek asserted them defensively as counterclaims against Sanyo in California, and that the NPE database captured those counterclaims. So "patent 6118486 at issue in Sanyo v. MediaTek" is accurate only in the sense that it was in the case via MediaTek's counterclaims. [inference from verified pleadings; California counterclaim document itself not retrieved]
  • Answer/counterclaims: not retrieved. Given the Texas pleading above, expect MediaTek counterclaims for infringement of the '819, '486 and '356 patents plus declaratory judgment of non-infringement/invalidity of Sanyo's patents, and willfulness allegations on both sides. [unverified]

2. Parallel Texas action and early motion practice

  • No. 6:05-cv-323 (E.D. Tex., Tyler Div., Judge Leonard Davis) — MediaTek's mirror-image offensive case against Sanyo Electric and Sanyo North America on the '819, '486 and '356 patents, in Judge Davis's fast-track patent docket. This is the strategic spine of the dispute: MediaTek deliberately raced to a Texas trial date to preempt Sanyo's California case.
  • MediaTek's lead counsel later recounted the sequencing: "several months before we filed our action, Sanyo had filed its own multipatent case in the Central District of California," and MediaTek "secured a trial date four months ahead of Sanyo's California case" (Stephen S. Korniczky, Sheppard Mullin, Law360 interview, 2013-05-03, https://www.sheppardmullin.com/assets/htmldocuments/1191.pdf). Caveat: that account places the California filing before the Texas filing, which sits awkwardly with the case numbers (6:05-cv-323 vs. 2:06-cv-01225). Possible explanations are an earlier 2005 Sanyo California suit later superseded/consolidated into the '06 case — I could not verify this. [conflict flagged, not resolved]
  • Motions to dismiss / transfer / stay: I found no evidence of a Rule 12(b) dismissal motion, a § 1404(a) transfer motion, or a stay motion in either case. What motion practice I can document is discovery and claim-construction driven. Treat the absence as a research gap, not a finding. [unverified]

3. Claim construction (Markman)

  • The only substantive Markman rulings I could verify are from the Texas companion case, not California:
  • California Markman: none reached. Given the settlement timing (§6 below), the C.D. Cal. case did not produce a claim construction order that I can locate. If a Markman order exists, it is the single most important document still to retrieve from PACER. [unverified]

4. Discovery milestones of strategic significance

The one documented, appellate-level discovery fight is the advice-of-counsel privilege battle, and it is genuinely significant:

  • Sanyo pleaded willfulness, so MediaTek produced some counsel opinions but withheld others — including opinions on the patents in suit that related to different chips or to chip designs never implemented, and opinions that did not address invalidity.
  • Sanyo moved to compel. The magistrate judge credited deposition testimony that the withheld opinions concerned infringement and/or invalidity of the patents in suit, ordered production, and told MediaTek to raise relevance by motion in limine. The district court denied MediaTek's motion for reversal, finding no clear error.
  • 2007-02-07 — MediaTek petitions the Federal Circuit for a writ of mandamus (Misc. No. 844), alternatively moving to defer resolution pending the en banc In re Seagate Technology (Misc. 830

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 counsel appearances for this case.

Bottom line

I could not retrieve the actual docket sheet or any filed pleading from No. 2:06-cv-01225 in free sources (the case predates RECAP coverage in C.D. Cal., and the Justia/Plainsite/RPX records for this docket expose party and patent data but not the attorney/party association). The one attorney name I can tie to Sanyo with documentary support is Patricia A. Martone, who appears as Sanyo's counsel of record in the related Federal Circuit mandamus proceeding arising out of this very case. Everything else in the "plaintiff's counsel" column is unverified, and I have flagged it as such rather than filling the gap.

Plaintiff's counsel — verified

Attorney Role Firm / office Note
Patricia A. Martone Lead / trial counsel for Sanyo Electric Co., Ltd. (respondent in the mandamus) Then a partner at Kenyon & Kenyon LLP, New York, NY — firm affiliation is from background knowledge and was not confirmed in today's searches; treat as unverified Career patent litigator (electronics/semiconductor and consumer-electronics dockets); she is the attorney the Federal Circuit copied as Sanyo's counsel in the mandamus over MediaTek's privileged opinion letters.

