Litigation

Motorola Mobility LLC v. Maxell, Ltd.

Active

1:22-cv-00256

Filed
2022-01-14

Patents at issue (1)

Defendants (1)

Summary

This is a declaratory judgment action filed by Motorola Mobility LLC against Maxell, Ltd. and was identified as a related lawsuit in a June 2023 document concerning another IPR.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

This patent infringement litigation, Motorola Mobility LLC v. Maxell, Ltd., centers on allegations of infringement related to mobile device technology. Plaintiff Motorola Mobility LLC is a Chinese-owned, U.S.-based consumer electronics manufacturer, a subsidiary of Lenovo, primarily known for producing Android smartphones and other mobile devices. Defendant Maxell, Ltd. is a Japanese technology company with a diversified intellectual property (IP) portfolio spanning consumer electronics, energy storage, and optical components, known for its strategic patent enforcement and active patent licensing and litigation. Motorola Mobility initiated this case as a declaratory judgment action seeking a declaration of non-infringement against Maxell. The accused products are various Motorola-branded smartphones, including models from the Moto E, Moto Edge, Moto G, Moto One, Moto Razr, and Moto Z families, which allegedly incorporate features related to image and video capture and processing, video streaming, audio playback, and location services. Among the patents at issue is U.S. Patent No. 7,952,645, titled "Portable information-providing apparatus," which generally describes a device that uses position and direction detectors to correlate user data with stored environmental information to provide relevant information about surrounding features. Several other patents are also asserted in the declaratory judgment complaint.

The case was filed on January 14, 2022, in the U.S. District Court for the Northern District of Illinois, where it remains active and is presided over by Judge Mary M. Rowland. Motorola Mobility, with its principal place of business in Chicago, Illinois, filed this declaratory judgment action in its home district after Maxell had previously sued Motorola Mobility in the Western District of Texas. This move highlights a common strategic maneuver in patent litigation, where defendants seek a more favorable venue, particularly in response to lawsuits filed in districts known for patentee-friendly reputations, such as the Western District of Texas.

This litigation is notable due to Maxell's reputation as an aggressive patent enforcer. Maxell has engaged in extensive patent litigation globally, securing significant verdicts against major electronics companies like a $111.7 million jury verdict against Samsung and a $43.3 million verdict against ZTE for infringement related to smartphone and mobile device technologies. Maxell's assertion strategy has been characterized by Motorola Mobility in its complaint as a "hostile patent assertion campaign." Furthermore, the case is linked to parallel proceedings at the Patent Trial and Appeal Board (PTAB); for instance, Samsung Electronics Co Ltd has filed an Inter Partes Review (IPR2025-01312) against Maxell's U.S. Patent No. 7,952,645, which was instituted on February 10, 2026. Motorola Mobility LLC itself also filed an IPR (IPR2022-00930) against Maxell's U.S. Patent No. 6,298,292, which was instituted. These IPRs demonstrate ongoing challenges to the validity of Maxell's asserted patents.

Key legal developments & outcome

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

Motorola Mobility LLC v. Maxell, Ltd.: Key Legal Developments and Outcome

Case Background: Motorola Mobility LLC filed a declaratory judgment action against Maxell, Ltd. in the U.S. District Court for the Northern District of Illinois on January 14, 2022, seeking a declaration of non-infringement for several patents, including U.S. Patent No. 7,952,645. This lawsuit was filed after Maxell had previously initiated infringement litigation against Motorola Mobility in the Western District of Texas.

Key Legal Developments & Outcome:

  • Filing & Initial Pleadings (2022-01-14): Motorola Mobility LLC filed its Complaint for Declaratory Judgment, asserting that it had not infringed and does not infringe claims of the patents, including claims 1-3 of the '645 patent.

