Maxell, Ltd. v. ZTE Corp. et al.

I'll research this case and the parties before writing the overview.

Good initial data. Now let me pin down the '034 docket history, the specific patents, and any IPRs.

Now let me get the ZTE-specific complaint counts and the technical subject matter of each patent.

Case Overview — Maxell, Ltd. v. ZTE Corp. & ZTE USA Inc., No. 5:18-cv-00034-RWS (E.D. Tex., Texarkana Div.)

The parties. Maxell, Ltd. is a Kyoto-based consumer-electronics manufacturer — batteries, recordable media (magnetic tape, optical disc), projectors, and accessories — founded in 1961 as Maxell Electric Industrial Co.

Key Legal Developments & Outcome — Maxell, Ltd. v. ZTE Corp. et al., No. 5:18-cv-00034-RWS

Threshold clarification (important for this file)

The '034 case is not the case that produced the $43.3 million ZTE verdict. That verdict (June 29, 2018, willful infringement of seven patents) was entered in the earlier suit, No. 5:16-cv-00179-RWS, which was tried against ZTE USA alone after ZTE Corp. was bifurcated out into No. 5:18-cv-00080-RWS in March 2018. See Law360, "Maxell Scores $43M EDTX Jury Win In ZTE Patent Trial" (July 2, 2018); Law360, "Maxell, ZTE Reach Settlement After $43M Patent Verdict" (Feb. 4, 2019) (both reproduced at mayerbrown.com).

The '034 case is the second, parallel Maxell wave against ZTE, filed 2018-03-02 over a different set of Maxell patents, and it was consolidated (docket flag "CONSOL") with the companion Huawei case, No. 5:18-cv-00033-RWS. It settled and was dismissed before any trial, Markman ruling on the merits of its own patents, or damages award. That is the core of the outcome.

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Chronological development

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

Key distinction found: the famous $43.3M verdict was in the earlier 5:16-cv-00179 case. Let me pin down coverage specific to the '034 suit.

Press coverage & analysis

The threshold finding: almost no coverage is about this docket. Search across the caption, the parties, the patent numbers, and the settlement turned up no Reuters, Bloomberg Law, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or JD Supra piece addressing 5:18-cv-00034 itself. The trade-press coverage of "Maxell v. ZTE" is overwhelmingly about the sibling case, No. 5:16-cv-00179 (and its bifurcated companion No. 5:18-cv-00080) — the seven-patent case that went to a jury. That distinction matters because the most-quoted number in the coverage, $43.3 million, was not awarded in the '034 suit. The '034 case appears in the press only as a passing reference and in ZTE's own investor disclosures. I flag this as a correction-in-emphasis to any narrative that attributes the verdict or the '$43M Maxell v. ZTE' headlines to this docket.

The one direct press reference to the '034 filing. In its verdict story, Law360 (July 2, 2018) reported the $43.3M June 29, 2018 jury verdict against ZTE USA in No. 5:16-cv-00179, and then noted that "[f]our months ago, Maxell also filed another patent infringement suit against ZTE USA and ZTE Corp. in the same district over 10 patents other than the ones in the current case," covering "telecommunications, streaming, camera, video-phone and video calling technologies." That is the '034 suit — described by Law360 as a 10-patent follow-on, which is more than the five patents on the AO 120 filing form (the '487, '503, '086, '306 and '140 patents) and consistent with the broader set later listed in the P.R. 4-3 joint statement (adding the '897, '068, '334 and '517 patents). By contrast, the '179 verdict story's analysis — counsel Jamie Beaber's quote that "[w]e're very happy for our client and we think the jury got this one right," and the panel's unusual "routine and conventional" Alice finding that Beaber said he had "never seen the question put to a jury before" — all attaches to the '179 patents, not to the '487 patent lineage at issue here.

