Litigation
Maxell, Ltd. v. ZTE Corporation
5:16-cv-00179
- Filed
- 2016-11-18
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Maxell sued ZTE in the Eastern District of Texas. The narrative lists this among the 2016 '760 litigation history, while noting the asserted-patent link to U.S. Patent 6,856,760 is unverified.
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 across multiple sources before drafting.
Key finding already: the '760 patent appears to have been asserted against Huawei, not ZTE. Let me verify that carefully, plus the IPR history and outcome.
Now let me verify the IPR linkage, Maxell's corporate identity, and whether the '760 patent was ever part of the ZTE case.
Correction to the case metadata (material): The asserted-patent field in the case metadata — U.S. Patent 6,856,760 — does not match the record for 5:16-cv-00179. The '760 patent ("Recording medium") was asserted by Maxell against Huawei, not ZTE, in the same-day companion case No. 5:16-cv-00178-RWS. Judge Schroeder's consolidated claim construction order lists the '760 among the eight patents asserted against Huawei and separately lists the eight patents asserted against ZTE — the '760 is not among them (Dkt. 49, Claim Construction Memorandum and Order, Mar. 19, 2018, reported at Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668 (E.D. Tex. 2018)); and Olympus's May 18, 2018 IPR petition on the '760 states that the patent "is presently asserted against Huawei … in 5:16-cv-00178" and that "[t]here are no other pending litigations in which the '760 Patent is asserted" (IPR2018-00905, Paper 1). The narrative's "unverified" flag should therefore be upgraded to "incorrect for this docket."
Parties and what they do. Plaintiff Maxell, Ltd. (Tokyo) is a Japanese consumer-electronics and energy company — batteries, storage media, projectors — originally Hitachi Maxell, Ltd., and named as "Hitachi Maxell, Ltd." in the original pleadings. It is an operating company rather than a classic NPE/PAE, but by 2016 it was running a large-scale licensing-and-litigation program over a portfolio of roughly 5,300 patents, "many of them purchased in 2013 from the optronics division of Hitachi Ltd." (ALM/Law.com, "Maxell Wins $43M in Smartphone Patent Dispute With ZTE"). Maxell's complaint framed it as a "mobile technology developer and industry leader" that "actively" enforces its patents "through licensing and/or litigation," and alleged that licensing talks with ZTE began in June 2013 but that ZTE refused a formal license. Defendants were ZTE Corporation (Shenzhen), the Chinese telecom-equipment and handset maker, and its U.S. subsidiary ZTE (USA) Inc. (Richardson, Texas) — the subsidiary's Texas presence (including a Plano call center) was the pleaded venue hook. This is the operating-company-licensor pattern rather than a patent-troll fact pattern, though Maxell's assertion volume against handset makers drew PAE-style commentary in the trade press.
The accused technology and the patents actually at issue. Maxell accused ZTE smartphones and tablets across roughly 105 products, including the ZMAX 2, ZTE Axon 7 and Max Duo LTE, spanning four functional clusters: camera image stabilization ('493 and '729, both "Electronic camera" patents — correcting camera shake by shifting the effective pixel readout area based on gyro-detected image instability), power management ('794, "Information processing apparatus and power consumption control method" — a controller issuing power-consumption-reduction instructions to non-overlapping sets of function devices based on remaining battery capacity; and '443, activating/deactivating from a power-saving state, which had expired and was dropped before trial), audio decoding ('491 and '695, "Multiplexed audio data decoding apparatus and receiving apparatus" — demultiplexing multiplexed compressed audio streams and downloading decoding program code when the encoding method changes), cellular transmission ('193, "Cellular telephone" — CDMA open-loop-then-closed-loop transmit power control with gain/bias set from stored data), and pedestrian navigation ('317, portable terminal with "walk navigation," accused via the AT&T Navigator app preloaded on the ZMAX 2). For completeness, the '760 patent that the metadata attributes to this case is a "recording medium" claim — a still picture stored in two different encodings plus a lower-resolution thumbnail derived from the same signal data, so the image is compatible with both a moving-picture playback device and a PC — but again, it belongs to the Huawei docket, and it was litigated at the PTAB by Olympus (IPR2018-00905, filed May 18, 2018, terminated Nov. 19, 2018 after an Olympus–Maxell agreement), not by ZTE.
