Litigation

Maxell, Ltd. v. VIZIO, Inc.

settled/terminated

337-TA-1338

Filed
2022-09-15
Terminated
2023-09-25

Patents at issue (4)

8170394
8549109
10958971
11017815

Plaintiffs (1)

Defendants (1)

Summary

ITC Section 337 investigation by Maxell against VIZIO asserting multiple patents, including U.S. 8,170,394. The investigation was terminated in its entirety by settlement after the Commission declined review on September 25, 2023.

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 thoroughly using web search.

Let me gather more context on Maxell's business model, the patents' technology, and related litigation.

Let me pin down the parallel district court case, the IPRs, the presiding ALJ, and the patent titles.

Key legal developments & outcome

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

I'll research this case thoroughly, starting with the ITC investigation and parallel PTAB proceedings.

Now let me dig into the parallel PTAB proceedings and the district court case.

Let me identify all the related PTAB proceedings and the ITC procedural milestones.

Plaintiff representatives

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

I'll research the counsel of record for Maxell, Ltd. in ITC Investigation No. 337-TA-1338.

Let me dig deeper into the ITC docket (EDIS) and the complaint's counsel listing.

Let me locate the actual ITC complaint and appearance filings via EDIS and other sources.

Counsel of Record — Complainant Maxell, Ltd., Inv. No. 337‑TA‑1338

Important sourcing note up front: In a Section 337 investigation, counsel of record is established by the complaint signature block and by Notices of Appearance filed under 19 C.F.R. § 210.16, all of which are on EDIS (the ITC's docket, not PACER). I was not able to pull the EDIS docket sheet directly in this session (EDIS returned no direct hits and my search budget was exhausted). The roster below is reconstructed from (a) Maxell's own filing signature blocks as reproduced in PTAB records, (b) ITC/Federal Register notices, and (c) firm biographies that expressly name 337‑TA‑1338. Individual attorney names appearing in a firm-wide signature block should be treated as "appeared of record" unless noted; I flag the two entries I could not fully verify.

1. Lead counsel — Mayer Brown LLP

Jamie B. Beaber — Lead counsel (in practice). Mayer Brown LLP, Washington, D.C. (1999 K Street NW). Reg. No. 40,145 (not verified in this session). Universally described in coverage as the partner "leading" Maxell's patent campaigns — same role he played for Maxell in Maxell v. Apple (E.D. Tex.), the $43M Maxell v. ZTE EDTX verdict, and the $111.7M Maxell v. Samsung verdict. The most reliable proof of his 1338 role: VIZIO's own PTAB service correspondence in IPR2023‑00316 directs courtesy copies to "Maxell, Ltd. through its litigation counsel," listing Beaber and Kfir Levy at Mayer Brown's D.C. office.
Source: PTAB IPR2023‑00316 service correspondence

Alan M. Grimaldi — Partner, Washington, D.C. Long-time Maxell trial team member (Apple, ZTE, Samsung).

Kfir B. Levy — Partner, Washington, D.C. Trial team on Maxell's EDTX patent verdicts.

2. Other Mayer Brown attorneys appearing for Maxell on the 1338 signature block

This block appears on Maxell's February 14, 2023 filing in the investigation (served by Mayer Brown paralegal Brittany Etters), reproduced as Exhibit 1027 in IPR2023‑00316, and closes "Counsel for Complainant Maxell, Ltd.":
Source: Maxell filing signature block, Ex. 1027, IPR2023‑00316/download-documents?artifactId=uS6ej_bi8ZRVXb3AMJwmj1UNcHV_cz9zwiY

Defendant representatives

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

I'll research the counsel of record for VIZIO in this ITC investigation.

Let me dig into the ITC docket filings and VIZIO's specific counsel appearances.

Let me verify via the ITC EDIS docket and check VIZIO's in-house and any local counsel.

Counsel of Record — Respondent VIZIO, Inc.

Bottom line: VIZIO, Inc. (Irvine, CA) was the sole respondent in Inv. No. 337-TA-1338. Its defense was handled by a single primary firm — Akin Gump Strauss Hauer & Feld LLP — fielding a Washington, D.C. ITC/PTAB team together with an Irvine, California product-team office. The OUI was not a party (87 FR 64110), so there was no government-side counsel. The investigation settled before the evidentiary hearing (joint motion Aug. 25, 2023; ID Aug. 30, 2023; Commission declined review Sept. 22, 2023, notice issued Sept. 25, 2023).

Sourcing caveat (important): The ITC's EDIS docket for 337-TA-1338 is not fully text-searchable from the open web, and I was not able to pull the formal Notices of Appearance (Form 1) filed in EDIS before exhausting my search budget. The roster below is reconstructed from (a) VIZIO's PTAB filings in the directly parallel IPR2023-00316 (VIZIO, Inc. v. Maxell, Ltd., U.S. 8,170,394) — same patent, same parties, same counsel group, and whose files expressly cite and serve the 1338 Investigation pleadings; and (b) the Federal Circuit appeal No. 23-2026, Maxell, Ltd. v. VIZIO, Inc., where the same lawyers entered appearances for VIZIO. Where a role is inferred rather than confirmed from an ITC filing, I say so.

Akin Gump Strauss Hauer & Feld LLP — counsel for Respondent VIZIO, Inc.

