Litigation

Apple Inc. v. Maxell, Ltd.

terminated due to settlement

IPR2020-00199

Filed
2019-12-19
Terminated
2021-04-20

Patents at issue (1)

6329794

Plaintiffs (1)

Defendants (1)

Summary

Apple challenged claims 1-3 and 5-14 of U.S. 6,329,794; the PTAB instituted on June 19, 2020, and terminated the proceeding on April 20, 2021 due to 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 thoroughly before drafting.

Good foundation. Now let me dig into the patent itself, the Fintiv analysis, and Maxell's background.

Let me get the specifics of Apple's grounds, the panel's institution reasoning, and the parallel IPR outcomes.

Key legal developments & outcome

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

I'll research this case and its parallel district court litigation. Note that IPR2020-00199 is a PTAB proceeding, so I'll trace both the IPR and the underlying district court case.

Now let me dig into the district court docket details: pleadings, motions to dismiss/transfer/stay, and Markman.

Let me pin down the Markman order details, transfer ruling, and summary judgment outcomes.

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll search across several angles for press coverage of this IPR and the underlying Apple–Maxell litigation.

Found a Law360 piece. Let me widen the search for other outlets and angles.

Now let me look specifically for PTAB/IPR-focused coverage and any Reuters/Bloomberg/analyst reporting.

Press coverage of Apple Inc. v. Maxell, Ltd., IPR2020-00199

Bottom line: there is essentially no press coverage of this IPR as a standalone proceeding. I searched the caption, the party names, the '794 patent number, and settlement/verdict angles, and found no article from Reuters, Bloomberg Law, Law360, IPWatchdog, Patently-O, Ars Technica, The Verge, or any trade outlet that reports on the institution decision, the Board's June 19, 2020 institution order, or the April 20, 2021 termination as events in their own right. The '794 IPR surfaces in the press only as one strand of the much larger Apple–Maxell campaign in the Eastern District of Texas, and the single article I found that discusses its disposition at all is a settlement story.

What the coverage does report. Law360 (Christopher Cole, 2021-03-23) reported that Maxell "reached a settlement with Apple in Texas federal court just before heading to trial," that the parties "also called off a proceeding at the Patent Trial and Appeal Board," and that "terms of the deal to end the district court case were not disclosed." Law360 described the timing precisely: the parties told Judge Robert W. Schroeder III at the close of jury selection on Monday, March 22, 2021, that they had a deal, and Maxell filed a sealed proposed order the day before. On the '794 patent specifically, Law360 reported that Apple "was challenging 13 claims of a patent on power management techniques for 'controlling power consumption' in information processing devices" — a figure that matches the claims actually challenged (1-3 and 5-14) — and that "that patent was among those excluded from the upcoming Texas trial." Coverage of the surrounding litigation is otherwise procedural: Law360's case index lists reporting on the original March 2019 complaint over FaceTime and Find My Friends (2019-03-15), the DLA Piper disqualification fight (2020-10-28 through 2021-03-02), Maxell's "scorched earth" discovery allegations (2020-03-24), the COVID-era remote source-code review (2020-06-26), the trial continuance (2020-12-01) and Apple's failed bid to postpone trial over vaccination concerns (2021-03-15). Earlier, Bloomberg Law (2019-10-24) reported that Judge Schroeder denied Apple's motion to dismiss the induced-infringement claims on 2019-10-23, quoting the court that "advertising the benefits of the accused functionalities gives rise to a reasonable inference that Apple intended to induce its customers to infringe." Mainstream coverage came from the ITC case, not the IPR: the Daily Mail, carrying Associated Press reporting, covered the Commission's 2020-08-19 Section 337 investigation into Apple mobile devices, tablets, smartwatches, and laptops.

