Litigation
LG Electronics Inc. v. Maxell, Ltd.
terminated - settledIPR2025-00518
- Filed
- 2025-01-21
- Terminated
- 2025-07-09
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
LG Electronics petitioned for inter partes review against Maxell regarding U.S. Patent 6,856,760. The proceeding was terminated after settlement prior to institution, with the Board decision entered July 9, 2025.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
I'll verify the underlying litigation, the patent, and the procedural history before drafting.
Good — I have the complaint and docket. Now let me verify the patent titles, the corporate profiles, and the venue/transfer details.
Now let me pin down each patent's title/expiry and the docket's venue history.
Case overview and background
Scope note (carried forward). The metadata case, IPR2025‑00518, is the inter partes review, not the infringement action. The "patent infringement litigation" is Maxell, Ltd. v. LG Electronics Inc. and LG Electronics U.S.A., Inc. — originally E.D. Tex. No. 5:23‑cv‑00152 (Texarkana), transferred to N.D. Cal. No. 5:24‑cv‑04972‑NW‑SVK — and that is what this overview describes.
The parties. Maxell, Ltd. (Kyoto; 1 Koizumi, Oyamazaki, Otokuni‑gun, Kyoto 618‑8525, per its PTAB mandatory notices) is the plaintiff. It is not a classic NPE: it is an operating company descended from Hitachi Maxell — the Hitachi Maxell business lines were computer tapes, optical discs, lithium‑ion and primary batteries, optical components, and functional materials — and it styles itself "Maxell, Ltd. f/k/a Hitachi Maxell, Ltd." in these very proceedings. But the litigation is driven by the patent portfolio Maxell inherited from Hitachi/Hitachi Maxell's consumer‑electronics R&D, which it monetizes through serial licensing campaigns rather than product sales. A Maxell counsel letter preserved in PTAB records describes an earlier favorable result — a $43.3 million verdict on seven patents including the '493 and '729 patents later asserted here — and the company has also pursued Huawei, ZTE, Apple, Samsung, TCL, Motorola, Fandango and Olympus (the last as a declaratory‑judgment defendant). The defendants are LG Electronics Inc. and its U.S. subsidiary LG Electronics U.S.A., Inc., the Seoul-based consumer‑electronics group (home appliances, TVs, vehicle components, B2B). Critically, LG closed its mobile phone business worldwide effective July 31, 2021, so every accused product in this case is a discontinued legacy handset — meaning the case was always about past damages, not injunctive exposure, and LG retained its 4G/5G patent portfolio while exiting the business.
Accused technology and asserted patents. Maxell accused roughly 60+ LG handset model lines — the G, V, K, Stylo, Aristo, Tribute, Fortune, Phoenix, Q, Premier and X families, plus the Velvet 5G, Wing 5G, V60 ThinQ 5G and Nexus 5X — and also pleaded laptops. The nine asserted patents cluster into four technology buckets: still‑image capture and camera processing ('493, '821, '729), recording‑media/format handling for video and stills ('760), multimedia editing and information‑processing interfaces ('188, '449, '072), and CDMA radio/wireless functionality ('334, '284).
| Patent | One‑line technical sketch | Record basis |
|---|---|---|
| 6,856,760 — "Recording Medium" (Takahashi et al.; issued Feb. 15, 2005) | Machine‑readable medium storing a still picture in a first encoding (e.g., MPEG), the same picture in a second, different encoding (e.g., JPEG), plus a smaller‑pixel corresponding picture/thumbnail, all "derived from common signal data"; independent claims also cover the reproducing method. Maxell asserted claims 4, 6, 7, 9. | Title and claim text confirmed from the complaint and the petition's claim listing |
| 6,973,334 | CDMA cellular telephone RF power control — open‑loop then closed‑loop control from a received TPC signal, with amplifier gain and bias driven by a stored gain/bias function (alleged to read on Qualcomm Snapdragon envelope‑tracking components). | Complaint ¶¶ 38–44 (function described; title not independently verified) |
| 7,199,821 | Camera image processing — white‑balance control using subject distance, zoom value and brightness information. | Olympus DJ complaint's characterization of the '821; title not verified |
| 10,244,284 (Kurita et al.) | Wireless/mobile data communication in handsets (LG's IPR grounded the challenge in Bluetooth, IEEE 802.11g, Nokia N95/N93 and mobile‑IP references). | LG‑1004–LG‑1017 exhibit list, IPR2025‑00520 |
| 8,339,493 — "Electric Camera" | Image sensor with vertical pixel lines allocated differently depending on still‑image, monitoring or moving‑video mode; Maxell asserted claims 10, 12 |
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this carefully. Note up front: the "case" in the metadata is a PTAB inter partes review, not a district court suit, so I'll map the requested litigation milestones onto the actual record and identify the underlying district court litigation that spawned it.
