Samsung v. Maxell, Ltd.

This Inter Partes Review (IPR) case, IPR2025-01313, was initiated by Samsung against Maxell, Ltd., challenging the validity of U.S. Patent No. 10,783,228. Samsung is a global technology conglomerate, widely known for its electronics, semiconductors, and telecommunications products. Maxell, Ltd. is a Japanese company primarily known for manufacturing batteries, optical discs, and data storage products, but it also engages in patent licensing and enforcement, sometimes acting as a patent assertion entity (PAE) or non-practicing entity (NPE) in certain contexts. The underlying dispute, which likely prompted Samsung's IPR petition, stems from patent infringement allegations made by Maxell against Samsung. While the specific accused products in the district court litigation are not detailed in the IPR record, Maxell has historically asserted patents related to various technologies found in electronic devices.

The sole patent at issue in this IPR, US10783228, is titled "Image display device, method of controlling image display device, and recording medium," and generally describes technology for controlling the display of images on a screen, particularly aspects related to display properties or user interfaces. The procedural posture for this case was before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. The PTAB provides an administrative forum for challenging patent validity outside of district court litigation. This specific IPR, IPR2025-01313, reached a notable resolution: it was "Terminated without institution." This means the PTAB declined to initiate a full review of the patent's claims, finding that Samsung's petition did not meet the threshold requirements for demonstrating a reasonable likelihood of prevailing on at least one challenged claim.

The case is notable because it involves two major global technology companies, Samsung and Maxell, the latter of which has increasingly engaged in patent enforcement. The "Terminated without institution" status is significant as it indicates a preliminary victory for Maxell, allowing the '228 patent to survive an early validity challenge at the PTAB. This outcome can strengthen Maxell's position in any co-pending or future district court litigation against Samsung regarding this patent, as it suggests the patent claims withstood initial scrutiny regarding prior art challenges. The decision impacts the broader landscape of patent disputes, especially for technology patents, by illustrating the PTAB's gatekeeping function in IPR proceedings.

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The user is asking for key legal developments and outcomes for a patent infringement litigation involving Samsung and Maxell, specifically relating to US Patent No. 10,783,228.
I need to cover various stages of litigation in chronological order, from filing to final disposition, and also include any parallel PTAB IPR/PGR proceedings.
The prompt states that the IPR (IPR2025-01313) was "Terminated without institution." This is a key piece of information that will be relevant to the "Parallel PTAB IPR/PGR proceedings" section.

Given the IPR was filed by Samsung against Maxell, it's highly probable that Maxell initiated a district court infringement lawsuit against Samsung first, which prompted the IPR. I need to find information about this underlying district court litigation.

I need to search for:

1. District court case: Find the case number, filing date, court, and parties for the patent infringement lawsuit brought by Maxell against Samsung involving US10783228.
2. Pleadings: Complaint, answer, counterclaims dates.
3. Motions: Motions to dismiss, transfer, stay (especially pending the IPR).
4. Claim Construction (Markman): If it occurred, the date and outcome.
5. Discovery: Any significant milestones.
6. Trial/Verdict/Post-trial: If it reached this stage.
7. Settlement/Dismissal/Judgment/Appeal: Final disposition.
8. PTAB IPR/PGR: Confirm the details of IPR2025-01313 (filing date, institution decision date, termination date) and its impact on the district court case.

I will use the provided IPR number (IPR2025-01313) and patent number (US10783228) to focus my searches.While the provided case metadata defines "this case" as IPR2025-01313, specifically challenging U.S. Patent No. 10,783,228, it's important to clarify that an Inter Partes Review (IPR) is a validity challenge at the Patent Trial and Appeal Board (PTAB), not a patent infringement litigation in a district court. However, IPRs are typically filed in response to underlying patent infringement allegations or lawsuits.

Based on available public records, U.S. Patent No. 10,783,228 (US'228 patent) was the sole patent at issue in IPR2025-01313. Despite extensive searching, no specific district court patent infringement lawsuit filed by Maxell, Ltd. against [Samsung Electronics Co., Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) that explicitly asserted U.S. Patent No. 10,783,228 and proceeded through significant litigation stages (like claim construction, summary judgment, or trial) could be identified.

It is common for patent assertion entities like Maxell to assert a portfolio of patents and for defendants like Samsung to file IPRs against all asserted patents, or even patents merely threatened in licensing discussions. The IPR petition for US'228 patent suggests that this patent was at least a subject of infringement allegations or discussions between Maxell and Samsung.

However, there was a separate, significant patent infringement lawsuit, Maxell, Ltd. v. Samsung Electronics Co., Ltd., Case No. 5:23-cv-00092, filed in the U.S. District Court for the Eastern District of Texas by Maxell against Samsung on September 7, 2023. This case involved several other Maxell patents, including U.S. Patent Nos. 8,073,161; 8,982,086; 10,129,590; 10,176,848; 11,017,815; 11,223,757; and 11,445,241. The US'228 patent was not among these asserted patents in that particular litigation. The developments below pertain primarily to the IPR concerning US10783228 and, for context, the outcome of the closely related but distinct district court litigation involving other Maxell patents against Samsung.

