Maxell, Ltd. v. ASUSTeK Computer Inc.

I'll research this case and its surrounding context before drafting the overview.

Key discrepancy surfacing: the complaint text appears to assert different patents than the metadata. Let me verify.

Now let me pin down the exact patent list in the complaint and check the RPX record.

Case Overview

Parties. Maxell, Ltd. is a Kyoto-based Japanese electronics manufacturer founded in 1961 as Maxell Electric Industrial Co., best known for magnetic tape, optical media, and consumer batteries, and it still sells storage, power, audio/visual, and wireless-charging products. Its patent position in this suit is largely inherited rather than homegrown: per the complaint (Dkt. 1 ¶ 4), Hitachi, Ltd. assigned the relevant IP to Hitachi Consumer Electronics in 2009, which assigned it — including the patents in this case — to Hitachi Maxell, Ltd. in 2013, later renamed Maxell. Maxell therefore sits in the hybrid category that defense counsel often treat as PAE-like: it is a genuine operating company, but the smartphone/media portfolio it asserts is acquired, licensing-driven, and litigated in volume (by mid-2018 Maxell was reportedly asserting roughly 47 patents against Apple, Samsung, Huawei, ZTE, ASUS, BlackBerry, Olympus, Blu, and others). ASUSTeK Computer Inc. is the Taiwanese OEM behind the ASUS and ROG brands — phones, laptops, and components — and was the parent of ASUS Computer International, the U.S. subsidiary that was the co-defendant in the parallel California action.

Accused technology and patents. The accused instrumentalities are ASUS smartphones and notebooks. Count I of the complaint targets the ROG Phone and Zenbook S (UX391UA), plus the ZenFone 4 Pro (ZS551KL) and ZenFone 4 family, alleging that their fingerprint-sensor/touch-panel user authentication — two operating modes plus a controller that executes a specified process when detected fingerprint data matches stored data — practices U.S. Patent No. 8,982,086 ("Information Processing Apparatus," issued March 17, 2015) (Dkt. 1, Count I). That is the only count I can verify from the face of the pleading. On the two numbers in the case metadata: I could not corroborate either from this docket. U.S. Patent No. 6,816,491 appears in Maxell's docket as one of the seven patents in the ZTE trial (Maxell v. ZTE, No. 5:16-cv-00179), and U.S. Patent No. 7,995,897 was the subject of ASUS's own IPR2018-00906 petition filed May 18, 2018 — which was directed at the earlier-filed California action, not this one. The '897 tag on this docket appears to originate from Docket Alarm's patent index and may be a tagging artifact; RPX is reported (per the existing summary) to list five patents-in-suit here, consistent with this being a multi-count "second wave" complaint asserting patents Maxell identified after the California case was underway. Practically, the case reads as a follow-on to Maxell v. ASUSTeK, No. 3:18-cv-01788-VC (N.D. Cal.), where the parties were already litigating the '226, '517, '498, '340, '334, '209, and '229 patents — and ASUS's October 2018 IPR wave (IPR2019-00067 through -00071) attacked the '229, '226, '334, and '498 patents from that case.

Posture, venue, and significance. Maxell filed in the Texarkana Division of the Eastern District of Texas on November 2, 2018, assigned to District Judge Robert W. Schroeder III (Dkt. 1; case flags "RWS3"). Venue choice was deliberate and transactional, not accidental: the complaint pleads that Maxell has done continuous business in the district since 2014 through its Marshall, Texas affiliate Maxell Research and Development America (Dkt. 1 ¶ 5), and Judge Schroeder had just presided over Maxell's two-week ZTE trial that produced a $43.3 million willful-infringement verdict on seven patents in June 2018 — a verdict Maxell settled confidentially in February 2019. Filing a second EDTX front while its first ASUS case sat in N.D. Cal. (transferred from C.D. Cal. in March 2018 over Maxell's opposition) gave Maxell leverage in both fora and in the August 30, 2018 mediation the complaint itself cites as ASUS's notice date (Dkt. 1 ¶ 6). The case never reached the merits: ASUS waived service on December 17, 2018 (Dkt. 4); the parties filed a Joint Motion to Stay All Deadlines and Notice of Settlement on March 12, 2019 with a sealed Memorandum of Understanding (Dkts. 5–6); Judge Schroeder stayed all deadlines for 60 days (Dkt. 7, Mar. 15, 2019); and a joint motion to dismiss (Dkt. 8) produced an order dismissing all claims with prejudice, each side bearing its own costs, and a final judgment (Dkts. 9–10, May 2, 2019). The settlement had an IPR signature as well: the Board terminated ASUS's '334 and '226 petitions without institution in April 2019 on the parties' joint motion, expressly because the settlement "encompasses this proceeding and the co-pending district court case where Patent Owner asserted the '334 patent against Petitioner" (IPR2019-00070, Paper 9, Apr. 12, 2019), while the '498 petition had already been denied institution on the merits (IPR2019-00071, Paper 7, Mar. 14, 2019). The case's significance is thus two-fold: it is a clean illustration of the NPE-adjacent "file-multiple-fronts-then-globally-settle" pattern in which IPR exposure is priced into the settlement, and the '086 patent Maxell asserted

I'll research this case systematically, starting with the docket and any related proceedings.