Posture, venue, and why the case matters. Filed November 18, 2016 in the Texarkana Division before Judge Robert W. Schroeder III; consolidated for pretrial with the Huawei case as lead No. 5:16-cv-00178-RWS; Markman hearing November 29, 2017; claim construction order March 19, 2018. ZTE Corporation (Shenzhen) would not accept service, stalling the case for nearly a year; in March 2018 Judge Schroeder bifurcated, sending ZTE USA to trial and leaving the parent to a separate suit (No. 5:18-cv-00080-RWS, filed in 201
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case systematically, starting with the docket and patent details.
Key correction already emerging: the '760 patent appears to have been asserted against Huawei, not ZTE. Let me verify that and dig into the docket sequence and IPRs.
Now let me pin down the PTAB IPR proceedings and post-trial rulings.
Preliminary correction to the case metadata
Before the chronology, one material discrepancy must be flagged. The metadata lists U.S. Patent 6,856,760 (the '760 patent) as the patent at issue in No. 5:16-cv-00179. The record does not support that. The '760 patent was asserted only against Huawei in the companion case, No. 5:16-cv-00178-RWS. Judge Schroeder's claim construction order expressly separates the two groups:
"U.S. Patent Nos. 7,509,139 ('139 Patent'); 6,754,440 ('440 Patent'); 6,928,292 ('292 Patent'); 7,203,517 ('517 Patent'); 7,671,901 ('901 Patent'); 6,856,760 ('760 Patent); and 7,116,438 ('438 Patent'), which are asserted against Huawei" … "6,748,317 ('317 Patent'); 8,339,493 ('493 Patent'); 8,736,729 ('729 Patent'); 6,408,193 ('193 Patent'); 6,329,794 ('794 Patent'); 6,816,491 ('491 Patent'); and 8,098,695 ('695 Patent'), which are asserted against ZTE USA."
— Claim Construction Memorandum & Order at 2, Maxell Ltd. v. Huawei Device U.S. Inc., No. 5:16-cv-00178-RWS (lead case) / No. 5:16-cv-00179-RWS, 297 F. Supp. 3d 668 (E.D. Tex. Mar. 19, 2018) (Dkt. 49).
The ZTE case instead asserted eight patents: '443, '317, '493, '729, '193, '794, '491, '695. The prior summary's note that the '760 link was "unverified" was correct — the link is not merely unverified, it appears to be an artifact of the two cases being consolidated for pretrial purposes under a single caption. Everything below concerns the ZTE patents.
I. Filing and initial pleadings
2016-11-18 — Complaint filed. Maxell, Ltd. sued ZTE Corporation (Shenzhen) and ZTE USA Inc. in the Texarkana Division, before Judge Robert W. Schroeder III. Maxell filed the Huawei complaint the same day; the two cases were consolidated for pretrial purposes with the Huawei case as lead (No. 5:16-cv-00178). The complaint alleged that licensing discussions began in June 2013 and that ZTE "elected … not to enter into an agreement with Maxell," continuing to sell phones using the patented technology without a license — the willfulness narrative that later drove the verdict. Some aggregators show a 2016-11-17 filing date (e.g., Unified Patents); the Court's own order and contemporaneous reporting use November 18, 2016.
2016–2017 — Service fight and near-year abeyance. Per Law360's trial reporting, ZTE Corporation, based in Shenzhen, "would not accept service, and the case was put on hold for nearly a year." This is the single most consequential early procedural fact: it delayed the parent's appearance and ultimately caused the case to be split.
2017-11-03 — P.R. 4-5(d) Joint Claim Construction Chart served in both consolidated cases, listing the disputed and agreed terms for all fifteen patents.
2017-11-15 — Mediation. The parties mediated; the later-filed companion complaint (5:18-cv-00034) recites that "on November 15, 2017 the parties mediated" the '179 lawsuit. It did not resolve.
Answer and counterclaims. ZTE USA answered and asserted counterclaims of non-infringement and invalidity; those counterclaims were still live at the end and were dismissed with prejudice in the final judgment (Dkt. 308). ZTE Corporation's answer came much later — an unopposed motion for extension of time for ZTE Corporation to answer was filed and then re-filed after a July 2018 deficiency notice directing counsel to the correct case. Caution: I did not retrieve the ZTE USA answer itself, so the precise filing date and the enumerated counterclaim counts are not verified here.
