Litigation

Motorola Mobility LLC et al. v. Maxell, Ltd.

settled

IPR2022-00930

Filed
2022-06-08
Terminated
2023-07-10

Patents at issue (1)

Defendants (1)

Summary

Motorola Mobility LLC, Motorola Mobility Holdings, LLC, Lenovo Group Limited, and Lenovo (United States), Inc. filed an inter partes review against U.S. 6,928,292. The Board instituted review and terminated the proceeding after post-institution settlement on July 10, 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 before drafting.

Let me dig deeper into the IPR specifics and the parallel litigation.

Let me verify the patent details, the full IPR campaign, and the settlement.

Key legal developments & outcome

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

I'll research this. Note at the outset: the case number given (IPR2022-00930) is a PTAB inter partes review, not a district court action — so I'll need to identify and track the parallel district court litigation as well. Let me search.

Good — I've identified the parallel cases. Let me dig into the district court dockets, the ITC investigation, and the IPR specifics.

Important framing note before the chronology

The docket number you've given — IPR2022-00930 — is not a district court litigation. It is a PTAB inter partes review, filed by Motorola Mobility and terminated by settlement before any final written decision. So there is no "complaint, answer, Markman order, verdict, or JMOL" in that proceeding.

The litigation it belongs to is a multi-front campaign: Maxell, Ltd. v. Lenovo / Motorola, spanning (at least) four fora, filed 2021–2022 and resolved globally by a June 2023 license:

Forum Case No. Filed Status
W.D. Tex. (Albright) Maxell, Ltd. v. Lenovo Group Ltd., et al., 6:21-cv-01169-ADA 2021-11-12 Terminated 2023-06-29; flags "CLOSED, PATENT, STAYED"
W.D. Tex. (Albright) Maxell, Ltd. v. Lenovo Group Ltd., et al., 6:22-cv-00334-ADA 2022-03-30 Second W.D. Tex. suit (incl. '394 patent)
N.D. Ill. (Norgle) Motorola Mobility LLC v. Maxell, Ltd., 1:22-cv-00256 2022-01-14 DJ action; Closed 2023-06-15
ITC Certain Mobile Electronic Devices, Inv. No. 337-TA-1324 Complaint 2022-06-17 Instituted 2022-08-16; terminated on settlement 2023-08-18
PTAB IPR2022-00930 (the case you listed) + IPR2022-01287, IPR2022-01348, IPR2023-00316 (VIZIO) 2022 Terminated on settlement, 2023

I'll trace the chronology across all of these, since that's the only way to answer your question. Where a fact isn't well sourced, I flag it.


1. Filing and initial pleadings

**

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll verify the listed articles and search for additional coverage of this case.

Let me verify the specific IPWatchdog articles.

Now let me check the remaining listed articles and the institution decision.

I hit my tool-use cap before I could open every listed article, so below I separate what I verified directly from what I could not. The short version: this IPR generated no mainstream or national press coverage. What exists is docket-roundup trade coverage — and one of the articles you flagged turns out not to be about this case at all.

What the press actually reported

The only article on your list that discusses IPR2022-00930 by number is IPWatchdog, in its June 16, 2022 "Patent Filings Roundup" — published eight days after the June 8, 2022 petition. The case appears only as a row in the week's PTAB table: "IPR2022-00930 | Filed | Maxell, Ltd. [Maxell Holdings, Ltd.] | Motorola Mobility LLC | 6928292." The article's narrative sections are devoted entirely to Mylan/Bausch (Trulance), American Patents' 63rd suit, and Intel's joinder to the VLSI IPRs; Maxell, Motorola and the '292 patent get no substantive discussion, no claim analysis, and no commentary. That is the full extent of the identifiable press treatment of this specific IPR that my searches surfaced.

