Maxell, Ltd. v. ZTE Corporation et al.

I'll research this case thoroughly before drafting the overview.

Let me dig deeper into the specific patent, IPRs, and case resolution.

Case Overview — Maxell, Ltd. v. ZTE Corporation et al., No. 5:16-cv-00179-RWS (E.D. Tex., Texarkana Div.)

Parties. Maxell, Ltd. is a Japanese consumer-electronics manufacturer founded in 1961 as Maxell Electric Industrial Co., Ltd., which still sells storage media, batteries, wireless chargers, media players and headphones. Critically for this case, the asserted patents did not originate with Maxell's own R&D: the complaints trace an assignment chain from Hitachi, Ltd. → Hitachi Consumer Electronics Co., Ltd. (2009) → Hitachi Maxell, Ltd. (2013) → Maxell, Ltd. by reorganization/name change, and state that Maxell "actively enforces its patents through licensing and/or litigation if necessary" (Compl. ¶¶ 1–4, Maxell v. ZTE, No. 5:16-cv-00179

I'll research this case aggressively across the docket, PTAB, and legal press. Let me start with several parallel searches.

I have strong initial material. Now let me nail down the IPRs, the service/bifurcation timeline, post-trial rulings, and the '292 patent's specific IPR history.

Key Legal Developments and Outcome — Maxell, Ltd. v. ZTE Corporation et al., No. 5:16-cv-00179-RWS (E.D. Tex., Texarkana Div.)

Important sourcing note up front. The case metadata lists only U.S. Patent 6,928,292 (the "'292 patent") as "at issue." The public record I located does not support that for this specific docket. No. 5:16-cv-00179 is the ZTE case, and the patents actually asserted against ZTE were the '443, '317, '493, '729, '193, '794, '491, and '695 patents; the '292 patent was asserted against Huawei in the companion case, No. 5:16-cv-00178, which was consolidated with this one for pretrial purposes and construed in the same claim-construction order. So the '292 patent is genuinely part of the coordinated Maxell v. Huawei/ZTE litigation, but it was not a ZTE-asserted patent at trial. I flag this because it materially affects how the "patents at issue" should be read; I could not verify a ZTE-specific '292 assertion in the sources available to me.

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1. Filing & initial pleadings

• 2016-11-18 — Maxell (then styled Hitachi Maxell, Ltd.) filed two complaints in the E.D. Tex., Texarkana Division, before Judge Robert W. Schroeder III: No. 5:16-cv-00178 against Huawei Device USA Inc. and Huawei Device Co., Ltd., and No. 5:16-cv-00179 against ZTE Corporation and ZTE (USA) Inc. The two cases were consolidated for pretrial purposes, with -178 as lead.
• Patents asserted in the consolidated action (per the court's own claim-construction order, Dkt. 49):
  • '443 patent — asserted against both Huawei and ZTE;
  • '139, '440, '292, '517, '901, '760, '438 — asserted against Huawei;
  • '317, '493, '729, '193, '794, '491, '695 — asserted against ZTE USA.
• Accused products / theory: Maxell alleged ZTE sold infringing smartphones (e.g., ZMAX 2 and numerous Z-, N-, V-, X-series and Axon handsets), that it first put ZTE on notice of infringement as early as June 2013, that licensing negotiations failed, and that ZTE therefore willfully infringed. Maxell sought damages and a permanent injunction. (Complaint excerpts; Law360, 2018-07-02.)
• Service / jurisdictional wrinkle: Shenzhen-based ZTE Corporation would not accept service, and per Law360 the case "was put on hold for nearly a year" as a result.
• Counterclaims/answer: I could not confirm in this session the specific docket entry or date of ZTE's answer and any counterclaims (invalidity/non-infringement affirmative defenses are evidenced throughout the later record, e.g., in the SJ and Daubert briefing). Treat the answer/counterclaim particulars as unverified.

