Litigation

Maxell, Ltd. v. Huawei Device Co., Ltd. et al.

5:18-cv-00033

Patents at issue (1)

6928306

Plaintiffs (1)

Summary

Earlier E.D. Tex. action listed in the patent family/litigation record. Per RPX, six patents including U.S. Patent No. 6,928,306 were previously asserted in this District against the Huawei/ZTE/ASUS group; the exact defendant mapping between -00033 and -00034 was not confirmed. A 2018 opinion, Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668, reflects claim-construction activity.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case and the related litigation family before drafting.

Key finding already: the docket confirms 5:18-cv-00033 is Maxell v. Huawei in the Texarkana Division before Judge Schroeder. Let me verify the defendant lineup and the '306 patent specifics.

Now let me pin down the '306 patent itself, the Huawei IPR, and the case outcome.

Case Overview — Maxell, Ltd. v. Huawei Device Co., Ltd. et al., No. 5:18-cv-00033-RWS (E.D. Tex.)

Parties and their businesses. Maxell, Ltd. is a Japanese corporation with its registered office in Oyamazaki, Kyoto (see Complaint, Dkt. 1 ¶ 7, 5:18-cv-00033). It is the successor to the Hitachi Maxell consumer-electronics business: the asserted patents were originally Hitachi, Ltd.'s, moved to Hitachi Consumer Electronics in 2013 and then to Hitachi Maxell, Ltd. in 2014, and were held by "Maxell, Ltd." after the October 1, 2017 renaming (USPTO assignment records, Reel 045142/0208; this is why the 2016 complaints name "Hitachi Maxell" and the 2018 complaints name "Maxell, Ltd."). Maxell is therefore an operating company — it sells batteries, storage media, projectors and consumer electronics — but it does not make smartphones, so its mobile-handset portfolio functions as a licensing/assertion program rather than a product-protection one; that characterization is analytical, not something a court has found. The defendants named in the complaint are Huawei Device Co., Ltd., a Chinese corporation based in Bantian, Longgang District, Shenzhen, and Huawei Device USA, Inc., which the complaint describes as a Texas corporation with its principal place of business at 5700 Tennyson Parkway, Plano, Texas (Dkt. 1 ¶¶ 8–9) — a fact of considerable venue significance, discussed below. Huawei's U.S. handset business is the operating-company counterpart to Maxell's licensing posture: a major global smartphone OEM selling Ascend/Honor/Mate/P-series devices.

The accused technology and the patents. The '033 complaint was a ten-patent mobile-device case, not a single-patent case. Per Maxell's answer to Huawei's counterclaims (Dkt. 28 ¶ 4), the complaint asserted U.S. Patent Nos. 7,324,487, 7,068,503, 8,982,086, 6,928,306, 6,983,140, 7,515,810, 7,995,897, 6,347,068, 6,973,334 and 9,544,517; the AO 120 filings for the companion cases confirm the same core set. The focus patent, U.S. Patent No. 6,928,306 ("Portable mobile unit," issued Aug. 9, 2005, priority to Jan. 7, 2000), is a ringtone patent: it claims a portable unit whose "ringing sound generator" produces the alert from "a plurality of patterns made of combination of at least two sound sources" (e.g., FM, PCM, MIDI or MP3 sound sources), together with a controller

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

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

In the news

What the press has reported about this case, summarized with links to the source articles.

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

Found key Law360 coverage. Let me dig into case-specific reporting and the IPR/parallel proceedings.

