Motorola Mobility LLC v. Maxell, Ltd.

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.

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.

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).

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.