2. Pre-trial motions of substance

The court heard argument on a package of dispositive and evidentiary motions on 2018-05-02 and ruled in an omnibus order (Dkt. 181):

• ZTE's motion for summary judgment of non-infringement of the '443 and '317 patents (Dkt. 153) — DENIED AS MOOT as to '443 (parties stipulated) and DENIED as to '317 (genuine disputes over the AT&T Navigator version and whether the "blue dot with an arrow" showed orientation).
• ZTE's motion for summary judgment of invalidity of the '317 and '794 patents (Dkt. 143) — DENIED.
• Maxell's Daubert motions to exclude ZTE's experts:
  • First (Dkt. 147) — to exclude Scott Andrews' untimely indefiniteness and conclusory obviousness opinions on the '317 patent — GRANTED-IN-PART / DENIED-IN-PART;
  • Second — to exclude Dr. Barmak Mansoorian on the '493/'729 obviousness;
  • Third — to exclude Dr. Zhi Ding on the

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

Let me search additional angles, including IPWatchdog, Patently-O, and Reuters/Bloomberg coverage.

Press coverage of Maxell, Ltd. v. ZTE Corp., No. 5:16-cv-00179-RWS (E.D. Tex.)

The verdict (June 29, 2018). The most substantive coverage is the trade press on the June 2018 jury verdict. Law360 reported on 2018-07-02 (Dorothy Atkins) that a six-member EDTX jury found Friday (June 29, 2018) that ZTE USA Inc. willfully infringed seven Maxell smartphone patents and awarded $43.3 million in damages; the two-week trial began June 18, 2018, and ZTE had withdrawn one expired patent pre-trial to streamline the case, leaving seven of eight asserted patents at trial. The patents Law360 listed — U.S. 6,748,317; 8,339,493; 8,736,729; 6,408,193; 6,329,794; 6,816,491; and 8,098,695 — cover camera, cellular data transmission, power-supply management, audio decoding and "walking location" technologies. WIPR reported on 2018-07-04 that the award was $43.3 million against ZTE and ZTE USA for seven patents, adding that Maxell had sought damages and permanent injunctions, that it alleged it first notified ZTE of infringement in 2013 and negotiated for three years, and quoting Maxell trial counsel Jamie Beaber (Mayer Brown) — "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." On the damages methodology, Analysis Group — the consultancy that worked on the case — states that its expert Carla S. Mulhern estimated total reasonable-royalty damages of $43.3 million using a hypothetical-negotiation framework, supported by a survey of over 1,000 smartphone/tablet owners on a GPS map-orientation feature, and that the jury's award was "consistent with Ms. Mulhern's reasonable royalty analysis."

Why the trade press treated it as significant. IAM published an interview on 2018-07-13 with Maxell's licensing chief titled "After courtroom win against ZTE, Maxell licensing chief discusses US, Europe enforcement drive," framing the award as "the first jury decision for the Japanese electronics company, formerly a unit of Hitachi, since it began a US patent enforcement" campaign — i.e., the case was covered mainly as evidence of a newly aggressive licensing program by a former operating company rather than as a doctrinal development. RPX also tracked it in a 2019-03-20 note as part of a Maxell litigation wave, observing that "on the heels of recent settlements with ASUSTek, Huawei, and ZTE," Maxell sued Apple (5:19-cv-00036), re-asserting patents that had been "at issue in a June 2018 trial against ZTE, which culminated in a $43.3M damages award." Chinese-language coverage in 知产力 (ciplawyer.cn, 2018-07-05) added detail not in the English-language trade items: it listed the jury's patent-by-patent infringement findings and which products mapped to each (e.g., the ZMax 2, Max Duo LTE and Axon 7), noted the jury rejected ZTE's invalidity case on the '317 and '193 patents, and reported that on Monday, July 2, 2018 the PTAB denied the last of seven ZTE IPR petitions against the asserted patents — a parallel proceeding I did not find covered by any English-language outlet.

