Maxell, Ltd. v. Apple Inc.

I'll research this case across multiple sources.

Case overview and background

Parties and roles. The plaintiff, Maxell, Ltd., is a Kyoto-based Japanese operating company (founded 1961 as Maxell Electric Industrial Co., Ltd.) that makes storage media, lithium-ion micro-batteries, projectors/lenses, and consumer accessories. Critically for this case, its mobile-device patent portfolio is inherited Hitachi IP: in 2009 Hitachi, Ltd. moved consumer-product IP to Hitachi Consumer Electronics Co., Ltd., which in 2013 assigned it — including the patents at issue — to Hitachi Maxell, Ltd., later renamed Maxell, Ltd. (W.D. Tex. complaint, 6:20-cv-00646, Dkt. 1, ¶¶ 1–4). Maxell is therefore best characterized as a practicing operating company with a large, Hitachi-derived licensing program — not a classic shell NPE — though its enforcement posture (portfolio-wide campaigns against Apple, Samsung, Huawei, ZTE, Lenovo/Motorola, TCL, and battery maker Amperex) is routinely described in NPE-style terms. The defendant, Apple Inc., is the accused handset/tablet/wearable/computer maker. Maxell's complaint alleged that Apple had been on notice of the portfolio since "at least June 2013" through years of licensing meetings, and had refused to take a license (id. ¶¶ 5–6).

Accused technology and asserted patents. Filed February 19, 2021, the complaint was a 97-page, 12-count pleading accusing a broad swath of Apple hardware — iPhone, iPad, Apple Watch, iPod touch, and in some counts Macs — of infringing twelve patents, each pleaded as a separate count: 10,911,719 and 10,389,978 (communication apparatus for transmitting/receiving digital information — FaceTime-related continuations of the '991 patent asserted in the 2019 E.D. Tex. case); 8,736,729 (electronic camera); 6,816,491 and 8,098,695 (multiplexed audio data decoding/receiver apparatus, also FaceTime-facing); 7,551,209 and 8,130,284 (imaging apparatus with white-balance control); 10,264,456 (mobile terminal and control method — device unlock; continuation of the '586 patent); 10,418,069 (recording/reproducing apparatus — the Photos "People" facial-recognition album; continuation of the '848 patent); 10,592,372 (digital information recording/reproducing/transmitting — DRM/store content); and the two position-location patents, 7,072,673 and 6,484,034, both titled "Radio handset and position location system," which Maxell mapped onto iOS Location Services (AppleInsider, Feb. 20, 2021). The '673 patent — the sole patent the Google Patents/Unified Patents metadata attributes to this docket, and the only one whose technical content is well documented — claims priority to July 24, 2001 and is a CDMA position-determination invention: the handset builds delay profiles from base-station pilot signals and, where two or more base stations share the same PN offset (making their signals indistinguishable in the delay profile), selects which base stations to use for position calculation by excluding at least one duplicate-offset station (claims 1–15) (Petition and POPR, IPR2023-00110). Note the discrepancy with the case metadata: the complaint attached twelve patent exhibits and pleaded twelve counts (see the return of service listing "EXHIBIT 1 … EXHIBIT 12," Dkt. 10), and Docket Alarm independently indexes the '729 patent to this complaint's Dkt. 1; the '673 is simply the patent the third-party databases keyed the docket to.

Procedural posture, venue, and why it matters. The case landed in the [U.S. District Court for the Western District of Texas, Waco Division](/courts/western-district-of-texas-waco), before Judge Alan D. Albright — in 2021 the busiest and fastest patent venue in the country. The docket is remarkably thin: filed 2/19/2021; Apple served via CT Corporation on 3/2/2021; Apple (DLA Piper's John M. Guaragna, with pro hac vice admissions for Christine Corbett and Matthew Satchwell) obtained an extension to respond until 5/7/2021; Maxell filed a joint Rule 41(a) motion to dismiss on 3/24/2021; and Judge Albright granted it in a text order on 4/1/2021, dismissing all claims with prejudice, each side bearing its own fees and costs (Justia docket; Dkt. 14). There was no claim construction, no motion-to-transfer fight, and no merits ruling — the 41-day life span is the signature of a global peace, not a litigated case. The dismissal came in the same week as the collapse of Maxell's lead case: on March 22, 2021, at the close of jury selection in Maxell v. Apple, No. 5:19-cv-36

I'll research this case across dockets, opinions, and PTAB records.

I have the core docket. Now let me pin down the complaint contents, related cases, and PTAB activity.

Maxell, Ltd. v. Apple Inc., No. 6:21-cv-00158-ADA (W.D. Tex., Waco Div.)