II. Claim construction (Markman)
2017-11-29 — Markman hearing (Dkt. 118; transcript at Dkt. 138).
2018-03-19 — Claim Construction Memorandum and Order (Dkt. 49), 117 pages, published at 297 F. Supp. 3d 668. This is the substantive pretrial ruling of record and it went Maxell's way on most contested terms against ZTE:
- '794 patent ("function devices equipped with independent functions" / "component devices for performing different functions") — the parties ultimately agreed these were means-plus-function terms. The Court rejected ZTE's indefiniteness theory (ZTE having argued the specification disclosed no structure, citing Williamson and Bosch), and also rejected Maxell's attempt to import CPU and memory as structure for the independent function devices. The Court adopted the claim language as the function and construed the corresponding structure as "modem devices, audio communication devices and videophone devices, or equivalents thereof." This was a defense loss — ZTE had sought a ruling of § 112 ¶ 6 indefiniteness.
- '193 patent ("variable amplitude amplifier") — construed to plain and ordinary meaning, rejecting ZTE's attempt to limit it to the Figure 1 two-stage amplifier and exclude the Figure 3 single-transistor embodiment.
- '491 / '695 patents (audio decoding) — "demultiplexer for inputting one audio data sequence…" given plain and ordinary meaning over ZTE's § 112(2) indefiniteness argument; "controller" in the '695 patent construed as means-plus-function with structure "an external CPU (FIG. 1) connected via a bus between a read only memory and the memory, running the algorithm of Figs. 4 and 5" — a mixed outcome.
- Several terms were agreed before the hearing (including preambles of the '491 claims as limiting; "voice signal code" and "operate to the end" at plain meaning).
III. Pre-trial motions of substance
March 2018 — Bifurcation. Judge Schroeder bifurcated the claims against ZTE USA from those against ZTE Corporation and sent the ZTE USA claims to trial, with the parent's claims carved into a new suit, **No.
In the news
What the press has reported about this case, summarized with links to the source articles.
I'll search several angles to locate actual published coverage of this case.
Press coverage
The verdict got real, if narrow, coverage — and none of it involves the '760 patent. The most detailed account is Law360, which reported on 2018-07-02 that a "unanimous federal jury" in Texarkana found that "ZTE USA Inc. willfully infringed seven smartphone patents owned by Japanese electronics maker Maxell Ltd. and ordered ZTE USA to pay $43.3 million in damages," after a two-week trial that began June 18 and produced a verdict on Friday, June 29, 2018, before a six-member jury. Law360 listed the seven patents as U.S. Nos. 6,748,317; 8,339,493; 8,736,729; 6,408,193; 6,329,794; 6,816,491; and 8,098,695 — the precise ZTE set identified in the Markman order, and conspicuously not 6,856,760, which corroborates the metadata correction flagged in the prior section. Texas Lawyer (Scott Graham, syndicated via Yahoo Finance) reported the same day that the jury "found June 29 that ZTE willfully infringed all asserted claims of seven Maxell patents," that the patents "cover camera functionality, audio processing, power management and navigation," that "at least some" were used in "105 accused ZTE products," and that the jury "awarded Maxell's entire ask of a $43 million reasonable royalty." World IP Review reported in early July 2018 that ZTE "and its subsidiary ZTE USA have been ordered to pay … $43.3 million," that the jury "did not give a ruling on the '443 patent," and quoted Maxell's lead trial counsel Jamie Beaber: "we are happy we were able to underscore the significance and value of the inventions within Maxell's portfolio. … The jury absolutely got this one correct."
Outlets treated the case as significant mainly as a licensing-campaign data point, not as a doctrinal event. Texas Lawyer framed it as the centerpiece of a much larger assertion program: Maxell "owns a portfolio of 5,300 patents, many of them purchased in 2013 from the optronics division of Hitachi Ltd.," and was "presently litigating some 47 different patents against BlackBerry Corp., Olympus Corp., [Huawei Technologies Co. Ltd.](/litigations/by-defendant/Huawei%20Technologies%20Co.%20Ltd.), ASUSTeK Computer Inc. and Blu Products Inc., Fandango Media Networks Inc. and FOTV Media Networks Inc., according to data compiled by RPX Corp." The same piece reported that Maxell "got additional good news Monday when the Patent Trial and Appeal Board turned away the last of ZTE's seven administrative challenges to the validity of the patents" — the press-side confirmation of the IPR sweep that Maxell's counsel later touted in licensing correspondence. Law360 added a wrinkle that goes beyond the bare verdict and is worth flagging as analysis rather than record: the jury "also concluded that some claims were 'routine and conventional,'" an Alice step-two factor, and Beaber said the judge "will take up the issue in post-trial motions" and that he "had never seen the question put to a jury before." That is the closest the trade press came to reporting that the verdict carried § 101 exposure despite the win. Texas Lawyer also reported a fact that connects the case to the news cycle: Beaber said ZTE "had been concerned about the impact of news coverage of the dispute between ZTE and the Trump administration," but voir dire showed "only two of 42 venire persons … were aware of the news coverage."