Attorney Role Office Notes
Cono A. Carrano (Reg. No. 39,623) Lead counsel Washington, D.C. (2001 K St. NW) VIZIO's lead ITC/PTAB counsel for the '394 and related Maxell patents; lead counsel on the IPR2023-00316 petition and the Federal Circuit appearance (23-2026). Listed on 1338-related pleadings as "Counsel for Respondent VIZIO, Inc." ccarrano@akingump.com
C. Brandon Rash (Reg. No. 59,121) Back-up / core team Washington, D.C. Named on VIZIO's '394 IPR petition and power of attorney; recurring Akin Gump ITC patent litigator (also appeared pro hac vice in other district-court patent matters, e.g., S.D.N.Y.).
Ryan S. Stronczer (Reg. No. 79,921) Back-up / core team Washington, D.C. USPTO patent examiner 2007–2015 (interactive video distribution); registered patent attorney focused on Section 337 and PTAB work on video/display/consumer-electronics tech; later Of Counsel at Desmarais LLP. Akin Gump 2015–2026.
Brock F. Wilson (Reg. No. 59,463) Core team (West Coast) Irvine, California (4 Park Plaza) Named on VIZIO's '394 IPR filings and Federal Circuit appearance; appears on Akin Gump's VIZIO-side submissions tied to the 1338 record.
Clark T. Gordon (Reg. No. 74,706) Core team (West Coast) Irvine, California Named on the '394 IPR petition/power of attorney; VIZIO's Irvine-based patent litigator tied to the smart-TV product line.
David C. Vondle Team member Washington, D.C. Signed an Akin Gump VIZIO submission as "Counsel for Respondent VIZIO, Inc."
Hyongsoon Kim Team member Irvine, California Listed with the Irvine team on a VIZIO-side filing.
Kelsey S. Morris Team member Irvine, California Listed with the Irvine team on a VIZIO-side filing.
Melanie Langford Texas-local contact San Antonio, Texas (112 E. Pecan St.) Akin Gump San Antonio; appears on the VIZIO-side service list, consistent with a Texas local-counsel/mailing contact role. Role unconfirmed from an ITC appearance form.
Pratik A. Shah and Z.W. Julius Chen Appellate (Federal Circuit only) Washington, D.C. Entered appearances for Appellee VIZIO, Inc. in Fed. Cir. No. 23-2026 (corrected entry of appearance, July 7, 2023). This is the appellate phase, not the ITC trial team.

Other names encountered — treat with caution

  • Paul Skwierawski, Antonelli, Terry, Stout & Kraus, LLP (Upper Marlboro, MD) — appears in a USPTO service/courtesy-copy document associated with the VIZIO–Maxell IPR family. Antonelli Terry is a prosecution-side IP boutique; his appearance may relate to a different investigation's service list that was carried into a mixed document, or to a co-pending matter. I could not confirm he filed an appearance in 337-TA-1338, so I am NOT listing him as 1338 counsel of record.

In-house counsel

I found no verified VIZIO in-house attorney names on the 1338 papers. VIZIO's ITC defense appears to have been run through outside counsel. Do not attribute any in-house counsel without a confirmed appearance.

Commonly mis-attributed (this is the complainant's team, not the defendant's)

  • Tiffany A. Miller and Seth W. Bruneel (Mayer Brown) and Jamie B. Beaber / Kfir B. Levy (Mayer Brown) represented Maxell, Ltd. (Complainant) — not VIZIO. Ms. Miller's and Mr. Bruneel's own bios list 337-TA-1338 under work for Maxell, and Bruneel's profile states he "represented Complainants" through claim-construction, discovery, and expert depositions until settlement shortly before the hearing. Mr. Beaber (Mayer Brown, Washington, D.C.) was served as Maxell's litigation counsel in the parallel IPR. Do not list these as defense counsel.

Parallel proceedings where the same VIZIO team appears

  • IPR2023-00316, VIZIO, Inc. v. Maxell, Ltd. (U.S. 8,170,394): Akin Gump's Carrano, Rash, Stronczer, Wilson, and Gordon — VIZIO sought joinder to Motorola Mobility v. Maxell, IPR2022-01348, and used the same expert (Dr. Bederson) and grounds.
  • Fed. Cir. No. 23-2026, Maxell, Ltd. v. VIZIO, Inc. (appeal arising from the Maxell–VIZIO patent dispute): Akin Gump for Appellee VIZIO (Shah, Chen, Carrano, Stronczer, Wilson).
  • Maxell, Ltd. v. VIZIO, Inc. (E.D. Tex. 2022) — the co-pending district-court action, listed in Akin Gump's VIZIO-side experience.

Summary for the case file

Defendant/Respondent: VIZIO, Inc. — sole respondent.
Lead counsel: Cono A. Carrano, Akin Gump Strauss Hauer & Feld LLP, Washington, D.C. (counsel of record on the VIZIO side of the Maxell disputes).
Primary defense firm: Akin Gump (Washington, D.C. + Irvine, CA).
Appellate counsel: Akin Gump (Shah/Chen) for the Federal Circuit appeal.
Party status: Settled — Commission declined review Sept. 22, 2023 (Order No. 22), investigation terminated in its entirety; no remedy issued.

Verification gap to close: Pull the EDIS docket for 337-TA-1338 and confirm the specific Form 1 Notices of Appearance and any pro hac vice / local counsel designations, since the roster above is grounded in the parallel PTAB and Federal Circuit filings rather than the ITC appearance forms themselves.