LG Electronics USA Inc. v. Maxell, Ltd.

I'll research the parties, the patent, and the parallel litigation record before drafting.

Case Overview & Background

Correction on framing first: IPR2025-00444 is not itself infringement litigation. It is an inter partes review petition that LG Electronics filed against a Maxell patent while defending a parallel district court infringement suit. The infringement case is Maxell, Ltd. v. LG Electronics Inc. and LG Electronics U.S.A., Inc., and the '729 patent was one of nine patents Maxell asserted there. Reading the IPR in isolation misses the point: it was one of seven petitions LG filed in a five-week window as litigation leverage, and all seven died on the vine when the parties settled.

1. The parties

Maxell, Ltd. (Kyoto, Japan) is an operating company, not a classic NPE/PAE and not a university. Founded in 1961 as Maxell Electric Industrial, it sells recording media, batteries, projectors, and consumer accessories. The asserted portfolio, however, is inherited: Hitachi transferred consumer-electronics IP to Hitachi Consumer Electronics in 2009, which assigned it to Hitachi Maxell in 2013, which became Maxell, Ltd. (Maxell's complaint, ¶ 4, Maxell v. LG, No. 5:23-cv-00152 (E.D. Tex. Dec. 29, 2023)). Maxell monetizes that inherited Hitachi portfolio aggressively through licensing and serial litigation — prior defendants include ZTE, Huawei, Apple, Samsung, Olympus, BlackBerry, BLU, and ASUS — so its behavior pattern is functionally PAE-like even though it manufactures products. LG Electronics, Inc. (Korea) and LG Electronics U.S.A., Inc. (Delaware, Englewood Cliffs, NJ) were the defendants below and the IPR petitioners; LG is a diversified consumer-electronics OEM. Counsel in the IPR: Fish & Richardson (Timothy Riffe, Jennifer Huang, Robert Schwentker, Bryan Cannon, Matthew Chun, Alex Yu) for LG; Mayer Brown (Robert Pluta, Nicholas Ciulla) for Maxell (IPR2025-00444, Paper 8 at 4).

2. Accused technology, the patents, and the '729 sketch

Maxell accused a broad swath of LG "telecommunications technology" — smartphones from the V, G, K, Q, Stylo, and Velvet families (the LG V60 ThinQ 5G is the representative device), LG Gram laptops, and tablets — of infringing nine patents: 6,856,760 (recording medium storing moving pictures and stills in different encoding formats, with thumbnails); 6,973,334 (CDMA cellular telephone with open/closed-loop transmit power control); 7,199,821 (white-balance control using depth information, i.e., portrait mode); 8,339,493 and 8,736,729 (the "Electric Camera" family); 7,421,188 (information editing device/method); 9,818,449 and 10,199,072 (editing method and recording/reproducing device); and 10,244,284 (display apparatus and video processing apparatus). See Joint Case Management Statement at 2–4, Maxell v. LG, No. 5:24-cv-04972-NW-SVK (N.D. Cal. Mar. 17, 2025). Maxell also pointed at third-party components — Qualcomm Snapdragon chips (envelope tracking) and Google's Android OS — as the instrumentalities of infringement.

U.S. 8,736,729 ("Electric Camera"), asserted claims 1–4, is a camera claim directed to electronic image stabilization implemented by pixel-window shifting. Claim 1 recites an image sensor with a grid array of pixels, an image-instability (shake) detector, and a signal processing unit that uses different effective pixel sets in different modes: a first (wider) view angle during still-image monitoring, all effective pixels during still-image recording, and a second (narrower) effective pixel window during video recording — with that second window moved based on detected shake "in order to correct the image-instability," plus a display unit (Petition, Paper 2, claim chart; reproduced in IPR2025-00444 Joint Motion to Terminate, Paper 6, Ex. list). In plain terms: crop-and-shift the video frame to cancel handshake, while giving the user full sensor resolution for stills. The patent issued from Application 13/681,495 as a continuation of Application 12/845,266 (which issued as the '493 patent), tracing to Application 09/520,836 filed March 8, 2000, with a disputed Japanese priority date of October 27, 1999 (LG's invalidity contentions, Ex. 2005 in IPR2025-00392).

