Maxell, Ltd. v. [defendant not confirmed]

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

Parties and what they do. The defendant is Apple Inc., which the earlier summary could not confirm; the docket and complaint caption settle it. Plaintiff Maxell, Ltd. is a Kyoto-based operating company — it sells batteries, magnetic tape and optical storage, projectors/lenses, and consumer accessories, and traces its lineage to Maxell Electric Industrial Co. (1961) and, more recently, to Hitachi Maxell, Ltd. (renamed Maxell, Ltd. in 2016 after Hitachi's reorganization). The asserted patents themselves are Hitachi-origin assets: Hitachi, Ltd. assigned its consumer-product IP to Hitachi Consumer Electronics in 2009, which assigned it (including the '491) to Hitachi Maxell in 2013, which passed it to Maxell. Importantly, Maxell pleads itself as an active licensor/enforcer from the mobile-device market and has monetized this portfolio in repeated campaigns (ZTE, Huawei, Apple, Samsung, LG and others) — so it is best characterized as an operating company that litigates like a licensing entity, not a classic PAE. Apple's defense team on the docket came from DLA Piper (John Michael Guaragna; Matthew Satchwell; Christine Corbett admitted pro hac vice), with Maxell's filings entered by Waco local counsel Michael Chibib; Mayer Brown (Jamie Beaber) led Maxell's broader campaign per Law360.

Accused products/technology and the asserted patents. Filed February 19, 2021, the 97-page complaint pleads twelve patents as separate counts, each aimed at a discrete iPhone/iPad/Apple Watch (and in places Mac) functionality: FaceTime and camera/imaging pipeline (10,911,719; 10,389,978; 8,736,729; 6,816,491; 8,098,695), camera white balance (7,551,209; 8,130,284), device unlocking (10,264,456), Photos-app facial recognition/People album (10,418,069), location services (7,072,673; 6,484,034) and digital content/DRM functions (10,592,372). The patent flagged in the case metadata, U.S. Patent No. 6,816,491 ("Multiplexed audio data decoding apparatus and receiver apparatus," issued Nov. 9, 2004), claims an audio decoder architecture in which multiple compression-format decoding program codes sit in an external ROM and are downloaded into an internal RAM for a DSP when the detected format changes — i.e., a multi-codec audio decoder that can be updated simply by swapping firmware rather than enlarging on-chip ROM. Its specification is shared with 8,098,695 (a continuation via 7,447,241), which was co-asserted. In the earlier ZTE case the '491's accused use was audio decoding in handsets (the jury found claims 1 and 8 infringed by the ZMax 2 and Axon 7); in the Waco complaint the same decoding functionality is attributed to FaceTime/video-call audio — that mapping is press-derived (AppleInsider), not a court finding, and no claim construction occurred here.

Posture, venue, and why it matters. Assigned to Judge Alan D. Albright, Waco Division. Apple was served through CT Corporation on March 2, 2021 (Dkt. 10); its response deadline was extended to May 7, 2021 (Dkt. 11, granted Mar. 11, 2021). Before Apple ever answered, the parties filed a joint motion to dismiss on March 24, 2021 (Dkt. 14), and Judge Albright dismissed all claims with prejudice on April 1, 2021, each side bearing its own fees and costs, with the USPTO notified the same day (Dkt. 15). That timing is the key to the case: on March 22, 2021 — the first day of jury selection in Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036-RWS (E.D. Tex., Texarkana, Judge Robert W. Schroeder III) — the parties announced a settlement on all matters, and Apple stood down a PTAB oral argument scheduled for the next day; final judgment of dismissal with prejudice followed on April 7, 2021 (Dkt. 698–699). The Waco dismissal two days later is almost certainly part of that global resolution — the EDTX case's ten patents did not include the '491 or most of the Waco tranche — but the joint motion itself does not say so, so the linkage is an inference, not a documented term. The venue choice is itself notable: Waco/Albright was the highest-volume patent docket in the country in 2021 and offered an unusually fast trial track, and Apple's substantial Austin presence in the Western District made a transfer fight costly; filing the same week Apple was headed to trial in Texarkana layered settlement pressure on top of the new case. Finally, the '491 is a notably "battle-tested" asset: it survived ZTE's IPR challenges (the PTAB denied institution as to the '491, '695, '317, '729 and '493 in 2018 — Maxell filed a notice of those decisions on the ZTE docket

I'll research this case systematically across dockets, PTAB records, and legal press.