Good — the underlying district court case is now identified. Let me pin down the docket-level events, the stay ruling, the settlement/dismissal, and the fates of the seven sister IPRs.
Scope note — read this first
The case in the metadata (IPR2025-00518) is not a patent infringement litigation. It is an inter partes review petition that LG filed at the PTAB against Maxell's U.S. Patent No. 6,856,760, and it was terminated pre-institution after settlement. The infringement action that generated it — and to which every "litigation" milestone you asked about actually attaches — is:
Maxell, Ltd. v. LG Electronics Inc. and LG Electronics U.S.A., Inc.
No. 5:23-cv-00152-RWS (E.D. Tex., filed 2023-12-29) → transferred → No. 5:24-cv-
In the news
What the press has reported about this case, summarized with links to the source articles.
I'll search several angles to find press coverage of this IPR and the broader LG v. Maxell dispute.
Let me try additional angles, including Law360, IPWatchdog, Korean trade press, and the district court case.
Press coverage of LG Electronics v. Maxell (IPR2025-00518)
Direct coverage of this IPR is essentially nonexistent. Across searches on the caption, the party names, the '760 patent number, and the settlement, I found no Reuters, Bloomberg Law, Law360, IPWatchdog, Patently-O, Ars Technica, The Verge, or JD Supra article addressing IPR2025‑00518 itself — neither the January 2025 petition (LG's obviousness challenge to claims 1–9 of U.S. Patent 6,856,760) nor the Board's July 9, 2025 termination decision and the July 30, 2025 fee refund. The trade press appears to have treated this as one of seven routine LG petitions filed against Maxell between December 30, 2024 and January 22, 2025, and the pre-institution settlement generated no standalone story I could locate. What follows is therefore coverage of the surrounding dispute, which is the only published reporting that touches the '760 patent.
The closest item is MLex's April 29, 2025 summary of the district court settlement notice. MLex reported that Maxell and LG told Judge Noël Wise of the Northern District of California that a "prospective" settlement had been reached in Maxell, Ltd. v. LG Electronics Inc., No. 5:24-cv-04972, covering Maxell's allegations that LG infringed nine patents spanning recording media, imaging, and information processing through smartphones, laptops, and tablets. Per MLex, the deal left unresolved LG's § 101 argument that U.S. Patent Nos. 7,421,188, 10,199,072, 9,818,449, and 6,856,760 — the '760 patent at issue here — claim the abstract idea of "recording, manipulating, and displaying data," raised in an October 2024 motion for judgment as a matter of law that was fully briefed but undecided, with a hearing set for May 13. MLex also noted that LG had not yet sought dismissal of the seven pending PTAB petitions and that Judge Wise denied LG's stay bid on April 25, 2025. That account is consistent with the PTAB docket, which shows a joint motion to terminate filed July 1, 2025 and a pre-institution settlement decision on July 9, 2025 — a sequence the press did not subsequently report. No outlet reported any damages figure, royalty, or settlement payment in connection with the '760 IPR; MLex described only a "prospective" agreement, and the parties' stipulation (per the district court docket) had each side bear its own costs and fees.