The surrounding roundups supply context rather than coverage of the '292 case. IPWatchdog on 2022-07-29 logged the sibling petition IPR2022-01287 (Maxell / Motorola Mobility / U.S. 8,059,177) in its PTAB table, and led with the July 25, 2022 Western District of Texas order randomly distributing new Waco filings "on the wheel" — directly relevant to why Maxell's 6:21-cv-01169 case, the litigation this IPR was filed against, was under venue pressure. It also noted Ax Wireless's WiFi 6 campaign naming Lenovo, but that is an unrelated matter. The author's framing throughout is administrative — petition counts, institution statistics, Fintiv briefing — not merits analysis.

An important correction on the 2023-03-03 article

The IPWatchdog roundup dated 2023-03-03 does not discuss this case, despite appearing on your list. Its "Motorola" reference is to Motorola (Wuhan) Mobility Technologies Communication Co., Ltd., a Chinese subsidiary named as petitioner alongside BOE entities in IPR2023-00605 against Element Capital Commercial Co. Pte Ltd. on U.S. 7,259,736 — a screen-display patent wholly unrelated to the '292 patent. The article is about Element Capital suing in its own name through a Singapore entity, plus Daedalus Prime/Samsung semiconductor IPRs. Anyone citing it as coverage of Motorola Mobility v. Maxell would be mis-citing it.

The settlement, as reported

Formal press reporting on the resolution came through the ITC track, not the PTAB track. Chinese trade-remedy outlets covered the Commission's August 18, 2023 notice terminating Investigation No. 337-TA-1324 in its entirety based on settlement — see 爱集微/JIWEI and 中国贸易救济信息网, both explicitly identifying Lenovo Group, Lenovo (U.S.) and Motorola Mobility as respondents and noting that Maxell had already dropped U.S. 8,170,394, 10,129,590 and 10,244,284 earlier in 2023. Neither mentions IPR2022-00930. Separately, Maxell itself has characterized the W.D. Tex. case as resolved by settlement in later PTAB filings — its petition papers in the Samsung dispute list "Huawei and Lenovo: Secured settlements after initiating litigation," citing Maxell, Ltd. v. Lenovo Grp. Ltd., No. 6:21-cv-01169 (W.D. Tex.), as reproduced in a PTAB petition exhibit. No outlet — trade or otherwise — has reported the financial terms, royalty rate, or scope of the Maxell–Lenovo license. No damages figure was ever sought or awarded in the IPR, and I found no reported number anywhere.

Where coverage is thin, and what that means

There is no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, Patently-O, or JD Supra piece on IPR2022-00930 that I could locate, and no analyst take, executive statement, or industry reaction quoted anywhere in connection with it. That absence is itself the finding: this was one petition in a multi-front licensing campaign that settled before any final written decision, so it produced no merits ruling for the press to analyze. On the record I could verify, the docket shows a Joint Motion to Terminate filed June 23, 2023 (Paper 24), consistent with your metadata's July 10, 2023 termination, and a Panel Change Order on May 2, 2023 (Paper 20) — administrative events, not newsworthy ones. I should flag two verification limits: I could not confirm the institution decision date from a primary source before hitting my tool cap, and I could not open the 2022-08-19, 2022-08-25 or 2023-10-25 items on your list. The three that predate June 2022 (2021-11-17, 2021-04-16, 2020-03-25) were published before this petition existed and therefore cannot discuss it — though the 2021-11-17 roundup could conceivably reference the original November 12, 2021 W.D. Tex. complaint, which I did not verify. The 2023-10-25 "Practice Tips for Achieving Success in Inter Partes Reviews" piece is a practitioner how-to; if it discusses this case at all it would be as an anonymized example, and I could not confirm that it does.

Sources

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 the petitioners (Motorola/Lenovo) in IPR2022-00930 and related proceedings.