3. Procedural posture and venue

Maxell filed in the Eastern District of Texas, Texarkana Division (No. 5:23-cv-00152) on December 29, 2023, before Judge Robert W. Schroeder III — a deliberate choice of a fast, plaintiff-friendly venue (Maxell even touted its Marshall, Texas affiliate, MRDA). LG won a § 1404(a) transfer on July 1, 2024; the case reopened as No. 5:24-cv-04972 in the Northern District of California, San Jose Division, initially before Magistrate Judge Eumi K. Lee and reassigned on February 24, 2025 to District Judge Noël Wise (Dkt. 130). That transfer mattered: it moved the case to LG's home turf and to a docket widely viewed as slower for patent plaintiffs, and it is the reason LG's invalidity positions (especially § 101 against the '188, '072, '449, and '760 patents) got real traction. LG filed seven IPRs between December 30, 2024 and January 22, 2025 — IPR2025-00392 ('493), -00393 ('449), -00394 ('072), -00444 ('729), -00518 ('760), -00519 ('188), -00520 ('284) — and moved to stay the district case on January 24, 2025 (Dkt. 124). Judge Wise denied the stay on April 25, 2025. Four days later (April 29, 2025) the parties notified her of a prospective settlement; the case was dismissed with prejudice by joint stipulation under Rule 41(a)(1)(A)(ii) on July 2, 2025, each side bearing its own fees.

For IPR2025-00444 itself: petition filed January 10, 2025 (Paper 2), notice of filing date accorded March 10, 2025 (Paper 5), joint motion to terminate with confidential settlement agreement as Exhibit 1013 (Paper 6, filed with the other six joint motions on or about July 1, 2025), and dismissal under 35 U.S.C. § 317 and 37 C.F.R. § 42.74 on July 21, 2025 because the Board had not yet decided institution — expressly "not a final written decision pursuant to 35 U.S.C. § 318(a)" (Paper 8, panel of APJs McMillin, Trock, and Ullagaddi); refund approved July 30, 2025 (Paper 10).

4. Why it's notable

• Petitions as settlement currency, not as trials. Not one of LG's seven IPRs reached an institution decision; Maxell's preliminary responses were pressing § 314(a)/§ 325(d) discretionary denial under the Acting Director's March 26, 2025 memo (see Maxell's POPR in IPR2025-00392). The sequence — stay denied April 25, settlement notice April 29, district case dismissed July 2, IPRs terminated July 21 — reads as a negotiated global exit in which the PTAB docket supplied leverage rather than a merits ruling.
• The '729 patent was already a proven monetization asset. Maxell asserted it (with the '493 patent) against ZTE in E.D. Tex., where a jury on June 29, 2018 returned a $43.3M verdict across seven Maxell patents including the '729 patent. ZTE's IPR2018-00238 challenge to claims 1–4 of the '729 patent was denied institution on June 1, 2018 — i.e., LG was attacking a patent that had survived both a jury and an earlier IPR.

I'll research this. Note that the metadata identifies this as an IPR (IPR2025-00444), so I'll trace both the PTAB proceeding and the underlying district court litigation involving U.S. 8,736,729.

Now let me dig into the district court docket and the other IPRs.

Let me pull the N.D. Cal. docket entries around the settlement and the §101 motion, plus check the '729 patent's status and prior IPRs.

Scope note

The case metadata (IPR2025‑00444) is the PTAB proceeding, not a district court case. The infringement litigation it ran alongside was Maxell, Ltd. v. LG Electronics Inc. and LG Electronics U.S.A., Inc., filed in E.D. Tex. and later transferred to N.D. Cal. I've reconstructed both tracks below, flagging what I could verify against filings/dockets versus what I could not.

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1. The underlying infringement action

Pre‑suit. Maxell sent LG a notice letter on 2021‑07‑19 (received 2021‑07‑28) — later Ex. 2001 in the IPRs, used by Maxell to argue LG sat on its rights for nearly a year before petitioning.

Complaint (2023‑12‑29). Maxell, Ltd. sued LG Electronics Inc. and LG Electronics U.S.A., Inc. in the Eastern District of Texas, No. 5:23‑cv‑00152‑RWS, before District Judge Robert W. Schroeder III. Maxell asserted nine patents — 6,856,760; 6,973,334; 7,199,821; 10,244,284; 8,339,493; 8,736,729; 7,421,188; 9,818,449; and 10,199,072 — and 29 claims, targeting LG smartphones (V60 ThinQ 5G, G/K/Q/Stylo/V families) and LG Gram laptops. Relief sought: compensatory damages, trebling for willfulness, injunction as to unexpired patents, and §285 fees.

• Complaint analysis: https://ai-lab.exparte.com/case/dct/txed/5:23-cv-00152/doc/analysis/1

Answer / counterclaims. LG appeared and contested liability, seeking declaratory findings of non‑infringement and invalidity/unenforceability plus fees. The parties' later stipulation of dismissal expressly disposed of "all claims and counterclaims," confirming a DJ counterclaim was on file, but I was not able to verify the docket number or filing date of LG's answer/counterclaims from the sources available.