Press coverage of Maxell v. Huawei (5:18-cv-00033) and the related 2018 Maxell handset suits

Coverage is sparse and almost entirely trade-press docket reporting; no mainstream or general tech outlet covered this case. I found no Reuters, Bloomberg, Ars Technica, The Verge, IPWatchdog, Patently-O or EFF coverage of the 2018 Maxell/Huawei/ZTE/ASUS complaints. The dedicated reporting is essentially all Law360, accessed through its case-tracking page for the Huawei dispute, which lists a March 19, 2018 story, "Maxell Seeks Sanctions Against Huawei In Smartphone IP Suit," reporting that Maxell asked a Texas federal judge to sanction Huawei because its "complete disregard" for discovery obligations and court orders had "reached new heights" (Law360). That sanctions fight is the only litigation-conduct development in this case family that drew a standalone story; the claim-construction order reported at 297 F. Supp. 3d 668 appears in databases and opinion aggregators (CourtListener) but I found no press article analyzing it.

The dollar figures in the press belong to the parallel ZTE case, not to -00033, and outlets consistently framed Maxell's campaign by that verdict. Law360 reported on 2018-07-02 that a six-member Texarkana jury found on Friday 2018-06-29 that ZTE USA willfully infringed all seven asserted Maxell smartphone patents and awarded $43.3 million, a finding that "allowing the court to triple the damages"; Law360 also flagged the then-unusual detail that the jury was asked whether some claims were "routine and conventional" for Alice purposes, and quoted Maxell's Mayer Brown counsel Jamie Beaber — "We're very happy for our client and we think the jury got this one right." A Law.com piece by Scott Graham (which I located as a re-post on a Chinese-language IP site rather than at its original URL) added that the jury gave Maxell its entire $43 million reasonable-royalty ask, that the patents implicated camera, audio, power-management and pedestrian-navigation technology across 105 accused ZTE products, and — citing RPX data — that Maxell was then litigating "some 47 different patents" against BlackBerry, Olympus, Huawei, ASUSTeK, Blu Products, Fandango and FOTV while owning a 5,300-patent portfolio largely bought from Hitachi's optronics division in 2013. That campaign-scale framing is the closest thing to a stated significance thesis in the coverage; no outlet analyzed the '306 patent or the specific Huawei accused products reported on here.

The Huawei matter ended in a confidential settlement that press described at the level of a single global deal, without terms. Law360 reported on 2019-02-21 that Huawei and Maxell told the Texas court "all matters in controversy between the parties have been settled in principle," three days before a scheduled hearing, with confidential terms; the story tied the deal back to the November 2016 suit and noted it followed the early-February 2019 ZTE settlement. Law360 had reported on 2019-02-04 that Maxell and ZTE reached a confidential settlement ending the Eastern District of Texas dispute "over seven Maxell patents that a jury found were infringed," with the settlement papers filed under seal and an identical notice filed in the bifurcated ZTE Corp. case. RPX summarized the sequence in a 2019-03-20 brief, "Following a Recent Burst of Settlements, Maxell Sets Its Sights on Apple," describing settlements with ASUSTek, Huawei and ZTE followed by Maxell's 2019-03-15 complaint against Apple (5:19-cv-00036) asserting ten patents "including patents previously asserted by Maxell against ASUSTek, BlackBerry, Huawei, and/or ZTE." A Chinese-language IP news item (runzeheng.com) attributes to World IP Review a March 2019 report that Maxell had settled with ASUS in a case over seven patents relating to smartphone cameras and data management; the ASUS docket is consistent — a joint motion to stay and notice of settlement filed 2019-03-12, and dismissal with prejudice on 2019-05-02 in 5:18-cv-00136 (Docket Alarm).

Where reporting goes beyond the record, and where it diverges from the case metadata. The attorney quotations (Beaber on the ZTE verdict), the RPX portfolio and "47 patents" figures, and RPX's characterization of a settlement "burst" followed by an Apple suit are commentary layered on top of the docket, not record facts. Notably, the Feb. 2019 Huawei settlement story carries the case number for the 2016 suit (5:16-cv-00178) rather than -00033, so the press does not actually document which of the two Huawei complaints the deal resolved — only the PTAB filings do, showing Huawei and Maxell jointly moved to terminate IPR2019-00192 (the '810 patent, asserted in -00033) and to keep the settlement agreement confidential in April 2019 (IPR2019-00192 record). Finally, a contradiction with the case metadata worth flagging: USPTO AO 120 forms in the record list U.S. Patent No. 6,928,306 among the five patents asserted in 5:18-cv-00034 (ZTE), while 5:18-cv-00033 (Huawei) lists '487, '503, '086, '140, '897, '068, '334, '517 and '810 (AO 120 excerpt) — and ASUS was sued separately in 5:18-cv-00136, not in -00033. The caption's Huawei/ZTE/ASUS grouping appears to reflect the consolidated Maxell campaign rather than the actual -00033 defendant list, and no press account reconciles this.

