Litigation
Samsung Electronics Co., Ltd. et al. v. Maxell, Ltd.
Final Written Decision issued; on appealIPR2024-00867
- Filed
- 2024-05-01
- Terminated
- 2025-11-06
Patents at issue (1)
Defendants (1)
Summary
Samsung petitioned for inter partes review of claims of U.S. 10,176,848. The PTAB instituted the review and issued a Final Written Decision on Nov. 6, 2025; the decision was appealed to the Federal Circuit as Appeal No. 2026-1625.
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 the PTAB docket and the parallel district court litigation.
Now let me pin down the IPR outcome, the appeal, and the parallel PTAB proceedings.
Let me verify the Final Written Decision outcome and the Director Review posture with more precise sources.
Case Overview and Background
The parties. The dispute pairs Samsung Electronics Co., Ltd. (Suwon, Korea) and its U.S. subsidiary [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) (Ridgefield Park, N.J.) against Maxell, Ltd. (Tokyo). Samsung is the archetypal operating-company defendant — the world's largest smartphone and memory maker, with a U.S. distribution arm that sells the accused devices. Maxell is also an operating company, not a classic NPE/PAE: it began life in 1960 as Hitachi Maxell, was renamed Maxell Holdings and then Maxell, Ltd. in the 2019 reorganization, and still manufactures coin-cell batteries, storage media, projectors and functional materials. What makes it look PAE-like in this litigation is the enforcement program built on its inherited Hitachi consumer-electronics patent portfolio. Press reporting (Samsung-centric outlet SamMobile, citing Korean coverage) states that Samsung took a ten-year license to a set of Maxell predecessor patents beginning in 2011, declined to renew when it expired around 2021, and was then sued in multiple fora after Maxell concluded Samsung's continued use was unlicensed. That license-history narrative comes from secondary journalism rather than a court opinion and should be treated as background, not established fact. In this PTAB proceeding the roles invert: Maxell is the patent owner/respondent and Samsung the petitioner, seeking to clear the patent that Maxell had asserted against it in district court.
The technology and the patent at issue. U.S. Patent No. 10,176,848 ("Recording and reproducing apparatus and method thereof") issued January 8, 2019, claims a May 19, 2008 priority date, lists Mari Yoshida as an inventor, and carries a "C1" reexamination certificate — i.e., it had already survived an ex parte reexamination (reexam 90/014,641, filed by Apple per patent-database records) and an earlier Apple IPR petition (IPR2021-00367). Technically, the '848 patent is a video-camera/smartphone-camera capture-and-playback patent: the apparatus records image information along with "chapter management information" (chapter ID, start-frame position, importance level), runs face recognition on captured frames, sets an importance level for each chapter based on how often a user-designated "VIP" face appears, and then selectively reproduces chapters by importance level, operating in one of a first and a second reproducing mode (claim limitation [11a] of the asserted independent claim). The accused functionality in the parallel litigation is Samsung's face-recognition/face-tagging and video chapter/highlight and gallery playback features in Galaxy smartphones and tablets, along with SmartThings hubs, TVs and home appliances. Samsung challenged claims 11, 12, 16, 17, 19, 20 and 84; claims 11 and 12 were the ones Maxell actually tried against Samsung, and its damages expert attributed roughly $28.2 million of the eventual verdict to the '848 patent.
Procedural posture — and why it matters. This is not a district court case; it is an IPR, though it is inseparable from the litigation. Samsung filed the petition on May 1, 2024 (IPR2024-00867) against the backdrop of Maxell, Ltd. v. Samsung Electronics Co., Ltd., No. 5:23-cv-00092-RWS (E.D. Tex.), filed in September 2023 in the Texarkana Division before Judge Robert W. Schroeder III (with Magistrate Judge J. Boone Baxter handling pretrial matters) — a division and judge assignment that mattered because it placed the dispute outside the Marshall/Gilstrap track that dominates E.D. Tex. patent practice. The Board instituted on November 7, 2024 (Paper 9) over Maxell's § 325(d) and § 314(a)/Fintiv arguments, resting institution solely on Samsung's September 12, 2024 Sotera stipulation (Paper 8) without weighing the remaining Fintiv factors; Maxell sought Director Review (Paper 11), which was denied on January 2, 2025 (Paper 13), and sought Director Review a second time (Paper 23) after the Vidal Guidance was rescinded — a sequence that made this case a frequently cited data point in 2025 commentary on the collapse of discretionary-denial practice. A three-judge panel (Trock writing, with McMillin and Melvin) held an oral hearing on August 14, 2025 and issued the Final Written Decision on November 6, 2025 (Paper 43), finding all seven challenged
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 metadata describes a PTAB IPR (IPR2024-00867), not a district court case — so I'll cover the IPR track in detail and map the parallel district court litigation (Maxell v. Samsung) that spawned it.