E.D. Tex. case management. Maxell served E

I'll search several angles: the IPR itself, the underlying N.D. Cal./E.D. Tex. case, the 2018 ZTE verdict, and the settlement.

Good initial hits. Now let me look specifically for coverage of the LG–Maxell suit itself — the filing, the transfer, the IPR wave, and the stay denial.

Now let me look for coverage of the IPR wave itself, the transfer ruling, and any trade-press analysis of Maxell's campaign.

I found limited but real coverage. Note the press frames this as Maxell v. LG (Maxell as plaintiff), consistent with the earlier sections' correction — and I found no article anywhere that covers IPR2025‑00444 itself.

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Press coverage

Coverage of the LG–Maxell dispute is thin and iterative rather than analytical: two trade-press items bracket the case, and neither engages the PTAB track that this docket belongs to. Bloomberg Law reported on 2024‑01‑02 — four days after filing — that Maxell had sued LG for infringing nine patents "after engaging in negotiations but failing to acquire licenses for protected technology inside laptops and cell phones," identifying the Dec. 29 E.D. Tex. complaint and describing the asserted technology as covering "power transmission, recording videos, and photo techniques." That item is essentially a complaint summary; it reports no damages figure and does not mention the '729 patent by number. On the other end, MLex reported on 2025‑04‑29 that Maxell and LG had told Judge Noël Wise that a "prospective" settlement was reached on the nine-patent case, and — notably — that the deal left unresolved LG's § 101 counterclaims against the '188, '072, '449, and '760 patents, which LG had raised in an October 2024 motion for judgment as a matter of law that was "fully briefed but not yet ruled upon," with a hearing set for May 13. MLex also reported that LG had not yet moved to dismiss its seven pending IPRs and that Wise had denied LG's stay bid on April 25. MLex is the only outlet I found that connects the district-court settlement to the IPR wave; no outlet reported on the dismissals themselves (the July 2 stipulation and the July 21 PTAB terminations), which exist only in the court and PTAB records.

The reason the press cared about the '729 patent at all predates LG: it was one of the seven patents in Maxell's 2018 win against ZTE. Law360 reported on 2018‑07‑02 (Dorothy Atkins) that a unanimous E.D. Tex. jury found ZTE USA willfully infringed seven Maxell smartphone patents and awarded $43.3 million, expressly listing U.S. Patent Nos. 8,339,493 and 8,736,729 among the patents-in-suit. WIPR reported on 2018‑07‑04 with the same $43.3 million figure and quoted Maxell's lead trial lawyer Jamie Beaber of Mayer Brown: "we are happy we were able to underscore the significance and value of the inventions within Maxell's portfolio" and "the jury absolutely got this one correct." Law360's verdict story added a detail with hindsight value — the jury also found some claims "routine and conventional" under Alice, which Beaber told Law360 he had "never seen … put to a jury before" and which he said would be taken up in post-trial motions. Law360 then reported on 2019‑02‑04 (Daniel Siegal) that Maxell and ZTE had reached a confidential settlement, with the agreement filed under seal, ending the dispute that produced the $43.3 million verdict.

Where reporting diverges or stops short. First, no outlet has reported the terms — or even the existence — of a Maxell–LG settlement payment; the MLex item describes only a notice of "prospective" settlement, and the settlement agreement in the IPRs (Ex. 1013) was filed under seal. Second, the verdict-day reporting is now materially incomplete: the ZTE judgment was later vacated in part, and the court granted JMOL of invalidity under § 101 on claims of two other patents (the '317 and '794), vacated the $43.3 million damages verdict as unsupported, vacated the willfulness finding, and denied fees (E.D. Tex. No. 5:16‑cv‑00179, Dkt. 291) — none of which appears in the 2018 press accounts. Third, there is a live conflation risk in the non-English coverage: IP Daily and The Guru both reported in August 2025 on an LG appellate win against Mondis Technology and Hitachi Maxell — the Federal Circuit's affirmance of invalidity of U.S. 7,475,180, which wiped out a $14.3 million damages award (reduced from an original $45 million verdict) — but that is a different patent and a different lawsuit (D.N.J. No. 2:15‑cv‑04431), not the '729 dispute. Finally, "LG Hit With Maxell Patent Suit" is behind Bloomberg Law's paywall and surfaced for me only through a Muck Rack abstract, and both Law360 items are paywalled; I could verify the headlines, dates, bylines and the quoted passages reproduced above, but not the full article text.