Numbers and stated significance. No outlet reported a damages figure, royalty rate, or settlement amount for the Apple case. Law360 reported only that Maxell's amended complaint sought "damages, costs and 'in no event less than a reasonable royalty'" on ten patents and that the court in February 2021 forced Maxell to narrow to six. Outlets framed significance institutionally rather than financially: Law360 treated the case as notable principally because of the eve-of-trial timing and the parallel PTAB tracks, and National Law Review (2020-11-11) cited Apple Inc. v. Maxell, Ltd., Nos. 20-2132, -2211, -2212, -2213, 21-1033 (Fed. Cir. Oct. 30, 2020) in its roundup of non-precedential orders holding the Federal Circuit lacks jurisdiction to review § 314(a) discretionary denials — significance that attaches to Maxell's other petitions, not to IPR2020-00199.

Where accounts diverge from the record — and from each other. Law360's "two of the patents in dispute had been scheduled for inter partes review" understates the record: the Board's April 20, 2021 termination order resolved four instituted Apple IPRs in a single order (IPR2020-00199, -00200, -00202, -00204), and Law360's "two" appears to describe the proceedings consolidated for oral argument that week rather than the full set. Law360 also reported the '794 patent as simply "excluded from the upcoming Texas trial," which is accurate but glosses over the mechanism — Maxell's March 19, 2021 unopposed motion to dismiss the '794 claims without prejudice, in which Maxell also agreed "not to institute any legal action or administrative proceeding against Apple or any Apple products on the '794 patent until the conclusion of the inter partes review proceedings on that patent (IPR2020-00199)" (E.D. Tex. Dkt. 679). Counsel reporting shifted between outlets in a way that reflects a real change rather than an error: Bloomberg Law in October 2019 listed O'Melveny & Myers and Gillam & Smith for Apple, while Law360 in March 2021 listed DLA Piper and Gillam & Smith — consistent with DLA Piper's later appearance and the disqualification dispute Law360 covered. Beyond that, I found no analyst commentary, no executive statements from Apple or Maxell, and no industry-reaction quotes about this IPR; the non-English items I located (Chinese and French trade blogs on the ITC probe, and a Chinese translation of a World Intellectual Property Review piece on the October 2019 motion-to-dismiss ruling) are derivative and add no independent reporting. Settlement terms remain unavailable — the Board granted the parties' request to keep the Settlement and License Agreement confidential and separate under 35 U.S.C. § 317(b).

Sources

Plaintiff representatives

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

I'll research the counsel of record for this proceeding. First, let me flag an important issue and check the primary sources.

Important nuance emerging — let me verify who actually represented Apple as petitioner in this IPR (versus in the district court).

Confirmed the petitioner-side roster. Now let me pull firm bios and office details for each attorney.

Threshold correction before the roster

The case metadata for IPR2020-00199 lists "Plaintiff(s): Apple Inc." / "Defendant(s): Maxell, Ltd.," but that alignment does not hold in either forum, and the answer depends on which one you mean:

  • In the PTAB proceeding itself there is no plaintiff or defendant. Paper 11 (June 19, 2020) and the April 20, 2021 termination order caption the matter Apple Inc., Petitioner v. Maxell, Ltd., Patent Owner. Apple is the petitioner; Maxell is the patent owner.
  • In the co‑pending infringement suit — Maxell, Ltd. v. Apple Inc., No. 5:19‑cv‑00036‑RWS (E.D. Tex.) — Maxell was the plaintiff and Apple the defendant. That is the only "patent infringement case" in which these parties were aligned as plaintiff/defendant.

So I have set out (A) counsel of record for Apple, the petitioner (the party the metadata identifies as plaintiff), and (B) counsel for Maxell, which is who actually appeared as plaintiff in the underlying infringement action. Flagging this rather than guessing, as instructed.

A. Counsel of record for Apple Inc. (petitioner) in IPR2020-00199

The Board's own April 20, 2021 termination order — which resolved IPR2020-00199, -00200, -00202 and -00204 in a single order — carries the operative counsel block: "PETITIONER: Jennifer C. Bailey, Adam P. Seitz, Paul R. Hart, ERISE IP, P.A." (termination order). All three are Erise IP, P.A., a boutique IP firm headquartered in the Kansas City metro.