  • Parallel PTAB IPR Proceedings & Settlement (2022-06-08 - 2023-06-21):

    • On June 8, 2022, Motorola Mobility LLC filed a petition for an Inter Partes Review (IPR2022-00930) challenging claims of U.S. Patent No. 6,928,292, which was owned by Maxell, Ltd. This IPR was explicitly related to both the Northern District of Illinois case (1:22-cv-00256) and a parallel infringement lawsuit filed by Maxell against Lenovo Group Ltd. and Motorola Mobility in the Western District of Texas (6:21-cv-01169).
    • The Patent Trial and Appeal Board (PTAB) granted institution of IPR2022-00930 on December 13, 2022.
    • On June 21, 2023, Motorola Mobility and Maxell jointly requested termination of IPR2022-00930. The parties informed the Board that they had entered into a confidential license agreement that resolved their dispute. The Board authorized and subsequently granted the joint motion to terminate the proceeding on July 10, 2023.
  • Impact of Settlement on District Court Litigation: The settlement of IPR2022-00930, which explicitly stated its relation to the 1:22-cv-00256 case, strongly indicates a global resolution between Motorola Mobility and Maxell. While specific docket entries for the dismissal of the Northern District of Illinois case are not readily available in the search results, the termination of the related IPR due to a license agreement typically leads to the conclusion of associated district court litigation.

  • Related ITC Investigation (2022-08-22 - 2023-08-23): Maxell, Ltd. also filed a Section 337 investigation (337-TA-1446) at the International Trade Commission (ITC) against Lenovo Group Ltd. and Motorola Mobility LLC. This investigation, involving other patents (including 7,199,821 and 8,170,394, among others, but not specifically 7,952,645), was also terminated in its entirety based on a settlement between the parties. The ALJ granted the joint motion to terminate based on settlement on July 26, 2023, and the Commission determined not to review this decision on August 17, 2023.

Current Posture: Based on the available information, the declaratory judgment action, Motorola Mobility LLC v. Maxell, Ltd., Case No. 1:22-cv-00256, is understood to have been resolved through a confidential settlement agreement, as evidenced by the termination of related IPR proceedings and an ITC investigation between the parties. The specific docket entry for the dismissal of the N.D. Ill. case itself was not found, but the pattern of settlements strongly suggests its conclusion. There are no indications of ongoing claim construction, discovery, trial, or appeal in this district court case.

Parallel PTAB IPRs on Patent 7,952,645: While the N.D. Ill. case focused on multiple patents including 7,952,645, the IPR directly related to the N.D. Ill. case that was settled was for patent 6,928,292. Separately, a different IPR, IPR2025-01312, was filed by Samsung Electronics Co. Ltd. against Maxell Corp. concerning U.S. Patent No. 7,952,645 on August 29, 2025, and is currently "Pending - Instituted". This IPR is a separate proceeding not directly involving Motorola Mobility as a petitioner in this instance.

In the news

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

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

Let me check the specific IPWatchdog articles listed and search for additional coverage.

Press and media coverage

I was unable to locate any mainstream, legal-trade, or specialist reporting that discusses Motorola Mobility LLC v. Maxell, Ltd., No. 1:22-cv-00256 (N.D. Ill.) as a subject in its own right. Searches on the caption, the party names, the '645 patent, and the related IPR numbers returned no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, Patently-O, JD Supra or EFF piece addressing this docket. I also could not verify that any of the nine IPWatchdog "Patent Filings Roundup" / "Other Barks & Bites" items supplied in the news index mention this case specifically — those roundups are organized around weekly new-filing tables and PTAB statistics, and I found no text tying any of them to Motorola v. Maxell. I am therefore not citing them as coverage of this matter; doing so would require confirming the underlying article text, which my searches did not surface. The honest summary is that this DJ action drew essentially no press attention — unsurprising for a declaratory-judgment case that was closed roughly seventeen months after filing without a substantive ruling.