Analyst-style commentary appeared in litigation-analytics publishing rather than journalism. PatSnap published a post-mortem on the nine-patent case quoting the June 30, 2025 stipulation of dismissal "WITH PREJUDICE" under Rule 41(a)(1)(A)(ii) and Judge Wise's July 2, 2025 order closing the case. Its interpretation goes beyond the record: PatSnap argued the with-prejudice designation "trigger[ing] claim preclusion" and the mutual cost-bearing clause implied "a commercially negotiated exit where both parties had incentives to terminate cleanly," reasoning that LG would otherwise have pursued fee-shifting — an inference no court has endorsed. PatSnap also characterized Maxell's assertion against "over 60 distinct LG product families" as "an aggressive, portfolio-wide enforcement strategy," a characterization that is the outlet's own framing, not a finding in any opinion.
Two adjacent developments are frequently conflated with this matter and should be kept separate. Fish & Richardson announced in April 2026 that Managing IP honored the firm's work for LG in the Mondis Technology v. LG Electronics dispute involving Maxell — the August 2025 Federal Circuit decision that reversed a $14.3 million judgment and invalidated Mondis's display patent for lack of written description; that is a different patent ('180) and a different case from the '760 IPR. Korean outlet IP Daily covered the same Federal Circuit ruling on August 11, 2025, reporting the reduction of the original $45 million 2019 jury award to $14.3 million on retrial before reversal — the only reported dollar figures I found in any article touching the LG–Maxell relationship. Separately, Law360's case page for Maxell, Ltd. v. LG Electronics, Inc. carries a docket-feed item dated April 1, 2026 noting a new Maxell suit in Texas accusing LG of infringing seven television-related patents after "unresolved discussions" — a later filing unrelated to the '760 IPR. I found no executive statements, industry reaction, or market-impact analysis published about IPR2025-00518 in any outlet.
Sources
- - IPR2025-00392, filed December 31, 2024, against U
- Search PTAB cases - party LG Electronics - - All Courts
- Docket Alarm | Litigation Outcomes, Delivered - - All Courts
- Maxell, LG give notice of settlement in California patent row | MLex | Specialist news and analysis on legal risk and regulation - ( April 29, 2025, 18:18 GMT | Official Statement) -- MLex Summary: Maxell Ltd
- LG전자, 몬디스·맥셀 제기 1,400만 달러 특허 침해 소송 승소… 美 CAFC, 특허 무효 판결
- because the Office erred in evaluating the references and because evidence presented above warrants reconsideration of said eval...
- Maxell v. LG Electronics: 9-Patent Smartphone Dispute Dismissed | PatSnap - Your Agentic AI Partner
- LG Electronics, Inc. v. Maxell, LTD., IPR2025-00520 (P.T.A.B.) - Track Docket
- IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
- Motion To Dismiss Due To Settlement (pre-DI) (Dkt. 8) | IPR2025-00394 | LG Electronics Inc v. Maxell Ltd | Ex Parte
- Search court records on patent:(10199072), page 2 - - All Courts
- Search court records on patent:(8736729)
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Fish & Richardson
- Timothy W. Riffe · lead counsel
- Jennifer J. Huang · backup counsel
- R. Andrew Schwentker · backup counsel
- Bryan J. Cannon · backup counsel
- Jack R. Wilson, IV · backup counsel
- Alex Yu · backup counsel
I'll research counsel of record for LG Electronics in IPR2025-00518, starting with PTAB docket sources and the petition itself.
Good leads on the Fish & Richardson team. Let me confirm the counsel designation specifically in the IPR2025-00518 papers and docket.
Strong consensus forming. Let me pull the -518 petition's mandatory-notice counsel table and any signature blocks in the termination papers, plus verify the individual attorneys' backgrounds.
Counsel of Record — Petitioner LG Electronics (IPR2025-00518)
Threshold correction on framing. IPR2025-00518 is not a patent infringement case, and there is no "plaintiff." It is an inter partes review in which LG Electronics Inc. and LG Electronics U.S.A., Inc. are the petitioners (both identified as real parties-in-interest) and Maxell, Ltd. is the patent owner. The "plaintiff" role in the underlying infringement suit (Maxell, Ltd. v. LG Electronics Inc., N.D. Cal. No. 5:24-cv-04972) is reversed — Maxell is plaintiff there, LG the defendant. Below I give counsel for the petitioner side (the party the prompt labels "plaintiff"), with a short note on Maxell's PTAB counsel for completeness.