Good — I now have the parallel district court picture. Let me drill into the IPR's own record: institution, FWD outcome on each claim, Director Review, and the appeal.
Now let me pin down the IPR's internal timeline (FWD paper, Director Review of the FWD, appeal status) and the district court docket specifics.
Framing note (important)
The metadata's caption and case number point to a PTAB inter partes review, not a district court action: Samsung Elecs. Co. v. Maxell, Ltd., IPR2024-00867, on U.S. Patent 10,176,848. So the "complaint → Markman → trial → JMOL" checklist you asked for does not exist inside IPR2024-00867. It exists in the companion E.D. Tex. case that the IPR was filed to counter-program: Maxell, Ltd. v. Samsung Elecs. Co., No. 5:23-cv-00092-RWS (E.D. Tex., Texarkana Div., Judge Robert W. Schroeder III). I've therefore set out two parallel tracks and then the interaction between them — which is where the real strategic story is.
Track A — IPR2024-00867 (the '848 patent IPR)
Petition filed 2024-05-01. Samsung challenged claims 11, 12, 16, 17, 19, 20, and 84 on three obviousness grounds: Ground 1 — Nozaki + Haitani (claims 11, 12, 16, 17, 19, 20); Ground 2 — Nozaki + Haitani + Graham (claim 84); Ground 3 — Nozaki + Haitani + Kim (claim 84). Claim 84 is a claim added in the earlier ex parte reexamination (hence the "B2, C1" patent designation and Ex. 1002 reexam certificate). Panel: Trock (opinion author), McMillin, Melvin; Samsung counsel DLA Piper (Minutoli, Heintz), Maxell counsel Mayer Brown (Pluta, Bonner, Siddiqui).
Discretionary-denial fight — the pivotal early ruling.
- 2024-08-12 (Paper 7): Maxell's POPR argued denial under § 325(d)/Advanced Bionics, contending Nozaki was before the examiner at both prosecution and reexam, Haitani before the reexam examiner, and Graham/Kim merely cumulative.
- 2024-09-12 (Paper 8): Samsung filed a Sotera stipulation — the "complex and diverse litigation" maneuver. Per Squire Patton Boggs' analysis, the Board instituted based solely on the stipulation, without applying the other Fintiv factors, and rejected § 325(d).
- 2024-11-07 (Paper 9): Institution granted on all seven claims.
- 2024-11-21 (Paper 11): Maxell requested Director Review of institution; denied 2025-01-02 (Paper 13).
- 2025-03-10 (Paper 23): Maxell filed a second Director Review request after rescission of the Vidal Fintiv Guidance, invoking the intervening policy shift. This is a notable procedural artifact — a PO effectively re-litigating institution under a changed discretionary-denial regime.
- A 2025-12-01 Board order flagged an ex parte communication to the Office concerning this IPR and Samsung's other Maxell IPRs (disclosed in Samsung's later briefing in IPR2025-01307).
Merits briefing. POR 2025-01-30 (Paper 20) with Dr. Ravin Balakrishnan; Reply 2025-04-24 (Papers 24, Ex. 1017 Bederson reply decl.); Sur-reply 2025-06-05 (Paper 25). The claim-construction dispute was narrow and telling: Maxell proposed "mode" = "an operational state that a system has been switched to" to pry Haitani's "filters" out of the claims; Samsung argued plain meaning and, in the alternative, that the claims fail even under Maxell's construction.
Final Written Decision — 2025-11-06 (Paper 43). All seven challenged claims held unpatentable as obvious. The Board credited Dr. Bederson and expressly rejected Maxell's "filters are not modes" theory, finding Nozaki + Haitani taught limitations [11a]–[11c] and their counterparts in the dependent claims, and that Nozaki + Haitani + Graham (and, alternatively, + Kim) rendered claim 84 obvious with adequate motivation and reasonable expectation of success. Maxell's principal attack — that the Board's institution analysis misconceived § 325(d) and devalued the reexam — was preserved for appeal.