The defendant is now confirmed as Apple Inc. Let me dig into why the case was dismissed just six weeks after filing, and the PTAB history for the '491 patent.

Key finding: the case was dismissed with prejudice on 2021-04-01 after a joint motion — likely tied to a broader Maxell–Apple settlement. Let me verify the patents asserted and the parallel N.D. Cal. litigation.

Correction to case metadata first

The defendant is confirmed: Apple Inc. The case is Maxell, Ltd. v. Apple Inc., No. 6:21-cv-00158-ADA (W.D. Tex., Waco Division), assigned to Judge Alan D. Albright. Filed 2021-02-19 and closed 2021-04-01 — roughly six weeks after filing, with no merits adjudication of any kind. (Justia docket; DocketAlarm)

Because the prior summary treated the defendant, filing date, and outcome as unconfirmed, this section resolves those three points and then walks the (short) chronology. The practical consequence is important: any entry on the '491 patent's litigation history attributing a claim construction, validity, or infringement ruling to this case would be wrong. The only merits rulings touching the '491 came from other cases (ZTE, Huawei), summarized at the end.

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Chronology

1. Filing and initial pleadings

2021-02-19 — Complaint filed (Dkt. 1). Maxell asserted infringement under 35 U.S.C. § 271 with a jury demand. This was a "second wave" suit asserting twelve patents, not a single-patent case: U.S. Patent Nos. 10,911,719; 10,389,978; 8,736,729; 6,816,491 (Exhibit 4); 8,098,695; 7,551,209; 8,130,284; 10,264,456; 10,418,069; 7,072,673; 10,529,372; and one further '034 patent (Exhibit 12). The summons reflects twelve exhibits, one per patent. (Complaint, Dkt. 1)

The complaint framed the case as a continuation of a decade-long licensing campaign:

• Maxell (successor to Hitachi Maxell) alleged Apple had actual knowledge of the portfolio since at least June 2013, via meetings and 2018 written correspondence identifying specific products and claims (Compl. ¶ 5).
• It expressly tied this suit to two earlier Apple cases: No. 5:19-cv-00036-RWS (E.D. Tex.) asserting "ten other patents," and No. 6:20-cv-00646-ADA (W.D. Tex.) asserting five others (Compl. ¶¶ 5–6).
• It leaned heavily on Maxell's prior win against ZTE, including that seven asserted patents — the '491 among them — survived ZTE's IPR petitions. Maxell's outside counsel had made the same point to Apple in an October 9, 2018 letter touting the $43.3M ZTE verdict and the denial of institution on each patent. ([Oct. 9, 2018 Beaber letter](https://www.docketalarm.com/cases/PTAB/IP

I'll research this case to identify plaintiff counsel.

The case is Maxell, Ltd. v. Apple Inc. (6:21-cv-00158-ADA), filed Feb. 19, 2021 and dismissed with prejudice April 1, 2021. Let me pull the complaint's counsel block and any pro hac vice filings for Maxell's side.

Confirmed the plaintiff's filings were signed by Michael Chibib. Now let me find the complaint's full counsel signature block and check for any additional appearances.

Bottom line

The case is Maxell, Ltd. v. Apple Inc., No. 6:21-cv-00158-ADA (W.D. Tex., Waco Div.), assigned to Judge Alan D. Albright, filed February 19, 2021 and dismissed with prejudice on April 1, 2021 (Dkt. 14 joint motion to dismiss; text order granting it; Dkt. 15 PTO report). The '491 patent was asserted as Exhibit 4 to the complaint, one of twelve patents in the suit. Because the case lived only about six weeks, the plaintiff's side of the docket is very thin — and only one Maxell attorney is unambiguously confirmed as counsel of record.