Attorney Role Firm / office Note
Jennifer C. Bailey (Reg. No. 52,583) Lead counsel for petitioner Erise IP, P.A., 7015 College Blvd., Suite 700, Overland Park, KS 66211 Erise shareholder and head of its patent prosecution group; was lead counsel on the first-filed IPR under the AIA; Patexia Top 25 best-performing IPR attorneys for petitioners (2023, 2025); IAM Strategy 300; Chambers Band 1 (Kansas); former president of the Association of IP Firms.
Adam P. Seitz (Reg. No. 52,206) Back-up counsel Erise IP, P.A., Overland Park, KS Erise co-founder (left Shook Hardy & Bacon with Eric Buresh in 2012); lead E.D. Tex. trial lawyer (Sony, NetScout, Garmin); firm named a Law360 IP Group of the Year in 2022.
Paul R. Hart (Reg. No. 59,646) Back-up counsel Erise IP, P.A., 5299 DTC Blvd., Suite 1340, Greenwood Village, CO 80111 (Denver metro) Signed Apple's notices of appeal in the companion Maxell IPRs (IPR2020-00408, IPR2020-00597), so he carried the appellate handoff as well. Public bio detail on him is thin — I found no standalone firm profile.

Verification notes:

  • This is the counsel of record as of termination, not necessarily as of filing. I retrieved the April 20, 2021 order and the June 19, 2020 institution decision, but not the face of the Petition (Paper 1) with its original § 42.8(b)(3) designation. No substitution of counsel appears in the record, and the same Erise trio appears in Apple's filings across the Maxell IPR family, so a change mid-stream is unlikely but not affirmatively excluded.
  • Erise was the PTAB team specifically. Apple used a different firm in Texas (see below). Luann Simmons of O'Melveny & Myers averred in the district court case that "Apple also retained the services of an intellectual property law firm, Erise IP, P.A." to search and analyze prior art (Simmons Decl., Dkt. 130-2).
  • No in-house counsel appeared. Apple identified only Apple Inc. as real party-in-interest; no Apple legal-department attorney is listed in the counsel block.
  • Robin A. Snader (Erise, Reg. No. 66,085) appears on the signature blocks of the sibling Maxell petitions (e.g., IPR2020-00203, IPR2020-00407). She is not named in the April 20, 2021 counsel listing for -00199, so I do not list her as of record here.
  • Nothing about the counsel designation is sealed; only the Settlement and License Agreement was kept separate under 35 U.S.C. § 317(b), so there are no signature blocks to mine from that document.

B. Contrast: Apple's counsel in the district court (a different team)

Worth stating explicitly, because searching "Apple's lawyers in Apple v. Maxell" surfaces this group, not Erise:

  • O'Melveny & Myers LLP — lead counsel of record for Apple in E.D. Tex.; Luann L. Simmons (San Francisco) described herself as "lead counsel of record for Defendant Apple Inc." Other O'Melveny appearances on the docket included Anthony Gene Beasley, Bill Trac (San Francisco), and Bradley M. Berg, Brett J. Williamson, Bo Kyoung Moon and Cameron W. Westin (Newport Beach) (E.D. Tex. docket, Ex. 2004).
  • Gillam & Smith LLP — local counsel: Andrew Thompson ("Tom") Gorham (Tyler, TX) and Bobby Lamb (Marshall, TX).
  • DLA Piper — later appeared for Apple, consistent with the disqualification fight and the March 2021 Law360 counsel listing noted in the press section of this summary.

