Maxell, Ltd. v. Samsung Electronics Co., Ltd. et al.

Maxell, Ltd., a Japanese technology company, has initiated a patent infringement lawsuit against Samsung Electronics Co., Ltd., a South Korean multinational electronics giant, and its U.S. subsidiary, Samsung Electronics America, Inc. Maxell, historically associated with Hitachi, operates with a diversified intellectual property portfolio in areas such as consumer electronics, energy storage, and optical components, and is known for actively licensing and litigating its patents. Samsung, a global leader in information technology, manufactures a vast array of consumer electronics, including smartphones, tablets, televisions, and various electronic components.

The specific products accused of infringement in this ongoing litigation (case number 5:25-cv-00052) are Samsung's products and services offered to customers, particularly those within the mobile device market, where Maxell asserts its patents are related to such technologies. The sole patent explicitly identified in the case is US Patent 10812646. Based on previous, related litigation between Maxell and Samsung in the Eastern District of Texas, Maxell has asserted patents covering "key smart device technologies" related to "innovative methods for unlocking devices, locating recordings, and managing digital data." However, a direct technical sketch for US Patent 10812646 in the context of this specific case has not been explicitly detailed in the provided search results. There is an unrelated patent 10,864,650 titled "Apparatus and method for die cutting", and an unrelated patent application US20250002646A1 related to polymers, which are not the subject patent. Thus, a precise one-line technical sketch for the specific patent 10812646 as asserted in this case against Samsung for smart device technology is not readily available from the provided snippets.

The case is being heard in the U.S. District Court for the Eastern District of Texas, a venue historically recognized as a "rocket docket" for patent cases due to its plaintiff-friendly procedural rules and expedited trial schedules. District Judge Robert W. Schroeder, III is presiding over the case. The Eastern District of Texas gained a reputation as a preferred forum for patent owners, including non-practicing entities (NPEs), due to its procedural leanings and a jury pool sometimes perceived as sympathetic to plaintiffs, which could lead to a higher percentage of plaintiff verdicts and substantial damages. While the Supreme Court's TC Heartland decision in 2017 aimed to restrict patent venue to where defendants reside or have a regular and established place of business, plaintiffs have employed strategies, such as suing foreign affiliates, to maintain venue in the Eastern District of Texas. The case is notable for the ongoing patent dispute between Maxell and Samsung, part of a broader global intellectual property conflict, with Samsung having filed a motion to stay proceedings pending inter partes reviews (IPRs) related to patents including 10812646. This IPR linkage highlights a common strategy for defendants to challenge patent validity in parallel proceedings at the Patent Trial and Appeal Board (PTAB).

The patent infringement litigation, Maxell, Ltd. v. Samsung Electronics Co., Ltd. et al. (5:25-cv-00052), has seen several key legal developments since its filing in April 2025.

Key Legal Developments and Outcome:

• Filing & Initial Pleadings (2025-04-21):

  • Maxell, Ltd. filed the patent infringement complaint against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. on April 21, 2025.
  • Contrary to the prior summary, which stated that US Patent 10812646 was the "sole patent explicitly identified," court documents indicate that Maxell is asserting 63 claims from ten different patents against Samsung in this lawsuit.
  • Initial disclosures, discovery responses, and document productions were exchanged, and Maxell served infringement contentions by August 12, 2025.
  • The deadline for amended pleadings was set for February 18, 2026.

• Pre-trial Motions of Substance (2025-08 to 2025-10):

  • On August 18, 2025, District Judge Robert W. Schroeder, III, issued several orders, including an E-Discovery Order, a Discovery Order, a Protective Order, and an Order Focusing Patent Claims and Prior Art.
  • Samsung filed a "Motion to Stay Pending Inter Partes Review" on October 24, 2025, arguing that a stay was warranted because it had challenged the validity of all 63 asserted claims across Maxell's ten patents at the Patent Trial and Appeal Board (PTAB). Samsung requested the case be stayed until the IPR proceedings, including any appeals, were complete, asserting that the case was still in its early stages.

