IPR2019-00640

I'll research this proceeding and its linked litigation.

Case Overview — IPR2019-00640 ([[Huawei Technologies Co.](/litigations/by-plaintiff/Huawei%20Technologies%20Co.), Ltd.](/litigations/by-plaintiff/Huawei%20Technologies%20Co.%2C%20Ltd.) v. Maxell, Ltd., U.S. Patent No. 6,928,306)

Parties and roles. This is not a district-court infringement suit but an inter partes review at the USPTO's Patent Trial and Appeal Board, so the caption polarity is inverted from litigation: the "defendant" in the case metadata, Maxell, Ltd., is the patent owner, and the petitioner is Huawei Technologies Co., Ltd. Maxell is a Japanese consumer-electronics manufacturer (formerly Hitachi Maxell) with a long history in magnetic tape/optical media, batteries and small electronics; since roughly 2016–2017 it has run an active U.S. licensing and enforcement program built substantially on inherited Hitachi consumer-electronics patents, asserting large multi-patent portfolios against smartphone and device makers rather than behaving as a classic shell NPE — it is an operating company monetizing a legacy portfolio. Huawei is the Chinese telecommunications-equipment and handset maker. The IPR was filed by Huawei's counsel at Fish & Richardson, against Maxell's counsel at Mayer Brown (Robert Pluta, Amanda Bonner, Saqib Siddiqui, Bryan Nese, Luiz Miranda), a division of labor confirmed by the Board's March 1, 2019 order and the corresponding docket entries on the companion proceedings. IPR2019-00640 was one of nine IPRs Huawei filed against Maxell in early 2019 over nine different Maxell patents — a coordinated counter-attack to Maxell's E.D. Tex. campaign, not a stand-alone challenge.

The technology and patents. U.S. Patent No. 6,928,306, titled "Portable Mobile Unit," issued August 9, 2005, claims priority to January 7, 2000, and names Shigeto Oeda as inventor. In one line: it claims a portable mobile unit (a cell phone) that alerts the user to an incoming call with a ringing sound generated from a combination of at least two different sound sources — e.g., an FM synthesis sound source, a PCM sound source, or melody data in MIDI/MP3 format — under a controller that fires the ringtone when the incoming signal arrives within a preset time zone or calendar-based period. The accused technology in the parallel litigation was the ringtone and alerting functionality of Huawei smartphones and tablets (the Mate 9 identified as the exemplar, plus a long list of Ascend/Honor/Mate/P-series devices), with Maxell alleging both direct and indirect infringement of claims 2, 5, 6, 13, 14 and 15. The '306 patent traveled with the same family into the later Apple case, where Apple attacked claims 12 and 15 as patent-ineligible under § 101, characterizing the invention as the abstract idea of "combining sounds from at least two sound sources."

Procedural posture and why it matters. The IPR was part of Huawei's response to Maxell, Ltd. v. Huawei Device USA Inc. and Huawei Device Co., Ltd., No. 5:18-cv-0033-RWS (E.D. Tex., Texarkana Division), filed March 2, 2018 before Judge Robert W. Schroeder III — the same judge and division in which Maxell sued ZTE (No. 5:18-cv-0034-RWS) and later Apple (No. 5:19-cv-00036-RWS). Venue mattered: the Eastern District of Texas, and Texarkana specifically, was a favored Maxell forum with fast trials and a plaintiff-friendly reputation, which is precisely the setting in which accused defendants race to the PTAB. Huawei's timing nonetheless came late relative to the litigation, and in a notable twist the '306 count was dismissed with prejudice as to Huawei and ZTE on January 11, 2019 (Dkt. 68), with Huawei's corresponding DJ counterclaims dismissed without prejudice. Huawei then filed the IPR batch, including IPR2019-00640, and on February 15, 2019 the parties told the Board they had settled all disputes; the Board authorized termination motions on March 1, 2019, the joint motions were filed April 10, 2019, and the proceedings were terminated on April 25, 2019 — before institution, with the settlement agreement kept confidential under 35 U.S.C. § 317(b). The case is therefore notable chiefly as a linkage data point: it illustrates the 2018–2021 Maxell assertion wave (Huawei, ZTE, Apple, and later LG), the practice of filing IPR clusters against multi-patent complaints, and the pattern of early settlement that leaves the patent's validity unadjudicated. That pattern repeated with Apple: Apple's separate challenge to the '306 patent, IPR2020-00204 (petition filed December 20, 2019), was instituted but terminated on April 20, 2021 on settlement after the E.D. Tex. case was dismissed — so the '306 patent emerged from both IPR campaigns intact but never merits-tested at the Board.

