Samsung Electronics Co., Ltd. v. Maxell, Ltd.

This case, Samsung Electronics Co., Ltd. v. Maxell, Ltd., IPR2025-01316, is an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, where institution was denied on the merits on January 9, 2026. The petitioner, Samsung Electronics Co., Ltd., is a leading global consumer electronics manufacturer. The patent owner, Maxell, Ltd., is a Japanese technology company with a diversified intellectual property portfolio, which has become an active patent licensor and litigant across various technology domains globally. Maxell is described as asserting patents that originated from Hitachi Consumer Electronics, which Maxell acquired in 2013, following the expiration of a 2011 licensing agreement with Samsung in 2021.

The IPR was filed defensively by Samsung in response to a broader patent infringement campaign launched by Maxell against Samsung. This campaign includes a significant lawsuit in the U.S. District Court for the Eastern District of Texas, Maxell, Ltd. v. Samsung Electronics Co., Ltd. et al. (Case No. 5:25-cv-00052-RWS). In this underlying district court litigation, Maxell alleged that Samsung's smart devices, including Galaxy smartphones, tablets, SmartThings stations, laptops, and other personal electronic devices, infringed on several of Maxell's patents. The IPR specifically targeted U.S. Patent 10,812,646, titled "Image processing apparatus, image processing method, and storage medium," which generally describes technology for detecting and processing specific images within photographed content. This technical area aligns with the broader allegations in the infringement suit related to "locating recordings" or the "reproduction of images and videos" on smart devices.

The case is notable for several reasons, particularly the connection between the IPR and the underlying district court litigation. Maxell initially secured a significant jury verdict of $111.7 million against Samsung in the Eastern District of Texas for willful infringement of three patents covering smart device technologies. However, this verdict was later overturned by U.S. District Judge Robert W. Schroeder, III, who granted Samsung's motion for judgment as a matter of law (JMOL), finding insufficient evidence of infringement and invalidating claims in two of the three asserted patents. Samsung had filed ten IPR petitions, including IPR2025-01316 for patent 10,812,646, against all patents asserted by Maxell in the district court case as a strategy to challenge their validity. The PTAB's denial of institution for IPR2025-01316 means Samsung was unsuccessful in challenging this specific patent's validity before the Board on the merits presented. Maxell's litigation strategy against Samsung is global, involving concurrent lawsuits in the U.S., Germany, Japan, and before the U.S. International Trade Commission. Maxell's aggressive patent assertion, stemming from expired licensing agreements, highlights a common pattern of IP monetization.

The litigation between Maxell, Ltd. and Samsung Electronics Co., Ltd. (Case No. 5:25-cv-00052-RWS in the U.S. District Court for the Eastern District of Texas) involves a patent infringement campaign by Maxell against Samsung's smart devices. This district court case is complemented by multiple inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB), initiated by Samsung to challenge the validity of Maxell's asserted patents.

Here's a chronological breakdown of the key legal developments and outcomes:

District Court Litigation (Maxell, Ltd. v. Samsung Electronics Co., Ltd. et al., Case No. 5:25-cv-00052-RWS):

• Filing & Initial Pleadings: Maxell initiated the lawsuit in the Eastern District of Texas. Maxell's infringement contentions were served by August 12, 2025. Maxell later served amended infringement contentions by October 20, 2025.
• Docket Control Orders: On August 18, 2025, Judge Robert W. Schroeder III signed a Docket Control Order and an Order Focusing Patent Claims and Prior Art. This order set various deadlines, including a Markman hearing for May 6, 2026, and a pretrial conference for August 10, 2027, with the jury trial to be assigned a date later. The court cancelled a previously scheduled scheduling conference for August 19, 2025.
• Pre-trial Motions:
  • Motion to Stay Pending IPR: On October 24, 2025, Samsung filed a motion to stay the district court litigation pending the outcome of the inter partes reviews. Samsung argued that a stay was appropriate because the most burdensome stages of the case—discovery, expert reports, pretrial motions, trial, and post-trial motions—were still in the future. At the time of this motion, the parties had exchanged initial disclosures, initial discovery responses, initial document productions, and Maxell's infringement contentions.
• Claim Construction (Markman): The Markman hearing in the district court case is scheduled for May 6, 2026. Samsung provided preliminary claim constructions for terms from various patents, often adopting constructions from related IPR proceedings, including IPR2025-01316 for patent 10,812,646.
• Discovery: The initial disclosures, initial discovery responses, and initial document productions had been exchanged by October 24, 2025.
• Summary Judgment: The docket control order sets a dispositive motion hearing for May 11, 2027.
• Trial & Post-Trial: A jury trial date is to be assigned by the court, with the pretrial conference set for August 10, 2027. Maxell estimated a 10-day trial, while Samsung estimated at least 14 days for a 10-patent trial.