Appeal. Maxell appealed to the Federal Circuit: Maxell, Ltd. v. Samsung Elecs. Co., No. 2026-1625 (Fed. Cir., filed 2026-04-07) (Patexia/Ex Partes dockets; appellant Maxell, Robert G. Pluta of Mayer Brown as appellant counsel). Caveat: I could not verify from a primary source whether the Office denied Director Review of the FWD in this IPR; one aggregator (Arctic Invent) reports denial of Director Review of the FWDs in IPR2024-00735, -00828 and -00867, but attributes the request to Samsung, which is logically backwards here since Samsung won. Treat that attribution as unreliable.
Track B — Maxell v. Samsung, No. 5:23-cv-00092-RWS (the real "litigation")
Filing (Sept. 2023). Maxell's first U.S. action against Samsung, asserting seven patents — 8,073,161; 8,982,086; 10,129,590; 10,176,848; 11,017,815; 11,223,757; 11,445,241 — over SmartThings, Samsung Pay, Quick Share, Bixby, fingerprint unlock, and media apps, across phones, tablets, appliances and hubs. Backstory: a 2011 ten-year license with Hitachi Consumer Electronics (Maxell's former parent) expired in 2021 and Samsung declined to renew, disputing validity. Samsung answered and counterclaimed (declaratory judgment of invalidity/noninfringement) — the standard mirror-image pleading, though I could not pull the answer's docket entry.
Claim construction. The court issued a claim construction order at Docket No. 107, which (as later quoted in the JMOL opinion) construed the '815 patent's "Encrypted" limitation to require that "the second video information is in encrypted form at the time it is received." That construction became outcome-determinative. I could not independently confirm the Markman hearing date or whether Dkt. 107 addressed the other asserted patents' terms.
Pre-trial motions of substance.
- Stay / severance (Jan.–Mar. 2025): After Maxell filed ITC Inv. No. 337-TA-1432 (Dec. 2024) on the '241 patent plus five others, Samsung moved (Jan. 2025) to stay as to the '241 patent and, discretionarily, the '590 patent. Magistrate Judge J. Boone Baxter (Mar. 2025) granted the stay as to '241 (unopposed) but denied it as to '590; the '241 claims were severed into No. 5:25-cv-00034.
- Summary judgment: The court granted SJ of noninfringement to Samsung on the '590 and '757 patents pre-trial, removing them from the case.
- IPR-driven narrowing (2024-11-11) — the key strategic milestone: Samsung affirmatively withdrew its Nozaki/Haitani/Graham/Kim invalidity defenses on the '848 patent in district court, telling the court and Maxell it would no longer assert them. That is the quid pro quo of the Sotera stipulation; it is also why the '848 patent went to the jury with no invalidity defense, and (as a consequence) why post-trial invalidity relief on the '848 was not realistically available.
Trial and verdict. Jury trial in Texarkana; verdict 2025-05-28 on three tried patents:
- '086 — infringed; not proven invalid; $38.1M
- '848 — infringed; $28.2M
- '815 — infringed; not proven invalid; $45.4M
- Total ≈ $111.7M, on a 1% running royalty theory, plus a willfulness finding. Maxell had sought ~$130M.
Post-trial (Rule 50). Samsung moved for JMOL (Dkt. 390). In mid-September 2025 (reported 2025-09-22) Judge Schroeder granted JMOL for Samsung, vacating the $112M verdict: JMOL of noninfringement on all three tried patents, and JMOL of invalidity on two of them. The reasoned opinion was filed under seal; the public JMOL opinion excerpts I reviewed confirm the '815 invalidity ruling (claims 21 and 24 lacked written-description support for the "Encrypted" limitation; the Galaxy S10/Netflix prior-art date dispute) and the '086 claim 1 written-description analysis. The court also made a conditional Rule 50(c)(1) ruling on Samsung's new-trial motion. Inference, flagged: the "two" patents held invalid are almost certainly '086 and '815 (the two on which the jury rejected invalidity), leaving '848 decided on noninfringement only — consistent with Samsung having dropped its '848 invalidity case. No enhancement or fee award survives; I found no ruling on attorney fees or enhanced damages in the public record.
Appeal of the JMOL. Maxell appealed: **Maxell, Ltd. v. Samsung Elecs. Co., No. 202
In the news
What the press has reported about this case, summarized with links to the source articles.