On appeal to the Federal Circuit (the § 314(a) denial appeals, Nos. 20‑2132, ‑2211, ‑2212, ‑2213, 21‑1033), Apple's appellate counsel were Mark D. Selwyn, Mark C. Fleming, David Lehn, Catherine Carroll and David L. Cavanaugh — the WilmerHale appellate group — per the Federal Circuit dockets (20‑2213; unicourt 20‑2132 series). Those appeals arose from Maxell's other patents, not the '794 IPR.

C. For completeness: Maxell's counsel (Maxell was the actual plaintiff)

In the IPR (as patent owner): Mayer Brown LLP — Robert G. Pluta (lead), Amanda S. Bonner, Luiz Miranda, James A. Fussell, William J. Barrow and Saqib J. Siddiqui, all on the same April 20, 2021 order. Pluta was also Maxell's Federal Circuit appellee counsel.

In the E.D. Tex. infringement suit (as plaintiff): Mayer Brown — Jamie B. Beaber (Washington, DC), Alan M. Grimaldi (Washington, DC) and Robert G. Pluta — with Shane A. Nelson of Park, Vaughan, Fleming & Dowler LLP (Houston) appearing on the docket in a local-counsel posture. Beaber signed Maxell's March 19, 2021 unopposed motion to dismiss the '794 claims without prejudice (Dkt. 676).

I have not independently confirmed Nelson's formal designation as local counsel (the docket extract lists him adjacent to the Maxell party block rather than in a labeled role), so treat that characterization as provisional.

What I could not verify

  1. The Petition's original counsel-designation page (Paper 1) — only the institution and termination orders.
  2. Paul R. Hart's current biographical details beyond his registration number, Erise affiliation and Denver-area office.
  3. Whether Erise's engagement letter or any Apple in-house attorney was disclosed anywhere in the record; nothing suggests either was.

Sources: IPR2020-00199 institution decision, Paper 11 · [April 20, 2021 termination order](http://e.casetext.com/admin

Defendant representatives

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

I'll research the counsel of record for Maxell, Ltd. (the patent owner / defendant in this IPR) across the PTAB docket and related proceedings.

Now let me pin down the power of attorney / lead-and-backup designations and each attorney's background.

Let me locate the actual IPR2020-00199 Patent Owner filings to confirm the designations in this specific proceeding.

Counsel of record for the defendant — Maxell, Ltd. (Patent Owner), IPR2020-00199

Terminology note. In this proceeding the party alignment is inverted from the case-metadata labels: Apple Inc. is the Petitioner (challenger) and Maxell, Ltd. is the Patent Owner — i.e., the "defendant" side. Maxell is the sole real party-in-interest (PTAB Paper 5, cited in the June 19, 2020 Institution Decision at 2), and it was represented throughout by a single firm, Mayer Brown LLP, with no local counsel (none is required at the Board) and, so far as the record shows, no Maxell in-house attorney appearing of record.

The operative counsel listings are (i) Patent Owner's Mandatory Notices under 37 C.F.R. § 42.8 (Paper 5, filed at the preliminary-response stage), and (ii) the caption block of the April 20, 2021 Termination Order, which resolves IPR2020-00199 together with IPR2020-00200, -00202 and -00204.