Counsel of Record — IPR2022-00930

Framing / threshold point. Before naming anyone, one clarification matters for this task: IPR2022-00930 is a PTAB inter partes review, not an Article III infringement action, so there is no "plaintiff" in the technical sense. The case metadata maps the party labels this way:

  • "Plaintiff(s)" = the petitioner group — Motorola Mobility LLC; Motorola Mobility Holdings, LLC; Lenovo Group Limited; Lenovo (United States), Inc.
  • "Defendant" = Maxell, Ltd. (patent owner / respondent)

That labeling is inverted relative to the underlying district-court campaign, where Maxell is the plaintiff (Maxell, Ltd. v. Lenovo Group Ltd., No. 6:21-cv-01169, W.D. Tex.). Treating "counsel representing the plaintiff" as counsel for the petitioners (Motorola/Lenovo) — the party aligned as plaintiff in this record — here is what I can and cannot support.

Petitioner (Motorola/Lenovo) side — NOT CONFIRMED

I could not verify from the public sources reachable to me the names, firms, or roles of the attorneys who signed the petition or the mandatory notices for IPR2022-00930. I will not list names there. What I can say with sourcing:

  • The PTAB case summary for IPR2022-00930 (via Patexia) identifies the Board panel — Administrative Patent Judges Kara L. Szpondowski (writing), Lynne E. Pettigrew, and Kevin C. Trock — but aggregator summaries of this kind list judges, not party counsel.
  • The Patexia document list surfaces the Patent Owner's mandatory notices (Paper 4, filed 2022-06-28; Paper 14, 2023-01-25; Paper 21, 2023-05-15) but did not expose the petitioner's power of attorney or mandatory-notice signatories in the snippets returned.
  • The instruments that would name petitioner counsel are IPR2022-00930 Paper 1 (petition, signature block), the Petitioner's Power of Attorney under 37 C.F.R. § 42.10(b), and Petitioner's Mandatory Notices under § 42.8(b)(3) (filed ~June 2022). I reached no page showing those filings' contents, so I cannot give you a lead/back-up designation for this IPR.
  • One corroborating but incomplete data point: in a related Lenovo/Motorola IPR, IPR2023-00694 (U.S. 7,010,330), petitioners "LENOVO (UNITED STATES) INC. and MOTOROLA MOBILITY LLC" filed a formal "Power of Attorney for Petitioner Motorola Mobility LLC" ([docketalarm record](https://www.docketalarm.com/cases/PTAB/IPR2023-00694/LENOVO_%28UNITED_STATES%29_INC/docs/03-07-2023-Petitioner/Notice__Power_of_Attorney-3-POA_for_Motorola_Mobility_

Defendant representatives

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

I'll research counsel for the parties. Note the framing wrinkle: in IPR2022-00930 the "defendant" in the conventional sense is the patent owner, Maxell, Ltd. (the petitioner is Motorola/Lenovo). But because the prompt says "defendant(s)" and this IPR sits inside the parallel Maxell v. Lenovo litigation, I'll identify (a) Maxell's PTAB counsel of record in the IPR and (b) the Motorola/Lenovo side's counsel in the related fora, so both readings are covered.

Let me pull the actual papers filed in IPR2022-00930 — the patent owner's mandatory notices and the petitioner's power of attorney — plus the parallel district court docket.

Let me try to retrieve the actual IPR2022-00930 papers (Patent Owner's Mandatory Notices and Petitioner's Power of Attorney) to confirm counsel specific to this proceeding.

I hit the tool-use cap before I could open the actual IPR2022-00930 papers, so I'll give you what the record supports and flag precisely what I could and could not verify.

Counsel of Record

Threshold framing: who is the "defendant" here?

IPR2022-00930 is not a district court case, so it has no defendant. It is a PTAB inter partes review. The parties are:

  • Petitioner (the "plaintiff" side): Motorola Mobility LLC, with Motorola Mobility Holdings LLC, Lenovo Group Limited, and Lenovo (United States) Inc. as real parties in interest.
  • Patent Owner (the party defending the patent — the functional equivalent of a "defendant"): Maxell, Ltd. (U.S. Patent 6,928,292).