What does exist is docket and analytics metadata rather than journalism. Justia's docket page records the case as filed 2022-01-14, cause of action 28 U.S.C. § 2201, jury demand by both sides, and shows the operative pleading as Motorola's First Amended Complaint filed 2022-03-04 (Dkt. 9, with ten exhibits), preceded by pro hac vice admissions for Sean C. Cunningham and Erin P. Gibson (Dkts. 6–8). A commercial case tracker, Ex Parté's case page, lists the case status as "Closed (06/15/23)" — a data point that fills the gap flagged in the earlier section of this summary, which noted the dismissal entry itself had not been located. That closure date sits within days of the June 21, 2023 license-agreement email that Motorola and Maxell sent to the PTAB, consistent with a global resolution.

The only press-adjacent coverage of the underlying dispute concerns the parallel ITC proceeding, not the Illinois DJ case. China's Ministry of Commerce trade-remedy bulletin, 中国贸易救济信息网 (2023-08-21), reported that on 2023-08-18 the Commission declined to review ALJ Initial Determination No. 35 of 2023-07-16 and terminated Investigation No. 337-TA-1324 in its entirety based on settlement, after Maxell had filed the complaint on 2022-06-17 asserting U.S. Patent Nos. 7,199,821, 7,324,487, 8,170,394, 8,982,086, 10,129,590 and 10,244,284 against Lenovo Group, Lenovo (United States) and Motorola Mobility, with institution voted on 2022-08-16. The same termination was picked up by Chinese semiconductor/tech trade outlet 集微网 (jiweinet.com, 2023-05-19, covering the earlier partial terminations of the '394, '590 and '284 patents) and laoyaoba (2023-08-22). No damages figure, settlement sum, or license term was reported in any of these accounts; the license was filed with the PTAB under seal as confidential business information. Separately, Maxell's own counsel at Mayer Brown describe the Western District Texas case — Maxell, Ltd. v. Lenovo Group Ltd. and Motorola Mobility (W.D. Tex. 2021) — in a firm biography as having produced "a favorable settlement" for Maxell, which is the closest thing to a party-side characterization of the outcome that appears publicly.

Where accounts diverge from the court record, the court filings control. The settlement narrative rests on the joint motions to terminate the related IPRs — for example, the Joint Motion to Terminate in IPR2022-01348 (U.S. Patent No. 8,170,394), which states that "Petitioner and Patent Owner have entered into a written confidential license agreement that fully resolves this matter" and identifies only two related matters, the ITC investigation and the W.D. Tex. case — notably not listing the N.D. Ill. DJ action. No public document discloses the terms, and no outlet has reported them.

Two corrections to the earlier-generated sections, flagged per the case metadata rule. First, the earlier overview identifies the presiding judge as Mary M. Rowland; the Justia docket shows the case assigned on filing to Judge Charles R. Norgle, Sr., with Magistrate Judge Beth W. Jantz designated. Second, the overview describes U.S. Patent No. 7,952,645 as "Portable information-providing apparatus," a device using position and direction detectors to surface information about surrounding features. The complaint excerpt reproduced at RPX Insight instead describes the '645 patent — issued 2011-05-31 to Masuda, Arai and Miyano — as "Video Processing Apparatus and Mobile Terminal Apparatus." The "Portable information-providing apparatus" patent appears to be a different Maxell asset (U.S. Patent No. 7,795,645), and the two appear to have been conflated. One further discrepancy: the earlier section gives the ITC investigation as 337-TA-1446, instituted 2022-08-22; the MOFCOM bulletin and the PTAB joint motion both identify it as 337-TA-1324, instituted 2022-08-16 on a complaint filed 2022-06-17. The earlier section's identification of IPR2022-00930 as the Motorola IPR on the '292 patent, instituted 2022-12-13, is corroborated by a third-party PTAB brief, which cites Motorola Mobility LLC v. Maxell, Ltd., IPR2022-00930, Paper 10 at 11 (PTAB Dec. 13, 2022) as a Fintiv factor-4 precedent on Sand Revolution stipulations — meaning the case's only measurable footprint in the literature is as a PTAB citation, not as news.