How the case ended, per the press and per ZTE. Law360 (Daniel Siegal, Feb. 4, 2019; copy also posted by Mayer Brown) reported a confidential settlement, quoting the joint motion's statement that "[a]ll matters in controversy between the parties have been settled in principle," with the memorandum of understanding filed under seal because "confidentiality is a material term." The article framed the deal as "a pair of suits" — the '179 case and the '080 case — and did not mention '034 by number; it reported no settlement figure, no royalty rate, and no license scope. Law360's follow-on Huawei story (Feb. 21, 2019) likewise described only "another patent suit, this one with Chinese smartphone maker ZTE USA," noting the deal was "similarly confidential." The only party-side public statement I located going beyond the record is ZTE's 2018 Annual Report, which confirms that "In March 2018, Maxell filed a second litigation against the Company and ZTE USA for other infringements of patent rights" (its "Case II"), that Maxell "demanded payment of damages for losses and legal fees … although no specific amount of compensation was named," and that "[i]n March 2019, the Company and ZTE USA reached a settlement with Maxell, and the Eastern District of Texas … approved the request for withdrawal" — matching the March 12, 2019 termination date on this docket. ZTE told investors the matter "will not have any material adverse impact" on its financial condition. That is a corporate characterization, not independent reporting, and should be treated as such.

Analysis pieces and gaps. The only lawyer-authored commentary I could confirm is a case comment by Kfir Levy — one of Maxell's Mayer Brown attorneys — in Intellectual Property Magazine, No. 10 (Oct. 2018), at 52–53, covering the June 29, 2018 E.D. Tex. ruling in Maxell v. ZTE (located via a FIPS patent-library index entry summarizing it as a $43.3M plaintiff win on seven patents; I could not retrieve the article text, so I cannot characterize its arguments). Notably, no outlet reported on the venue fight in this docket — ZTE USA's April 30, 2018 motion to dismiss or transfer under TC Heartland and In re Cray, arguing that the Plano call center was run by third-party vendor iQor — even though that motion was a notable post-Heartland data point in a division that was losing cases to transfer. Treat the absence of coverage of that motion as a genuine reporting gap rather than an absence of activity; anyone summarizing press reaction to this case should say plainly that the '034 docket drew essentially no independent journalism, and that its termination is documented in the court record and in ZTE's annual report rather than in the press.

Sources

• Maxell Scores (\Phi 43M) EDTX Jury Win In ZTE Patent Trial
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• irbis.fips.ru
• irbis.fips.ru
• AO 120 (Rev
• Google Scholar
• Case 5:16-cv-00179-RWS Document 292 Filed 08/28/18 Page 1 of 92 PageID #: 18771
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• Search court records on patent:(7995897)
• Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668 – CourtListener.com - Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668 (E.D. Tex. 2018)
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION

I'll research the counsel of record for Maxell in this case, starting with docket-level sources.

Good leads. Let me confirm which attorneys represent Maxell versus ZTE, and identify local counsel.

Let me pull the actual docket entries to confirm appearances and their dates in this specific case.

Counsel of Record for Plaintiff Maxell, Ltd. — No. 5:18-cv-00034-RWS

Sourcing note up front: PACER itself is paywalled and I could not pull the raw docket sheet. The roster below is built from (a) the Justia ECF-derived party/attorney listing for this docket (dockets.justia.com, 5:2018cv00034/180951), (b) signature blocks on filings in this case bearing "Counsel for Plaintiff Maxell, Ltd." (e.g., Dkt. 20, Apr. 30, 2018), and (c) contemporaneous Law360/Texas Lawyer reporting on the parallel Maxell–ZTE trial. Individual appearance dates and pro hac vice orders were not verified entry-by-entry; where I could not confirm something, I say so.

Lead trial counsel

Local counsel

Flagged nuance: In the 2019–2020 Maxell cases, Law360 consistently listed both Culbertson and Kelly Tidwell (Patton Tidwell & Culbertson) as Maxell's local counsel. Tidwell does not appear in the Justia attorney list for '034, and I found no '034 filing signed by him — so I have not listed him as counsel of record here. If he entered a notice of appearance late in the case (e.g., around the February 2019 settlement), that appearance is not reflected in the sources I could reach.

