ASUSTeK Computer Inc. et al. v. Maxell, Ltd.

I'll research this case and its broader litigation context before drafting.

Case overview and background

The parties, and what kind of case this actually is. Despite the "litigation" framing, IPR2019-00071 is a Patent Trial and Appeal Board proceeding, not a district court case: ASUSTeK Computer Inc. and ASUS Computer International (collectively "ASUS," the Taiwan-based PC, notebook, tablet and smartphone maker) petitioned for inter partes review of U.S. Patent No. 6,430,498 against Maxell, Ltd., and the Board denied institution on March 14, 2019 (Paper 7). Maxell is a Japanese company founded in 1961 as Maxell Electric Industrial Co., and a genuine operating company — storage media, batteries, projectors, wireless charging, headsets — but the patents it asserts in the U.S. are largely inherited from Hitachi: Hitachi, Ltd. assigned consumer-product IP to Hitachi Consumer Electronics Co., Ltd. in 2009, which assigned it to Hitachi Maxell, Ltd. in 2013, which reorganized and renamed itself Maxell, Ltd. in 2017, expressly to align the portfolio "with the licensing, business development, and research and development efforts of Maxell" (see Maxell's complaints, e.g., E.D. Tex. No. 5:18-cv-00136, Dkt. 1 ¶ 4, and the 2023 Samsung complaint to the same effect). Maxell also planted a U.S. affiliate, Maxell Research and Development America, LLC, in Marshall, Texas, which it has used to plead a Texas presence. In short: a mid-cap Japanese operating company monetizing a Hitachi-derived consumer-electronics portfolio through licensing and serial assertion — not a classic shell NPE, but frequently described by defendants as operating as one; I did not find a judicial characterization either way, so treat that label as contested rather than established.

The technology and the patent at issue. The '498 patent, titled "Portable Terminal With The Function of Walking Navigation," claims a handset-style portable terminal that combines location information (e.g., GPS/PHS) with direction/orientation information (a compass-type input) so that the device can render walking route guidance — notably, showing the direction and distance of a destination as a line whose orientation and length, and whose distinguished start and end points, convey the guidance (claim 1, 10:30–40; the Board's decision quotes the specification at 2:56–62). Claim 1's "device for getting location information" limitation is a means-plus-function term present in all three independent claims, and it became the decisive issue. ASUS challenged all claims 1–13; the ground discussed in the decision was obviousness of claims 1–3 and 5–8 over Suzuki in view of Nosaka. The Board concluded the petition did not establish a reasonable likelihood of prevailing on any challenged claim and denied institution under 35 U.S.C. § 314(a) — a merits denial, not a discretionary one (Decision, Paper 7, Mar. 14, 2019, panels of APJs Terrence W. McMillin, John A. Hudalla, and Jason W. Melvin; text reproduced as Ex. 1014 in Apple's later IPR2020-00407/-00408/-00409, available at docketalarm PDF). I reviewed the decision as reproduced in that exhibit rather than the PTAB E2E original, so the full enumeration of grounds (the excerpt reflects the Suzuki/Nosaka ground only) is unverified; the petition is Paper 2 and Maxell's preliminary response is Paper 6 (dated Jan. 22, 2019, per Maxell's later production description in Maxell v. Apple, 5:19-cv-00036, Dkt. 161).

Procedural posture, venue, and why it matters. The IPR was one of a same-day wave of three petitions ASUS filed on October 16, 2018 against patents Maxell had asserted against it — IPR2019-00068 (U.S. Pat. 7,403,226), IPR2019-00070 (6,973,334), and IPR2019-00071 (6,430,498). The underlying suit was Maxell, Ltd. v. ASUSTeK Computer Inc., originally filed in the Central District of California (No. 2:17-cv-7528-R-MRW, Oct. 13, 2017), transferred in March 2018 to the Northern District of California before Judge Vince Chhabria (No. 3:18-cv-01788-VC, San Francisco), where Maxell asserted seven patents — the '226, '517, '498, '340, '334, '209 and '229 (Joint Claim Construction and Prehearing Statement, D.I. 113, Aug. 27, 2018) — and where "said walking navigation information" was flagged as one of the most significant terms to construe. Maxell then filed a second, Texarkana suit on November 2, 2018 before Judge Robert W. Schroeder III (E.D. Tex. No. 5:18-cv-00136), asserting additional patents including U.S. Pat. 8,982,086. The whole dispute collapsed quickly: the parties filed a Notice of Settlement and joint motion to stay in Texas on March 12, 2019 (Dkt. 5), two days before the Board's denial; the N.D. Cal. case was dismissed by order dated March 4, 2019 (Dkt. 132); the Texas case was stayed March 15, 2019 (Dkt. 7) and dismissed with prejudice on May 2, 2019 (Dkts. 9–

I'll research this case and its parallel district court litigation.

