Huawei Technologies Co., Ltd. v. Maxell, Ltd.

I'll research this case carefully. Note upfront: the metadata describes an IPR before the PTAB, not a district court action, so I'll verify the related litigation posture rather than assume a district court docket.

Good grounding. Now let me verify the '897 patent's subject matter and the PTAB specifics.

Now let me verify the PTAB docket specifics for IPR2019-00464 and its parallel IPRs.

I'll research this matter. Note at the outset: the case metadata describes a PTAB inter partes review (IPR2019-00464), not a district court infringement suit — so the "litigation" chronology here is the IPR proceeding plus any parallel district court actions between these parties. Let me verify the facts.

Now let me pin down the PTAB docket specifics and the district court chronology.

I'll verify each of the supplied articles and search for additional coverage of this specific IPR.

Now let me verify each of the eight supplied articles — several look potentially off-topic.

Let me check the remaining roundups for any Maxell/'897 discussion, and verify the non-legal articles.

Press coverage of Huawei v. Maxell, IPR2019-00464

Bottom line: there is essentially no press coverage of this IPR itself. IPR2019-00464 was filed 2018-12-21, never instituted, and was terminated roughly four months later on 2019-04-17 as part of a ten-proceeding global settlement. That lifecycle is simply too short and too uneventful to generate trade-press attention. What does exist is coverage of the settlement that caused the termination, and it reports on the companion Eastern District of Texas litigation rather than on the Board proceeding.

The one substantively on-point article. Law360 (Nadia Dred, "Maxell, Huawei Reach Terms To End Smartphone Patent Suit," 2019-02-21) reported that Huawei "reached a deal with Japanese electronics manufacturer Maxell," that the terms were confidential, and that the parties told the Texas court that "all matters in controversy between the parties have been settled in principle." Law360 noted the timing was significant — the deal was announced "only three days before a scheduled hearing" — and characterized it as ending "the two-year ordeal that kicked off in November 2016," including a March 2018 episode in which Maxell moved to sanction Huawei for a "complete disregard" for discovery orders that "reached new heights." Law360 further reported the Huawei settlement "came weeks after" Maxell's similarly confidential settlement with ZTE USA, which followed a June 2018 jury verdict in Maxell's favor. Law360's report of the Huawei settlement is dated one week after the parties' 2019-02-15 email to the PTAB advising that they had "reached a settlement resolving all disputes between the parties" — the trigger for the Board's 2019-03-01 authorization order in all ten proceedings, including this one. (Caveat on sourcing: the law360.com original sits behind a paywall; the full text I verified is a Law360 reprint hosted on PTACTS. The article index page is Law360.)

Two things the reporting gets fuzzy, which is worth flagging. First, Law360 captioned the settled case as Maxell Ltd. v. Huawei Device USA Inc., No. 5:16-cv-00178 — but the '897 patent at issue in this IPR was asserted in the later suit, Maxell v. Huawei Device USA, No. 5:18-cv-00033 (E.D. Tex., filed 2018-03-02), per the P.R. 4-3 joint claim construction statement listing the '897 among the patents-in-suit. In other words, the press framed the deal as ending the 2016 case, while the docket shows it swept up the 2018 case and the IPR family together. Second, no article reports any dollar figure attributable to Huawei: the only number in the coverage — the $43.3 million willful-infringement verdict — is the ZTE verdict, not a Huawei outcome. Anyone citing "$43.3 million" in connection with Huawei would be misreading the record. Law360's own PTAB case page for the IPR lists the proceeding as terminated with a filing date of January 16, 2019, which conflicts with the 2018-12-21 petition date in the case metadata and in IPVerse and Docket Alarm; that discrepancy is a docketing artifact in the press database, not a reported fact.

The remaining supplied articles do not cover this case, and I want to be plain about that rather than manufacture a connection. IPWatchdog (2020-03-25) mentions Huawei, but only in connection with WSOU Investments' NPE campaign against Huawei — a dozen complaints on former Alcatel-Lucent/Nokia assets — with no reference to Maxell or the '897 patent. IPWatchdog (2020-07-23) covers Takeda/VYVANSE, Snap's denied me-too joinder petitions against BlackBerry, and gig-economy targets; no Maxell. IPWatchdog (2021-01-21) covers Fortress's 5G SEP entry, Judge Gilstrap's reexam stay, and a Fintiv transfer; the PTAB table I reviewed contains no IPR2019-004xx entries involving Maxell. Two caveats on my own diligence: my search budget ran out before I could open the 2021-01-09 and 2021-04-16 IPWatchdog roundups, Bloomberg (2021-04-08), the GlobeNewswire automotive-HUD release, or the Yahoo Finance power-bank release, so I cannot state from direct inspection that those have zero references to this matter. What I can say is that none surfaced in any search tied to this case, that the two market-research items are on their face industry market-sizing reports with no litigation content, and that the Bloomberg piece concerns pandemic-era Texas jury verdicts — while the Maxell verdict relevant here (against ZTE) was June 2018, before that window. I'd treat all five as non-responsive until someone confirms otherwise against the full text.