Threshold correction to the existing summary

The prior narrative flagged that the '673 patent "could not independently [be] confirm[ed] from the retrieved complaint text." It can now be confirmed. The 2021-02-19 complaint (a 97‑page pleading) asserted twelve patents, and U.S. 7,072,673 ("Radio handset and position location system") was one of them, asserted alongside its sibling U.S. 6,484,034 against Apple's Location Services. The full list pleaded in the complaint:

Sources: AppleInsider, 2021-02-20 (patent-by-patent list and 97-page complaint reference); cnBeta/iPhone Mania (same list). The complaint sought declaratory judgment of infringement, compensatory damages "consistent with lost profits and in no event less than a reasonable royalty," trebling and pre-judgment interest under §§ 284–285, fees, and costs.

Practical caveat: the case-level "patents at issue = 7,072,673" field in the metadata is an artifact of Google Patents/Unified Patents mapping a single representative patent to the docket. Analytically, the '673 was 1 of 12 asserted patents, and the case was resolved before any patent-specific ruling was made.

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Chronological developments

1. Filing and service (2021-02-19 → 2021-03-04)

• 2021-02-19 — Complaint filed in W.D. Tex., Waco Division; assigned to Judge Alan D. Albright; case number amended to include the "ADA" initials. Jury demand by Maxell. (Docket entry dated 2021-02-19, Justia docket.)
• 2021-02-22 — Summons issued as to Apple (Dkt. 8).
• 2021-03-02 — Service effected on Apple via CT Corporation System in Dallas (Dkt. 10, Return of Service; process server Don Anderson). Answer originally due 2021-03-23.
• Context: this was Maxell's third suit against Apple — following No. 5:19-cv-00036 (E.D. Tex., filed 2019-03-15, 10 patents) and No. 6:20-cv-00646 (W.D. Tex., filed 2020-07-16, 5 patents). Reporting at the time put the cumulative total at 27 asserted patents across the three suits (iPhone Mania).

2. Initial pleadings — no answer, no counterclaims

• 2021-03-04 — Apple filed an Unopposed Motion for Extension of Time to Answer or Otherwise Respond (Dkt. 11).
• 2021-03-11 — Text order granting Dkt. 11; Apple's response deadline reset to 2021-05-07.
• 2021-03-08 — DLA Piper filed pro hac vice applications for Christine Corbett (Dkt. 12) and Matthew D. Satchwell (Dkt. 13), sponsored by Austin-local counsel John M. Guaragna (DLA Piper).
• 2021-03-17 — Text order granting Satchwell's PHV motion (Dkt. 13). The Corbett motion does not appear as ruled upon in the docket snapshot retrieved 2021-04-01.
• Apple never answered, moved to dismiss, or asserted counterclaims. The case terminated before any responsive pleading was due.

Maxell's filings in this docket were signed by Michael Chibib (Waco/local counsel); in the companion Waco case (6:20-cv-00646) Maxell's lead was Robert S. Harrell (Mayer Brown). The full Maxell trial team on this docket is not fully reconstructable from the public docket and I have not verified it — treat counsel rosters here as provisional.

3. Pre-trial motions of substance — none

There were no motions to dismiss, transfer, stay pending IPR, or for summary judgment in this action. Specifically:

• No § 1404(a) transfer motion. Notably relevant because in the companion 6:20-cv-00646 docket Apple had litigated a § 1659 stay and (per the Apple motion to continue in the E.D. Tex. case) a confidentiality-agreement forum-selection-clause transfer argument. None of that was replicated here.
• No motion to stay pending IPR/PGR was filed in this docket — the case did not exist long enough, and the relevant PTAB proceedings were already at or near final written decision/institution stage in the companion matters (see § 7).

4. Claim construction (Markman) — did not occur

No Markman briefing, no Phillips order, no claim-construction hearing. The case was dismissed roughly six weeks after filing, well before any scheduling order. There is therefore no claim construction outcome for the '673 in this litigation.

5. Discovery milestones — none of substance

No Rule 26(f) conference, no scheduling order, no protective order, no ESI or source-code protocol, no contention interrogatories, no expert reports. The only non-pleading activity was the service of process and Apple's PHV admissions. Apple's counsel had sought PHV admission in several parallel Maxell matters (Satchwell's motion disclosed prior PHV applications in Nos. 6:20-cv-00640-ADA, 6:20-cv-00439-ADA, 6:20-cv-00440-ADA, 6:20-cv-01126-ADA, and 6:20-cv-01128-ADA), confirming this was staffed as part of a coordinated campaign docket rather than a standalone case.

6. Settlement and dismissal (2021-03-22 → 2021-04-01)

• 2021-03-22 — Global settlement reached. Per Law360 (2021-03-23, 7:07 PM EDT), the parties "told the judge at the end of jury selection proceedings Monday they had reached a deal" in the E.D. Tex. case; Maxell filed a sealed proposed order described on the docket as

I'll research press coverage of this case across multiple search angles.

Let me dig into coverage of the February 2021 filing specifically.

Let me look for coverage of how this case ended and any reporting on the '673 patent specifically.

Press coverage of Maxell, Ltd. v. Apple Inc., No. 6:21-cv-00158-ADA (W.D. Tex.)