Sourcing caveats. The existence, parties, patent and settlement-termination of IPR2019-00640 are well grounded (the April 10, 2019 Joint Motion to Terminate in IPR2019-00192 expressly lists "IPR2019-00640 (Patent 6,928,306)" among the nine settled cases; termination date April 25, 2019 is corroborated by Docket Alarm and Unified Patents entries for the companion IPRs). I could not independently verify the specific challenged claims and grounds in IPR2019-00640, nor its exact filing date — the batch appears to have been filed February 12, 2019 based on the companion IPR2019-00661 docket, but treat that date as inferred. Filings and institution decisions for IPR2019-00640 itself were not located; if precision matters, pull the petition directly from PTAB Case Tracking (ptacts.uspto.gov) or the Unified Patents PTAB portal.

Threshold point on scope

The case metadata here (IPR2019-00640) is not a district‑court infringement action — it is an inter partes review before the PTAB. So there is no complaint, answer, Markman order, verdict, or JMOL in this docket. What follows therefore does two things: (1) it reconstructs the complete chronology of IPR2019‑00640 itself, and (2) it ties that IPR to the actual infringement litigations in which U.S. Patent No. 6,928,306 was asserted (Maxell v. Huawei/ZTE, then Maxell v. Apple), because that is where the pleading/motion/claim‑construction history the user asked about actually lives. Where I could not verify a fact from a retrievable source, I say so rather than filling the gap.

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1. The patent and the parties

Source: USPTO patent record via uspto.report/patent/grant/6,928,306; Board Order Authorizing Filing of Motion to Terminate, Paper 4, in the consolidated Huawei–Maxell IPR group.

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2. Chronology

A. The underlying infringement litigation (Maxell v. Huawei / ZTE)

• 2016‑11‑18 — Maxell sues Huawei in the Eastern District of Texas, Maxell, Ltd. v. Huawei Device USA Inc. et al., No. 5:16‑cv‑00178 (E.D. Tex.). Per Law360, the complaint alleged continuing infringement despite "numerous meetings and interactions" dating to June 2013.
• 2018‑06‑15 — Maxell files a second wave: Maxell, Ltd. v. Huawei Device USA Inc., No. 5:18‑cv‑00033‑RWS (E.D. Tex., Texarkana, Judge Robert W. Schroeder III), and Maxell, Ltd. v. ZTE USA Inc., No. 5:18‑cv‑00034‑RWS. The '306 patent is asserted as Count 4 against both Huawei and ZTE.
• 2018‑06 — Jury verdict of $43.3 million for Maxell against ZTE on seven Maxell patents in the earlier ZTE case (5:16‑cv‑00179). The '306 patent was not one of the seven. This verdict is the economic backdrop to everything that follows (documented in Maxell's Oct. 9, 2018 licensing letter to Apple, Ex. 2019 in IPR2020‑00407).
• 2019‑01‑11 — Order (Dkt. 68) in 5:18‑cv‑00033/00034 granting the parties' joint motion for partial dismissal: Count 4 (U.S. Pat. No. 6,928,306) dismissed with prejudice as to both Huawei and ZTE; Huawei's declaratory‑judgment counterclaims of non‑infringement and invalidity as to the '306 patent dismissed without prejudice. This is the single most important litigation event for the '306 patent — Maxell abandoned the patent in Texas roughly four weeks before Huawei petitioned against it.
• 2019‑02‑early — Maxell settles with ZTE (confidential) after the $43.3M verdict.
• 2019‑02‑15 — Maxell and Huawei notify the Board by email that they have settled all disputes across the ten co‑pending Huawei–Maxell IPRs.
• 2019‑02‑19/21 — The parties tell the Texas court "all matters in controversy between the parties have been settled in principle," three days before a scheduled hearing (Law360, 2019‑02‑21). Maxell v. Huawei, No. 5:16‑cv‑00178, is resolved by confidential settlement.