Now let me dig into the complaint's asserted patents and the parallel ASUS IPRs.

Let me identify the specific patents in the ASUS IPR series and confirm the asserted patents here.

Overview of the record

This is a short, settlement-driven case: six months from complaint to final judgment, with no answer, no counterclaims, no Markman, no discovery motions, no dispositive motions, and no trial. The entire docket is 11 entries. The legally significant activity in this dispute happened outside the E.D. Tex. docket — in a coordinated wave of five ASUS IPR petitions and in a parallel N.D. Cal. action. I'll walk the district court chronology first, then the PTAB track, then the disposition and its strategic read.

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1. Pre-filing posture (context for the filing)

• 2017-10-13 — Maxell sued ASUSTeK and ASUS Computer International in C.D. Cal. (No. 2:17-cv-7528-R-MRW), asserting an earlier slice of the portfolio.
• 2018-03-20/21 — Venue transferred to N.D. Cal. (No. 3:18-cv-01788-VC). ASUS's own PTAB filings describe the transfer as granted March 20, 2018 (IPR2019-00068, Paper 7, at 2); Maxell's complaint pleads March 21, 2018. Minor, but worth noting because the two sides' public filings diverge by a day.
• 2018-08-30 — Parties mediated the N.D. Cal. case; a portfolio license "including the patents at issue here was discussed" (Compl. ¶ 6).
• 2018-10-16 — ASUS filed five IPR petitions (IPR2019-00067 through -00071) — roughly two weeks before Maxell filed this Texas suit.
• 2018-10-30 — Maxell's counsel sent ASUS a portfolio notice letter identifying additional patents.

The complaint (Dkt. 1) is explicitly framed as a follow-on leverage suit: Maxell pleads that during the earlier litigation it "identified additional patents in its portfolio and additional products of ASUS," and that the mediation had put a portfolio license on the table. That framing matters — see §7 below.

2. Filing and initial pleadings (2018-11-02 – 2018-12-19)

No answer and no counterclaims were ever filed. ASUS's responsive deadline was overtaken by the settlement track. This is unusual and is itself the key procedural fact: ASUS never had to commit to an invalidity or non-infringement position in this forum, and never had to plead § 285 or § 101 defenses here.

Venue was pleaded on Maxell's MRDA (Maxell Research and Development America, LLC) presence in Marshall, Texas (Compl. ¶ 5) — the same "regular and continuous business in the Eastern District of Texas" theory Maxell used across its campaign. No Rule 12(b)(3) transfer motion was ever filed, so that theory was never tested in this case.

Patent-identification caveat (important). The metadata in my prompt lists US 6,816,491 and US 7,995,897 as the patents at issue. The complaint text I could retrieve shows Count 1 asserting U.S. Patent No. 8,982,086 ("Information Processing Apparatus," issued 2015-03-17), and RPX indexes the case with five patents-in-suit, while Docket Alarm links it to the '897. I could not retrieve the complaint's full count list. Treat the '491/'897 pairing as unverified — '491 is a smartphone audio-decoding patent Maxell asserted against ZTE (and later Apple), and '897 is a digital-camera recording patent asserted against Olympus and BlackBerry, so both are plausible portfolio members but neither is confirmed as a count here. The one patent I can affirmatively tie to this complaint is the '086.

3. Pre-trial motions of substance

None. There is no Rule 12 motion, no § 1404(a) transfer motion, no motion to stay pending IPR, no motion to compel, no summary judgment motion, and no Daubert motion on this docket. The docket contains only the complaint, the waiver, the corporate disclosure/AO 120 filings, and the three closing documents.

Notably, no party moved to stay this case pending the five ASUS IPRs — even though the petitions were on file and one institution decision issued during the case's pendency. The parties instead resolved everything via the settlement stay.

4. Claim construction (Markman)

Did not occur. No scheduling order issued, no exchange of proposed constructions, no Markman hearing, no claim construction order. The case never got past the pleading stage in this forum. (Maxell's Markman work on the ASUS patents happened in N.D. Cal. — e.g., its "4-3 Identification of Proposed Constructions" served 2018-08-27, D.I. 113-1, which ASUS used as an exhibit in IPR2019-00068.)