The accounts diverge in several places, and some go well past the record. First, attribution: Law360 consistently says ZTE USA infringed and owes the money, while World IP Review and Chinese-language trade coverage led with "ZTE and its subsidiary ZTE USA" — which reads as a loss for the Shenzhen parent even though, as Law360 itself reported, the parent's claims had been bifurcated and "are still pending." Second, the '443 patent: Law360 reported that "shortly before trial, ZTE USA voluntarily withdrew one of the eight patents-in-suit that had expired in an effort to streamline the case," whereas WIPR said the jury "did not give a ruling on the '443 patent" — the former describes a pre-trial withdrawal, the latter a jury non-finding. Third, subject matter: WIPR described the patents as relating to "wireless flash drives, multimedia devices, and storage and memory devices," which reads like complaint boilerplate and does not match the camera/audio-decoding/power-management/pedestrian-navigation description in Law360 and Texas Lawyer. Fourth, the treble-damages frame — outlets reported ZTE "could potentially be on the hook for treble damages" because of willfulness, but I found no reporting that enhanced damages were ever awarded; the case settled before any such ruling was reported. Law-firm commentary also went beyond reporting: Dehns (also carried on Mondaq) drew the advisory lesson that the case "reflects a common occurrence in IP disputes where the parties previously had a commercial relationship that then broke down," and Maxell's damages consultant Analysis Group published a case study stating that its expert Carla Mulhern's hypothetical-negotiation reasonable royalty "estimated total reasonable royalty damages due to Maxell of $43.3 million," supported by a survey of "over 1,000 smartphone and tablet owners" on the automatic GPS map-orientation feature — a vendor account of trial evidence, not independent journalism.
The settlement drew a short second wave of coverage, and the case otherwise fell outside the mainstream tech press. Law360 reported on 2019-02-04 that the parties reached a confidential settlement, quoting the joint motion that "All matters in controversy between the parties have been settled in principle," noting a 30-day stay request and that the deal would be filed under seal; it also reported that "Maxell and ZTE Corp. filed an identical notice of settlement in the bifurcated case as well" (No. 5:18-cv-00080), and that "an attorney for ZTE declined to comment." Law360 returned to the ZTE case weeks later as context for the Huawei settlement, describing "a dispute over seven Maxell patents" resolved "after a jury awarded Maxell $43.3 million in damages last June." Chinese-language trade outlets such as 知产力/ciplawyer covered the verdict at length (including a claim-by-claim verdict table mapping patents to accused products like the ZMax 2, Max Duo LTE and Axon 7) and framed it as a warning to Chinese companies arriving amid ZTE's U.S. sanctions
Sources
- Maxell Scores (\Phi 43M) EDTX Jury Win In ZTE Patent Trial
- irbis.fips.ru
- irbis.fips.ru
- Maxell, ZTE Reach Settlement After () 43M(Patent Verdict
- October 9, 2018
- ZTE to pay Maxell $43m for infringing smartphone patents
- 中兴通讯在美被判故意侵犯Maxell专利权,赔偿4300万美元
- 因侵犯智能手机专利 中兴被判赔偿Maxell 4330万美元 - 关注司法审判
- Maxell, Huawei Reach Terms To End Smartphone Patent Suit
- Maxell, Ltd. v. ZTE (USA) Inc.
- Case 5:16-cv-00179-RWS Document 292 Filed 08/28/18 Page 1 of 92 PageID #: 18771
- Maxell notes that it believes the plain and ordinary meaning is sufficient, but Maxell has agreed to "adopt ZTE's construction s...