The settlement (February–March 2019). Law360 reported on 2019-02-04 (Daniel Siegal) that Maxell and ZTE reached a confidential settlement ending the EDTX dispute (and a parallel notice in the bifurcated companion case, 5:18-cv-00080), telling Judge Robert W. Schroeder III that "All matters in controversy between the parties have been settled in principle," with a 30-day stay to file dismissal papers and the deal filed under seal; Law360 noted ZTE declined comment and Maxell did not respond, and that the verdict's willfulness finding had exposed ZTE to potential trebling. ZTE's own 2018 annual report corroborates the arc from the defendant's side: it recounts the November 2016 complaint over eight patents, the June 18, 2018 jury trial (against ZTE USA only), the June 29, 2018 verdict of USD 43.30 million with willfulness, the March 2019 settlement and court-approved withdrawal, and states the matter would have "no material adverse impact" on ZTE's finances. Law360 reported on 2019-02-21 (Nadia Dred) that Huawei settled the coordinated case (5:16-cv-00178) weeks later, expressly tying it to the ZTE result: "[t]he Huawei settlement comes weeks after Maxell settled another patent suit, this one with Chinese smartphone maker ZTE USA Inc. … [t]he agreement came after a jury awarded Maxell $43.3 million in damages last June."

Where accounts diverge, and coverage gaps. Several discrepancies are worth flagging. (1) The asserted patents don't match the case metadata. Every press account of this docket describes a seven-patent verdict over the '317, '493, '729, '793/'794-family patents listed above; none of the verdict or settlement coverage mentions U.S. 6,928,292, which the metadata identifies as the patent at issue here, and the court's own claim-construction order in the consolidated proceeding lists the '292 patent as asserted against Huawei (5:16-cv-00178) rather than ZTE. (2) WIPR's list differs from Law360's: WIPR recites eight patents including 5,396,443 and says the jury "did not give a ruling on the '443 patent," whereas Law360 reported that ZTE had dropped an expired patent before trial and that the jury found all seven remaining patents infringed. (3) Counsel of record appears to have changed between the verdict and settlement — Law360's July 2018 story lists Pillsbury Winthrop for ZTE USA, while its February 2019 story lists Finnegan's Lionel M. Lavenue. (4) Beyond the trade press, I found no Reuters, Bloomberg Law, Ars Technica, The Verge, EFF, Patently-O or JD Supra coverage of this case; the only non-trade hits were regional tech/legal aggregators (e.g., ixbt.com, 2018-07-04), an IAM-authored piece reprinted on Lexology about Hitachi/Maxell enforcement strategy (which notes Maxell targeting ZTE, Huawei and BlackBerry and being countersued by Olympus), and a German-language academic/IP-magazine case note by K. Levy (Intellectual Property Magazine, Oct. 2018) indexed in a Russian library catalog. (5) Procedural caveat on sourcing: the Law360 items above were located as PDF copies hosted outside Law360 (a PTAB petition exhibit and a Mayer Brown client alert), so the live Law360 URLs are paywalled and I could not verify the original publication pages directly; headline dates and bylines are as they appear in those copies. Finally, the widely repeated "$43.3 million" is a jury award that was never reduced to judgment — the confidential 2019 settlement terminated the case, so no outlet reported the actual amount ZTE paid, and the willfulness/trebling question was never resolved on the merits.

Sources

• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• Maxell Scores (\Phi 43M) EDTX Jury Win In ZTE Patent Trial
• 70. On information and belief, Defendants further infringe the '729 Patent through additional products utilizing the same or rea...
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• 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
• irbis.fips.ru
• Maxell, ZTE Reach Settlement After () 43M(Patent Verdict
• Case 5:16-cv-00179-RWS Document 49 Filed 03/19/18 Page 1 of 117 PagelD #: 584
• irbis.fips.ru
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION
• Maxell, Huawei Reach Terms To End Smartphone Patent Suit

I'll research the counsel of record for Maxell, Ltd. in this case. Let me start with several searches.

Let me get the docket sheet and more detail on the plaintiff's counsel.