B. The Huawei IPR wave and IPR2019‑00640

Huawei filed a coordinated set of ten petitions against Maxell patents: IPR2018‑00251 ('203,517), IPR2019‑00192 ('515,810), ‑00462 ('324,487), ‑00464 ('995,897), ‑00575 ('068,503), ‑00576 ('973,334), ‑00622 ('347,068), ‑00640 ('928,306), ‑00656 ('544,517), and ‑00661 ('983,140).

• 2019‑02‑12 — Huawei files the Petition in IPR2019‑00640 challenging U.S. Pat. No. 6,928,306 B2. (Same filing date as the sibling petitions; see the IPR2019‑00661 docket, which shows a 2019‑02‑12 petition date and identical procedural rhythm.) Note: the specific challenged claims, grounds, and prior‑art references in the '640 petition were not recoverable from the sources I could access — treat those specifics as unverified.
• 2019‑02‑21 (approx.) — Notice of Accord Filing Date (Paper 3), 37 C.F.R. § 42.63.
• 2019‑03‑01 — Paper 4, Order Authorizing Filing of Motion to Terminate in all ten proceedings. The Board records that on 2019‑02‑15 the parties advised it of a global settlement and requested authorization to file joint motions to terminate. The order requires each joint motion to update the Board on the status of any litigation or USPTO proceeding involving the subject patents, to attach the agreement, and to certify no collateral agreements; it also authorizes a § 317(b) confidentiality request.
• 2019‑04‑10 — Joint Motion to Terminate and Joint Request to Keep the Settlement Agreement Confidential filed (Papers 7 and 8 in the sibling dockets).
• 2019‑04‑25 — Termination. The Board grants the joint motion and terminates IPR2019‑00640 before institution, with no institution decision and no merits ruling on any claim of the '306 patent, and grants the § 317(b)/§ 42.74(c) request to treat the settlement agreement as business confidential information kept separate from the patent file. The proceeding closed as "Terminated – Settled."
• 2019‑05‑16 / 2019‑06‑11 — Petitioner's refund request and the Board's notice of refund (reflecting the pre‑institution termination of the fee).

Why this matters strategically: by February 2019 the '306 patent had already been dropped from the Texas cases, so IPR2019‑00640 had little independent litigation value. Its function was portfolio leverage in the global Huawei–Maxell negotiation, and it was extinguished three weeks after filing as part of that global deal. Because termination occurred pre‑institution, no § 315(e) estoppel attached to Huawei, and no claim of the '306 patent was ever adjudicated by the Board in this proceeding.

C. The second wave: Maxell v. Apple and IPR2020‑00204

• **2019

I'll search for coverage of this PTAB proceeding from several angles.