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Mayer Brown
- Jamie B. Beaber · lead counsel
- Alan M. Grimaldi · trial counsel
- Kfir B. Levy · trial counsel
- James A. ("Tripp") Fussell III · counsel
- Tiffany A. Miller · counsel
- Baldine Brunel Paul · counsel
- Saqib Javaid Siddiqui · associate
- Amanda Kay Streff · associate
- Bryan Christopher Nese · associate
- Clark Bakewell · associate
- Patton, Tidwell & Culbertson
- Geoffrey P. Culbertson · local counsel
I'll research the docket and counsel appearances for the plaintiff side.
Good initial hits. Let me verify individual attorneys, their firms/offices, and pro hac vice status.
Counsel of Record for Plaintiff Maxell, Ltd. (No. 5:16-cv-00179-RWS)
Bottom line: Maxell was represented by Mayer Brown LLP as national/trial counsel, with Patton, Tidwell & Culbertson LLP of Texarkana as local counsel. The Mayer Brown team was Washington-DC-centric (1999 K Street NW) with Chicago support. One structural note that affects any counsel table: because the plaintiff was originally Hitachi Maxell, Ltd. and was substituted as Maxell, Ltd. by order dated October 26, 2017, every appearance notice filed in 2016–early 2017 reads "counsel for Plaintiff Hitachi Maxell, Ltd."
Sourcing caveat: I did not pull the PACER docket sheet directly. Appearance dates and roles below are reconstructed from (a) the Unified Patents docket-event mirror for 5:16-cv-00179, (b) filed PDFs (e.g., Dkt. 8; Dkt. 287-3), and (c) contemporaneous Law360/ALM reporting. Where a fact is inferred rather than pulled from a filing, I say so.
A. Mayer Brown LLP — lead / trial counsel
| Attorney | Role | Firm & office | Note |
|---|---|---|---|
| Jamie B. Beaber | Lead counsel (trial lead; primary press spokesperson) | Mayer Brown LLP, Washington, DC (1999 K Street NW) | Led the two-week June 2018 trial to a $43.3M willful-infringement verdict on seven patents; Maryland bar, admitted pro hac vice in E.D. Tex. Maxell's relationship partner across the portfolio — Huawei, Apple (E.D. Tex. 2019), VIZIO, BLU, ASUSTek, and the 2025 $111.7M Samsung verdict. |
| Alan M. Grimaldi | Trial team partner | Mayer Brown LLP, Washington, DC | Mayer Brown bio expressly credits "Maxell, Ltd. v. ZTE Corporation et al. (E.D. Tex. 2018) – part of the trial team that secured a $43.3m verdict," plus Maxell district-court and ITC cases against Apple, Vizio, Lenovo and BLU. |
| Kfir B. Levy | Trial team partner | Mayer Brown LLP, Washington, DC | Named on the Law360/ALM trial-team rosters; continuing Maxell portfolio counsel (still filing for Maxell in the 2026 LG Electronics case). |
| James A. ("Tripp") Fussell III | Counsel (now partner) | Mayer Brown LLP, Washington, DC | Named by Law360 as part of the trial team; also Mayer Brown's IPR-side counsel for Maxell in the ZTE/Huawei PTAB proceedings. |
| Tiffany A. Miller | Counsel; first appearance filed 22 Nov 2016 (Dkt. 8), the earliest plaintiff-side appearance on the docket | Mayer Brown LLP, Washington, DC | Her notice states she is "a member of the bar of this Court" (i.e., admitted in E.D. Tex., not merely PHV). Practice is patent litigation plus ITC § 337; her firm bio lists "Maxell … ZTE Corporation (E.D. Tex. 2018)" and the related Huawei, Apple, VIZIO and ASUSTek matters. |
| Baldine Brunel Paul | Counsel | Mayer Brown LLP, Washington, DC | Appeared 1 Dec 2016; part of the Maxell team in the parallel Olympus v. Maxell D. Del. action and the ZTE/Huawei IPRs. |
| Saqib Javaid Siddiqui | Then associate (now partner); appeared Nov 2016 | Mayer Brown LLP, Washington, DC | Maxell IPR and district-court work in the same period. |
| Amanda Kay Streff (now Amanda Streff Bonner) | Then associate, Chicago office (71 S. Wacker Dr); appeared Nov 2016 | Mayer Brown LLP, Chicago | Patent/IPR litigator; Maxell team member in ZTE, Huawei, Apple and Samsung matters. |