Let me confirm the lead counsel, roles, and firm office locations.

Based on PACER/docket-alert filings, the docket sheet, and contemporaneous Law360/WIPR verdict coverage, here is the counsel of record for plaintiff Maxell, Ltd. (originally captioned "Hitachi Maxell, Ltd.") in Maxell, Ltd. v. ZTE Corporation et al., No. 5:16-cv-00179-RWS (E.D. Tex.). A quick note up front on sourcing and on the case framing:

Sourcing caveats

• Party/case metadata is taken from the case file; the patent listed in the metadata ('292) sits alongside the broader patent family Maxell asserted in the consolidated E.D. Tex. litigation (the consolidated claim-construction order, Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668 (E.D. Tex. 2018), addressed the '292 among others). The ZTE-specific verdict involved seven patents.
• Names, firms, and roles below are drawn from: (1) the Complaint and Notices of Attorney Appearance filed on the docket (e.g., Doc. 8, Tiffany A. Miller's appearance, dated Nov. 22, 2016); (2) the ECF notice/service list of record (Doc. 292-43); (3) Law360's coverage of the June 29, 2018 verdict; and (4) Mayer Brown's own Feb. 2019 client announcement of the Maxell–ZTE settlement. Several post-trial and damages filings were filed under seal, so not every appearance can be tied to a specific document.
• I was unable to complete additional profile look-ups (office location confirmations) before running out of search capacity, so I flag office locations I could not independently verify from the docket as "[unverified]." I did not invent any names.

Lead counsel / trial team (Mayer Brown LLP)

Other Mayer Brown attorneys appearing for Maxell

These names appear in the ECF service list of record (Doc. 292-43) and/or in Mayer Brown's settlement announcement:

• Clark S. Bakewell — Mayer Brown (Washington, DC; admitted pro hac vice to E.D. Tex.) — signed the Declaration in Support of Plaintiff Maxell's Post-Trial Motions and Renewed JMOL (Doc. 287-3), expressly stating "I represent Plaintiff Maxell, Ltd."
• Baldine B. Paul, PhD — Mayer Brown (counsel) — bio lists her work "representing plaintiff Maxell" in this case and cites the unanimous seven-patent, $43.3M verdict.
• William Justin Barrow — Mayer Brown
• Saqib Javaid Siddiqui — Mayer Brown
• Brian C. Nese (also listed as "Bryan Christopher Nese") — Mayer Brown — filed the Nese Declaration used in Maxell's Daubert briefing.
• Robert G. Pluta — Mayer Brown (Chicago) [office unverified]
• Amanda Streff Bonner — Mayer Brown
• Alison T. Gelsleichter — Mayer Brown (Washington, DC) [office unverified]
• Justin Park — Mayer Brown (later joined DLA Piper 2020); worked on all of Mayer Brown's Maxell smartphone matters
• Tyler J. Earnest — Mayer Brown
• Michael T. Lindinger — Mayer Brown (appears on the later docket for the related Maxell filing)

Local counsel (E.D. Tex.)

Summary of the plaintiff-side team as reported by Law360 (July 2, 2018)

"Maxell is represented by Jamie Beaber, Alan Grimaldi, Kfir Levy, Tripp Fussell of Mayer Brown LLP and by Geoff Culbertson of Patton Tidwell & Culbertson LLP."

And as confirmed in Mayer Brown's Feb. 2019 client announcement of the settlement:

"Maxell is represented by Jamie B. Beaber, Alan M. Grimaldi, Kfir B. Levy, James A. Fussell III, Baldine B. Paul, Tiffany A. Miller, William J. Barrow, Saqib Siddiqui, Brian C. Nese, Robert G. Pluta and Amanda S. Bonner of Mayer Brown LLP and by Geoff Culbertson and Kelly Tidwell of Patton Tidwell & Culbertson LLP."