What no one has reported. There is no outlet — not Reuters, Bloomberg Law, Law360, IPWatchdog, or Patently-O — that covered IPR2019-00464 on its own terms: no institution decision to report, no Federal Circuit appeal, no PTAB analysis of the '897 patent's claims, and no disclosed settlement consideration. The settlement agreement was filed as Confidential Exhibit 1021 under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) with a request to keep it separate from the patent file, so the terms were never going to surface in press reporting. Any account asserting what Huawei paid, or that the '897 patent was or wasn't invalidated, is unsourced.

Sources

• DOCKET NO

• Maxell, Huawei Reach Terms To End Smartphone Patent Suit
• Huawei Technologies Co., Ltd. v. Maxell Ltd.
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Maxell Ltd. v. Huawei Device U.S. Inc. - Maxell contends that the inventors of the '794 Patent used their own terminology to refer to hardware/software components that p...
• Maxell Ltd. v. Huawei Device U.S. Inc. - Maxell Ltd. v. Huawei Device U.S. Inc.
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Huawei Device Co., Ltd. v. Maxell, Ltd.
• IPR2019-00192 | Huawei Technologies Co Ltd v. Maxell Ltd | Ex Parte
• UNITED STATES PATENT AND TRADEMARK OFFICE
• IPR2019-00192 - Huawei Technologies Co Ltd v. Maxell Corp - IPR2019-00192 - Huawei Technologies Co Ltd v. Maxell CorpReport Error

I'll research the counsel of record for Huawei (the petitioner/plaintiff-side party) in IPR2019-00464 and its companion proceedings.

Good leads. Let me confirm the actual counsel listed in the IPR2019-00464 petition and power of attorney.

Let me pull the actual docket and the joint motion's signature blocks to verify counsel.

Correction on posture

IPR2019-00464 has no "plaintiff" in the Rule 3 sense — there is no district court complaint in this docket. The party the question targets is Huawei Technologies Co., Ltd., the petitioner. Maxell, Ltd. is the patent owner/respondent. I've treated "plaintiff-side counsel" as petitioner's counsel of record. (Also flagging a metadata artifact: the GreyB/IPVerse database captions this proceeding "Huawei Technologies Co., Ltd. v. TAKAHASHI et al" — the inventors of the '897 patent — rather than v. Maxell, Ltd., which is how the Board and Law360 caption it; the parties are the same.)

Petitioner's counsel of record

Basis and confidence level. The single directly on-point source for this docket is the IPVerse/GreyB case record for IPR2019-00464, which lists "Petitioner Counsel: Michael Hawkins" and "Respondent Counsel: Robert Pluta" (IPVerse). Hawkins' registration number, firm, and Minneapolis address are confirmed from a Fish & Richardson-authored Huawei/ZTE filing (PTACTS exhibit), and the Fish team (Hawkins, Hoff, Leung, Bisenius, Stephens, Nelson, Huang) under Customer No. 26191 is confirmed as Huawei's appointed PTAB counsel in Huawei's 2019 power of attorney. However, I could not retrieve the IPR2019-00464 petition signature block, its Power of Attorney (Paper 1), or its Mandatory Notices to confirm exactly which Fish attorneys were named in this proceeding. The backup-counsel rows above are therefore inference from the contemporaneous Huawei/Fish POA and team roster, not a verified reading of this docket. Treat Hawkins as verified; treat the backups as highly likely but unconfirmed. I did not invent any name — every attorney listed appears in a Huawei-authored POA or a Fish/Huawei signature block.

A contradiction to flag, and a likely trap

The earlier-generated "In the news" section correctly identifies the joint motion to terminate (Paper 7, filed 2019-04-10 in the nine-case batch including IPR2019-00464) but does not name counsel. That motion is signed on behalf of Huawei by Fish & Richardson, consistent with Hawkins as lead.

The trap is Covington & Burling. Covington (David A. Garr, lead; Gregory S. Discher and Anupam Sharma, backup; Customer No. 26853) was Huawei's PTAB counsel in the earlier Maxell wave — e.g., Huawei Device Co. v. Maxell, IPR2018-00246 on the '901 patent, where Covington's Garr/Discher POA is of record and Maxell's Mayer Brown POA responds in kind. Anyone assembling Huawei's Maxell counsel list will collide Covington and Fish. For this docket (filed 2018-12-21), the available record points to Fish & Richardson, not Covington. Note also that Covington's Garr team appears in Huawei Device filings while this petition was filed by Huawei Technologies Co., Ltd.; the RPI identification in the petition itself should be checked before attributing Covington here.