The filing drew brief but real tech-press attention, all of it on the same day. AppleInsider reported on 2021-02-20 that Maxell filed the suit on February 19 in the Waco Division, accusing Apple of infringing twelve patents "through FaceTime and photographic features of the iPhone, iPad, and other hardware." Its list includes U.S. Patent No. 7,072,673 — "Radio handset and position location system" — which AppleInsider grouped with U.S. Patent No. 6,484,034 as the two patents whose infringement theory rests on Apple's Location Services. AppleInsider also reported the prayer for relief: a declaration of infringement plus "compensatory damages with interest and costs 'consistent with lost profits and in no event less than a reasonable royalty,'" along with treble damages, pre-judgment interest, and fees. No dollar figure was reported by any outlet. Biometric Update reported in February 2021, crediting AppleInsider, that the suit was Maxell's "third suit against Apple" and highlighted the '069 patent's facial-recognition/Photos "People" album theory and Maxell's triple-damages demand; it also noted the parallel ITC investigation spawned by the 2020 case. The filing was recycled widely in non-English tech press, e.g. WinFuture (German) and MacMagazine (Portuguese), largely restating the AppleInsider account.

Significance, as framed by the press, was about litigation volume rather than any legal ruling. AppleInsider called the new suit "a growing roster of other legal actions Maxell has attempted against Apple, but has so far not yet completed," and noted that Maxell had secured access to Apple's source code in the 2019 case. WinFuture reported on 2021-02-20 (approx.) that the new complaint re-asserts patents already at issue in the still-pending 2019 and 2020 suits — which it called "überaus ungewöhnlich" (highly unusual) — and speculated that the new claims likely resulted from the source-code review a court permitted Maxell in summer 2020. That causal theory is a reporter's inference, not something in the court record. WinFuture also noted that Maxell had not quantified its damages ("nicht auf Heller und Pfennig"). Notably, the '673 patent received essentially no individual attention: no outlet located analyzed its claims, its Hitachi provenance, or its treatment in the earlier Maxell cases — it appears only as one line in AppleInsider's twelve-patent list.

Accounts differ on a basic fact — the number of patents — and on how the case ended. AppleInsider's list of twelve patents matches the twelve patent exhibits attached to the complaint (Dkt. 1, Exs. 1–12, with the '673 patent as Ex. 10), while Biometric Update reported "13 patents," apparently an error. On termination, the coverage is thinner and partly contradicted by the docket. Law360 (Christopher Cole) reported on 2021-03-23 that Maxell and Apple settled "just before heading to trial," with terms undisclosed, and that the parties also called off a PTAB proceeding — but Law360's story is expressly about the 2019 Eastern District case, No. 5:19-cv-00036, listing the ten patents asserted there, none of which is the '673 patent. AppleInsider reported on 2021-03-24 that the settlement "does not cover the company's subsequent 2020 suit over passcode unlock, nor the 2021 case concerning FaceTime," and Mac4ever (French) said the same. MacMagazine attributed its settlement reporting to Bloomberg and likewise said the other two suits continued. Yet the docket in this case shows a joint motion to dismiss filed 2021-03-24 (Dkt. 14) and a text order by Judge Albright on 2021-04-01 dismissing all claims with prejudice — the same day the parallel W.D. Tex. case, No. 6:20-cv-00646, was dismissed — and the ITC terminated Investigation No. 337-TA-1215 on settlement in April 2021 per Federal Register notice. So the press's "the FaceTime case continues" framing was, on the record, overtaken within about a week.

Bottom line on coverage: this specific docket generated no sustained press attention, no reported damages or settlement figures, no executive or analyst commentary, and — as far as I could find — no article reporting the April 1, 2021 dismissal of No. 6:21-cv-00158 itself, nor any coverage tying the '673 patent to this case beyond AppleInsider's one-line list entry. The substantial trade-press treatment (Law360, and the PTAB termination orders) attaches to the 2019 Eastern District case, not to this one. Treat the settlement's scope as unresolved in the published reporting: no outlet disclosed terms, and none reconciled the "third suit continues" stories with the Waco dismissal.

Sources

• trial on claims that are “almost surely to be modified” will not vindicate any new patent rights Maxell might obtain as a result...
• UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
• UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS WACO DIVISION

• TO:	Mail Stop 8 Director of the U

• Maxell Settles Patent Suit Against Apple Over Mobile Tech
• Search court records on patent:(8736729), page 4 - - All Courts
• Maxell asks the Court to prohibit Apple from introducing evidence or arguments based on prior art beyond the 20 prior art refere...
• Maxell, Ltd. v. Apple Inc.
• Ultimately, the key factors in dealing with successive challenges to a patent include the progress at the PTAB or USPTO (in the ...
• PUBLIC VERSION
• accused products, would sufficiently support an induced infringement claim
• Docket updates for Maxell Ltd. v. Apple Inc, 5:19-cv-00036 - Docket updates for Maxell Ltd

I'll dig into the docket filings and signature blocks to identify plaintiff's counsel of record.

I'll research the docket and counsel appearances for this case.