Petitioner's PTAB counsel — Fish & Richardson P.C.
The Board's docket for IPR2025-00518 records petitioner counsel as "Riffe, Timothy et al.", and the July 1, 2025 joint motion to terminate was filed by petitioner. The petition, power of attorney, and termination papers were filed by the same Fish & Richardson team that LG used across its coordinated set of seven Maxell IPRs (attorney docket series 18768-0217IP1 through IP8, filed Dec. 30, 2024 – Jan. 22, 2025).
| Attorney | Role | Reg. No. | Firm / address as listed on filings | Experience note |
|---|---|---|---|---|
| Timothy W. Riffe | Lead counsel | 43,881 | Fish & Richardson P.C., 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402 | Dean of Fish's PTAB/post-grant group; repeatedly named an IAM Patent 1000 "leading patent professional" in post-grant proceedings; frequent lead counsel in AIA trials for Lenovo/Motorola and LG. |
| Jennifer J. Huang | Backup counsel | 64,297 | Fish & Richardson P.C., Minneapolis, MN (per petition signature block) | PTAB-focused associate/principal; signed LG's joint motions to terminate in the companion Maxell IPRs (e.g., IPR2025-00519, -00520). |
| R. Andrew Schwentker | Backup counsel | 59,402 | Fish & Richardson P.C. (DC-barred, No. 991792; Minneapolis address on PTAB filings) | Dual PTAB/district-court litigator; also on LG's N.D. Cal. defense team against Maxell and on the Fish team that won the Aug. 2025 Federal Circuit reversal in Mondis Tech. v. LG Electronics (vacating $14.3M judgment, invalidating the '180 patent). |
| Bryan J. Cannon | Backup counsel | 72,877 | Fish & Richardson P.C., Minneapolis, MN | PTAB and district-court patent litigator; also listed as LG counsel of record in the parallel N.D. Cal. action. |
| Jack R. Wilson, IV | Backup counsel | 75,011 | Fish & Richardson P.C. (DC-barred, No. 91178) | Signed the joint motions to terminate in the companion LG–Maxell IPRs (-00519, -00520); also on LG's N.D. Cal. defense team. |
| Alex Yu | Backup counsel | 74,295 | Fish & Richardson P.C., Minneapolis, MN | Junior PTAB attorney listed in LG's mandatory notices in the lead companion petition (IPR2025-00392). |
No in-house LG attorney and no local counsel appear of record at the PTAB. Local counsel is not used in Board proceedings, and the PTAB papers designate only Fish & Richardson. LG's district-court team (Michael J. McKeon, Michael J. Ballanco, Christian A. Chu, James W. Cowan, Leeron G. Kalay, Jenna Kuh, Ethan Kovar, Bailey Benedict, Andrew Gorham) overlapped with the PTAB team but was not separately designated in the IPR.
Patent Owner (Maxell) PTAB counsel — for contrast only
Robert G. Pluta (Reg. No. 50,970, lead) and Nicholas H. Ciulla (Reg. No. 78,409), Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL 60606. Maxell's district-court lead, Edward D. Johnson (Mayer Brown, Two Palo Alto Square, Palo Alto, CA), filed Maxell's Feb. 11, 2025 mandatory notice and power of attorney in the IPR.
Sourcing and confidence — read before relying
- Confirmed directly from the -518 docket: counsel field ("Riffe, Timothy et al."; respondent "Pluta, Robert et al."), the July 1, 2025 Joint Motion to Terminate and BCI request filed by petitioner, the July 9, 2025 pre-institution settlement decision, the July 22, 2025 refund request, and the July 30, 2025 refund approval. Source: ipverse PTAB docket for IPR2025-00518.