Counsel table

Name Role Firm / office Reg. No. Note
Robert G. Pluta Lead counsel Mayer Brown LLP — Chicago, 71 S. Wacker Dr. 50,970 Maxell's lead PTAB and Federal Circuit lawyer across the whole Apple campaign; former senior IP counsel at Motorola Mobility; Mayer Brown describes him as having been "lead counsel in over 100 IPR proceedings." Also Maxell's appellee counsel in Apple Inc. v. Maxell, Ltd., Nos. 20-2132/-2211/-2212/-2213, 21-1033 (Fed. Cir.).
Amanda Streff Bonner (a/k/a Amanda K. Streff) Back-up counsel Mayer Brown LLP — Chicago 65,224 Member of the Maxell PTAB team in the Apple IPRs; also signed Maxell's March 19, 2021 unopposed motion to dismiss the '794 claims in E.D. Tex. (Dkt. 679) alongside Pluta. Still representing Maxell in later Samsung IPRs.
Luiz A. Miranda Back-up counsel Mayer Brown LLP — Chicago 74,762 Listed on the April 20, 2021 termination order and in Maxell's counsel table in the parallel Apple–Maxell IPRs (e.g., IPR2020-00408/-00409).
James A. Fussell Back-up counsel Mayer Brown LLP — Washington, DC, 1999 K St. NW 54,885 Member of Maxell's PTAB group in the Apple matters; listed on the termination order and on Maxell's § 42.8 notices in the companion IPRs.
Saqib J. Siddiqui Back-up counsel Mayer Brown LLP — Washington, DC 68,626 Listed on the termination order; continues as one of Maxell's core PTAB partners (named with Pluta and Bonner in Mayer Brown's September 2026 announcement of a Director-review win for Maxell against Samsung).
William J. Barrow Back-up counsel (appears in the 2021 termination-order listing) Mayer Brown LLP — Washington, DC 62,813 Appears in Maxell's counsel block in the companion Apple IPRs and in the E.D. Tex. trial team; note that he does not appear in the earlier § 42.8 counsel table I retrieved from IPR2020-00409, so his addition in -00199 was likely effected by an updated mandatory notice I could not retrieve.

Points of caution / what I could not verify

  • Jamie B. Beaber (Mayer Brown, DC) was Maxell's district court lead attorney in Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036-RWS (E.D. Tex.) — the docket lists him as "LEAD ATTORNEY … ATTORNEY TO BE NOTICED" — and he signed Maxell's PTAB papers with the notation "Pro Hac Admission to be Sought." However, he is not named in the Board's counsel listing for IPR2020-00199 in the termination order, and I found no evidence he filed a pro hac vice appearance in this IPR. Treat his IPR role as unconfirmed; his documented role is the parallel litigation.
  • No local counsel and no in-house counsel appear in any IPR2020-00199 filing I located. Maxell's correspondence address of record for service was c/o Pluta plus a firm service mailbox (Maxell-Apple-Service@mayerbrown.com).
  • The Institution Decision (Paper 11) itself does not list counsel; do not cite it for appearances. Use Paper 5 and the April 20, 2021 termination order (which cites the Joint Motion at Paper 27 and Joint Request at Paper 28).
  • Continuity caveat: in June 2023, in a later Maxell IPR, Pluta (lead) and Bonner, Miranda, Fussell, Nese and Siddiqui (back-up) moved to withdraw in favor of Banner & Witcoff, Ltd. That has no bearing on IPR2020-00199, which had already terminated in April 2021, but it means current Mayer Brown rosters should not be used to describe present appearances in this case.

Counterparties (for orientation only)

Apple's PTAB team in these IPRs was Erise IP, P.A. — Adam P. Seitz, Paul R. Hart, Jennifer C. Bailey (and Robin A. Snader in some of the companion proceedings) — not the O'Melveny & Myers / DLA Piper teams that appeared for Apple in E.D. Tex. Maxell's district-court trial team from Mayer Brown also included Graham M. Buccigross (Palo Alto), Bryan C. Nese, Kfir B. Levy, William J. Barrow, Michael L. Lindinger, Alison T. Gelsleichter and Clark S. Bakewell (all DC), per the E.D. Tex. pretrial counsel block (Dkt. 641).

Sourcing: PTAB Papers 5, 11, 27, 28 and the Apr. 20, 2021 Termination Order in IPR2020-00199 (reproduced at https://e.casetext.com/admin-law/maxell-ltd-14 and https://www.docketalarm.com/cases/Texas_Eastern_District_Court/5--19-cv-00036/Maxell_Ltd._v._Apple_Inc/docs/646/1.pdf); E.D. Tex. Dkts. 641 and 679; Fed. Cir. dockets 20-2132 and 21-1033; Mayer Brown attorney profiles and firm news releases.