Additional Mayer Brown attorneys of record (Washington, DC)

Justia's ECF-derived "Represented By" list for Maxell in this docket also includes the following, all at Mayer Brown's DC office:

Additional Mayer Brown attorneys of record (Chicago)

In-house counsel

None identified. No Maxell in-house attorney (e.g., from Maxell's IP/legal department in Kyoto or its U.S. subsidiaries) appears on the public attorney listing for '034, and no corporate counsel signature blocks appeared in the filings I reviewed. Maxell's public filings in this case were signed exclusively by Mayer Brown (PHV/admitted) and Patton Tidwell & Culbertson (local).

Cross-checks and caveats

1. Consistency with the case summary: The roster is fully consistent with the '034 metadata (Judge Schroeder, Texarkana Division, terminated Mar. 12, 2019). The attorney set is nearly identical to the team in the same-day-filed companion cases ('033 v. Huawei Device, '034 v. ZTE) and to the earlier '179 ZTE case — Maxell staffed this '487-patent suit out of the same Mayer Brown + Patton Tidwell team.
2. Names appearing in later Maxell matters but not confirmed on the '034 docket: Alison T. Gelsleichter, Clark S. Bakewell, Michael T. Lindinger, and Justin Park appear as Maxell counsel in the 2019+ cases (Apple/Huawei/Samsung) and, in some instances, in the '179 ZTE case — I could not confirm appearances by them in '034 and have therefore excluded them. Lindinger's and Park's Law360 profiles do list a June 15, 2018 "Maxell Ltd. v. ZTE Corporation, Texas Eastern" entry, which may correspond to the '034 docket but could also be a docket-feed artifact; treat as unconfirmed.
3. Defendants' counsel (for contrast, not part of the answer): ZTE USA was represented by Lionel M. Lavenue of Finnegan, Henderson, Farabow, Garrett & Dunner (Reston, VA) per the signature block on a '034 filing, with Pillsbury Winthrop Shaw Pittman (Steven A. Moore, Callie A. Bjurstrom, Nicole S. Cunningham, Sara J. O'Connell, Matthew R. Stephens) and Findlay Craft (Eric H. Findlay, R. Brian Craft) handling the parallel '179 case — a useful indicator of which ZTE-side counsel was engaged in which docket.
4. No sealed or ex parte plaintiff counsel: Nothing suggests Maxell used a John Doe / sealed plaintiff entity, so there is no hidden plaintiff-side representation to disclose.

I'll research the docket and counsel appearances for the defendants.

Let me pull the actual docket sheet and any defendant-side filings.

Let me examine the actual filings in the -034 docket, including the venue motion and signature pages.

Counsel of Record — Defendants (ZTE Corp. and ZTE USA, Inc.)

Bottom line: The only defense-side appearance I can affirmatively document in No. 5:18-cv-00034 is Lionel M. Lavenue (Lavenué) of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Reston, VA), who signed the case-terminating settlement papers as "Attorney for Defendant ZTE (USA) Inc." A ready caveat: this docket's defense-side appearance history is only partially visible in the free sources I could reach, and the signature page of the April 2018 venue motion was not retrievable — so the list below should be treated as confirmed-plus-probable, not exhaustive.

Confirmed of record

Grounded in: the Joint Motion of Maxell, Ltd. and ZTE (USA) Inc. to Stay All Deadlines and Notice of Settlement, dated February 4, 2019, captioned in both Case No. 5:18-cv-0033-RWS and Case No. 5:18-cv-0034-RWS (Dkt. 70 in the -033 docket; the parallel filing in -034 is the operative one for this case), bearing /s/ Lionel M. Lavenue and the Finnegan Reston signature block — docketalarm.com, 5:18-cv-00033, Doc. 70. Corroborated contemporaneously by Law360's Feb. 4, 2019 settlement story ("ZTE USA is represented by Lionel M. Lavenue of Finnegan Henderson Farabow Garrett & Dunner LLP"), reprinted by Mayer Brown — mayerbrown.com PDF.