- Inferred by strong parallel-record evidence, not a direct read of the -518 petition's § 42.8(b)(3) table: the full roster of backup counsel and their registration numbers. Those names come from the mandatory-notice and signature blocks of the companion LG petitions and termination motions in the same attorney-docket family (IPR2025-00392, -00394, -00519, -00520). The -518 petition (Paper 2) and Power of Attorney (Paper 1) were filed Jan. 21, 2025 and are on PTACTS, but I could not retrieve the -518 petition text itself; the exact backup-counsel roster for -518 may differ at the margin (in -00519, for example, Jack R. Wilson appears where Bryan Cannon and Alex Yu appear in -00392). Treat Riffe and Huang as the highest-confidence names and Cannon/Yu as the lowest.
- No sealed-counsel issue: the docket is public. The only sealed materials are the settlement agreement (Exhibit 1020, filed "Board and Parties Only") and the BCI request, which do not affect counsel identification. No pro hac vice motions were needed because all listed attorneys are registered practitioners.
- No counsel-withdrawal events occurred; the proceeding terminated before institution on July 9, 2025, so this roster reflects counsel of record at termination. There is no institution decision, no final written decision, and no Federal Circuit appeal for this IPR.
- Not verified: individual attorneys' current office locations beyond the addresses printed on the filings — Fish lists DC-barred attorneys at the Minneapolis address in PTAB papers, and some (e.g., Schwentker, Wilson) are DC-bar in the underlying district court filings. I did not locate firm-bio pages for Huang, Cannon, or Yu confirming their practice details, so those experience notes are drawn from their appearance history rather than published biographies.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
I'll research Maxell's counsel of record in IPR2025-00518 across PTAB filings, the parallel IPRs, and related district court litigation.
Found the likely counsel. Let me confirm against the IPR2025-00518 docket documents specifically.
Now let me verify the IPR2025-00518-specific filings (power of attorney, joint motion) and counsel bios.
Framing note before the names
IPR2025‑00518 is an inter partes review, so there is strictly no "defendant" — the parties are Petitioners (LG Electronics Inc. and LG Electronics U.S.A., Inc.) and Patent Owner/Respondent (Maxell, Ltd.). Because your question is phrased in infringement-case terms, I've given you three blocks:
- Maxell's counsel of record in IPR2025‑00518 (the respondent side — the substantive answer);
- LG's PTAB counsel in the same proceeding (for completeness);
- Counsel in the parallel infringement action, Maxell, Ltd. v. LG Electronics Inc., No. 5:24‑cv‑04972 (N.D. Cal.), where LG is actually the defendant — this may be the set you're after.
1. Counsel of record for Maxell, Ltd. in IPR2025-00518
Maxell entered its appearance on February 11, 2025, via Patent Owner's Mandatory Notices Under 37 C.F.R. § 42.8 (Paper 4 on the docket; the same document is reproduced in the PTACTS petition packet for the '760 petition). It designates exactly two practitioners — both at Mayer Brown's Chicago office:
| Name | Role in IPR2025-00518 | Firm / Office | Reg. No. | Note |
|---|---|---|---|---|
| Robert G. Pluta | Lead counsel for Patent Owner Maxell, Ltd. | Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL 60606 (rpluta@mayerbrown.com; 312‑701‑8641) | 50,970 | Mayer Brown partner and Maxell's long-standing lead PTAB advocate; signed as "Counsel for Maxell, Ltd." in the Motorola Mobility v. Maxell settlement (IPR2022‑01348, June 2023), the Huawei v. Maxell wave of IPRs (e.g., IPR2018‑00251 group), the TCL v. Maxell '341 IPR (IPR2025‑00120, where Director Review vacated institution), and the Samsung v. Maxell IPRs (IPR2025‑01307 et seq.). |
| Nicholas H. Ciulla | Back-up counsel | Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL 60606 (nciulla@mayerbrown.com; 312‑782‑0600) | 78,409 | Mayer Brown associate-level PTAB practitioner; paired with Pluta on the Maxell PTAB account and entered a notice of appearance for Maxell in the later E.D. Tex. suit (Maxell, Ltd. v. LG Electronics, Inc., No. 2:26‑cv‑00266, filed Apr. 1, 2026). |
Corroboration on the docket: the Joint Motion to Terminate filed July 1, 2025 (with the Joint Request to Treat the Settlement Agreement as Business Confidential Information and the confidential settlement agreement, Ex. 1022) is captioned for both parties and closes with the signature block "/s/ Robert G. Pluta — Robert G. Pluta, Reg. No. 50,970; Nicholas H. Ciulla, Reg. No. 78,409; Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL 60606 — Attorneys for Patent Owner." The identical signature block appears in the companion termination motion in IPR2025‑00519 (the '188 patent). IPVerse's counsel index for IPR2025‑00518 likewise lists "Respondent Counsel — Pluta, Robert et al."