Bottom line for this case: there is no press coverage of IPR2025‑00444 as a proceeding. The only third-party descriptions I located are algorithmic case-database summaries (Arctic Invent, GreyB/IPverse) that restate docket entries ("terminated or settled," confidentiality granted) without analysis, and a vendor litigation blog (PatSnap) whose "official verdict" framing and speculative "most probable explanation is a confidential licence" reasoning are AI-generated commentary, not journalism. I would not cite either as press authority.

Sources

• LG Electronics, Inc. v. Maxell, LTD., IPR2025-00520 (P.T.A.B.) - Track Docket
• Maxell, LG give notice of settlement in California patent row | MLex | Specialist news and analysis on legal risk and regulation - This is the new MLex platform
• Search | MLex | Specialist news and analysis on legal risk and regulation
• Search court records on patent:(10199072), page 2 - - All Courts
• LG전자, 몬디스·맥셀 제기 1,400만 달러 특허 침해 소송 승소… 美 CAFC, 특허 무효 판결
• Search court records on patent:(8736729)
• Maxell v. LG Electronics: 9-Patent Smartphone Dispute Dismissed | PatSnap - Your Agentic AI Partner
• IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
• Maxell Scores (\Phi 43M) EDTX Jury Win In ZTE Patent Trial
• Maxell, Huawei Reach Terms To End Smartphone Patent Suit
• irbis.fips.ru
• irbis.fips.ru

I'll research counsel of record. Note at the outset: this is a PTAB proceeding, so the "plaintiff" is the petitioner, LG Electronics USA Inc. (and possibly LG Electronics Inc.). Let me search the docket and related sources.

Now let me pull the specific IPR2025-00444 filings to confirm the counsel designation for this proceeding (not just its siblings).

Let me pull the IPR2025-00444 docket page directly for the papers and signature blocks.

Counsel of Record — Petitioner side (the "plaintiff" in this PTAB framing)

Threshold correction on the caption. IPR2025-00444 is a petition, not an infringement action, and the metadata's "Plaintiff(s): LG Electronics USA Inc." is a party-role label, not a court designation. On the record, the parties are LG Electronics, Inc. and LG Electronics USA, Inc., Petitioners v. Maxell, Ltd., Patent Owner — confirmed by the Board's own papers ("LG ELECTRONICS, INC. AND LG ELECTRONICS USA, INC., Petitioner, v. MAXELL, LTD, Patent Owner. Case IPR2025‑00444 Patent 8,736,729"). The true plaintiff in the underlying infringement suit is Maxell (Maxell, Ltd. v. LG Electronics Inc., No. 5:24‑cv‑04972‑NW‑SVK, N.D. Cal.), where LG is the defendant. I address both sides below so the answer is usable either way.

Best on-record source for "counsel of record": the Board's Notice of Refund, Paper 10 (mailed July 30, 2025). Because the case terminated prior to institution (Paper 8, July 21, 2025), there were no updated mandatory notices, so this service list is effectively the final caption of record. It matches GreyB/IPverse, which lists "Petitioner Counsel — Riffe, Timothy et al." (IPverse).

LG Electronics, Inc. / LG Electronics USA, Inc. — all counsel from Fish & Richardson P.C.

Caveats worth stating plainly:

• No in-house LG attorney appears on the PTAB service list. LG's petitions designate only Fish & Richardson as lead/backup counsel; the real parties-in-interest are LG Electronics, Inc. and LG Electronics USA, Inc., but no LG legal-department lawyer is of record. That is normal for PTAB practice under § 42.8(b)(3), which requires only registered practitioners.
• The registration numbers above for Riffe, Huang, Schwentker, Cannon, and Yu come from the sibling petition in the same LG–Maxell wave (IPR2025‑00392, atty. docket 18768‑0217IP4), which reproduces the identical Fish team in its § 42.8(b)(3) table. I could not open the § 42.8(b)(3) block of the '729 petition itself; the 00444 service list corroborates the names but not the numbers. Treat the numbers as high-confidence-but-cross-referenced.
• The 00444 service list adds Matthew Chun relative to the '493 petition's designation — an indication the team was slightly tailored per patent, but no updated mandatory notices were filed before termination, so there is no paper formally re-designating counsel in 00444.