Sources

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and filings for this case.

Let me pull the actual docket sheet and filings.

Docket verification first (and a correction to the earlier section)

Before listing counsel, one metadata correction that the earlier summary flagged as unresolved is now resolvable:

Item Finding Source
5:18-cv-00033-RWS = plaintiff Maxell, Ltd. v. Huawei Device USA, Inc. and Huawei Device Co., Ltd. (Texarkana Div.; filed 3/2/2018; Judge Robert W. Schroeder III); terminated 4/4/2019, "Dismissed – Settled" Confirmed Justia docket; AO 120 form reproduced in IPR2019-00661 Ex. 1002; Patexia case summary
5:18-cv-00034-RWS = Maxell v. ZTE Corp. / ZTE (USA), Inc. Confirmed — the Huawei/ZTE split between -00033 and -00034 is now established, so ZTE and ASUSTeK were not defendants in -00033 AO 120 form, Dkt. No. 5:18-CV-34, reproduced at IPR2019-00661 Ex. 1002
ASUSTeK case = 5:18-cv-00136-RWS Confirmed Maxell's Notice of Readiness, Maxell v. Apple, No. 5:19-cv-00036 (Dkt. 29, 5/24/2019)
'306 patent was part of the -00033 group Confirmed — Maxell's own related-case disclosure lists 5:18-cv-33 as "includ[ing] the '306 Patent" (with the '517 and '334 patents) Maxell v. Apple, No. 5:19-cv-00036, Dkt. 29 ¶ 3
Patents named on the -00033 AO 120 filing 7,995,897; 6,347,068; 6,973,334; 9,544,517; 7,515,810 (later-added patents include the '306) AO 120, 5:18-CV-33; IPR2019-00192 Mandatory Notice (confirming the '810 patent was asserted in 5:18-cv-00033)

So the caption in the case metadata (which includes ZTE and ASUSTeK) is over-inclusive for -00033 specifically — those entities belong to the -00034 and -000136 siblings.

Plaintiff's counsel of record

Maxell's representation in -00033 was led by Mayer Brown LLP (as in every Maxell U.S. patent case of this era), with Washington, D.C. as the principal office for the case team. The Justia docket sheet for 5:2018cv00033 lists the following as appearing for Maxell.

| Attorney | Role

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

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

Let me pull the Justia docket page and search for Huawei's defense counsel.

Let me get the full docket sheet and defendant-side attorney lists.

Counsel of Record — Defendants in Maxell, Ltd. v. Huawei Device Co., Ltd., No. 5:18-cv-00033-RWS (E.D. Tex.)

Bottom line: I can identify the defendant-side firms with reasonable confidence, but I could not obtain a party-by-party attorney mapping from a primary docket source within my research budget, and I will not manufacture one. Below I separate (a) what the docket confirms, (b) what is well-grounded from parallel proceedings, and (c) what remains unverified and needs a PACER pull.