Press coverage of IPR2019-00640

Short answer: this proceeding generated essentially no press coverage. Searches across the case number, the patent number, and the party names turned up no Reuters, Bloomberg Law, Law360 news article, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, JD Supra, or trade-press story about IPR2019-00640 as such. The only hits are database/aggregator records. The Unified Patents portal's petitioner page lists "IPR2019-00640," filed 2019-01-31, petitioner Huawei Technologies Co. Ltd., patent owner Maxell Ltd., technology category High-Tech, disposition Settlement — which, if accurate, materially sharpens the previously unconfirmed party identification in the case summary (Huawei, not Apple, as petitioner). The accessible listing does not display the challenged patent number, so I could not independently confirm that IPR2019-00640 is the '306 patent, and I found no petition, institution decision, or termination order for this specific number in the search results. Law360 maintains a terminated IPR docket page for "Huawei Technologies Co., Ltd. v. Maxell Ltd." with a January 16, 2019 filing date (Tech Center 2800), but its case page is paywalled and does not tie the docket to IPR2019-00640 or to the '306 patent. Notably, Huawei's 2019 wave of Maxell IPRs that I could verify in the public filings concerned wireless/roaming patents (e.g., U.S. 7,324,487, 7,515,810, 7,671,901) and was terminated by joint motion after a February 2019 global settlement — a fact pattern consistent with a pre-institution settlement, which would explain the total absence of merits reporting.

The only substantive journalism touching the '306 patent concerns Maxell's district court campaign, not this IPR. AppleInsider reported on 2019-03-15 that Maxell launched a ten-patent suit against Apple in the Eastern District of Texas, specifically identifying "6,928,306 for ring alerts" among the asserted patents and noting Maxell sought a jury trial, compensatory damages, and preliminary and permanent injunctions. AppleInsider's piece is short and largely restates the complaint; its only added commentary is speculation that "Based on its track record Apple will mostly likely try to get the case dismissed or settled out of court, given the potential cost of losing a trial" — an analyst-style aside, not record reporting.

The most substantive coverage is Law360's account of the settlement. Law360 reported on 2021-03-23 that Maxell settled with Apple in Texas federal court "just before heading to trial," that terms "were not disclosed," and that the companies simultaneously "called off a proceeding at the Patent Trial and Appeal Board" where Apple had planned to argue two Maxell patents were invalid. Law360 reported that Maxell sought damages, costs, and "in no event less than a reasonable royalty" on ten patents, that the court had forced Maxell to narrow to six patents in February 2021, and that Judge Robert W. Schroeder III had refused to postpone trial for juror vaccination. It described the PTAB disputes as covering 13 claims of a power-management patent and seven claims of "a patent related to customizing a ringtone" — the '306 patent — listing U.S. Patent Nos. 6,329,794 and 6,928,306 among the patents-in-suit. The corresponding PTAB termination order (Paper 32, IPR2020-00204, Apr. 20, 2021) confirms the settlement/license agreement was filed as confidential business information, that no merits decision issued, and that the Texas case was dismissed — so Law360's account is consistent with, and adds color beyond, the bare docket.

Where accounts diverge, and what is missing. Law360's PTAB reporting describes Apple's IPRs (IPR2020-00199 through -00204), not IPR2019-00640; no outlet drew that distinction or reported on the Huawei-filed 2019 proceeding at all, meaning a reader relying on press coverage alone would misidentify Apple as the sole petitioner against the '306 patent. No source I found reported any damages figure awarded, any settlement payment, any licensing rate, or any market impact — consistent with Law360's "terms were not disclosed" and the Board's confidentiality ruling. There were also no executive statements from Maxell or Huawei and no industry-reaction pieces. In short, the press record for IPR2019-00640 itself is empty; all available journalism addresses the adjacent Maxell v. Apple litigation and Apple's separate '306 IPR, and should not be read as coverage of this docket.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• IPR2019- 00577 (Patent 8,993,300 B2) IPR2019- 00578 (Patent 8,455,232 B2) IPR2019- 00579 (Patent 7,829,318 B2) IPR2019- 00580...
• IPR2019- 01101 (Patent 7,221,904 B1) IPR2019- 01102 (Patent 7,848,701 B2) IPR2019- 01103 (Patent 7,979,023 B2) IPR2019- 01105...
• PO Sur- Reply, IPR2019- 01399 at 9- 10; IPR2019- 01401 at 9; IPR2019- 01402 at 9
• Cisco Systems, Inc. v. Traxcell Technologies LLC
• IPR2019-1455
• IPR2019-00903
• IPR2019- 01198, IPR2019- 01199, IPR2019- 01200 Patent 7,247,552 B2
• IPR2019- 00858 IPR2019- 00859 IPR2019- 00860 IPR2019- 00861 IPR2019- 00862 IPR2019- 00863
• - IPR2019-1302_Ex
• IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
• 107. Maxell is the owner by assignment of the '306 Patent and possesses all rights under the '306 Patent, including the exclusiv...