I'll search several angles to find press coverage of this matter.
Now let me look for additional coverage on the verdict, the JMOL, and the PTAB's final written decision.
Let me dig for PTAB-specific coverage, the verdict-day reporting, and the Federal Circuit appeal.
Press coverage of Samsung v. Maxell (IPR2024-00867 / E.D. Tex. 5:23-cv-00092)
The press attention to this dispute has centered almost entirely on the parallel Eastern District of Texas case, not on the IPR itself. Law360 reported on 2025-05-28 that a federal jury in Texas found Samsung owed "about $111.7 million" after finding it infringed patents covering personal electronic device functions owned by Maxell. Patent Lawyer Magazine reported on 2025-06-24 that the $111.7 million verdict covered three patents — including the '848 patent at issue in this IPR, which it described as a "VIP-based smart playback" patent using facial recognition to tag people in recorded video — and framed the case as a cautionary tale about "overlooking expired licenses and underestimating legacy patent portfolios," noting that Samsung's 10-year license (originally with Hitachi, Maxell's former parent) lapsed in 2021 and that Maxell pursued Samsung in the U.S., Germany and Japan. RPX reported on 2025-09-22 that the jury found infringement of the tried claims of the '086, '848 and '815 patents, that the infringement was willful, and that damages broke down as roughly $38.1M for the '086 patent, $28.2M for the '848 patent and $45.4M for the '815 patent — figures it said were "indicat[ive]" of a 1% running royalty per patent through trial. Mondaq likewise reported the $111.7M total and the same per-patent allocation.
The post-trial reversal drew the heaviest coverage. Law360 reported on 2025-09-19 that a Texas federal judge "cleared Samsung" and overrode the jury's May verdict, and The Texas Lawbook reported that U.S. District Judge Robert Schroeder III issued a three-page order granting Samsung's motion for judgment as a matter of law that it had not infringed asserted claims in three patents, while also invalidating asserted claims in two of them. Law360 followed on 2025-09-29 with a story by Dorothy Atkins headlined "Samsung's $112M IP Loss Nixed For 'Conclusory' Testimony," reporting that the judge's rationale was that much of Maxell's expert testimony was "conclusory" and insufficient to support the infringement verdict. RPX noted that the court's reasoning was initially filed under seal and that Judge Schroeder granted JMOL of noninfringement on all three tried patents and invalidity as to two, carried Samsung's JMOL requests on damages and willfulness pending appeal, and conditionally granted a new trial on invalidity. Samsung's counsel at DLA Piper (via AKD Partners' announcement) stated on 2025-10-13 that the court also denied Maxell's requests for enhanced damages, interest and a permanent injunction and "deferred issues of willfulness and damages until after appeal" — a slightly different framing from RPX's account of the damages/willfulness rulings being "carried."
Coverage of the PTAB proceeding itself is thin and largely aggregated. Law360 reported on 2025-10-31 that the PTAB had "invalidated most claims Samsung challenged in two Maxell Ltd. smart device patents, which were the subject of a since-overturned $112 million jury verdict," and on 2025-11-03 that the Board had "thrown out all the claims Samsung challenged in a pair of Maxell Ltd. video processing patents" — items that track the wave of Maxell IPR decisions around the '086 and '848 patents but do not, in the excerpts available, identify IPR2024-00867 by number or address the '848 claims specifically. The only source I found that squarely describes this IPR's outcome is a non-press case-law aggregator, Arctic Invent, which summarizes the Final Written Decision as holding all seven challenged claims (11, 12, 16, 17, 19, 20 and 84) unpatentable as obvious over Nozaki, Haitani, Graham and Kim and adopting a construction of "mode" as "an operational state" — I could not corroborate that summary in any news outlet, and the page itself mislabels the docket as IPR2025-01307, so it should be treated as unverified. Mondaq adds the only reported link between the two tracks: that Maxell filed an appeal of the JMOL ruling but asked the Federal Circuit to stay that appeal pending resolution of the related PTAB proceedings.