0. Threshold correction before naming anyone

The case metadata lists five defendants (Huawei Device Co., Huawei Device USA, ZTE (USA), ZTE Corporation, ASUSTeK). The actual docket for -00033 contains only the two Huawei entities. Justia's docket summary states: Plaintiff — Maxell, Ltd.; Defendant — "Huawei Device USA, Inc. and Huawei Device Co., Ltd."; Office — Texarkana; Presiding Judge — Robert W. Schroeder (Justia docket 180950). The complaint itself names only the two Huawei entities (Dkt. 1 ¶¶ 8–9, Case 5:18-cv-00033-RWS). The ZTE/ASUS names in the metadata appear to be a spillover from the companion case 5:18-cv-00034 (Maxell v. ZTE) — Mayer Brown's own attorney bio separately lists "Maxell, Ltd. v. ZTE … 5:18-cv-00034" and "Maxell, Ltd. v. Huawei Device Co. Ltd (E.D. Tex. 2018, case no. 5:18-cv-00033)" as two distinct matters (Mayer Brown, Baldine B. Paul bio). This should be corrected in the case summary. It also affects any counsel analysis: ZTE's and ASUS's counsel are not counsel in this case.

Also relevant to "counsel of record": the case terminated April 4, 2019, "Dismissed – Settled" (Patexia case summary, 5:18-cv-00033). So this is a closed case with a full appearance record, not a case where counsel "hasn't appeared yet."

1. What the docket aggregator actually shows (and its limits)

The Justia attorney roster for -00033 lists thirteen names:

William Justin Barrow · Jamie B. Beaber · Amanda Streff Bonner · Geoffrey Patton Culbertson · James A. Fussell, III · Alan M. Grimaldi · Kfir B. Levy · Tiffany A. Miller · Bryan Christopher Nese · Baldine Brunel Paul · Robert Gary Pluta · Saqib Javaid Siddiqui · Steven Mark Geiszler

(Justia docket 180950)

Critical caveat: the page renders these under undifferentiated "Represented By" tags, and the crawled text does not preserve which party each name attaches to. I was not able to confirm the party-by-party split from the docket text I retrieved. Do not treat this list as a defendant list.

What is separately well-grounded is that most of the names above are plaintiff-side. The Mayer Brown team — Beaber, Paul, Levy, Miller, Pluta, Nese, Siddiqui — are the Maxell/Mayer Brown attorneys who prosecuted the parallel Maxell v. Huawei and Maxell v. ZTE E.D. Tex. actions (see the identical roster on the 5:16-cv-00178 docket, Justia 172640; see also Mayer Brown bios for Paul and Beaber). And Geoffrey Patton Culbertson of Patton, Tidwell & Culbertson (Texarkana) is confirmed as Maxell's local counsel, not Huawei's: Huawei's IPR counsel served courtesy copies on "counsel of record for the Patent Owner" in Huawei Device USA Inc. v. Hitachi Maxell, listing "Jamie B. Beaber, Mayer Brown LLP" and "Geoff Culbertson, Patton, Tidwell & Culbertson, LLP, 2800 Texas Boulevard, Texarkana" (IPR2018-00246, Paper 2, Power of Attorney, certificate of service). So listing Culbertson as defense local counsel would be an error.

2. Defendant-side counsel — best-grounded identification

Fish & Richardson P.C. — lead/principal defense counsel (moderate-high confidence).

  • Fish & Richardson is the petitioner's counsel for the Huawei side in the IPR wave that Huawei filed against the very Maxell patents asserted here, including IPR2019-00192 ([Huawei Technologies Co., Ltd.](/litigations/by-plaintiff/Huawei%20Technologies%20Co.%2C%20Ltd.) v. Maxell), where Unified Patents' PTAB docket lists "PET. COUNSEL: Fish & Richardson PC," and where the petitioner's Exhibit 1018 is the *complaint in Maxell Ltd. v. Huawei Device USA, Inc. and Huawei Device Co., Ltd., Case No. 5:18-cv-00033* (Unified Patents, IPR2019-00192). Fish's IPR2019-00575/-00576 petition exhibits likewise attach "Plaintiff Maxell, Ltd.'s Patent Rule 3-1 and 3-2 … Infringement Contentions Against the Huawei Defendants" and "Defendants' Invalidity