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Confirmed counsel of record for Plaintiff Maxell, Ltd.

Michael Chibib — counsel of record / Texas counsel (Bracewell LLP, Austin)

• Name/role: Michael ("Mike") Chibib, Texas Bar No. 00793497; USPTO Reg. No. 40,950. He is the only attorney whose name appears on Maxell's filings in this case — every plaintiff-side entry (Dkt. 1 complaint, Dkt. 2 summons request, Dkt. 3 Rule 7 disclosure statement, Dkt. 10 return of service, Dkt. 14 joint motion to dismiss) is attributed to "Chibib, Michael" on the docket.
• Firm/office: Bracewell LLP, 111 Congress Avenue, Suite 2300, Austin, TX 78701 (512-472-7800) — the firm's Austin office, where he was a partner at the time of filing. Note: current USPTO practitioner data lists him at Pillsbury Winthrop Shaw Pittman in Austin (last-updated record), suggesting a later move; I could not confirm the exact date of any transition, so treat his current firm as unverified.
• Experience note: UT Austin B.S. in electrical engineering (1991) and UT Law J.D. with honors (1995); a registered patent attorney whose practice is district-court and ITC patent litigation plus PTAB post-grant work (semiconductors, telecom, electronics, software). He was part of Maxell's recurring trial team across the Maxell enforcement campaign and has been repeatedly recognized in Best Lawyers (IP/patent litigation, since 2013), Legal 500, IAM Patent 1000 and Lawdragon's IP guide. He also served as lead PTAB counsel for petitioners such as NXP (e.g., IPR2024-01068).

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Counsel who very likely worked the matter but are NOT confirmed on this docket

Maxell ran this W.D. Tex. case as part of a coordinated campaign with its national patent counsel at Mayer Brown LLP. I could not verify appearances by these lawyers in 6:21-cv-00158 specifically (see caveats), so I list them as probable, not confirmed:

• Jamie B. Beaber — Mayer Brown LLP, Washington, DC. Maxell's lead counsel nationally; filed the notice of appearance as lead counsel in Maxell v. Apple, No. 5:19-cv-00036 (E.D. Tex.), and signed Maxell's W.D. Tex. filings in the companion case 6:20-cv-00646. The most senior Maxell relationship partner and the natural lead here.
• Robert S. Harrell — Mayer Brown LLP, Houston, TX. Texas-admitted Mayer Brown partner who signed the joint motion to dismiss in the companion W.D. Tex. case the same day (March 24, 2021) this case was dismissed — the closest structural analogue to Dkt. 14 here.
• Robert G. Pluta — Mayer Brown LLP, Chicago, IL. Long-time Maxell patent-litigation team member on the Apple matters.
• (Also on the broader Maxell team in related suits: Kfir B. Levy, James A. Fussell III, Saqib J. Siddiqui, Bryan Nese, Tiffany A. Miller, Alan M. Grimaldi of Mayer Brown; and, in the E.D. Tex. cases, Geoff Culbertson/Kelly Tidwell of Patton, Tidwell & Culbertson and Craig Cherry/Mark Siegmund of Steckler Wayne Cherry & Love, Waco — none of whom I can confirm appeared in this case.)

Given the pattern (Bracewell's Austin partner as the Texas signatory + Mayer Brown as national lead), the most defensible characterization is: Chibib was the attorney of record, with Mayer Brown serving as lead trial counsel behind him — but on this specific docket, only Chibib's name is documented.