Source for the appearance: In re MediaTek, Inc., Misc. No. 844 (Fed. Cir. Mar. 27, 2007) (nonprecedential order denying mandamus), which cc's "James C. Otteson, Esq." (petitioner MediaTek) and "Patricia A. Martone, Esq." (respondent Sanyo Electric Co., Ltd.) — https://storage.courtlistener.com/pdf/2007/04/03/In_Re_Mediatek.pdf. The order describes the underlying suit as "Sanyo[’s] … infringement of Sanyo's patents related to CD-ROM chips," naming this C.D. Cal. action, and recites the magistrate/district judge discovery rulings on MediaTek's advice-of-counsel waiver.

What I could not verify (and am not guessing at)

  • The complaint's caption block / first-page counsel list. The 2006 complaint in 2:06-cv-01225 is not in free RECAP; I could not confirm which firm filed it or whether Martone was listed as lead on the complaint itself.
  • Local counsel. C.D. Cal. practice would ordinarily require a California-bar signer alongside a New York firm; I found no record identifying that attorney and will not invent one.
  • Any second-chair, of-counsel, or in-house (Sanyo Electric Co., Ltd., IP Dept., Osaka / Sanyo North America) attorney. No source retrieved associates a named in-house lawyer with this docket.
  • Whether ASUS's counsel overlapped (irrelevant to your question but often confused in secondary sources) — not addressed here.

Corroborating case facts (useful for the counsel narrative)

  • The C.D. Cal. suit was Sanyo's multi-patent offensive case filed after MediaTek's E.D. Tex. action (MediaTek, Inc. v. Sanyo Electric Co., No. 6:05-cv-00323 (E.D. Tex., Judge Leonard Davis)), which asserted the '819, '486 and '356 patents — MediaTek's own portfolio. MediaTek's lead counsel there was Stephen S. Korniczky (then Paul Hastings, San Diego; now Sheppard Mullin), with Sam Baxter (McKool Smith) as attorney-in-charge. Korniczky's Law360 Q&A confirms Sanyo filed "its own multipatent case in the Central District of California" several months earlier, that the California case had a later trial date, and that "the night before we were to give opening argument, the parties agreed to settle both suits" — https://www.sheppardmullin.com/assets/htmldocuments/1191.pdf.
  • The '486 patent's appearance in the C.D. Cal. case should be read alongside the E.D. Tex. case, where MediaTek pleaded ownership of the '486 (Second Am. Compl., Oct. 27, 2005) — i.e., the '486 may have entered 2:06-cv-01225 via counterclaim rather than as an asserted Sanyo patent. The Stanford NPE database lists the '486 under 2:06-cv-01225 without indicating asserting party: https://npe.law.stanford.edu/patent/6118486.

How to close the gaps (recommended next step)

Pull the PACER docket for 2:06-cv-01225 (C.D. Cal., "Sanyo Electric Co Ltd v. Mediatek Inc et al," closed) and read: (1) the complaint's signature block; (2) all Notices of Appearance / Association of Counsel; (3) the stipulation of dismissal with prejudice and settlement-related filings, which typically list every appearing attorney with bar numbers and firm/address; and (4) Dkt. entries corresponding to the discovery orders challenged in Misc. No. 844 (the joint stipulation and the briefing will carry full signature blocks for both sides). Law360's 2007 settlement coverage of the Sanyo–MediaTek global resolution is the best secondary confirmation of the plaintiff-side team.

Confidence summary: High that Martone represented Sanyo in this litigation (Federal Circuit cc line + case description). Low/unverified on her firm at the time, on local counsel, and on any additional plaintiff-side attorneys — those are open items, not findings.

Defendant representatives

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

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

Let me look for the actual docket and filings.

Bottom line on sourcing

I was not able to retrieve the actual docket sheet for C.D. Cal. No. 2:06-cv-01225 within this session's searches. No RECAP/CourtListener, Justia, Plainsite, or GovInfo mirror of that docket surfaced, which is consistent with a 2006–07 case that settled before trial and predates most free docket coverage. PACER itself is paywalled and I cannot pull it. So I can give you counsel who are documented in the parallel Sanyo–MediaTek litigation — from which the C.D. Cal. defense team was drawn — but I will not dress that up as a docket-verified appearance list for 2:06-cv-01225. Below, each name is tagged with its actual source.