So for the question as asked in the IPR, Maxell, Ltd. is the party being defended, and its PTAB counsel is the answer. I've also included the Motorola/Lenovo side's counsel in the linked proceedings, since "defendant" is ambiguous across the campaign.

Important verification caveat: I was able to retrieve the Patent Owner's mandatory notices / power-of-attorney designations for Maxell in the sibling Motorola-v.-Maxell IPRs (notably IPR2022-01348) and Maxell's counsel across the campaign, but I was not able to open the filed text of IPR2022-00930 Papers 4, 5, 14, and 21 themselves (the Patent Owner's Mandatory Notices and Power of Attorney; the Petitioner's Power of Attorney at Paper 2). The designations below for IPR2022-00930 specifically are therefore inferred from the same team appearing on the same docket family, and should be confirmed against the 00930 papers before being cited as that proceeding's formal record.


1. Maxell, Ltd. — Patent Owner ("defendant" side) — Mayer Brown LLP

Mayer Brown is Maxell's lead PTAB and appellate firm across the Lenovo/Motorola and related Maxell campaigns. The designation in the companion Motorola-v.-Maxell IPR reads:

Role Attorney Firm / Office Notes
Lead counsel Robert G. Pluta (Reg. No. 50,970) Mayer Brown LLP — 71 S. Wacker Dr., Chicago, IL Maxell's lead PTAB attorney in the Motorola/Lenovo IPRs; also appeared for Maxell as respondent at the Federal Circuit in In re Lenovo (U.S.) Inc., No. 23-121.
Back-up counsel Amanda S. Bonner (Reg. No. 65,224) Mayer Brown — Chicago, IL Long-running Maxell PTAB team member.
Back-up counsel Luiz Miranda (Reg. No. 74,762) Mayer Brown — Chicago, IL Maxell PTAB team.
Back-up counsel James A. Fussell III (Reg. No. 54,885) Mayer Brown — 1999 K St. NW, Washington, D.C. Also on Maxell's Federal Circuit appearance in No. 23-121.
Back-up counsel Bryan C. Nese (Reg. No. 66,023) Mayer Brown — Washington, D.C. Maxell PTAB team.
Back-up counsel Saqib J. Siddiqui (Reg. No. 68,626) Mayer Brown — Washington, D.C. Mayer Brown's bio for Siddiqui describes the Maxell smartphone campaign as having "resulted in a settlement on the eve of the ITC hearing."
Additional (appellate) Jamie B. Beaber; Kfir B. Levy Mayer Brown — Washington, D.C. Entered appearance for Maxell in In re Lenovo (U.S.) Inc., No. 23-121 (Fed. Cir.), appeal from W.D. Tex. 6:21-cv-01169.
Additional (appellate/other) Tiffany A. Miller (listed on the Maxell side in No. 23-121 docket) Also appears in DLA Piper contexts elsewhere; verify her firm for this matter — I did not confirm it.
Possible additional back-up Scott M. Kelly (65,121); Christopher L. McKee (32,384); Joshua Davenport (72,756) Banner & Witcoff, Ltd. — 1100 13th St. NW, Washington, D.C. These three were added as additional back-up counsel in Maxell's May 23, 2023 updated mandatory notices in IPR2022-01348. Because IPR2022-00930 also has a May 15, 2023 updated mandatory notice (Paper 21), the same addition likely appears there, but I could not confirm it for 00930.
Also seen on Maxell-side service lists Daniel Kim Mayer Brown Appears on Maxell service lists in related matters.

Why this matters to the '292 IPR: the '292 patent (GPS/cellular position determination) sits in the "location services" family that Maxell asserted against Motorola-branded phones, and the same Mayer Brown team ran Maxell's claim-construction defense of the '292 patent in W.D. Tex. (Maxell's responsive/reply claim-construction briefs citing Judge Schroeder's prior Hitachi Maxell v. Huawei construction of the '292 patent).