A few caveats about the reporting. No mainstream outlet (Reuters, Bloomberg, Ars Technica, The Verge), no law-professor blog (Patently-O), and no IPWatchdog or EFF coverage of this dispute surfaced in my searches — the coverage is trade and litigation-analytics press (Law360, RPX, Texas Lawbook, Mondaq, Patent Lawyer Magazine) plus law-firm and vendor commentary, and none of it reports settlement terms, an injunction, or any executive statement from either Maxell or Samsung. The accounts also diverge in emphasis rather than substance: damages are reported as "$112 million" (Law360, RPX, Texas Lawbook) versus "$111.7 million" (Patent Lawyer Magazine, Mondaq); the Mondaq piece's headline places the discussion in "Judge Gilstrap's Courtroom" even though its Maxell section correctly attributes the rulings to Judge Schroeder; and Samsung's counsel characterizes the relief denied to Maxell (enhanced damages, interest, injunction) while RPX emphasizes that willfulness and damages were deferred rather than decided. I found no press reporting at all on Federal Circuit Appeal No. 2026-1625, so the appeal's status rests on docket metadata rather than news coverage.
Sources
- UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
- UNITED STATES PATENT AND TRADEMARK OFFICE
- UNITED STATES PATENT AND TRADEMARK OFFICE
- UNITED STATES PATENT AND TRADEMARK OFFICE
- TP One
- UNITED STATES PATENT AND TRADEMARK OFFICE
- High Damage Awards In 2025: Judge Gilstrap's Courtroom In The Spotlight - - Maxell v
- Maxell v. Samsung Electronics et al. | Patent Lawsuit 5:23-cv-00092 - Source: Patsnap Litigation Data
- IPR2024-00867, No. 7 POPR filed - Patent Owners Preliminary Response to Petition for Inter Partes... - Exhibits:
- Decision of the Court of First Instance of the Unified Patent Court Local Division Munich delivered on 21 September 2026
- There is at least a genuine dispute of material fact because Maxell’s expert testifies that once a “tag” for a specific person i...
- Samsung did what any party in its position would do: it requested claim charts mapped to specific products and specific features...
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 petitioner/plaintiff side (Samsung) in this matter, plus the parallel district court case.
I have the PTAB-side designations. Now let me confirm the parallel district court and Federal Circuit counsel.
Let me pin down the Federal Circuit appellee counsel and Samsung's local counsel in the parallel E.D. Tex. case.
Bottom line
Two threshold clarifications before the names:
- There is no "plaintiff" in an IPR. IPR2024-00867 is an inter partes review, not a civil action. The party the metadata labels "Plaintiff(s)" — Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. — appears as Petitioner (the moving party). Its counsel of record are the DLA Piper team designated under 37 C.F.R. § 42.10(b), and they are the "plaintiff-side" counsel you're asking about.
- Counsel is publicly designated; nothing is sealed on the PTAB side. The Board's own papers (including the Director's order denying Director Review) print the petitioner's counsel block, so this is verifiable rather than reconstructed. What I could not confirm is the appellee-side counsel in the resulting Federal Circuit appeal — see the last section.
Counsel of record for Petitioners Samsung (the "plaintiff" side) — IPR2024-00867
Per Petitioners' Updated Mandatory Notices, Paper 21 (Jan. 31, 2025) and Updated Power of Attorney (Jan. 21, 2025), the § 42.10 designations are:
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| James M. ("Jim") Heintz (Reg. No. 41,828) | Lead counsel | DLA Piper LLP (US), One Fountain Square, 11911 Freedom Drive, Suite 300, Reston, VA 20190 | Registered patent practitioner; also on the DLA trial team in the parallel E.D. Tex. case that won JMOL overturning the $112M Maxell verdict (Oct. 2025). |
| Gianni Minutoli (Reg. No. 41,198) | Backup counsel | DLA Piper LLP (US), Reston, VA (same address) | Registered practitioner; co-designated petitioner counsel in the Board's caption block alongside Heintz; also on the E.D. Tex. trial team. |
| Martin M. Ellison | Backup counsel (pro hac vice) | DLA Piper LLP (US), 2000 Avenue of the Stars, Suite 400 North Tower, Los Angeles, CA 90067 | Associate. Admitted pro hac vice via his Declaration, Ex. 1016 (Jan. 21, 2025), which states he is "counsel of record in co-pending litigation" on the '848 patent, Maxell, Ltd. v. Samsung Elecs. Co., No. 5:23-cv-00092 (E.D. Tex.). |
Service email designated for petitioners: dla-samsung-maxell@us.dlapiper.com. Lead/backup emails: Jim.Heintz@us.dlapiper.com, Gianni.Minutoli@us.dlapiper.com, martin.ellison@us.dlapiper.com.