1. MediaTek, Inc. — documented counsel

Attorney Role Firm / office Source & experience note
James C. Otteson Lead counsel (MediaTek's principal outside patent counsel in this litigation cluster) Wilson Sonsini Goodrich & Rosati, Palo Alto, CA Listed as counsel for petitioner MediaTek, Inc. in In re MediaTek, Inc., Fed. Cir. No. 07-M844 (mandamus pet. filed Feb. 7, 2007) — the Federal Circuit petition arising out of the Sanyo–MediaTek patent disputes (Justia docket). Also appeared for MediaTek in the earlier Zoran Corp. v. MediaTek, N.D. Cal. No. 5:04-cv-02619 (see RECAP Doc. 454 signature block).
Michael A. Ladra Lead/co-lead trial counsel for MediaTek Wilson Sonsini Goodrich & Rosati, Palo Alto, CA (Bar No. 64307) Same signature block, Zoran Corp. v. MediaTek (N.D. Cal.), appearing "for Defendants and Counterclaimants MEDIATEK, INC., MINTEK DIGITAL, INC., et al." (RECAP PDF). WSGR was MediaTek's long-standing U.S. patent litigation firm in this era.
Stephen S. Korniczky Lead counsel for MediaTek in the parallel Texas action only (MediaTek v. Sanyo, E.D. Tex. No. 6:05-cv-323) — do not assume C.D. Cal. appearance Sheppard, Mullin, Richter & Hampton LLP, San Diego / Del Mar, CA Law360 Q&A (May 3, 2013): "I represented the plaintiff in MediaTek Inc. v. Sanyo Electric Co., before Judge Leonard Davis in the Eastern District of Texas," describing the race to trial against "Sanyo's California case" and the settlement the night before openings (Sheppard Mullin PDF). Co-chair of Sheppard Mullin's IP practice; 25+ years of patent, ITC and Federal Circuit work.

Not identified: any MediaTek in-house attorney of record. MediaTek (Taiwan) typically appeared through outside counsel in this period; I found no corporate counsel signature on any filing in these matters.

2. ASUSTek Computer, Inc. and ASUS Computer International — counsel not identified

I found no attorney names for the ASUS entities in connection with 2:06-cv-01225. The ASUS defendants were joined as MediaTek's downstream customers (the standard chipset-vendor/customer alignment), and the settlement announcement confirms they were parties to the California action: Sanyo's claims ran "against MediaTek and its customers ASUSTek Computer, Inc. and ASUS Computer International in California" (CDRinfo settlement report). It is likely they were represented by separate counsel — commonly a California local-counsel firm plus ASUS's own IP counsel — but I have no sourced name, so I am not naming anyone. Treat this as an open item.

3. One substantive flag on the case metadata

The Stanford NPE database entry keyed to 6,118,486 lists this case, but note that the '486 patent, together with U.S. 5,867,819 and 5,751,356, was MediaTek's patent family asserted against Sanyo in E.D. Tex. No. 6:05-cv-323 — Judge Leonard Davis construed all three in his March 26, 2007 memorandum opinion (GovInfo). The same three patent numbers appear on the Stanford page for case 2:06-cv-01225. That is a strong hint the Stanford record is capturing MediaTek's counterclaim patents (or is a database artifact), not solely patents Sanyo asserted. This matters for your counsel analysis: it means the defense side in 2:06-cv-01225 was likely also prosecuting affirmative counterclaims, which is exactly the role WSGR/Otteson played in the Federal Circuit mandamus. MediaTek's own Q3 2006 financial report describes a dense web of C.D. Cal. and E.D. Tex. claims and counterclaims between the parties (MediaTek Q3 2006 report). I'd verify the '486 ownership/asserting party before relying on the case summary's framing.

4. How to close the gaps (concrete steps)

  1. PACER: docket for 2:06-cv-01225-CAS (C.D. Cal., filed ~Feb. 2006). Pull entries 1–40; appearances are usually Docs. 8–25 (corporate disclosure statements, notices of appearance, and the ASUS defendants' answer).
  2. Companion case: check 2:05-cv-03257 (Sanyo's April 7, 2005 C.D. Cal. filing against MediaTek, per MediaTek's Q3 2006 report) and 2:05-cv-08751-type numbers for MediaTek's C.D. Cal. counterclaim on U.S. 6,003,151 — counsel there is likely counsel here.
  3. Dismissal papers: the with-prejudice dismissal stipulation (mid-2007) will carry signature blocks for all appearing counsel of record — the single best one-stop source.
  4. Federal Circuit No. 07-M844 briefs (Otteson for MediaTek) will state the district-court appearances and identify Sanyo's team, including Craig N. Hentschel (listed on the Justia docket as counsel for respondent Sanyo Electric — plaintiff side; firm not confirmed by me, so I am not stating one).

Confidence summary: Otteson/Ladra (WSGR) as MediaTek's counsel — high confidence as the defense team in the Sanyo disputes, moderate as to a specific 2:06-cv-01225 appearance. Korniczky — high confidence