• Parallel PTAB IPR Proceedings & Their Effect on Litigation (2025-07 to 2026-01):

  • Samsung filed ten IPR petitions against the patents asserted by Maxell in this lawsuit.
  • Specifically concerning US Patent 10812646, Samsung filed IPR2025-01316 on July 17, 2025.
  • On January 9, 2026, the PTAB issued a decision denying institution for IPR2025-01316, meaning the Board declined to review the patentability of US Patent 10812646. This denial of institution for patent 10812646 likely weakened Samsung's argument for a stay regarding this specific patent.
  • Samsung also filed IPR2025-01309 on August 27, 2025, targeting US Patent No. 7,577,417. Maxell filed a discretionary denial brief for this IPR on November 28, 2025.
  • The outcome of Samsung's motion to stay proceedings pending IPRs is not explicitly detailed in the provided search results, but the continued scheduling of district court events suggests it was either denied or the court decided to proceed in parallel, at least for some claims.

• Claim Construction (Markman) Stage (2026-05-12):

  • A Markman Hearing, where the court construes the claims of the asserted patents, was initially set for May 6, 2026.
  • The Markman Hearing was subsequently reset and held on May 12, 2026, at 10:00 AM. The specific outcome or order from this hearing is not yet publicly available in the provided search results.

• Discovery Milestones & Future Schedule:

  • A Docket Control Order issued on August 18, 2025, outlined key future dates.
  • A hearing for dispositive motions (such as summary judgment) is scheduled for May 11, 2027.
  • Motions in Limine are due by July 13, 2027.
  • A Joint Pretrial Order is due by July 13, 2027.
  • A Pretrial Conference is set for August 10, 2027. No trial date has been publicly set as of the available information.

• Present Posture:

  • The case remains active in the U.S. District Court for the Eastern District of Texas. The parties are progressing through the pre-trial schedule, including the recently held Markman hearing. The denial of institution for the IPR related to US Patent 10812646 means that claim validity challenge will not proceed at the PTAB, thus leaving the patent's validity to be litigated in the district court.

Maxell, Ltd. is represented by a team of attorneys from Mayer Brown LLP and local counsel. It's important to note that while Mayer Brown secured a significant jury victory for Maxell against Samsung in a previous case in the Eastern District of Texas in May 2024, the listed attorneys for Maxell in the current 5:25-cv-00052 case at the district court level, according to a PacerMonitor entry from the filing date, include local counsel Melissa Richards Smith and a number of attorneys from DLA Piper. However, other sources for PTAB proceedings related to the patents in this case list Mayer Brown attorneys representing Maxell. Given the ongoing nature of the district court case and the PTAB proceedings, counsel of record can sometimes differ or be updated.

Here's a breakdown of identified counsel for Maxell:

Mayer Brown LLP

• Saqib J. Siddiqui (Partner, Washington D.C. office)
  • Role: Patent Owner Attorney (in related PTAB proceedings).
  • Relevant Experience: Led or was part of the Mayer Brown IP team that secured a $111.7 million jury verdict for Maxell against Samsung in a prior patent infringement case concerning smart device technologies in the Eastern District of Texas.
• Amanda Streff Bonner (Partner, Chicago office)
  • Role: Patent Owner Attorney (in related PTAB proceedings).
  • Relevant Experience: Part of the Mayer Brown IP team that secured a $111.7 million jury verdict for Maxell against Samsung in a prior patent infringement case.
• Tariq Javed (Associate, Washington D.C. office)
  • Role: Patent Owner Attorney (in related PTAB proceedings).
  • Relevant Experience: Part of the Mayer Brown IP team that secured a $111.7 million jury verdict for Maxell against Samsung in a prior patent infringement case.
• Daniel Kim (Mayer Brown)
  • Role: Patent Owner Attorney (in related PTAB proceedings).
• Jaspreet K. Momi (Mayer Brown)
  • Role: Patent Owner Attorney (in related PTAB proceedings).
• Robert G. Pluta (Partner, Washington D.C. office)
  • Role: Patent Owner Attorney (in related PTAB proceedings).
  • Relevant Experience: Part of the Mayer Brown IP team that secured a $111.7 million jury verdict for Maxell against Samsung in a prior patent infringement case.

Gillam & Smith, LLP

• Melissa Richards Smith (Partner)
  • Role: Local Counsel (Eastern District of Texas).

McCaulley Law Group

• Anthony Dowell (Of Counsel)
  • Role: Registered patent attorney specializing in advocating for inventors and patent owners.
  • Relevant Experience: Has nearly three decades of experience in complex commercial litigation, successfully representing clients in a wide range of technologies, including mobile apps and software. Notably, served as counsel to ArrivalStar S.A., where he filed over 120 lawsuits to enforce ArrivalStar's patents, leading to successful licensing agreements with over 300 companies.