2. Motorola Mobility / Lenovo — Petitioner side — DLA Piper LLP (US)

In the PTAB, Motorola/Lenovo's filings are signed by DLA Piper, with in-house sign-off from Motorola:

Role Attorney Firm / Office Notes
Lead counsel Jennifer Librach Nall (USPTO Reg. No. 57,053) DLA Piper LLP (US) — 303 Colorado St., Suite 3000, Austin, TX Lead petitioner counsel in the Motorola-v.-Maxell IPR family (e.g., IPR2023-00110); service email in these cases is Jennifer.Nall@us.dlapiper.com.
Back-up counsel Benjamin Yaghoubian DLA Piper — 2000 Avenue of the Stars, Los Angeles, CA Named back-up on Motorola's petitioner power of attorney.
Back-up counsel Peiyao Zhang DLA Piper — 2000 University Ave, Palo Alto, CA Named back-up on Motorola's petitioner power of attorney.
Other petitioner-side counsel Robert Buergi (Reg. No. 58,125) DLA Piper — 845 Texas Ave., Suite 3800, Houston, TX Signed petitioner-side papers in the Motorola/Maxell IPR family; service block routes to the Mayer Brown Maxell team.
In-house Shawnna M. Yashar — Director, IP Litigation Motorola Mobility LLC (in-house) Signed Motorola's petitioner power of attorney (as the authorized corporate signatory).

DLA Piper's broader Lenovo/Motorola defense team (seen in the parallel ITC/related patent defense, e.g., ITC Inv. No. 337-TA-1308 on behalf of respondents Apple, Lenovo, Microsoft, and Motorola): Sean C. Cunningham (San Diego), Helena Kiepura (D.C.), Erik Fuehrer (East Palo Alto), Michael Jay and Nandan Padmanabhan (Los Angeles), Erin McLaughlin and Stephanie Piper (New York). Note this counsel list is from a different ITC investigation, so treat it as the firm's Lenovo/Motorola team rather than as counsel of record in 00930.


3. The parallel litigation fora (context for "defendant" counsel)

*N.D. Ill. DJ action, Motorola Mobility LLC v. Maxell, Ltd., No. 1:22-cv-00256* — Motorola was the plaintiff (declaratory judgment), Maxell the defendant:

  • Plaintiff Motorola: DLA Piper — Ferlillia V. Roberson (Chicago), with Sean C. Cunningham and Erin P. Gibson admitted pro hac vice (docket entries granting their PHV motions).
  • Defendant Maxell: Mayer Brown (same team, per the campaign-wide alignment).

*W.D. Tex., Maxell, Ltd. v. Lenovo Group Ltd., et al., No. 6:21-cv-01169-ADA* — Maxell plaintiff; Lenovo/Motorola defendants:

  • Maxell's counsel: Craig D. Cherry, Justin Wayne Allen, Mark D. Siegmund (Steckler Wayne Cochran Cherry, PLLC); Geoff Culbertson, Kelly B. Tidwell (Patton, Tidwell & Culbertson, LLP); Michael Chibib (Bracewell LLP); plus later appearances by Paige Wright and Corbin J. Cessna. These are Maxell's local/regional Texas counsel.
  • Lenovo/Motorola's counsel: docket lists John Michael Guaragna as a defendant-side attorney. (I did not independently confirm Guaragna's firm for this matter — treat with caution; he appears in the Lenovo/Motorola orbit.)
  • Motorola/Lenovo also pursued mandamus (In re Lenovo (U.S.) Inc., Fed. Cir. No. 23-121), where John M. Guaragna and Michael Chibib are listed on the Lenovo/Motorola side in the docket metadata. Note the potential name overlap: Michael Chibib is elsewhere described as Maxell's Bracewell counsel — the Federal Circuit docket coding may be unreliable here, so I flag