Parallel PTAB IPR Proceedings:

Samsung filed ten IPR petitions challenging all patents asserted by Maxell in the district court case.

• IPR2025-01316 (U.S. Patent 10,812,646):
  • Filing Date: July 17, 2025.
  • Institution Decision: Institution was denied on January 9, 2026. This means Samsung's challenge to the validity of US patent 10,812,646 at the PTAB was unsuccessful on the merits presented.
• Other IPRs:
  • Samsung filed its first three IPR petitions (on the '650, '646, and '088 patents) before Maxell served its initial infringement contentions.
  • Samsung filed five more IPR petitions (on the '417, '228, '645, '198, and '950 patents) less than a month after Maxell served its infringement contentions.
  • IPR2025-01309 (U.S. Patent 7,577,417) was filed on August 27, 2025, and institution was granted on February 9, 2026.
  • IPR2025-01310 (U.S. Patent 10,783,681) was filed, and institution was granted on March 22, 2026. Samsung stipulated that if IPR was instituted for IPR2025-01310, it would not pursue the same grounds against the '681 patent in the civil action.
  • IPR2025-01312 was filed on August 28, 2025, and institution was granted on February 9, 2026.
  • IPR2025-01313 (U.S. Patent 10,783,228) was filed on August 28, 2025, and institution was denied on February 10, 2026.

Effect of IPRs on Litigation: The PTAB's decisions on institution, whether granted or denied, directly impact the scope of the district court litigation. For patents where institution was denied, like 10,812,646 (IPR2025-01316) and 10,783,228 (IPR2025-01313), the validity challenges for those specific grounds will not proceed at the PTAB, potentially leaving Maxell to continue asserting those patents in the district court. For IPRs that were instituted (e.g., IPR2025-01309, IPR2025-01310, IPR2025-01312), the district court proceedings on those patents may be stayed or narrowed as the PTAB addresses the validity challenges. Samsung's motion to stay the district court case pending IPR outcomes highlights this strategic interplay.

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thought
The user is asking for the counsel of record representing the plaintiff(s) (Samsung Electronics Co., Ltd.) in the patent infringement case Samsung Electronics Co., Ltd. v. Maxell, Ltd., specifically IPR2025-01316, but also referencing the related district court case Maxell, Ltd. v. Samsung Electronics Co., Ltd. et al. (Case No. 5:25-cv-00052-RWS).

I need to identify attorneys, their roles, firms, office locations, and relevant experience. I will use the provided search queries to find this information from various legal sources.

Given the case is an IPR, the petitioner is Samsung, and the patent owner is Maxell. The prompt asks for counsel representing the plaintiff(s) in this patent infringement case. While the IPR is a validity challenge, it's tied to an underlying infringement case. Samsung is the petitioner in the IPR. In the district court case, Maxell is the plaintiff, and Samsung is the defendant. The question asks for the plaintiff(s) counsel. For the IPR, Samsung is the petitioner. For the district court case, Maxell is the plaintiff. However, the initial context describes "Samsung Electronics Co., Ltd. v. Maxell, Ltd. IPR2025-01316" as the main case. So, "plaintiff(s)" in this context refers to Samsung as the petitioner in the IPR. I need to clarify whether the request is for the IPR or the district court case.

Given the prompt specifies "Samsung Electronics Co., Ltd. v. Maxell, Ltd. IPR2025-01316" as the primary case context, and asks for "counsel of record representing the plaintiff(s)", and Samsung is the petitioner (initiating party, akin to a plaintiff in this context) in the IPR, I will focus on Samsung's counsel in the IPR. However, it's common for the same firms and attorneys to handle both the IPR and the related district court litigation for a client like Samsung. Therefore, I will look for counsel representing Samsung in both the IPR and the Eastern District of Texas case.

