Realtek Semiconductor Corp. v. LSI Corp.
2013 U.S. Dist. LEXIS 71311
| N.D. Cal. | 2013Background
- Realtek sues LSI Corporation and Agere Systems LLC for breach of RAND licensing obligations by initiating an ITC Section 337 action before offering a RAND license.
- The disputed standard is IEEE 802.11 WLAN (Wi‑Fi); Agere owns the '958 and '867 patents asserted as essential.
- Agere issued Letters of Assurance promising to license RAND on a worldwide, non-discriminatory basis and on reasonable terms, prior to standard adoption.
- Prior correspondence (2002–2003) suggested a license to Realtek for 802.11b, but no binding license was offered and communications ceased.
- In March 2012, LSI asserted infringement and filed the ITC 337 action naming Realtek; the ITC investigation 337-TA-837 followed (April 2012).
- Realtek requested a RAND license in May 2012; LSI/Agere sent a RAND proposal in June 2012, which was sealed; the court later held the proposal insufficient to cure the RAND breach.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether filing ITC action before offering RAND license breached RAND | Realtek argues breach per se under RAND commitments. | LSI/Agere contend no binding license existed and no per se breach proven. | Yes; initiation of ITC action before offering RAND license breached RAND obligations. |
| Whether a preliminary injunction is appropriate to restrain ITC relief | Injunctive relief necessary to prevent irreparable harm and maintain RAND integrity. | Injunction premature or unnecessary; not irreparably harmed yet. | Grants preliminary injunction barring ITC exclusion/injunctive relief pending RAND determination. |
| Whether the case should be stayed pending ITC resolution | Stay not warranted; RAND issues can be decided independently. | Courts should stay to avoid duplicative proceedings. | Denied stay; proceed with RAND determination in this court. |
Key Cases Cited
- Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012) (RAND commitments can create contract-like obligations; injunctions may conflict with RAND.)
- Apple Inc. v. Motorola Mobility, Inc., 869 F.Supp.2d 901 (N.D. Ill. 2012) (Injunctions and RAND obligations; FRAND considerations limit injunctive relief.)