| Bryan Christopher Nese | Then associate (now partner); appearance entered after the 2017 substitution | Mayer Brown LLP, Washington, DC | Maxell/Huawei/ZTE IPR and district-court work. |
| Clark Bakewell | Associate; declarant on the post-trial motions | Mayer Brown LLP (Washington, DC) | Executed the Declaration in Support of Maxell's Post-Trial Motions and Renewed JMOL (Dkt. 287-3), stating: "I am an attorney with the law firm of Mayer Brown LLP. I am admitted to the bar of the State of Maryland. I am also admitted Pro Hac Vice to practice in the Eastern District of Texas. I represent Plaintiff Maxell, Ltd. in the above-captioned action." |
B. Patton, Tidwell & Culbertson LLP — local counsel
| Attorney | Role | Firm & office | Note |
|---|---|---|---|
| Geoffrey P. Culbertson | Local counsel (E.D. Tex. admission and Texarkana anchor) | Patton, Tidwell & Culbertson LLP, 2800 Texas Blvd., Texarkana, TX 75503 (firm formerly Patton, Tidwell & Schroeder) | Texas and Arkansas bars; admitted E.D. Tex. (2005) and the Federal Circuit (2007); former briefing attorney to Chief Judge Thad Heartfield; serves on the E.D. Tex. Local Rules Committee. Identified by Law360/WIPR as Maxell's local counsel at the 2018 ZTE trial, and his firm's own declaration in an unrelated matter lists "Maxell … v. ZTE (USA), Inc. … E.D. Tex. 5:16-cv-179 and 5:18-cv-34" among its engagements. He has been Maxell's standing Texarkana local counsel in the later Apple, Samsung and LG matters. |
C. Uncertain / not confirmed as of record in this docket
- Robert G. Pluta (Mayer Brown, Chicago) — the Chicago IPR lead on the Maxell/ZTE PTAB petitions, but I could not confirm a notice of appearance by him in 5:16-cv-00179 itself. Treat his participation as PTAB-side unless a docket entry shows otherwise.
- Kelly B. Tidwell (Patton, Tidwell & Culbertson) — appears for Maxell in the 2026 LG and 2025 Samsung cases; no confirmed appearance in '179.
- Alison T. Gelsleichter, William Barrow, Tariq Javed, Seth Bruneel, Séké Godo, Courtney Krawice, So Ra Ko, Tatsuya Koyama — later-generation Mayer Brown Maxell team members; the rosters naming them are from the Samsung (2025) and LG (2026) matters, not from '179. I am not attributing them to this docket.
- In-house counsel — I found no in-house Maxell attorney (e.g., from Maxell's Tokyo IP/licensing group) appearing of record in this case. Maxell's licensing correspondence in this period was signed at the business level, and the litigation was run entirely through outside counsel. If an in-house lawyer did appear, sealed or non-PACER-visible filings would be where to look — I did not locate one.
- ZTE-side counsel is outside this task, but for completeness the defense team was Pillsbury Winthrop Shaw Pittman (Steven A. Moore, Callie A. Bjurstrom, Nicole S. Cunningham, Sara J. O'Connell, Matthew R. Stephens — San Diego) with Findlay Craft (Eric H. Findlay, Tyler, TX) as local counsel.
D. Structural observations worth building into the narrative
- Two-tier staffing, no Texas national firm. Maxell did not retain a Houston or Dallas IP boutique; the case ran from Mayer Brown's DC office with a single Texarkana general-practice firm as local counsel. That is the same model Maxell has used in every E.D. Tex. assertion since.
- Counsel continuity is unusually high. Beaber, Grimaldi, Levy, Fussell, Miller and Culbertson appear on the Maxell pleadings from 2016 through the 2025 Samsung and 2026 LG matters — meaning the ZTE win functioned as the template/proof-of-concept for the later campaign (Beaber's October 9, 2018 letter to Apple expressly leveraged the "$43.3 million verdict" to solicit a license).
- PTAB and district court were staffed from the same firm, with overlapping personnel (Beaber, Fussell, Siddiqui, Nese, Streff, Pluta) — relevant to the earlier section's point that all seven of ZTE's IPR challenges failed.