The Board's own caption in the Director Review order denying Maxell's request lists "For PETITIONER: Gianni Minutoli, James Heintz, DLA PIPER LLP (US)" — independent confirmation of the two registered practitioners.
In-house contact (not counsel of record): Matthew Bathon, Principal Legal Counsel, Samsung Electronics America, Inc., executed the Jan. 21, 2025 Updated Power of Attorney on Samsung's behalf. He signed as the corporate officer with authority to appoint counsel; I found no indication he entered an appearance before the Board.
Samsung's counsel in the parallel district court case (5:23-cv-00092-RWS)
Worth separating out, because the same DLA team runs both proceedings and the PTAB filings cross-reference the district court case as a related matter (Paper 21, ¶ 2):
- DLA Piper trial team (per DLA's own Oct. 13, 2025 announcement and Law.com's Nov. 12, 2025 "Litigator of the Week" runners-up): partners Sean Cunningham and Erin Gibson (Washington, DC), Erik Fuehrer and Mark Fowler (Palo Alto), Brian Erickson (Austin), Michael Jay (Los Angeles), James Heintz and Gianni Minutoli (Reston), Helena Kiepura (DC); associates Martin Ellison (LA), Sangwon Sung (San Francisco), Paulina Starostka and Benjamin Mueller (Chicago). Erik Fuehrer signed Samsung's Preliminary Election of Prior Art in that case (Dkt. filed June 27, 2024).
- Caveat: this roster is from DLA's press release/Law.com, not a docket-entry-by-docket-entry reconstruction, so it describes the trial team rather than certifying each attorney filed a notice of appearance.
- Local counsel: Harry L. Gillam, Jr. and Melissa Richards Smith, Gillam & Smith, LLP, 303 South Washington Avenue, Marshall, TX 75670 — the firm's standard E.D. Tex. local-counsel block appears on Samsung's filings in the Maxell matter.
The appeal (Fed. Cir. No. 2026-1625) — partial gap
The appeal docket is captioned Maxell, Ltd. v. Samsung Electronics Co., Ltd., filed April 7, 2026, appeal from IPR2024-00867 — i.e., Maxell is the appellant (it lost below) and Samsung is the appellee. The only counsel I could confirm on that docket is Robert G. Pluta of Mayer Brown for the appellant Maxell.
I could not confirm Samsung's appellee counsel of record at the Federal Circuit. Given the PTAB and district court designations it is very likely DLA Piper (Heintz/Minutoli) again, but I am not going to state that as fact without a docket source. Treat the Federal Circuit appellee designation as unverified.
For completeness — opposing counsel (Patent Owner Maxell, the "defendant" side)
Not asked, but useful for context since these are the attorneys signing the papers Samsung is answering: Robert G. Pluta (Reg. No. 50,970, lead), Amanda S. Bonner, and Saqib J. Siddiqui, Mayer Brown LLP (Chicago and Washington, DC), with Tariq Javed admitted pro hac vice as backup in related Maxell/Samsung IPRs. Service: maxell-samsung-service@mayerbrown.com.
Sourcing notes
- Petitioners' Updated Mandatory Notices (Paper 21, Jan. 31, 2025) — counsel table, RPI, related-matter disclosure.
- Samsung Electronics America, Inc.'s Updated Power of Attorney (Jan. 21, 2025) — Heintz/Minutoli/Ellison designations; Bathon signature.
- Ex. 1016, Ellison Declaration (Jan. 21, 2025) — pro hac vice basis, E.D. Tex. counsel-of-record statement.
- USPTO Director's Order denying Director Review in IPR2024-00867 — Board caption listing petitioner counsel.
- DLA Piper press release, "DLA Piper secures victory on behalf of Samsung Electronics Co." (Oct. 13, 2025); DLA Piper, "Litigator of the Week Runners-Up" (Nov. 12, 2025).
- Samsung's Preliminary Election of Prior Art, No. 5:23-cv-00092-RWS (June 27, 2024) — Gillam & Smith local-counsel block, Fuehrer signature.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
I'll research counsel on both tracks — Samsung's district court defense team in E.D. Tex. and its PTAB counsel in this IPR.
Now let me pull the district court docket details and confirm lead counsel designations and local counsel.
Now let me pin down Maxell's PTAB and district court teams, including local counsel and appellate counsel.
