Maxell, Ltd. v. ASUSTeK Computer Inc. et al.

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

Good start — I've confirmed the core docket facts and the seven asserted patents. Now let me verify the PTAB proceedings, the transfer ruling, the second suit, and post-settlement patent office outcomes.

I'll research this case systematically, starting with the docket and the patents at issue.

Good initial picture. Now let me get the N.D. Cal. docket details and the parallel IPRs.

Let me pull the full N.D. Cal. docket and the related E.D. Tex. follow-on case.

Maxell, Ltd. v. ASUSTeK Computer Inc. — Litigation Timeline & Outcome

Bottom line: This case never reached claim construction on the merits, summary judgment, or trial. The single-patent C.D. Cal. complaint (the '498 walking-navigation patent, aimed at the ZenFone AR) was transferred to N.D. Cal. in March 2018, expanded there to a seven-patent, multi-technology case, and was then resolved by a global settlement in early 2019 — producing a dismissal without prejudice (2019-03-04), a PTAB institution denial on the '498 (2019-03-14), and a § 317 settlement termination of the companion '226 IPR (2019-05-20).

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1. Filing and initial pleadings (C.D. Cal.)

The complaint asserted only U.S. Patent No. 6,430,498 ("Portable Terminal With the Function of Walking Navigation," issued 2002-08-06), claims 1, 5 and 10, against the ZenFone AR and, on information and belief, the ZenFone V (V520KL), ZenPad Z8s, ZenPad Z8, ZenPad Z10 and ZenFone 2E Go, pleading willful infringement. (Complaint, Dkt. 1)

One caveat: the C.D. Cal. docket as published shows ASUSTeK's Dkt. 39 as an answer with jury demand; I did not find a separately docketed counterclaim (e.g., for declaratory judgment of invalidity/non-infringement). It is possible counterclaims were pleaded inside the answer, but I cannot confirm that from the sources reviewed.

2. Pre-trial motions: dismissal and transfer

• 2018-01-02 — ACI moved to transfer venue to N.D. Cal. under § 1404(a) (Dkt. 35), with a Godwin Yan declaration and 17 exhibits; opposition 2018-01-12 (Dkt. 37); reply 2018-01-19 (Dkt. 38); ASUSTeK joined 2018-01-22 (Dkt. 42). Both the 12(b)(3) motion and the transfer motion were submitted on the papers without oral argument (Dkts. 36, 51) — Judge Real vacated both hearing dates.
• 2018-02-23 — Despite the pending transfer motion, the court set an aggressive schedule: discovery cutoff and fact/memoranda deadline 2018-08-20, final pretrial conference 2018-09-10, jury trial 2018-10-09 (Dkt. 63).
• 2018-03-20 — Order granting transfer to N.D. Cal. and denying the motion to dismiss as moot (Dkt. 64); case closed and transmitted 2018-03-21/27 (Dkts. 65–67). (Patexia docket)

So the transfer motion effectively mooted the venue defense rather than resolving it — ASUS won the forum fight and avoided a merits ruling on the 12(b)(3) motion.

3. N.D. Cal. phase — the case grows from one patent to seven

• 2018-03-22 — Case opened as Maxell, Ltd. v. ASUSTeK Computer Inc., No. 3:18-cv-01788-VC (N.D. Cal., San Francisco), before Judge Vince Chhabria. (Justia docket)

• 2018-05-01/02 — Stipulation selecting mediation (Dkts. 92–93), granted by Judge Chhabria.

• 2018-05-15 — Initial case management conference (telephonic): the court directed a revised schedule including a technology tutorial and a combined claim construction / summary judgment hearing. (Minute entry, Dkt. 98) Note: the posted minute-entry text reads "early to mid-October 2019," which appears inconsistent with the August 2018 claim-construction statement; treat the exact hearing year as unconfirmed.