Important qualification: ZTE Corporation (the parent) appears to have had no counsel of record

The case-terminating motion was styled a joint motion of Maxell and ZTE (USA) Inc. only — not "ZTE Corp." — and only ZTE USA's counsel signed it. The Law360 account likewise describes only ZTE USA's representation. This is consistent with the foreign parent ZTE Corporation never having appeared in the -034 case (the same pattern as the earlier 5:16-cv-00179 action, whose caption was amended to name only ZTE (USA) Inc.). I could not confirm non-appearance from a docket entry or clerk's notation, so treat "ZTE Corp. was unrepresented/defaulted" as an inference from the filings rather than a documented fact. If you need certainty, the specific docket items to pull are the summons/waiver-of-service returns for ZTE Corporation and any entry of default or order of dismissal as to that defendant.

Likely additional defense counsel, but not confirmed for -034 specifically

The April 30, 2018 filing in this case — ZTE (USA) Inc.'s Motion to Dismiss for Improper Venue under § 1406(a), or in the Alternative to Transfer to the Northern District of Texas (Dkt. 20) — argues TC Heartland and In re Cray and attaches the Rayeski and James Ray Wood declarations (Dkt. 20 excerpt). I could not retrieve the signature page, so I cannot state which firm filed it. Given the timing, the two candidates are:

• Pillsbury Winthrop Shaw Pittman LLP — the team that actually tried the ZTE case for Maxell's patents: Steven A. Moore, Callie A. Bjurstrom, Nicole S. Cunningham, Sara J. O'Connell, and Matthew R. Stephens (Law360, July 2, 2018, reporting the $43.3M verdict in the companion case, then numbered 5:18-cv-00080). Ms. Cunningham is also the attorney of record identified for "ZTE Corporation and ZTE USA Inc." in Judge Schroeder's Jan. 31, 2018 claim construction opinion, 297 F. Supp. 3d 668 (E.D. Tex. 2018). Finnegan's takeover appears to date to the post-verdict/settlement phase of the ZTE dispute, which is why Lavenue — not Pillsbury — signed the February 2019 dismissal papers here.
• Finnegan (Lavenue), if the substitution occurred earlier than the settlement.

For the earlier consolidated Maxell actions (5:16-cv-178/179), the reported defense roster also included Eric Hugh Findlay of Findlay Craft PC, Tyler, Texas, apparently as local counsel for ZTE, and an attorney named Miller of Sheppard Mullin — see the counsel listing in Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668. I did not find any indication that Findlay Craft or Sheppard Mullin appeared in -034, so I would not assert them here.

Also of note: ZTE USA's venue papers represent that its in-house litigation counsel sit in its Richardson, Texas office — but the individual in-house lawyer is not named in the public excerpts I could reach.

Why free docket sources are thin on this point

The Justia docket sheet for 5:2018cv00034 lists twelve plaintiff-side attorneys (Mayer Brown's Beaber, Grimaldi, Levy, Fussell, Pluta, Bonner, Paul, Siddiqui, Miller, Barrow, Nese, plus Geoffrey P. Culbertson of Patton, Tidwell & Culbertson, Texarkana) but shows no "Represented By" entries for either defendant — see dockets.justia.com. Justia's docket-parsing commonly misses defense appearances, and I would not read that blank as proof of non-appearance by ZTE USA, since a signed ZTE USA filing by Finnegan plainly exists. Docket Alarm's docket page for the case (link) shows the case flags (CLOSED, CONSOL, JURY, PATENT/TRADEMARK) and the March 12, 2019 termination date but its counsel entries were not exposed in the search results I obtained.

Two flags for the earlier sections

1. Asserted patents. The prior summary said the full asserted-patent list could not be retrieved. For the record, the AO 120 form filed with the complaint lists five patents in 5:18-cv-00034: 7,324,487; 7,068,503; 8,982,086; 6,928,306; and 6,983,140 (see the AO 120 reproduced in the IPR2019-00661 exhibit file, ptacts.uspto.gov). This is a genuine expansion beyond the single '487 patent the case metadata carries.
2. The "bifurcated" companion. The $43.3M verdict and the Pillsbury trial team belong to the companion case (5:16-cv-00179, split off as 5:18-cv-00080), not to -034. Attribution of the Pillsbury team to -034 itself is an inference from overlapping subject matter and timing, and should be verified against the -034 docket before being relied on in any filing or chart.