Counsel of Record — Who Represents Whom
A threshold note on the caption. The case metadata for this matter labels Samsung as "Plaintiff(s)" and Maxell as "Defendant(s)," which tracks the PTAB caption (Samsung Electronics Co., Ltd. et al. v. Maxell, Ltd., IPR2024-00867), where Maxell is the patent owner/respondent. But the "patent infringement case" in which these parties actually litigate infringement is Maxell, Ltd. v. Samsung Electronics Co., Ltd., No. 5:23-cv-00092-RWS (E.D. Tex.), where the roles invert: Maxell is plaintiff and Samsung is defendant. Because the request is ambiguous, I've covered both sides below, leading with the party the metadata identifies as defendant (Maxell) and then giving the Samsung defense team in the parallel infringement action. No counsel list in either matter is sealed; all names below come from public filings.
1. Maxell, Ltd. — respondent here / plaintiff in E.D. Tex.
Maxell's interests in both tracks are run by the same core team: Mayer Brown LLP as national counsel, with a Texarkana firm as local counsel in the district court.
PTAB counsel of record in IPR2024-00867 (per the Power of Attorney filed May 14, 2024, Paper 6, and Petitioners'/PO's service lists)
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| Robert G. Pluta (Reg. No. 50,970) | Lead counsel | Mayer Brown LLP, Chicago (71 S. Wacker Dr.) | Dean of the team on IPR work — Mayer Brown's bio says he has been lead counsel in over 100 IPR proceedings; former senior IP counsel at Motorola Mobility; Law360 "Rising Star" (2017). |
| Amanda S. Bonner (Reg. No. 65,224) | Back-up counsel | Mayer Brown LLP, Chicago | Long-time Pluta co-counsel on Maxell's PTAB dockets; also appeared in the earlier Apple v. Maxell IPR (IPR2018-00246) mandatory notice. |
| Saqib J. Siddiqui | Back-up counsel | Mayer Brown LLP (Washington, DC) | Named alongside Pluta and Bonner as the Maxell team that won the 2025 Director-review reversal in the related '241/'590 IPRs (Mayer Brown announcement). |
| Tiffany A. Miller | Counsel (courtesy-service list; primarily district-court team) | Mayer Brown LLP, Washington, DC | Appears as a district-court counsel of record for Maxell; copied on PTAB filings. |
| So Ra Ko | Associate | Mayer Brown LLP | Listed on the Maxell PTAB team in the same Director-review matter. |
In-house contact: Tatsuya Yamamoto, General Manager, Maxell, Ltd., executed the patent owner's power of attorney (May 14, 2024) — a signing officer, not counsel of record.
District court counsel of record in 5:23-cv-00092 (per PACER-derived counsel lists)
- Mayer Brown LLP (Chicago and Washington, DC) — including Jamie B. Beaber (described in Maxell's own filings as "Maxell's lead counsel"), Robert G. Pluta, Amanda S. Bonner, Saqib J. Siddiqui, Tiffany A. Miller, Bryan C. Nese, Alan M. Grimaldi, Kfir B. Levy, Michael L. Lindinger, James A. Fussell III, Seth W. Bruneel, Alison T. Gelsleichter, Courtney M. Krawice, Minh Nguyen-Dang, Clark Bakewell, Tariq Javed, Seke Gnahoua Godo.
- Andrew J. Pincus and Nicole A. Saharsky (Mayer Brown, Washington, DC) — appellate specialists; their appearance is consistent with the post-verdict JMOL and Federal Circuit work but I could not confirm their precise role from a filing.
- Patton Tidwell & Culbertson LLP (Texarkana, TX) — Kelly B. Tidwell and Geoffrey Patton Culbertson, the local-counsel pair for the Texarkana Division.
- Tatsuya Koyama — appears in the counsel list, likely Maxell-side Japanese/coordination counsel; role not confirmed.
⚠️ Caveat: the granular district-court name list comes from a Patsnap litigation-data extraction of the PACER docket rather than from PACER directly (paywalled). It is consistent with the PTAB service lists, but individual role designations (who is "lead" vs. "of counsel") in the district court are not stated in the sources I could access. Treat the PTAB designations as firm; treat district-court role labels as inferred.
2. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. — petitioners here / defendants in E.D. Tex.
Samsung is represented by DLA Piper LLP (US) nationwide, with a Texas firm as local counsel in Texarkana.