Service information of record: Maxell consented to electronic service at rpluta@mayerbrown.com and nciulla@mayerbrown.com; the Feb. 11, 2025 certificate of service shows Maxell served LG's counsel at IPR18768‑0217IP2@fr.com and PTABInbound@fr.com.
No in-house counsel of record. Maxell, Ltd. (1 Koizumi, Oyamazaki, Kyoto) is the sole real party‑in‑interest, and no Maxell legal-department attorney appears in any signature block or service list in this proceeding.
2. LG's counsel in IPR2025-00518 (petitioner side, for cross-reference)
The January 21, 2025 petition designates Fish & Richardson P.C., all at 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402:
- Lead: Timothy W. Riffe (Reg. No. 43,881)
- Back-up: Jennifer J. Huang (Reg. No. 64,297) — signed the petition; R. Andrew Schwentker (Reg. No. 59,402); Jack R. Wilson, IV (Reg. No. 75,011)
- Service: IPR18768‑0217IP2@fr.com / PTABInbound@fr.com; certificate of service executed by Fish & Richardson paralegal Anastasia Renard (Jan. 21, 2025), with postal service on the '760 patent's prosecution correspondence address (Antonelli, Terry, Stout & Kraus).
3. If you meant the infringement action: Maxell, Ltd. v. LG Electronics Inc., No. 5:24‑cv‑04972 (N.D. Cal.)
Here LG is the defendant, so the "defendant's counsel" are LG's:
- Fish & Richardson P.C. — Leeron G. Kalay (CA 233579, Redwood City), Michael J. McKeon (DC, pro hac vice), Christian A. Chu (CA 218336), R. Andrew Schwentker, Michael J. Ballanco, Jack R. Wilson, IV, Jenna Kuh, Bryan J. Cannon, James W. Cowan (Washington, DC / Silicon Valley). Ballanco handled LG's Jan. 24, 2025 motion to stay pending IPRs, whose supporting declaration attached the petitions in IPR2025‑00392, ‑00393, ‑00394, ‑00444, ‑00518, ‑00519, and ‑00520 — a useful cross-check tying this IPR to that docket.
And Maxell as plaintiff there was represented by Mayer Brown LLP: Edward D. Johnson (SBN 189475), Cliff A. Maier (SBN 248858), and Graham "Gray" Buccigross (SBN 234558) in Palo Alto; Michael A. Molano (SBN 171057) in San Francisco; Alan M. Grimaldi (admitted pro hac vice) in Washington, DC. Note the structural overlap: Mayer Brown is Maxell's counsel in both forums, while Fish & Richardson represents LG in both forums.
Sourcing and limitations to flag
- The February 11, 2025 Mandatory Notices, the July 1, 2025 joint motion, and the signature blocks are drawn from the PTACTS filing packet for the '760 petition and the mirrored IPR2025‑00519 documents. I verified the -00518 Mandatory Notices directly; the -00518 joint motion's signature block I matched to the verbatim-identical -00519 motion rather than reading the -00518 PDF page-by-page — the counsel designation is the same either way, since only Pluta and Ciulla ever entered appearance for Maxell in these seven petitions.
- The settlement agreement (Ex. 1022) is confidential under the Board's business-confidential-in