What is not available

• No PACER record exists — this is a PTAB proceeding; the operative docket is PTAB E2E / Patent Trial and Appeal Board End-to-End, with third-party mirrors at Docket Alarm, Patexia, and PTACTS.
• No local counsel and no pro hac vice admissions — those are district-court concepts; neither appears in an IPR.
• The settlement agreement is sealed. It was filed as Confidential Exhibit 1021 with a concurrent § 317(b) request to keep it business confidential and separate from the patent file (see the substantively identical Joint Motion to Terminate, IPR2019-00462 Paper 7). Counsel identities are not sealed, but the engagement terms and any indemnity/retention arrangements are.
• No institution decision, no FWD, no oral hearing — the Board terminated before institution (termination date April 17, 2019 per IPVerse; the order granting termination and the refund of Huawei's fees appear in the sibling dockets, e.g., IPR2019-00576 Papers 9 and 11, Patexia). Because nothing was instituted, there are no Board orders evaluating counsel conduct and no § 315(b) or real-party-in-interest rulings naming attorneys.

Counterparty counsel (for cross-reference only)

Maxell's side was represented by Mayer Brown LLP, Washington, D.C. — Robert Pluta as the listed respondent counsel in IPR2019-00464 per IPVerse, with Jamie B. Beaber appearing for Maxell in the companion '901 IPR. This is patent-owner counsel, not the party you asked about; it is included so the record isn't mistaken for Huawei-side.

Verification steps I'd run before publication

1. Pull Paper 1 (Petitioner's Power of Attorney) and Paper 3/4 (Mandatory Notices) from the IPR2019-00464 docket on PTAB E2E to confirm the exact lead/backup designations in this case — this is the one fact I could not nail down.
2. Pull Paper 2 (Petition) signature block to confirm Fish & Richardson and the filing attorney, and to confirm the real parties in interest (Huawei Technologies Co., Ltd. alone, or with Huawei Device USA/HiSilicon).
3. Confirm the accord filing date. Law360's case page lists "Filed: January 16, 2019" for Huawei Technologies Co., Ltd. v. Maxell Ltd. (Law360), whereas the case metadata and IPVerse both give 2018-12-21 as the petition filing date. This is not a conflict about counsel, but it is a conflict: 2019-01-16 is most plausibly the Board's Notice of Accord Filing Date (compare IPR2019-00576, petition filed Jan. 16, 2019, accord date Feb. 4, 2019), and the earlier "In the news" section should be read as dated by the petition, not the accord.

I'll research this. Note an important framing point up front: IPR2019-00464 is a PTAB proceeding, so the "defendant" in this case is the patent owner, Maxell, Ltd. (the respondent). There is also a parallel district court action, Maxell Ltd. v. Huawei Device USA, Inc., No. 5:18-cv-00033 (E.D. Tex.), where Huawei is the defendant. I'll cover both, since the question spans "this patent infringement case."

Good — I've located the key primary documents. Let me verify the specific IPR2019-00464 papers and current firm affiliations.

Now let me confirm the exact counsel designations in the 2019 IPR family and check the local/in-house counsel in the district court case.

Counsel of Record — Framing

Two different "defendant" positions exist in this matter, and they are often conflated:

I address both below, with the caveat that the IPR-side roster is reconstructed (see §4).

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1. Maxell, Ltd. — Respondent / Patent Owner in IPR2019-00464

Maxell's PTAB representation in the Huawei campaign was a single, stable Mayer Brown team. The roster below is drawn from Maxell's § 42.8 mandatory notices in the same Huawei/Maxell IPR family (IPR2019-00192, dated 2018-11-29) and IPR2018-00246, dated 2017-12-12, and from the service list on the family's joint motion to terminate. GreyB/IPVerse's docket entry for IPR2019-00464 records Robert Pluta as the sole respondent counsel for this proceeding specifically.

No local counsel appears on the PTAB side — as expected, since the Board does not require a local sponsor. No Maxell in-house attorney is identified in any public filing; Maxell's IP function sits in Japan (its § 42.8 notices give Kyoto/Yokohama addresses), but no in-house lawyer signed or was designated as counsel in this record.

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2. Maxell's Local Counsel in the Parallel Texas Suit

Covington's 2017 power of attorney in the earlier Huawei IPR confirms the two-track structure, directing courtesy service to "Jamie B. Beaber, Mayer Brown LLP" and "Geoff Culbertson, Patton, Tidwell & Culbertson, LLP" as Maxell's litigation counsel.

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3. Huawei's Defense Counsel — Maxell v. Huawei Device USA, No. 5:18-cv-00033 (E.D. Tex.)

Since the question asks about "defendant(s)" in the infringement case, the Huawei side is:

For the PTAB side, Huawei's counsel of record was different: GreyB records Michael T. Hawkins (Fish & Richardson P.C., Minneapolis) as petitioner counsel in IPR2019-00464, consistent with Huawei's Customer No. 26171 Fish & Richardson powers of attorney used in its 2019–2020 filings (Hawkins, Bisenius, Stephens, Huang, Darby, Park, Reger, Strand). Covington (David A. Garr, Gregory S. Discher, Anupam Sharma) had handled Huawei's 2017–18 Maxell IPRs, so the Fish & Richardson substitution appears to post-date those proceedings.

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4. Sourcing Caveats — Read Before Citing

• I could not open the IPR2019-00464-specific § 42.8 mandatory notice. The roster in §1 is the correct team and matches GreyB's