- The plaintiff-side caption mismatch in the metadata has a counsel analogue: any search for "Maxell, Ltd." appearances before late October 2017 will miss the 2016 filings, which are docketed under Hitachi Maxell, Ltd. That is the likely reason the case metadata (and some aggregators) mis-associate the '760 patent with this docket.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Pillsbury Winthrop Shaw Pittman
- Steven A. Moore · lead counsel
- Callie A. Bjurstrom · trial counsel
- Nicole S. Cunningham · trial counsel
- Sara J. O'Connell · trial counsel
- Matthew R. Stephens · trial counsel
- Findlay Craft
- Eric Hugh Findlay · local counsel
- Brian Craft · local counsel
- Finnegan, Henderson, Farabow, Garrett & Dunner
- Lionel Marks Lavenue · of counsel
- In-house counsel
- J. Ray Wood · in-house
I'll research the defense side counsel of record for the ZTE defendants in this case.
Good leads. Let me pin down the full counsel list from the opinion and verify each attorney's firm.
Let me verify each firm/attorney and check who appeared for ZTE Corporation specifically.
Counsel of record for the ZTE defendants — 5:16-cv-00179-RWS
Bottom line: The defense was a two-firm, layered team, consistent with the EDTX pattern. Pillsbury Winthrop Shaw Pittman LLP (San Diego, with Austin/Houston support) was ZTE's national coordinating and trial counsel; Findlay Craft PC (Tyler, Texas) served as local counsel; and Finnegan, Henderson, Farabow, Garrett & Dunner LLP (Reston, Virginia) entered an appearance for ZTE USA on the patent-office side of the strategy. This is corroborated by the Law360 trial report, the "Represented by" block in Judge Schroeder's claim construction order, and docket/exhibit artifacts from the case itself.
One cross-reference to the earlier sections: because the two cases were consolidated for pretrial and filings in the lead case (No. 5:16-cv-00178) were re-docketed into -179 by order (Dkt. 139), the same defense team appears on both dockets — e.g., ZTE USA's summary judgment and Daubert motions were filed as Dkt. 204–209 in No. 5:16-cv-00178 and then "filed in this case per 139 Order."
Counsel table
| Attorney | Role | Firm / office | Notes |
|---|---|---|---|
| Steven A. Moore | Lead trial counsel for ZTE USA | Pillsbury Winthrop Shaw Pittman LLP, 501 West Broadway, Suite 1100, San Diego, CA 92101 | Registered patent attorney (Reg. No. 55,462). ZTE's long-standing lead in its U.S. patent defense program: lead counsel in ZTE (USA) Inc. v. Pragmatus Mobile (S.D. Cal. No. 3:14-cv-00707), Adaptix v. ZTE, SPH America v. ZTE, and lead petitioner's counsel in ZTE's IPRs (e.g., IPR2018-00235 on the very '317 patent asserted here; CyWee/zte IPR2019-00143). Named by Law360 as ZTE USA's lead at the June 2018 trial. |
| Callie A. Bjurstrom | Trial team (partner) | Pillsbury Winthrop Shaw Pittman LLP, San Diego, CA (CA SBN 137816) | Career patent litigator on the ZTE account; appeared for ZTE USA in the Pragmatus Mobile declaratory judgment action and the Maxell case. |
| Nicole S. Cunningham | Trial team (partner) | Pillsbury Winthrop Shaw Pittman LLP, San Diego, CA (CA SBN 234390) | The defense attorney named for both ZTE Corporation and ZTE USA Inc. in the counsel block of the Markman opinion, 297 F. Supp. 3d 668. PlainSite's filing index shows her on Hitachi Maxell v. Huawei (No. 5:16-cv-00178) for ZTE USA plus SPH America v. ZTE, Adaptix v. ZTE, and ZTE v. Pragmatus. |
| Sara J. O'Connell | Trial team ("Counsel") | Pillsbury Winthrop Shaw Pittman LLP, San Diego, CA | Her signature block in the case's own e-service exhibits reads "Sara J. O'Connell | Counsel, Pillsbury… 501 West Broadway, Suite 1100 | San Diego, CA 92101"; she was the ECF filer on ZTE's sealed June 21–22, 2018 filings (Dkt. 207). |
| Matthew R. Stephens | Trial team | Pillsbury Winthrop Shaw Pittman LLP | Named by Law360 among the five Pillsbury lawyers representing ZTE USA at trial. Office location not verified in the sources I retrieved. |