Framing note

The proceeding identified in the metadata — IPR2019-00071, ASUSTeK Computer Inc. v. Maxell, Ltd. (PTAB, filed 2018‑10‑16, institution denied 2019‑03‑14) — is not an infringement action. It is the inter partes review ASUS filed against U.S. Patent No. 6,430,498 ("Portable Terminal With the Function of Walking Navigation"), which was pending as Count I of Maxell's infringement suits against ASUS. Below I trace the infringement litigation (N.D. Cal. and E.D. Tex.) and the PTAB track together, in chronological order, and flag where a fact is not well sourced.

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1. Filing and initial pleadings

Note: I did not retrieve the N.D. Cal. answer/counterclaim entries. ASUS's invalidity contentions (2018‑03‑26) and its IPR petitions show its affirmative

I'll search for coverage of this IPR and the related district court litigation.

Mostly docket materials so far. Let me search specifically for press coverage of the Maxell-ASUS dispute and its resolution.

Let me check Law360's case page and look for any trade-press coverage of the Maxell–ASUS dispute specifically.

Press coverage of ASUSTeK v. Maxell, IPR2019-00071

Bottom line: I found essentially no substantive press coverage of this IPR. Searches across the case caption, the party names (ASUSTeK/ASUS Computer International v. Maxell), the '498 patent number, the parallel district court dockets, and settlement/verdict angles returned PTAB and district court filings, docket aggregators (Docket Alarm, Justia, RPX Insight, CourtListener), and law-firm/PTAB exhibits — but no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or JD Supra article analyzing the March 14, 2019 denial of institution. The only Law360 item I could locate tied directly to the proceeding is its PTAB case-tracker page, ASUSTek Computer Inc. v. Maxell, Ltd., which records only bare metadata — IPR, filed October 16, 2018, tech center 3600, status "Institution Denied" — with no narrative or analysis. I could not verify whether a paywalled Law360 or Bloomberg Law story exists behind that page, so the absence of coverage may be partly an artifact of paywalls rather than editorial silence.

The closest adjacent reporting concerns Maxell's parallel campaigns, not this petition. The most on-point piece I found is a Law360 report dated July 2, 2018 (retrieved as a reproduced copy filed as an exhibit in a later PTAB proceeding, so I am citing the reproduction rather than the original URL) that an E.D. Tex. jury unanimously found ZTE USA willfully infringed seven Maxell smartphone patents and awarded $43.3 million. That story describes the portfolio as covering "camera patents, a cellular data transmission patent, a power supply management patent, two audio decoding patents and a walking location patent," and quotes Maxell's counsel Jamie Beaber of Mayer Brown saying "we're very happy for our client and we think the jury got this one right." One caution: that "walking location patent" is not the '498 patent at issue here — the patents-in-suit Law360 listed are U.S. Nos. 6,748,317, 8,339,493, 8,736,729, 6,408,193, 6,329,794, 6,816,491 and 8,098,695, i.e., a sibling from the same Maxell/Hitachi walking-navigation family. It is therefore useful only as evidence of how outlets valued Maxell's navigation-family patents, not as coverage of the ASUS petition.

The silence contrasts sharply with how the press treated Maxell's other defendants, and the record shows why. Public reporting has focused on cases where money moved: Law360's Maxell, Ltd. v. Samsung Electronics case page tracks a May 2025 jury verdict of roughly $111.7 million, a September 19, 2025 ruling by a Texas judge "overriding a jury's May verdict that the South Korean company owed $112 million," and an October 31, 2025 PTAB decision invalidating most challenged claims in two Maxell smart-device patents "which were the subject of a since-overturned $112 million jury verdict." By contrast, the ASUS matter ended quietly: the N.D. Cal. case (No. 3:18-cv-01788-VC) was dismissed without prejudice on March 4, 2019 after the parties reported a resolution, and the E.D. Tex. case (No. 5:18-cv-00136) was dismissed with prejudice by final judgment on May 2, 2019, each side bearing its own costs — docket facts recorded in Justia's docket and Docket Alarm's E.D. Tex. docket. Because the settlement terms were never disclosed and no damages figure, injunction, or executive statement entered the public record, there was no news hook — which likely explains the absence of coverage better than any judgment about the petition's significance.

What the press record does not contain, and where I'd flag sourcing limits. I found no article reporting on the substance of the Board's denial — specifically the claim-construction dispute over means-plus-function limitations such as "a device for getting location information" that Maxell pressed in its preliminary response and that later surfaced in Apple's IPR2020-00408 challenge to the same patent. The only discussions of that reasoning I located are in party filings and PTAB exhibits (e.g., Maxell's preliminary response and Apple's later invalidity contentions citing "IPR2019-00071, Paper 7 (P.T.A.B. Mar. 14, 2019)"), not in trade press. Any narrative about the denial's doctrinal importance would therefore be my analysis rather than reported journalism, and I have not attributed one to any outlet.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• The PTAB Relled On The “Infrared Ray Sensor” Requirement To Overcome Prior Art And Maintain Patentability
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• Case 2:17-cv-07528 Document 1 Filed 10/13/17 Page 1 of 32 Page ID #:1
• IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Maxell Ltd. v. Apple Inc, 5:19-cv-00036 - CourtListener.com - REDACTION to 372 SEALED PATENT MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U
• Case IPR2019- 00255U
• IPR2019- 01101 (Patent 7,221,904 B1) IPR2019- 01102 (Patent 7,848,701 B2) IPR2019- 01103 (Patent 7,979,023 B2) IPR2019- 01105...
• Search court records
• Case 5:19-cv-00036-RWS Document 165-4 Filed 12/17/19 Page 1 of 112 PageID #: 7420
• 99. On information and belief, Defendants further infringe the '226 Patent through additional products utilizing the same or rea...