Important qualifications

• No in-house Maxell counsel is identified in the public docket materials I located; Hitachi/Maxell's legal department did not appear on the E.D. Tex. docket for this matter (Maxell was represented through outside counsel).
• Several filings were sealed (e.g., Daubert replies, the Rule 50/59 motions and responses, post-trial motion papers), so the counsel list above reflects those whose appearances are docketed or named in court documents/Law360, not necessarily every attorney who worked the matter.
• Office locations marked "[unverified]" could not be independently confirmed from the docket within my search budget; the docket confirms Mayer Brown's Washington, DC address for Tiffany A. Miller's appearance (Doc. 8) and the DC bar number for Bakewell, which supports a DC-centric trial team.
• The docket also shows appearances by ZTE-side counsel (Pillsbury Winthrop Shaw Pittman and Findlay Craft PC) — these are defense counsel and are excluded as outside your request.

If you'd like, I can pull the specific Notice-of-Appearance docket entries (with entry numbers and dates) for each Mayer Brown attorney to build an appearance-by-appearance table, or retrieve the public (redacted) versions of the sealed post-trial filings to close the gaps noted above.

I'll research the counsel of record for the defendants in this case.

Let me dig deeper into the defense team and local counsel.

Counsel of Record — Defendants ZTE Corporation & ZTE USA Inc.

Maxell, Ltd. v. ZTE Corporation et al., No. 5:16-cv-00179-RWS (E.D. Tex., Texarkana Div.)

Preliminary note on the record

This case did not end at the pleading stage. It was tried to a jury in Judge Robert W. Schroeder III's Texarkana courtroom, producing a $43.3M willfulness verdict for Maxell on June 29, 2018 (seven patents asserted against ZTE), followed by post-trial Rule 50/59 motions and eventual dismissal with prejudice / resolution (docketed final judgment, Doc. 308). The "settled/closed 2018" status in the case metadata reflects the post-verdict resolution. Because the case was actively litigated, counsel of record are well documented in the trial transcript, the claim-construction order, the docket sheet, and IPR filings. I found no indication that the defense team's appearance was sealed.

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Lead counsel

Steven A. Moore — Lead trial counsel (Pillsbury team lead)

• Pillsbury Winthrop Shaw Pittman LLP, 501 West Broadway, Suite 1100, San Diego, CA 92101 (also admitted in the E.D. Tex. pro hac vice).
• Ph.D. in electrical engineering and a registered patent attorney (Reg. No. 55,462). ZTE's longstanding lead patent litigator; his firm bio credits him with representing the ZTE companies in more than 25 patent infringement cases and first-chairing three ITC Section 337 investigations for ZTE (337-TA-850, -884, -905). He signed ZTE's IPR powers of attorney in the parallel PTAB challenges to the patents-in-suit (e.g., IPR2018-00235 re U.S. 6,748,317).

Pillsbury trial team (San Diego, CA — 501 W. Broadway)

Callie A. Bjurstrom — Trial counsel (examiner of witnesses)

• Pillsbury Winthrop Shaw Pittman LLP, San Diego. Conducted witness examinations at trial (including cross of Maxell witnesses per the June 20, 2018 trial transcript). Named in press coverage as part of the ZTE trial team.

Nicole S. Cunningham — Partner; case/procedural counsel

• Pillsbury Winthrop Shaw Pittman LLP, San Diego. One of the most frequent filers of record on behalf of ZTE USA (Daubert responses, exhibit-list meet-and-confers, sealing motions). Law360 lists her as later moving to Zhong Lun Law Firm, Los Angeles, where she continued handling ZTE-related matters.

Howard N. Wisnia — Partner; substantive lead on invalidity/prior-art narrowing (Reg. No. 37,502)

• Pillsbury Winthrop Shaw Pittman LLP, San Diego (appearance entered Mar. 27, 2018). Handled the invalidity-contentions narrowing correspondence with Maxell's counsel and appeared at trial. Later practicing as Wisnia PC, San Diego.

Sara J. O'Connell — Attorney of record / trial team

• Pillsbury Winthrop Shaw Pittman LLP, San Diego. Named in the Law360 verdict report as part of the ZTE trial team and appears in the correspondence record (e.g., emails to the Maxell service list).