• 2018-08-27 — Joint Claim Construction and Prehearing Statement under Patent L.R. 4-3 (D.I. 113), covering seven patents: '226, '517, '498, '340, '334, '209 and '229. Agreed constructions included:

  • '340: "residual storage of a battery" → "remaining battery charge"; "managing information" → plain and ordinary meaning
  • '334: the CDMA cellular-telephone preambles are limiting
  • '209: "detecting an achromatic portion" → "detecting a white portion"

  The parties identified only a handful of case-dispositive terms, including the '498's "said walking navigation information" and the '229's "MPEG Method" — confirmation that the transferred case had been substantially amended to add six more patents beyond the '498. The amendment date is not captured in the sources I could access; the practical inference is that Maxell added patents and products after transfer, consistent with Maxell's own later account that it "identified additional patents in its portfolio and additional products" during the litigation. (D.I. 113 excerpt)

• 2018-08-30 — Mediation held (confirmed in Maxell's later E.D. Tex. complaint, ¶ 6, which states that a portfolio license was discussed at that session).

• 2019-01-30 — Magistrate Judge Laurel Beeler granted the defendants' motion for administrative relief (Dkt. 120) and motion for judicial assistance (Dkt. 118) (Dkt. 123). The public docket text does not describe the relief; based on the motion caption this was a discovery/judicial-assistance dispute (most likely directed to third-party or foreign-held evidence). **I could not verify the substance,

I'll research the docket and contemporaneous reporting to identify Maxell's counsel of record.

Bottom line

Maxell's counsel of record in this case were Mayer Brown LLP — principally the firm's Washington, DC office, with support from Chicago — and Maxell used its own California‑admitted Mayer Brown partners (Kfir Levy is admitted in C.D. Cal. and N.D. Cal.) rather than a separate local‑counsel firm. No in‑house Maxell attorney appears on the docket; Maxell litigated through outside counsel only. The same team carried the case through the March 2018 transfer to N.D. Cal. and the March 2019 settlement.

Sourcing caveat: PACER itself was not directly accessible for this exercise; the roster below is reconstructed from the docket aggregators (Justia, UniCourt, RPX Insight), the filed complaint, and Mayer Brown filings/bios in the companion Maxell matters. Firm affiliations for two peripheral names are unverified and flagged as such.

Counsel of record for Plaintiff Maxell, Ltd.

Notes on roles and gaps

• Who actually signed the papers: the C.D. Cal. complaint (Dkt. 1, filed 10/13/2017) was docketed with Kfir B. Levy added as counsel for Maxell at filing, consistent with the companion Maxell complaints filed the same day (e.g., Maxell v. Fandango, No. 2:17‑cv‑07534), which Levy signed under a Mayer Brown letterhead. Beaber was the relationship lead and first chair.
• No separate local counsel firm: the California‑admissions function was handled inside Mayer Brown — Levy is admitted in both C.D. Cal. and N.D. Cal., and Mayer Brown's Los Angeles partner Dale J. Giali appears as the California‑bar signatory on contemporaneous Maxell pleadings in other matters. Giali does not appear on the attorney list for this case, so I would not list him as counsel of record here.
• Sealed/limited record: this case transferred to N.D. Cal. as No. 3:18‑cv‑01788 (Judge Vince Chhabria) and settled in March 2019; several filings on the transferred docket are not publicly available, and third‑party aggregator attorney lists can conflate parties. Anything above marked "unverified" should be confirmed against the N.D. Cal. docket before being used in a filing or client memo.
• Contrast — defense side: ASUS was represented by Alston & Bird (e.g., Thomas W. Davison, Fannyben Patel, Hidetada James Abe), which also handled ASUS's IPRs against Maxell (IPR2019‑00067 through ‑00071). Useful only as a cross‑check that the plaintiff roster above is not contaminated by defense counsel.

Primary sources: Justia docket for No. 2:17‑cv‑07528 (https://dockets.justia.com/docket/california/cacdce/2:2017cv07528/[691418](/patent/691418)); Justia docket for No. 3:18‑cv‑01788 (https://dockets.justia.com/docket/california/candce/3:2018cv01788/[324417](/patent/324417)); UniCourt dockets for both cases; RPX Insight case page (https://insight.rpxcorp.com/litigation/cacdce-691418-maxell-v-asustek-computer); Mayer Brown bios for Baldine Paul, Kfir Levy, and Alison Gelsleichter; Maxell signature blocks in Maxell v. Apple, No. 5:19‑cv‑00036 (D.I. 629) and Maxell v. ZTE, No. 5:16‑cv‑00179.

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

Let me dig into the N.D. Cal. docket and identify which attorneys represented the ASUS defendants.

Let me check the CourtListener docket and specific appearance entries.