Maxell, Ltd. v. Huawei Device USA Inc. et al.

I'll research this case across multiple sources to build a well-grounded overview.

Let me dig deeper into the '292 patent, the docket history, and the PTAB proceedings.

Case Overview & Background — Maxell, Ltd. v. Huawei Device USA Inc. et al., No. 5:16-cv-00178-RWS (E.D. Tex.)

The parties. Plaintiff Maxell, Ltd. ("Hitachi Maxell, Ltd." in the original 2016 complaint caption)[^1] is a Japanese consumer-electronics and energy company founded in 1961 as Maxell Electric Industrial, making magnetic tape, optical media, lithium-ion micro-batteries, and consumer accessories. The patents in suit did not originate with Maxell: per Maxell's own later complaint, Hitachi, Ltd. assigned the relevant IP to Hitachi Consumer Electronics Co., Ltd. in 2009, which assigned it to Hitachi Maxell, Ltd. in 2013, which in turn transferred it to Maxell in a 2013 reorganization/name change "to align its intellectual property with the licensing, business development, and research and development efforts of Maxell."[^2] Maxell is therefore best characterized as an operating company that monetizes a large acquired IP portfolio — it states in its pleadings that it

I'll research this case thoroughly using web searches. Let me start with the foundational facts.

Let me dig into the docket, PTAB proceedings, and the settlement timeline.

I have the core. Now let me reconcile the settlement timeline and get the PTAB outcomes and pleadings details.

Key Legal Developments & Outcome — Maxell, Ltd. v. Huawei Device USA Inc. et al., No. 5:16-cv-00178-RWS (E.D. Tex.)

A note on scope before the timeline: the case-metadata describes a single patent (U.S. 6,928,292), but the docket and the court's own claim-construction order show that this lead case actually asserted eight patents against Huawei (the '292 being one of them), plus a companion case against ZTE. The '292 was the focal patent in the summary, and its claims 1–2 were construed. I flag where the record is broader than the metadata.

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1. Filing & Initial Pleadings

• 2016-11-18 — Hitachi Maxell, Ltd. (later renamed Maxell, Ltd.) filed the complaint in the Texarkana Division against Huawei Device USA Inc. and Huawei Device Co., Ltd. (No. 5:16-cv-00178-RWS). A companion suit against ZTE USA Inc. (No. 5:16-cv-00179-RWS) was filed the same day; the two were consolidated for pretrial purposes, with the Huawei case designated the lead case (Case No. 5:16-cv-00178-RWS). CourtListener/Justia docket.
• The complaint alleged Huawei continued to infringe despite "numerous meetings and interactions" dating back to June 2013; the court's order notes Hitachi's 2013-06-10 licensing contact with Huawei CEO Ren Zhengfei, including claim charts. (Complaint ¶19, reproduced in PTAB briefing and reported by Law360.)
• Patents asserted. Across the consolidated action, Maxell asserted fifteen patents. Against Huawei it asserted: U.S. 5,396,443 (also against ZTE); 7,509,139; 6,754,440; 6,928,292; 7,203,517; 7,671,901; 6,856,760; and 7,116,438. Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668, 680 (E.D. Tex. 2018).
• 2017-10-24 / 2017-10-26 — Maxell filed an unopposed motion to substitute Maxell, Ltd. for Hitachi Maxell, Ltd. (Dkt. 101), granted two days later (Dkt. 102), reflecting the corporate name change. (Both documents are preserved as PTAB exhibits.)
• The record I could access did not surface a separate, well-sourced docket entry for Huawei's answer/counterclaims. In E.D. Tex. practice these are typically filed with the answer several weeks after service; I could not confirm the specific date or the counterclaim counts from the sources retrieved, so I do not state them as fact.

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2. Pre-Trial Motions of Substance

• No transfer or stay motion of substance is confirmed in the sources retrieved. Notably, the later Maxell complaint against Huawei (filed 2018-03-02, No. 5:18-cv-00033) expressly recites that in the prior case (5:16-cv-00178) "there are no venue challenges pending," which is consistent with no TC Heartland-based transfer motion having been pressed in this case. (That statement appears in the '487-patent complaint, Exhibit 1018 to IPR2019-00192.)
• Discovery sanctions motion (the major pre-trial dispute). In March 2018, Maxell moved to sanction Huawei, alleging Huawei's "complete disregard" for court orders and discovery obligations had "reached new heights." Law360, Maxell Seeks Sanctions Against Huawei In Smartphone IP Suit (2018-03-19), https://www.law360.com/cases/582f8e9c613d045d2a000006/articles.
• I could not confirm a summary-judgment ruling or a stay-pending-IPR ruling from the retrieved sources; the case resolved before any trial, and the docket entries I could verify do not include such orders.

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3. Claim Construction (Markman)

This is the most fully documented development.

• 2017-09-01 — P.R. 4-3 Joint Claim Construction and Prehearing Statement (Dkt. 74).
• 2017-10-02 — Maxell's Opening Claim Construction Brief (Dkt. 95).
• 2017-10-23 — Defendants' Claim Construction Brief in Response (Dkt. 100); agreed/disputed construction charts (Dkt. 108-1, 108-2).
• 2017-10-30 — Maxell's Reply Claim Construction Brief (Dkt. 106).
• 2017-11-29 — Markman hearing held (Dkt. 118; transcript Dkt. 138). At the hearing the parties agreed to constructions for the sole disputed terms of the '901 and '438 patents (H'rg Tr. 101:8–10).
• 2018-03-19 —

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

I'll research the defense counsel of record for this case through multiple searches.

Let me dig into the docket and the claim construction opinion, which typically lists counsel appearances.