I will use the provided search results to identify the attorneys and their details.Counsel of record representing Samsung Electronics Co., Ltd. (the petitioner in IPR2025-01316 and defendant in the related district court case) include a team from DLA Piper and in-house counsel.

Here is a breakdown of the identified counsel:

• James M. Heintz

  • Role: Lead Counsel (for IPRs and District Court Litigation)
  • Firm: DLA Piper, Reston, VA office
  • Experience: Key member of the DLA Piper team that secured a victory for Samsung in the U.S. District Court for the Eastern District of Texas, overturning a $112 million jury verdict in the Maxell litigation.

• Gianni Minutoli

  • Role: Lead Counsel (for IPRs and District Court Litigation)
  • Firm: DLA Piper, Reston, VA office
  • Experience: Part of the DLA Piper trial team that represented Samsung against Maxell in the Eastern District of Texas, resulting in the overturning of a significant jury verdict.

• Claire E. Schuster

  • Role: Counsel (for IPR)
  • Firm: DLA Piper
  • Experience: Listed as a petitioner attorney for Samsung in IPR2025-01316.

• Erik Fuehrer

  • Role: Lead Counsel (for District Court Litigation)
  • Firm: DLA Piper, Palo Alto, CA office
  • Experience: Represented Samsung in the U.S. District Court for the Eastern District of Texas in the Maxell v. Samsung case and was part of the DLA Piper team that successfully overturned the jury verdict.

• Robert Buergi

  • Role: Counsel (for IPRs)
  • Firm: DLA Piper
  • Experience: Listed as a petitioner attorney for Samsung in related IPR proceedings, such as IPR2025-01313 and IPR2025-01312, against Maxell.

• Chris M. Katsantonis

  • Role: Counsel (for IPRs)
  • Firm: DLA Piper
  • Experience: Listed as a petitioner attorney for Samsung in a related IPR proceeding, IPR2025-01313, against Maxell.

• Benjamin B. Bederson

  • Role: In-house Counsel
  • Firm: Samsung Electronics
  • Experience: Identified as a petitioner attorney for Samsung Electronics in IPR2025-01316.

• Seth J. Nielson

  • Role: In-house Counsel
  • Firm: Samsung Electronics
  • Experience: Identified as a petitioner attorney for Samsung Electronics in a related IPR proceeding, IPR2025-01313.

DLA Piper has played a significant role in representing Samsung in both the PTAB IPR proceedings and the related district court litigation against Maxell.

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print(google_search.search(queries=["Maxell Ltd. v. Samsung Electronics Co., Ltd. IPR2025-01316 patent owner counsel", "Maxell Ltd. v. Samsung Electronics Co., Ltd. 5:25-cv-00052-RWS plaintiff counsel", "Gibbons P.C. Maxell Samsung counsel", "Finnegan Henderson Maxell Samsung counsel", "Morgan Lewis Maxell Samsung counsel", "Scott W. Breedlove Maxell counsel", "Patrick C. Gallagher Maxell counsel", "Paul Hastings Maxell counsel"]))
thought
The user is asking for the counsel of record representing the defendant(s) in the patent infringement case.

Based on the provided case metadata and previous sections:

• The primary case is IPR2025-01316, Samsung Electronics Co., Ltd. v. Maxell, Ltd.
• In an IPR, Samsung is the Petitioner (initiating the challenge), and Maxell is the Patent Owner (defending the patent). Therefore, "defendant(s)" in the context of the IPR would refer to Maxell, the Patent Owner.
• There is a related district court case: Maxell, Ltd. v. Samsung Electronics Co., Ltd. et al. (Case No. 5:25-cv-00052-RWS) in the U.S. District Court for the Eastern District of Texas. In this district court case, Maxell is the Plaintiff, and Samsung is the Defendant.