PTAB counsel of record in IPR2024-00867 (Petitioners' Updated Mandatory Notices, Paper 21, Jan. 31, 2025; updated POAs, Papers 17–18)
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| James M. Heintz (Reg. No. 41,828) | Lead counsel | DLA Piper LLP, Reston, VA (One Fountain Square) | Registered practitioner and the PTAB anchor for all of Samsung's Maxell IPRs; also admitted in the district court action. (Minor docket inconsistency: Paper 16 lists his Reg. No. as 57,053.) |
| Gianni Minutoli (Reg. No. 41,198) | Back-up counsel | DLA Piper LLP, Reston, VA | Signed the Sotera stipulation (Paper 8) and the Oct. 2025 sur-reply; the day-to-day IPR handler. |
| Martin M. Ellison | Back-up counsel (admitted pro hac vice via the provisionally-recognized-PTAB-attorney route, Paper 16) | DLA Piper LLP, Los Angeles | Associate elevated to PTAB back-up for this proceeding. |
| Michael D. Jay | Back-up counsel (designated provisionally recognized PTAB attorney, Oct. 2025) | DLA Piper LLP, Los Angeles | Trial-team partner who took over PTAB back-up duties late in the proceeding. |
| Roshan K. Bhattarai (Reg. No. 70,092) | Counsel (signatory on filings in the companion Samsung–Maxell IPRs) | DLA Piper LLP, Washington, DC | Registered practitioner supporting the Maxell IPR cluster. |
In-house: Matthew Bathon, Principal Legal Counsel, Samsung Electronics America, Inc., executed the updated powers of attorney (Jan. 21, 2025).
District court defense team in 5:23-cv-00092 (DLA Piper announcement, Oct. 13, 2025; PACER-derived list)
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| Sean C. Cunningham | Lead trial counsel | DLA Piper, Washington, DC / San Diego | Global Co-Chair of DLA Piper's IP & Technology group; ~30 years, 25+ patent trials, 40+ ITC matters; argued the post-trial damages ruling in Cornell v. Hewlett-Packard (609 F. Supp. 2d 279) that reshaped the Entire Market Value Rule. |
| Brian K. Erickson (Reg. No. 48,895) | Texas counsel of record (principal E.D. Tex. signatory) | DLA Piper LLP (US), Austin (303 Colorado St., Ste. 3000) | Signed the Sotera stipulation that secured institution; the Texas-office face of the defense. |
| Melissa Richards Smith and Harry Lee Gillam Jr. | Local counsel (inferred) | Gillam & Smith LLP, Marshall, TX | East Texas local-counsel firm listed among Samsung's counsel in the PACER-derived list; standard Marshall/Texarkana local-counsel pairing. |
| Erin P. Gibson | Trial partner | DLA Piper, Washington, DC | Named in the firm's trial-team release. |
| Erik R. Fuehrer | Trial partner | DLA Piper, Palo Alto | Named in the firm's trial-team release. |
| Mark D. Fowler | Partner | DLA Piper, Palo Alto | U.S. Vice Chair of DLA Piper's IP practice; notably was Apple's lead trial counsel against Maxell in the earlier E.D. Tex. litigation — the same DLA team has now beaten Maxell twice. |
| Michael D. Jay | Trial partner | DLA Piper, Los Angeles | See above; also PTAB back-up. |
| Helena D. Kiepura | Partner | DLA Piper, Washington, DC | Named in the trial-team release. |
| Stanley J. Panikowski | Partner | DLA Piper, San Diego | Appears in the PACER-derived Samsung counsel list. |
| Martin Ellison, Sangwon Sung, Paulina Starostka, Benjamin S. Mueller | Associates | Los Angeles / San Francisco / Chicago | Named in the firm's trial-team release. |
| Kathryn Riley Grasso, Jesse Hindman (Edleson & Hindman), Tessa Duxbury, Andrew T. Gorham | Additional counsel | Various | Appear in the PACER-derived Samsung counsel list; individual roles not confirmed. |
3. What I could not verify
- Appellate counsel. The IPR appeal is Fed. Cir. No. 2026-1625, and Maxell's appeal of the JMOL is Fed. Cir. No. 26-1111 (filed Oct. 29, 2025). I found no docket entry, press report, or firm announcement identifying counsel of record in either appeal. Given the teams' composition — Mayer Brown's Pincus/Saharsky on the Maxell side, DLA Piper's Cunningham (a