I'll research counsel of record for Maxell, Ltd. — the patent owner/respondent in this IPR and the plaintiff in the underlying E.D. Tex. actions where the '306 patent was asserted.

Framing note: who is the "plaintiff" here

This docket is an IPR, so there is no plaintiff in the Rule 3 sense. The party occupying the plaintiff/claimant side of the caption — the one whose patent is at stake and who must defend it — is Maxell, Ltd. (Patent Owner/Respondent; the metadata lists Maxell as "Defendant" only because the table is inverted for PTAB proceedings). Maxell is also the actual plaintiff in the related infringement actions where the '306 patent was asserted, Maxell, Ltd. v. Huawei Device USA Inc., No. 5:18-cv-00033-RWS (E.D. Tex.) and Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036-RWS. Counsel below is therefore Maxell's counsel, drawn from the IPR papers and from the district-court dockets, which share one team.

Bottom line: Maxell was represented throughout this campaign by Mayer Brown LLP (Chicago and Washington, DC), with Patton Tidwell & Culbertson LLP of Texarkana as local counsel in the Texas actions. The petitioner-side contrast is Fish & Richardson P.C. for Huawei.

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1. Lead and back-up counsel (Mayer Brown LLP) — PTAB team

The IPR-specific designation appears in Maxell's 37 C.F.R. § 42.8(b)(3) mandatory notices in the companion Huawei–Maxell IPRs. The same signature blocks recur in the district court pleadings and in Apple's later '306 IPR. Designations below reflect the company-wide Maxell team; I could not retrieve the § 42.8 notice filed in IPR2019-00640 itself (see caveats).

2. District-court trial team (same client, same campaign)

These attorneys appear of record in the E.D. Tex. cases in which the '306 patent was asserted (Count 4), and are the bench the IPR team drew on:

3. Local counsel (E.D. Tex., Texarkana Division)

PACER's attorney list for 5:18-cv-00033 corroborates this structure: William Justin Barrow, Jamie B. Beaber, Amanda Streff Bonner, Geoffrey Patton Culbertson, James A. Fussell III, Baldine Brunel Paul, Robert Gary Pluta, and Saqib Javaid Siddiqui — i.e., Mayer Brown (national) + Patton Tidwell & Culbertson (local), with no in-house Maxell attorney appearing of record.

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4. What I could not verify / caveats

• No IPR2019-00640-specific § 42.8 mandatory notice or power of attorney was retrievable. The docket papers for this number (petition, notice of accord, termination order) did not surface in any accessible database. The roster above is therefore built from (a) Maxell's § 42.8 notices in the contemporaneous Huawei–Maxell IPRs — e.g., IPR2018-00246 (Dec. 12, 2017), which lists Pluta as lead with Fussell, Siddiqui, Bonner, and Nese as back-up — and (b) Maxell's district-court appearances in the same campaign. Treat the identity of the team as well grounded and the precise lead/back-up designation inside '640 as inferred. If precision matters, pull Paper 3/Paper 6 from PTAB Case Tracking (ptacts.uspto.gov).
• No in-house counsel appeared of record for Maxell in either the PTAB or Texas dockets I could review. Maxell's IP function sits in Japan (Kyoto per the 2018 complaint; Yokohama per the 2017 mandatory notice).
• Contradictions with earlier sections of this case file — flagged, not resolved:
  1. Inventorship. The overview attributes the '306 patent to Shigeto Oeda alone; the later chronology table lists five inventors (Matsuda, Esaki, Takizawa, Shinagawa, Takada) and App. No. 09/755,878. These cannot both be right, and I did not independently confirm either from the face of the patent. This does not affect the counsel analysis.
  2. Petition filing date. Three different dates now exist in the file: Jan. 31, 2019 (Unified Patents listing), Feb. 12, 2019 (inferred from the sibling docket), and Jan. 16, 2019 (Law360's terminated-docket page for "Huawei Technologies Co., Ltd. v. Maxell Ltd."). Unresolved.
  3. Second-wave complaint date. The overview states the 5:18-cv-00033 suit was filed March 2, 2018 — confirmed by the complaint's own file stamp — while the chronology section dates the second wave to June 15, 2018 (which is the filing date of the separate ZTE action, 5:18-cv-00080). The March 2, 2018 date is the correct one for 5:18-cv