5. Discovery milestones

None of record. No Rule 26(f) conference, no ESI order, no protective order, no source-code production, no depositions, no expert reports. Because this case was a leverage vehicle rather than a case intended to be litigated to judgment, discovery never began.

6. Parallel PTAB proceedings — the real substantive track

ASUS filed five IPRs on 2018-10-16, all naming ASUSTeK Computer Inc. and ASUS Computer International as petitioners and Maxell as patent owner:

Key points:

• IPR2019-00071 is the only merits ruling in the entire ASUS–Maxell dispute. The Board rejected ASUS's obviousness grounds over Suzuki and Nosaka, and specifically rejected ASUS's reading of the means-plus-function limitation "device for getting location information denoting a present place." That denial became binding-ish precedent inside the later Maxell v. Apple litigation, where Apple cited the PTAB's construction — including the "infrared ray sensor" structural disclosure — to argue prosecution disclaimer. So the one substantive PTAB outcome here had downstream value for Maxell across its campaign.
• Almost all of the petitions targeted the N.D. Cal. patents, not this case. The IPR2019-00071 decision states the '498 patent "has been asserted in Maxell, Ltd. v. [ASUSTek Computer Inc.](/litigations/by-defendant/ASUSTek%20Computer%20Inc.) & ASUS Computer International, 3-18-cv-01788"; the IPR2019-00068 termination motion likewise identifies only the N.D. Cal. case as the co-pending litigation. This is a significant analytical point: the ASUS IPR wave was defensive against the N.D. Cal. action, and this E.D. Tex. case was Maxell's offensive counterweight.

I'll research the docket and related coverage for this case.

Counsel of Record for Plaintiff Maxell, Ltd. — Maxell, Ltd. v. ASUSTeK Computer Inc., No. 5:18-cv-00136-RWS (E.D. Tex.)

Bottom line

Two layers of representation are documented. Geoffrey Patton Culbertson of Patton, Tidwell & Culbertson, L.L.P. (Texarkana, TX) is the only attorney who actually appears as a filer on the E.D. Tex. docket — every substantive paper in the case (Dkt. 1, 3, 4, 5, 6, 8) was filed through his ECF account. The substantive First-Chair work for Maxell against ASUS was handled by Mayer Brown LLP, whose team is documented as Maxell's counsel in the companion ASUS matters (C.D. Cal. 2:17-cv-07528 → N.D. Cal. 3:18-cv-01788, and the five ASUS IPRs, IPR2019-00067 through -00071). Mayer Brown's appearance in this E.D. Tex. docket is inferred, not verified — see the caveat below.

Important sourcing caveat

• The Docket Alarm docket sheet for 5:18-cv-00136 (https://www.docketalarm.com/cases/Texas_Eastern_District_Court/5--18-cv-00136/Maxell_Ltd._v._ASUSTEK_COMPUTER_INC/) lists only 11 entries, all Maxell-side filings attributed to "(Culbertson, Geoffrey)," and no pro hac vice motions or notices of appearance by Mayer Brown attorneys appear on that docket. The case lived only six months — complaint (Nov. 2, 2018), waiver of service (Dec. 19, 2018), joint stay/settlement notice (Mar. 12, 2019, with the Memorandum of Understanding sealed at Dkt. 6), dismissal (Dkt. 8–10, May 2, 2019) — so the Mayer Brown team may simply never have needed to formally appear in Texarkana.
• Mayer Brown's role for Maxell against ASUS is solidly verified in the parallel proceedings: the joint claim construction statement in N.D. Cal. 3:18-cv-01788 lists Beaber, Levy, Fussell, Miller, Barrow, Pluta and Peden as "Attorneys for Plaintiff MAXELL, LTD." (available via Docket Alarm/JUSTIA), and the ASUS IPR papers (e.g., IPR2019-00068, Paper 7) identify Pluta as Maxell's lead IPR counsel with the Mayer Brown service list. I did not locate a document in the 5:18-cv-00136 record itself naming the Mayer Brown attorneys, so treat their appearance in this case as highly likely but not docket-confirmed.
• No in-house Maxell attorney appears on the docket, and no Maxell in-house counsel is identified in the public record I could review. The settlement papers were filed jointly and the MOU (Dkt. 6) is sealed, so the identity of any in-house signatory is not public.

Context worth noting for the case history

The E.D. Tex. suit was a follow-on to Maxell's California suit against ASUSTeK/ASUS Computer International: the complaint (Dkt. 1, ¶ 6) expressly recites the C.D. Cal. case (2:17-cv-7528-R-MRW), its transfer to N.D. Cal. (3:18-cv-01788-VC), and the Aug. 30, 2018 mediation, and alleges ASUS had notice of the newly asserted patents from that mediation. The dismissals moved in tandem: N.D. Cal. dismissal (Mar. 4, 2019), E.D. Tex. stay pending dismissal papers (Dkt. 7, Mar. 15, 2019), joint motions to terminate the ASUS IPRs (Apr. 11, 2019, per IPR2019-00068 Paper 7), and final judgment with prejudice in Texas (Dkt. 10, May 2, 2019) — a single global ASUS–Maxell settlement, not a merits disposition. That is also why the "patents at issue" metadata is unstable: the E.D. Tex. complaint attached five exhibits (Dkt. 1, Att. 2–6), consistent with RPX's five-patent count, while the '491/'897 pairing in the case summary reflects only partial tagging in third-party databases.