Patent Owner side — Maxell, Ltd. (the actual plaintiff in the infringement suit)

For completeness, since the prompt asks for "plaintiff" counsel and Maxell is the plaintiff in the district court case:

• PTAB (IPR2025-00444): Robert G. Pluta (Reg. No. 50,970) and Nicholas H. Ciulla (Reg. No. 78,409), Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL 60606 — the same pair who signed the joint motions to terminate across the LG petition family (see the IPR2025‑00519 Joint Motion to Terminate).
• District court (N.D. Cal.): Edward D. Johnson (SBN 189475) leads for Maxell from Mayer Brown's Palo Alto office (Two Palo Alto Square, 3000 El Camino Real), with Cliff A. Maier (SBN 248858) and Graham (Gray) Buccigross (SBN 234558) in Palo Alto, Michael A. Molano (SBN 171057) in San Francisco, and Alan M. Grimaldi (pro hac vice) in Washington, D.C. — confirmed on the Joint Case Management Statement, Ex. 2002 in IPR2025‑00393. Mayer Brown has represented Maxell across the ZTE and Apple litigations as well.
• LG's district-court team (relevant because it overlaps the PTAB team): Fish & Richardson — Leeron G. Kalay (CA 233579, Redwood City), Michael J. McKeon (DC 459780, Washington, D.C., pro hac vice), Christian A. Chu (CA 218336), plus R. Andrew Schwentker, Michael J. Ballanco (DC 1030421), Jack R. Wilson IV, Jenna Kuh, Bryan J. Cannon, and James W. Cowan (all pro hac vice) — per the same Exhibit 2002 signature block and the N.D. Cal. docket via CourtListener.

Two record discrepancies to flag

1. Termination date: GreyB/IPverse reports the 00444 termination date as July 20, 2025; the Board's Paper 8 and the existing case summary say July 21, 2025. The Paper 10 refund is dated July 30, 2025. The decision itself controls — July 21.
2. Labeling: the metadata's "Plaintiff(s): LG Electronics USA Inc." inverts the district-court posture (LG is the defendant there) while being defensible for the IPR (LG is the petitioner/initiating party). Any downstream section should say "Petitioner" rather than "Plaintiff" to avoid propagating the error.

I'll research this, keeping in mind that "defendant" cuts two ways here: in the PTAB proceeding the responding party is Maxell, Ltd. (Patent Owner), while in the underlying infringement suit the defendants are LG Electronics, Inc. and LG Electronics U.S.A., Inc. I'll nail down both, with emphasis on the PTAB respondent since that's this case.

Confirmed the PTAB respondent side. Now let me pull registration numbers, firm bios, and the district-court defendant team.

Now the district-court defendant team. Let me verify LG's counsel of record on the N.D. Cal. docket, including any pro hac vice admissions and whether leadership changed before dismissal.

I hit my search budget before I could pull individual Fish & Richardson bios, so I've flagged where a detail is inferred rather than sourced. Here is the counsel-of-record picture for the defendant side(s).

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Threshold: there are two "defendants," and they are on opposite sides

Because the existing sections cover LG's petitioner-side PTAB team and Maxell's district-court team in detail, I focus below on the inverse pairing: Maxell's PTAB respondent team and LG's district-court defense team.

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1. Maxell, Ltd. — Patent Owner / respondent in IPR2025‑00444

Best evidence: the Board's own service list in the Termination Decision, Paper 8 (July 21, 2025), which names exactly two Maxell attorneys — no more. This is the final caption of record; because the case terminated pre-institution, no updated mandatory notices were filed. It is corroborated by GreyB/IPverse ("Respondent Counsel — Pluta, Robert et al.") and by the signature block on the parallel Joint Motion to Terminate in IPR2025‑00519, which used the identical two-lawyer team.

What is not on the record for this IPR:

• No in-house Maxell attorney and no local/ancillary counsel — just the two Mayer Brown registered practitioners. (No local counsel is required at the PTAB, so this is unremarkable.)
• No substitution or addition during the proceeding; the Paper 8 list is identical to the team that signed the joint motion.
• Nothing here is sealed as to counsel identity. The confidentiality request covers only the settlement agreement (Ex. 1013) under 35 U.S.C. § 317(b) / 37 C.F.R. § 42.74(c) — not the appearances.

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2. LG Electronics, Inc. and LG Electronics U.S.A., Inc. — defendants in the N.D. Cal. infringement case

LG's defense team is drawn almost entirely from Fish & Richardson, with two California-admitted lawyers anchoring the appearances and the rest admitted pro hac vice from Washington, D.C. The signature block on the Joint Case Management Statement (Mar. 17, 2025), reproduced as Ex. 2002 in IPR2025‑00393, is the cleanest single source.

Three further names appear in docket-derived counsel lists — Andrew Thompson Gorham, Bailey Kathleen Benedict, and Ethan Kovar — with no firm, role, or court admission I could verify. They are almost certainly Fish & Richardson associates, but I am not asserting that; treat them as unconfirmed.

Important structural point: LG's answer and counterclaims — seeking dismissal, a declaration of non-infringement, a declaration of invalidity/unenforceability,