| Eric Hugh Findlay | Local counsel (EDTX) | Findlay Craft PC, Tyler, TX | Named in the "Represented by" block of the claim construction order for ZTE, and the case's meet-and-confer email exhibits run to EFindlay@FindlayCraft.com. A fixture of Tyler/Texarkana patent practice as local counsel for out-of-state defense teams. |
| Brian Craft | Local counsel team (Findlay Craft) | Findlay Craft PC, Tyler, TX | Copied and corresponded as ZTE's local counsel throughout 2018 (BCraft@FindlayCraft.com); whether he filed a formal notice of appearance in -179 is unverified. |
| Lionel Marks Lavenue | Of counsel / PTAB-side appearance for ZTE USA | Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Reston, VA (1875 Explorer St., Suite 800) | The docket for -179 carries a "Notice of Attorney Appearance by Lionel Marks Lavenue on behalf of ZTE USA Inc." He is ZTE's lead IPR counsel (Finnegan; Reg. No. 46,859) in numerous ZTE petitions, and a first-chair patent trial lawyer. The date of that appearance I could not confirm. |
In-house / client-side
- J. Ray Wood, Chief Patent Counsel, ZTE (USA) Inc. (and ZTE Corporation) — the authorized signatory on ZTE's powers of attorney in the parallel IPRs, including IPR2018-00235, filed by ZTE Corporation and ZTE (USA) Inc. in November 2017 against the '317 patent asserted in this case. He is the client representative, not counsel of record in the district court.
Caveats and open items — please read before relying on this table
- ZTE Corporation (Shenzhen) separately. I could not verify whether the Chinese parent had its own separate district-court appearance in -179 (as opposed to being covered by the Pillsbury/Findlay Craft team that represented ZTE USA). Given the bifurcation — ZTE USA sent to trial, the parent's claims carved into No. 5:18-cv-00080-RWS — the parent's appearances would likely sit on the -080 docket, which I did not retrieve. Treat "ZTE Corporation's own counsel of record in -179" as unconfirmed.
- A "Sheppard Mullin" fragment appears in one reproduction of the Markman order's counsel block ("…Miller, Sheppard Mullin Richter & Hampton LLP, Los Angeles, CA, Eric Hugh Findlay, Findlay Craft PC, Tyler, TX, Nicole Sara Cunningham, Pillsbury…, for ZTE Corporation and ZTE USA Inc."). The snippet is truncated at the start, so I cannot tell whether the Sheppard Mullin attorney was listed for Huawei or for ZTE. I am not attributing a Sheppard Mullin lawyer to ZTE on this record; if it matters, the full text of Dkt. 49 should be pulled from PACER.
- Pro hac vice vs. local. In the EDTX, the San Diego/Reston lawyers would have been admitted pro hac vice with Findlay Craft as designated local counsel. I did not retrieve the individual pro hac vice orders, so I state this as the standard pattern rather than a verified docket fact for each name.
- No sealed-appearance issue. The appearances here are public; the sealing in this case (Dkt. 204–209, 292, etc.) covered motion papers, expert reports, and licensing/settlement material, not the identity of counsel.
Sourcing trail
- Law360, "Maxell Scores $43M EDTX Jury Win In ZTE Patent Trial" (reproduced as a PTAB exhibit): "ZTE USA is represented by Steven A. Moore, Callie A. Bjurstrom, Nicole S. Cunningham, Sara J. O'Connell and Matthew R. Stephens of Pillsbury Winthrop Shaw Pittman LLP." — link
- Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668 (E.D. Tex. Mar. 19, 2018) (Dkt. 49), counsel listing via Casetext — link
- Docket exhibit showing Pillsbury signature block (Sara J. O'Connell) and June 2018 ECF activity in -179 — link
- Docket exhibit showing Maxell↔Findlay Craft correspondence (Findlay, Craft) — link and Dkt. 287
- Unified Patents litigation portal entry for 5:16-cv-00179 noting "NOTICE of Attorney Appearance by Lionel Marks Lavenue on behalf of ZTE USA Inc." — link
- ZTE power of attorney, IPR2018-00235 (Pillsbury: Moore lead / Brian Nash backup; signed Nov. 20, 2017) — link
- Finnegan/ZTE power of attorney (Lavenue lead; ZTE USA) and Martin de CV — PTAB POA, [Martindale](https://www