I'll research the docket and counsel appearances for this case, plus the parallel N.D. Cal. action where ASUS actually litigated.

Good progress — I have the N.D. Cal. defense team. Now let me pin down whether ASUS's counsel actually appeared on this E.D. Tex. docket, and who signed the joint motions.

The Dkt. 8 signature block is decisive. Let me verify Dkt. 5 (the earlier joint stay motion) and check the roles of the other N.D. Cal. defense attorneys.

Counsel of Record for the Defendant (ASUSTeK Computer Inc.)

Threshold finding: there is no notice of appearance on this docket

This matters for how the answer should be framed. The 11-entry docket contains no "Notice of Appearance," no pro hac vice applications, and no designation of lead/backup counsel — because ASUS never answered and the case never reached a scheduling order. ASUS's counsel of record is therefore established only by the signature blocks on the two joint motions (Dkt. 5, Dkt. 8). Dkt. 8 — the Joint Motion to Dismiss filed 2019-04-30 — is the authoritative document; it is signed on behalf of ASUS and its certificate of service lists ASUS's counsel separately from Maxell's (Dkt. 8, Docket Alarm copy).

One firm, no local counsel. Unlike the plaintiff side — which paired Mayer Brown (DC/Chicago) with Texarkana locals Patton, Tidwell & Culbertson — ASUS used a single firm, Alston & Bird LLP, Dallas office. All five signing attorneys were Texas-barred, so no pro hac vice motions and no separate Texarkana/E.D. Tex. local counsel were used. That is a notable structural choice for a Texarkana patent case and is consistent with a defense run as an appendage of the N.D. Cal. matter rather than as a standalone Texas engagement.

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The five attorneys who signed for ASUSTeK (Dkt. 8)

Not on this docket but part of the same defense team: Christopher T.L. Douglas (Alston & Bird, Charlotte, NC; Reg. No. 56,950) was lead counsel for ASUS in all five IPR petitions (IPR2019-00067–00071) and signed the April 11, 2019 joint motion to terminate IPR2019-00068 (IPR2019-00068, Paper 7). He co-chairs Alston & Bird's PTAB practice. He did not sign any E.D. Tex. filing.

Also appearing in N.D. Cal. but not in this case (recorded as defendant-side attorneys on the No. 3:18-cv-01788 docket): Hidetada James Abe, Marsha Ellen Diedrich, and additional "Sang Lee"/"Sang Il Lee" entries. I could not verify whether Abe or Diedrich are ASUS in-house counsel or outside counsel, and they filed no appearance in E.D. Tex. Do not attribute them to this case.

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What I could not verify

• Dkt. 5 signature block. The Joint Motion to Stay (filed 2019-03-12, granted Dkt. 7) and its sealed Exhibit A "Memorandum of Understanding" (Dkt. 6) are filed under Maxell's ECF account; I retrieved the docket text but not the Dkt. 5 signature page. Alston & Bird's involvement at that stage is inferable but not confirmed from the document itself.
• Who signed the waiver of service (Dkt. 4, waiver sent 2018-12-17). Recipient/signatory is not shown in the docket text. In the predecessor C.D. Cal. case the waiver was "signed by Vincent Hong" — likely ASUS in-house, but I have no confirmation he signed here and will not assert it.
• Any engagement letter, in-house counsel of record, or § 285/§ 101 positions — none exists, since ASUS never filed a responsive pleading.
• Whether Alston & Bird's Dallas IP group still lists this matter — Neilson's public bio omits the E.D. Tex. case and lists only the N.D. Cal. one, which is a small but real signal that this docket was treated internally as a tag-along.

Cross-check against the existing sections

This fills in the previously blank item in §2's discussion of ASUS never pleading: ASUS did retain and appear through counsel of record — it simply did so only via joint motions, never through a Notice of Appearance. That is a citable distinction worth making explicitly, since a reader checking PACER's "attorneys" tab for this case may find an empty party-attorney list. Also flag one inconsistency with the earlier section: the N.D. Cal. transfer order date — the ASUS IPR papers say March 20, 2018 while the complaint pleads March 21, 2018; the N.D. Cal. docket itself shows the case filed there March 22, 2018, which is consistent with a March 20–21 transfer.