Matthew R. Stephens — Attorney of record / trial team

• Pillsbury Winthrop Shaw Pittman LLP, San Diego. Named in the Law360 verdict report as part of the ZTE trial team.

IPR back-up counsel (same firm, parallel PTAB proceedings):

• Brian Nash (Reg. No. 58,105) — Pillsbury, Austin, TX.
• Cheng "Jack" Ko (Reg. No. 54,227) — Pillsbury, San Diego.

Local counsel (E.D. Tex.)

Eric H. Findlay — Local counsel

• Findlay Craft PC, 102 N. College Ave., Suite 900, Tyler, TX. Announced at trial as counsel for the defendant and routinely identified in press coverage ("Pillsbury Winthrop Shaw Pittman and Findlay Craft represented… ZTE"). A well-known East Texas patent-litigation local-counsel firm.

Brian Craft — Findlay Craft PC, Tyler, TX. Appears on the case's e-mail service list alongside Findlay and is identified in the ZTE side's correspondence. (Firm/role well sourced; individual trial appearances are less clearly documented.)

In-house

J. Ray Wood — Chief Patent Counsel, ZTE Corporation / ZTE (USA) Inc.

• Signed ZTE's powers of attorney in the parallel IPRs (e.g., IPR2018-00235 re the '317 patent, dated Nov. 20, 2017; IPR2019-… re U.S. 8,441,438, dated Oct. 29, 2018). In-house supervisory counsel rather than an attorney of record in the district court.

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Notes, qualifications, and one caveat

• Lead vs. local division: Steven A. Moore (Pillsbury, San Diego) functioned as ZTE's lead counsel; Eric Findlay (Findlay Craft, Tyler) served as local counsel. Maxell's side used different counsel — Mayer Brown (Jamie Beaber, Alan Grimaldi, Kfir Levy, Tripp Fussell) with Geoff Culbertson of Patton Tidwell & Culbertson as its local counsel. Do not conflate Culbertson with ZTE's local counsel.
• Earlier counsel (2016–2017): The docket reflects an "Unopposed Motion to Withdraw as Attorney" for ZTE USA and appearances entering only in early 2018, which suggests the Pillsbury/Findlay team was assembled or reconstituted for the 2018 trial push. I could not retrieve a fully reliable list of the original 2016–17 ZTE appearances from the sources reviewed, so I am not naming any — treat the initial-defense-counsel roster as unverified.
• Unresolved entry: Westlaw/Casetext's counsel listing for the claim-construction opinion includes an attorney surnamed "Miller" of Sheppard Mullin Richter & Hampton LLP (Los Angeles) listed for ZTE. I could not confirm this attorney's identity, role, or duration on the case, and it may be a caption/transcription artifact (note the plaintiff side also had a "Tiffany Miller" of Mayer Brown). I flag it as unconfirmed and have not treated it as a confirmed member of the defense team.
• No sealed-counsel issue: The defense team's appearances appear on the public docket; individual compensation/retention terms, if any, were not disclosed, and some substantive motion papers were filed under seal (e.g., post-trial motions), but the identity of counsel is not among the sealed material.

Key sources: Law360/ALM verdict coverage ("Maxell Wins $43M in Smartphone Patent Dispute With ZTE," July 2, 2018; "Maxell Scores $43M EDTX Jury Win In ZTE Patent Trial"); June 20, 2018 trial transcript, Doc. 287 (appearance list: Beaber/Culbertson for Maxell; Findlay for ZTE; Bjurstrom/Wisnia/Cunningham/O'Connell for ZTE); IPR2018-00235 Power of Attorney (Moore/Nash/Ko/Wisnia); Pillsbury firm bio for Steven A. Moore; Casetext/Westlaw counsel listing for the claim-construction order (Maxell, 297 F. Supp. 3d 668 (E.D. Tex. 2018)); Docket (Docs. 292, 308).