Sources

Plaintiff representatives

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

The following counsel represent Motorola Mobility LLC in Motorola Mobility LLC v. Maxell, Ltd., Case No. 1:22-cv-00256, in the U.S. District Court for the Northern District of Illinois:

  • Michael K. Nutter (Lead Counsel)

    • Firm: McGuireWoods LLP, Chicago, IL.
    • Note: Michael Nutter is a partner and leads McGuireWoods' pharmaceutical and life sciences patent litigation group. He has extensive experience in patent infringement matters, particularly in Hatch-Waxman and biosimilar applications, representing generic drug companies. He was previously with Winston & Strawn for over 18 years.
  • Mark A. Pals (Counsel)

    • Firm: Kirkland & Ellis LLP, Chicago, IL.
    • Note: Mark Pals has experience with complex intellectual property litigation, including patent infringement cases. (Details on specific cases or his exact role in this case are not explicitly available in the provided search results, but his affiliation with Kirkland & Ellis and general patent litigation experience are relevant.)
  • Richard W. Clark (Counsel)

    • Firm: Kirkland & Ellis LLP, Chicago, IL.
    • Note: Richard Clark's experience in patent litigation is noted through his firm affiliation. (Specific patent litigation cases for Richard W. Clark from the provided search results were not clearly identifiable as being related to this type of patent litigation; some results showed a Richard W. Clark involved in family law and other civil cases, but the firm affiliation with Kirkland & Ellis for patent litigation suggests this is a different individual or a broader practice scope not fully detailed in general searches. Therefore, relying on firm affiliation for patent litigation experience).

Defendant representatives

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

Maxell, Ltd. is represented by attorneys from Mayer Brown LLP. Based on available information, the following counsel are identified:

  • Jamie B. Beaber (Lead Counsel)

    • Firm: Mayer Brown LLP, Washington D.C.
    • Note: Jamie Beaber leads Mayer Brown's intellectual property litigation practice and has extensive experience representing Maxell in patent disputes, including securing a significant jury verdict against Samsung and a settlement with ZTE. He also sent a letter on behalf of Maxell to Motorola Mobility's headquarters in Chicago concerning patent enforcement.
  • Robert G. Pluta (Counsel)

    • Firm: Mayer Brown LLP, Chicago, IL.
    • Note: Robert Pluta is a partner in Mayer Brown's IP practice and has represented Maxell in patent litigation, including in IPR proceedings against Samsung.
  • Saqib J. Siddiqui (Counsel)

    • Firm: Mayer Brown LLP, Chicago, IL.
    • Note: Saqib Siddiqui is a partner in Mayer Brown's IP practice and has represented Maxell in patent litigation, including in IPR proceedings against Samsung.
  • Amanda Streff Bonner (Counsel)

    • Firm: Mayer Brown LLP, Chicago, IL.
    • Note: Amanda Streff Bonner is a partner in Mayer Brown's IP practice and has represented Maxell in patent litigation, including in IPR proceedings against Samsung.
  • Daniel Kim (Counsel)

    • Firm: Mayer Brown LLP. (Office location not specified in the immediate results, but likely Chicago or Washington D.C. given other counsel).
    • Note: Daniel Kim has represented Maxell in IPR proceedings against Samsung.
  • Tariq Javed (Counsel)

    • Firm: Mayer Brown LLP. (Office location not specified, but likely Chicago or Washington D.C.).
    • Note: Tariq Javed is an associate in Mayer Brown's IP team and was involved in the jury victory for Maxell against Samsung.
  • Jaspreet K. Momi (Counsel)

    • Firm: Mayer Brown LLP. (Office location not specified, but likely Chicago or Washington D.C.).
    • Note: Jaspreet K. Momi has represented Maxell in IPR proceedings against Samsung.