DLA Piper LLP (US)

It is important to note that a PacerMonitor entry from the filing date (April 21, 2025) of the current case lists several DLA Piper attorneys representing Samsung Electronics Co. Ltd. et al.. However, DLA Piper is also mentioned as having secured a victory for Samsung in October 2025, in the Eastern District of Texas, overturning a prior Maxell jury verdict. The context of this information suggests DLA Piper typically represents Samsung, the defendant, rather than Maxell, the plaintiff, in these patent disputes. There may be some ambiguity in the search results regarding which party DLA Piper is representing in this specific case (5:25-cv-00052) based on the provided snippets. The PacerMonitor entry on April 21, 2025, explicitly lists DLA Piper attorneys for Maxell, Ltd. v. SAMSUNG ELECTRONICS CO., LTD. et al, which could be an error in the snippet or reflect a change in representation. Given the more recent information about Mayer Brown representing Maxell in related PTAB proceedings and a previous jury victory against Samsung, Mayer Brown appears to be the primary counsel for Maxell.

For clarity regarding DLA Piper's role in the current 5:25-cv-00052 case, a direct review of the docket is advisable. Based on the provided snippets, and considering the prior case, Mayer Brown appears to be the core litigation counsel for Maxell.

The defendants, Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., are represented by a team of attorneys primarily from DLA Piper LLP (US), with several attorneys appearing pro hac vice in the Eastern District of Texas.

Here is a breakdown of the identified counsel for Samsung:

DLA Piper LLP (US)

• Sean C. Cunningham
  • Role: Counsel of record.
  • Firm & Office: DLA Piper LLP (US), Washington, D.C..
  • Relevant Experience: Cunningham's name appears as counsel for Samsung in filings within the 5:25-cv-00052 case. He is part of DLA Piper, a firm that has represented Samsung in related patent litigation, including securing a victory overturning a prior Maxell jury verdict in the Eastern District of Texas.
• Mark Fowler
  • Role: Counsel of record (appearing pro hac vice).
  • Firm & Office: DLA Piper LLP (US), Palo Alto, CA.
  • Relevant Experience: Fowler is listed as counsel for Samsung in court documents for this case and has expertise in patent litigation.
• Alan A. Limbach
  • Role: Counsel of record (appearing pro hac vice).
  • Firm & Office: DLA Piper LLP (US), Palo Alto, CA.
  • Relevant Experience: Limbach is identified as counsel for Samsung in filings related to the IPR proceedings that are linked to this district court case, and his name appears in a Certificate of Conference for the district court case itself. He is a registered patent attorney.
• Erik Fuehrer
  • Role: Counsel of record.
  • Firm & Office: DLA Piper LLP (US), Palo Alto, CA.
  • Relevant Experience: Fuehrer is listed as counsel for Samsung in court documents for this case.
• Erin Gibson
  • Role: Counsel of record.
  • Firm & Office: DLA Piper LLP (US), Washington, D.C..
  • Relevant Experience: Gibson's email is listed among Samsung's counsel in a motion to stay, indicating her involvement as counsel of record.
• Salvatore Tamburo
  • Role: Counsel of record.
  • Firm & Office: DLA Piper LLP (US), Washington, D.C..
  • Relevant Experience: Tamburo's email is listed among Samsung's counsel in a motion to stay, indicating his involvement as counsel of record.
• Michael Jay
  • Role: Counsel of record (appearing pro hac vice).
  • Firm & Office: DLA Piper LLP (US). Specific office location not provided in the snippet.
  • Relevant Experience: Jay is listed as counsel for Samsung in a patent local rule disclosure.
• James M. Heintz
  • Role: Counsel.
  • Firm & Office: DLA Piper LLP (US). Specific office location not provided in the snippet, but a PacerMonitor entry rates DLA Piper US LLP as L5.C and Heintz as L5.A.
  • Relevant Experience: Heintz is associated with DLA Piper and is listed in the context of IPR proceedings (IPR2025-01313) related to this district court case.

It should be noted that while a previous summary mentioned a PacerMonitor entry on April 21, 2025, listing DLA Piper attorneys for Maxell, further review of court documents clearly establishes DLA Piper's representation of Samsung in this case. This earlier PacerMonitor entry may have been an error or a misinterpretation of the initial filing information.