I'll research this. Note at the outset: IPR2019-00071 is a PTAB proceeding, not a district court infringement case, so the "plaintiff" role maps to the petitioner, ASUSTeK Computer Inc. / ASUS Computer International. Let me locate the actual papers.

Let me pull the actual petition and mandatory notice from the PTAB docket.

Let me find the petition itself and the parallel ASUS–Maxell IPR filings signed by the same counsel.

Threshold clarification

Two corrections before the names, because they change who you're actually looking for:

1. IPR2019-00071 is not an infringement case. It's an inter partes review at the PTAB. ASUS is the petitioner; Maxell is the patent owner. There is no "plaintiff."
2. The parallel infringement suit is Maxell, Ltd. v. ASUSTeK Computer Inc. & ASUS Computer International, No. 3:18-cv-01788 (N.D. Cal., filed Mar. 22, 2018; originally C.D. Cal. 2:17-cv-07528, transferred Mar. 20, 2018). There, Maxell is the plaintiff and ASUS is the defendant — the reverse of the IPR alignment.

So I'll give you both sides, keyed to the IPR you named, with the plaintiff side of the infringement case flagged.

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A. Petitioner's counsel in IPR2019-00071 (the party listed as "plaintiff" in your metadata)

Alston & Bird LLP represented ASUS across the entire five-petition ASUS–Maxell wave (IPR2019-00067, -00068, -00069, -00070, -00071), all filed October 16, 2018 against different Maxell patents. Thomas Davison's firm biography expressly lists him as "[c]ounsel for petitioners ASUSTeK Computer Inc. and ASUS Computer International" in all five proceedings, including IPR2019-00071.

Sourcing caveat (important): I was able to confirm Alston & Bird's representation of ASUS in IPR2019-00071 from the firm's own attorney bio and from the counsel/service lists in the companion IPR2019-00068 papers. I was not able to open the IPR2019-00071 Paper 2 petition/mandatory notice itself, so the specific lead vs. back-up designation in that proceeding is inferred from the companion filings rather than read directly off its § 42.8(b)(3) notice. The proceeding was denied institution on March 14, 2019 (Paper 7), so no counsel ever withdrew or was substituted.

B. Patent owner's counsel in IPR2019-00071 (the plaintiff in the underlying infringement suit)

Mayer Brown LLP defended Maxell in the IPR wave. Confirmed from the service list in the IPR2019-00068 termination decision (Paper 9, May 20, 2019):

• Robert Pluta — Mayer Brown LLP (rpluta@mayerbrown.com)
• Michael Word — Mayer Brown LLP
• Amanda Streff Bonner — Mayer Brown LLP
• Luiz Miranda — Mayer Brown LLP
• Saqib Siddiqui — Mayer Brown LLP

In the district court case, Maxell's lead counsel was Kfir B. Levy (with Christopher J.C. Waldon and David M. Stein), who appeared for Maxell at the May 15, 2018 case management conference (Dkt. 98) and filed Maxell's case management papers. The N.D. Cal. docket also lists Alison T. Gelsleichter, Baldine B. Paul, James A. Fussell III, Jamie B. Beaber, Patricia L. Peden, Tiffany A. Miller and William J. Barrow as Maxell-side attorneys — note these appear to span more than one firm and possibly in-house capacity; I could not verify each one's firm from the available records, so I'd treat that list as unconfirmed.

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C. Procedural posture, for context

ASUS challenged claims 1–13 of U.S. Pat. No. 6,430,498 ("Portable Terminal With The Function of Walking Navigation") on five grounds built on Suzuki, Nosaka, Colley, Ellenby and Norris. The Board (APJs McMillin, Hudalla, Melvin) denied institution under § 314(a) on March 14, 2019, finding no reasonable likelihood of prevailing on any claim. The panel adopted a means-plus-function construction of "a device for getting location information" that Maxell itself did not dispute — a construction Maxell later had to litigate against as a potential prosecution disclaimer in Maxell v. Apple, No. 5:19-cv-00036 (E.D. Tex.). ASUS's related petitions fared better on the termination front: IPR2019-00068 settled and was terminated May 20, 2019 (Paper 9), and IPR2019-00070 was terminated April 12, 2019.

No sealed filings or missing appearances to report — every paper in IPR2019-00071 is public, and counsel of record is identifiable.

I'll research this. Note first: this is a PTAB inter partes review, so the "defendant" in the case caption (Maxell, Ltd.) is the patent owner / respondent — that's whose counsel of record I'll identify.