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Key caveats

• No plaintiff-side pro hac vice motions appear on this docket. The only PHV motions are Apple's: Dkt. 12 (Christine K. Corbett) and Dkt. 13 (Matthew D. Satchwell), both filed March 8, 2021 by John M. Guaragna of DLA Piper (Austin) and granted March 17, 2021. That is consistent with a case that settled/dismissed before Maxell needed to paper its full team into the district.
• Docket coverage is limited. The Justia/RECAP docket was last retrieved April 1, 2021 (https://dockets.justia.com/docket/texas/txwdce/6:2021cv00158/[1123761](/patent/1123761)), and my document-level sourcing is from RECAP-derived mirrors (Docket Alarm, Patexia) rather than a live PACER pull. It is possible that an appearance or designation of lead counsel exists that these mirrors did not capture; I found no evidence of any.
• Nothing appears to be sealed on the plaintiff's side in this case; the dismissal was a public joint motion with a public order.
• I have not invented any attorney names. Where I name Beaber, Harrell, or Pluta, it is because they are documented as Maxell's counsel in the factually parallel Maxell–Apple matters (5:19-cv-00036 and 6:20-cv-00646), not because I verified their appearance in 6:21-cv-00158.

Suggested next step if certainty is required: a live PACER docket pull for 6:21-cv-00158-ADA and a review of the signature block on Dkt. 1 (complaint, p. 97) — that page will list every attorney Maxell designated as "Counsel for Plaintiff" at filing.

I'll research this case and identify defense counsel.

Defendant confirmed as Apple Inc. Now let me verify the attorneys' details and firms.

Correction to the case summary

The defendant is now confirmed: Apple Inc. Case No. 6:21-cv-00158-ADA, Maxell, Ltd. v. Apple Inc., filed February 19, 2021 in W.D. Tex. (Waco Div.) before Judge Alan D. Albright. Service on Apple via CT Corporation was effected March 2, 2021 (Dkt. 10). The case was dismissed with prejudice on April 1, 2021 on the parties' joint motion (Dkt. 14), roughly six weeks after filing — consistent with the global Maxell–Apple licensing resolution that also ended the earlier E.D. Tex. action (No. 5:19-cv-00036-RWS). Maxell was represented in the dismissal by Michael Chibib (Chibib & Jacob, Austin).

Sources: Justia docket (https://dockets.justia.com/docket/texas/txwdce/6:2021cv00158/1123761); Patexia docket table (https://services.patexia.com/lawsuits/Maxell-Ltd-v-Apple-Inc-id-[145628](/patent/145628)/documents); Docket Alarm document set for 6:21-cv-00158.

Defense counsel of record

Apple's entire appearance was made by three DLA Piper LLP (US) attorneys. There is no in-house Apple attorney and no second firm on the docket; nothing in this docket was sealed (the docket closes at 15 entries, all public).

Caveats and sourcing notes

• Office locations: Guaragna's Austin office is confirmed from DLA Piper's own site, Chambers, and the firm's W.D. Tex. signature blocks. Satchwell's and Corbett's specific office addresses are not stated in the text of the PHV motions as captured in the public document mirrors — the address lines were truncated in the available copies. Chicago (Satchwell, per his Illinois bar admission and DLA Piper's Chicago IP group) and Silicon Valley/East Palo Alto (Corbett, per her signature blocks in C.D. Cal. and N.D. Cal. filings) are well-grounded but are inferences from other dockets, not from this one. Treat them as "believed," not docket-verified.
• Role labels: W.D. Tex. practice does not require a formal lead-counsel designation at the answer stage, and Apple never answered here (deadline extended to May 7, 2021, then dismissed). The "lead vs. local vs. of counsel" labels above reflect observed conduct, not a court order.
• No other counsel: Dkts. 11–13 are the only appearances. Apple filed no corporate disclosure statement, no answer, and no IPR petition tied to this docket was located; the case resolved before any substantive motion practice.
• Patent coverage: The complaint (Dkt. 1, 97 pages, 12 exhibits) asserted a multi-patent family from Maxell's Hitachi-inherited portfolio. That U.S. Patent No. 6,814,491 was among the patents asserted in this specific case is consistent with the case metadata but I could not confirm it from the face of the complaint excerpt available; the docket-alarm cross-references also tie this docket to other portfolio patents (e.g., 8,736,729). Flagging as not independently verified.