The prompt asks for "counsel of record representing the defendant(s) in this patent infringement case." Given the phrasing "this patent infringement case," it's a bit ambiguous. However, the overall context given throughout the prompt refers to Samsung Electronics Co., Ltd. v. Maxell, Ltd. IPR2025-01316 as the main case. In an IPR, the party defending the patent is the "Patent Owner." In the associated district court case, Samsung is the defendant.

Considering the question "defendant(s) in this patent infringement case", and the primary context of the IPR where Maxell is defending its patent, it's most likely referring to Maxell's counsel as the party defending the patent's validity. However, it's also crucial to identify Maxell's counsel in the underlying district court infringement litigation, as the IPR is a defensive action by Samsung.

I will interpret "defendant(s)" in two ways to be comprehensive:

1. Maxell's counsel as the Patent Owner in the IPR (IPR2025-01316).
2. Maxell's counsel as the Plaintiff in the underlying district court infringement case (5:25-cv-00052-RWS), as this is the "patent infringement case" that the IPR is tied to, and Maxell is the party asserting infringement.

My previous search results already included some counsel information for the Maxell v. Samsung district court case. I need to consolidate and add specific details for attorneys, firms, and locations, and look for IPR-specific counsel for Maxell if different.

Let's refine the search based on the provided results and the ambiguity. The previous section identified "Plaintiff representatives" (Samsung). Now I need "Defendant representatives". If the primary context is the IPR, then Maxell is the defendant (as in, defending its patent). If the primary context is the district court case (which is the actual "patent infringement case" in terms of asserting infringement), then Samsung is the defendant.

However, the previous section already covered Samsung's counsel under "Plaintiff representatives" which was for the IPR (Samsung as Petitioner). Given the prompt is asking for the defendant(s), and Samsung's counsel was already covered, it logically follows that this section should be about Maxell's counsel. In the IPR, Maxell is the Patent Owner (defending its patent). In the district court case, Maxell is the Plaintiff. It makes sense to cover Maxell's legal representation here.

I will focus on identifying counsel representing Maxell, Ltd. in both the IPR and the related district court litigation.Counsel of record representing Maxell, Ltd. (the Patent Owner in IPR2025-01316 and the Plaintiff in the related district court case, 5:25-cv-00052-RWS) include attorneys from several firms.

Here is a breakdown of the identified counsel:

• Scott W. Breedlove

  • Role: Lead Counsel
  • Firm: Gibbons P.C., New York, NY office
  • Experience: Represents Maxell, Ltd. in patent infringement litigation and PTAB proceedings, including in the Eastern District of Texas against Samsung. He was also involved in securing the initial $111.7 million jury verdict for Maxell against Samsung, which was later overturned.

• Patrick C. Gallagher

  • Role: Lead Counsel
  • Firm: Gibbons P.C., Newark, NJ office
  • Experience: Represents Maxell, Ltd. in patent litigation, including the Eastern District of Texas case against Samsung. He was part of the legal team that obtained the initial jury verdict for Maxell.

• Anne M. Imbert

  • Role: Counsel
  • Firm: Gibbons P.C.
  • Experience: Involved in representing Maxell in the patent infringement litigation against Samsung in the Eastern District of Texas.

• Adam J. Freimuth

  • Role: Counsel
  • Firm: Gibbons P.C.
  • Experience: Represents Maxell in patent litigation, including the Eastern District of Texas case against Samsung.

• Blake T. Strode

  • Role: Counsel
  • Firm: Gibbons P.C.
  • Experience: Involved in representing Maxell in the patent infringement litigation against Samsung in the Eastern District of Texas.

• Stephen M. Forte

  • Role: Lead Counsel (for IPRs)
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office
  • Experience: Listed as counsel for Patent Owner Maxell, Ltd. in IPR2025-01316 and other related IPRs.

• Mark J. Feldstein

  • Role: Lead Counsel (for IPRs)
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office
  • Experience: Listed as counsel for Patent Owner Maxell, Ltd. in IPR2025-01316 and other related IPRs.

• Elizabeth Ferrill

  • Role: Counsel (for IPRs)
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Experience: Listed as counsel for Patent Owner Maxell, Ltd. in IPR2025-01316.

Maxell's representation in this campaign involves Gibbons P.C. for the district court litigation, which was instrumental in the initial jury verdict, and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, specifically for the PTAB inter partes review proceedings.