I'll research the counsel of record for this matter, accounting for the PTAB-vs-district-court polarity issue flagged in the prior sections.

Threshold note before naming anyone

Two framing problems have to be resolved first, both flagged in the earlier sections:

1. The caption polarity is inverted. The case metadata lists Maxell, Ltd. as "Defendant(s)," but in IPR2019‑00640 Maxell is the Patent Owner and Huawei is the Petitioner. The only "defendants" in any true infringement sense are Huawei Device USA Inc. / Huawei Device Co., Ltd. in Maxell v. Huawei, No. 5:18‑cv‑00333‑RWS (E.D. Tex.). So I set out both sides below, clearly labeled, rather than silently importing district‑court labels into a PTAB docket.
2. "Counsel of record" in a PTAB case = the § 42.8(b)(3) mandatory‑notice designation and § 42.10(b) power of attorney, not a PACER "attorney appearance." Because this proceeding terminated pre‑institution on April 25, 2019, there were no pro hac vice motions, no local counsel, and no in‑house appearances on this docket — a fact I state as a limitation, not a finding.

Sourcing limitation stated up front: I could not retrieve Paper 1, the Petitioner's Power of Attorney, or the Patent Owner's Mandatory Notices for IPR2019‑00640 itself. The designations below come from the § 42.8(b)(3) mandatory notices and § 42.10(b) powers of attorney filed in the companion Huawei–Maxell IPRs (IPR2019‑00192, IPR2018‑00246), which name the same Mayer Brown team, plus the Unified Patents PTAB docket entry for IPR2019‑00192 identifying petitioner counsel by firm. Treat individual names for the '640 docket as highly probable but not document‑verified for that case number.

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A. Patent Owner's PTAB counsel — the Maxell side (the "defendant" per your metadata)

Source: Patent Owner's Mandatory Notices Under 37 C.F.R. § 42.8, IPR2019‑00192 (filed Nov. 29, 2018) — the lead case of the same 2019 Huawei wave — and the equivalent notice in IPR2018‑00246 (Dec. 12, 2017).

Caveat on the source table: the IPR2019‑00192 notice's counsel table is misformatted in the retrieved text (Bonner's and Miranda's entries are interleaved), so the Chicago/DC office attribution for those two should be re‑checked against the original PDF if precision matters.

No local counsel and no in‑house counsel appear in the PTAB designations — Maxell handled the PTAB work from Chicago and DC without a Texas local firm, which is typical for a pre‑institution IPR and contrasts with its district‑court practice.

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B. Maxell's district‑court trial team (the underlying infringement case, where the '306 patent was actually asserted)

Relevant because the IPR was purely a companion to Maxell, Ltd. v. Huawei Device USA Inc., No. 5:16‑cv‑00178‑RWS and No. 5:18‑cv‑00333‑RWS. Source: the service list in Huawei's Petitioner's Power of Attorney, IPR2018‑00246 (Nov. 27, 2017), which identifies "counsel of record for the Patent Owner in the litigation pending before the U.S. District Court for the Eastern District of Texas entitled Maxell, Ltd. v. Huawei Device USA Inc. et al., Case No. 5:16‑cv‑0178‑RWS," plus a Mayer Brown attorney bio.

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C. Petitioner's PTAB counsel — the Huawei side (adverse party, included for completeness)