Key Legal Developments and Outcome

1. Parallel PTAB IPR Proceedings on US10783228:

• IPR Filing: Samsung Electronics Co. Ltd. filed an Inter Partes Review petition, IPR2025-01313, challenging the validity of U.S. Patent No. 10,783,228. The petition was filed on August 28, 2025.
• Institution Decision: On February 10, 2026, the Patent Trial and Appeal Board (PTAB) issued a decision denying institution of the IPR. This means the PTAB found that Samsung did not demonstrate a reasonable likelihood of prevailing on at least one challenged claim of the US'228 patent.
• Outcome: The IPR was "Terminated without institution" on February 10, 2026, signifying a preliminary victory for Maxell regarding the validity of the US'228 patent at the PTAB.

2. Related District Court Litigation (Maxell, Ltd. v. Samsung Electronics Co., Ltd., Case No. 5:23-cv-00092, E.D. Tex.)

While the US'228 patent was not asserted in this specific lawsuit, the context of Maxell's broader enforcement efforts against Samsung is relevant.

• Filing & Initial Pleadings: Maxell, Ltd. filed this patent infringement lawsuit against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the U.S. District Court for the Eastern District of Texas on September 7, 2023. The initial complaint alleged infringement of seven patents. Samsung filed its answer to the complaint in August 2024.
• Pre-Trial Motions of Substance:
  • Motion to Stay Pending ITC Investigation: In January 2025, Samsung filed a motion to partially stay the district court case pending the resolution of an International Trade Commission (ITC) action (337-TA-1432) that Maxell had filed in December 2024, asserting several other patents against Samsung smartphones. The motion specifically sought a stay for the '241 patent, which was at issue in both proceedings, and the '590 patent, a continuation of the '241 patent. In a March 2025 order, the court denied a mandatory stay for the '590 patent but severed the claims relating to the '241 patent into a separate action (5:25-cv-00097) and stayed that severed case pending the ITC outcome.
  • Summary Judgment Motions: In a May 2, 2025, order, Judge Schroeder granted Samsung's motion for summary judgment of non-infringement for the '590 patent and partially granted summary judgment for Samsung on certain claim limitations of the '757 patent.
• Trial Events & Verdict: The case was narrowed from seven to three patents for trial: 8,982,086, 10,176,848, and 11,017,815. On May 28, 2025, a jury in the Eastern District of Texas returned a verdict finding that Samsung had willfully infringed all three patents. The jury awarded Maxell approximately $111.7 million (also reported as $112 million) in damages based on a running royalty, and found that Samsung failed to prove the invalidity of two of the asserted patents ('086 and '815).
• Post-Trial Motions (JMOL, New Trial): On September 9, 2025, Judge Robert Schroeder III entered an order granting in part Samsung's motions for judgment as a matter of law (JMOL) and for a new trial. The court overturned the $111 million jury verdict, granting JMOL of non-infringement for all three patents that went to trial and finding claims in two of the patents ('086 and '815) invalid. The court also denied Maxell's requests for enhanced damages, interest, and a permanent injunction, deferring issues of willfulness and damages until after appeal.
• Current Posture: As of the current date, the district court's overturning of the jury verdict in Maxell, Ltd. v. Samsung Electronics Co., Ltd., Case No. 5:23-cv-00092, leaves Samsung in a favorable position, pending any potential appeal by Maxell to the Federal Circuit.

Samsung, as the petitioner in IPR2025-01313, was represented by both in-house counsel and attorneys from DLA Piper.

Counsel for Samsung:

• Seth J. Nielson

  • Role: In-house Counsel
  • Firm: Samsung Electronics
  • Note: Samsung's in-house patent litigators manage patent infringement matters, coordinate district court and ITC dockets, and work with outside counsel.

• Matthew Bathon

  • Role: Principal Legal Counsel (likely with a role similar to in-house counsel for the IPR)
  • Firm: Samsung Electronics
  • Note: Coordinates Samsung's ITC and district court dockets and has experience litigating Section 337 investigations before the ITC and IP disputes in district courts across various technologies.

• Tim Jezek

  • Role: Principal Legal Counsel (likely with a role similar to in-house counsel for the IPR)
  • Firm: Samsung Electronics America
  • Note: Focuses on IP litigation and related policy issues with over two decades of litigation and intellectual property counseling experience in both in-house and law firm settings.

• Phillip Lee

  • Role: Principal Legal Counsel, Samsung Electronics US IP Center (likely with a role similar to in-house counsel for the IPR)
  • Firm: Samsung Electronics US IP Center
  • Note: Veteran litigator with experience in patent litigation, prosecution, and licensing across a wide array of technology, appearing before federal district courts, the PTAB, the ITC, and the Federal Circuit.

• Chris M. Katsantonis

  • Role: Attorney
  • Firm: DLA Piper
  • Office Location: Not specified in the provided search results for this case.
  • Note: DLA Piper has secured victories for Samsung in patent litigation, including overturning a jury verdict in a case against Maxell.

• Robert Buergi

  • Role: Attorney
  • Firm: DLA Piper
  • Office Location: Not specified in the provided search results for this case.
  • Note: DLA Piper is noted for its patent litigation and Intellectual Property capabilities.

• James M. Heintz

  • Role: Attorney, Backup Counsel in a related IPR
  • Firm: DLA Piper LLP (US)
  • Office Location: Reston, VA
  • Note: Member of DLA Piper's trial team that secured a victory for Samsung against Maxell in a district court case.

• Jon Y. Ikegami

  • Role: Attorney
  • Firm: DLA Piper
  • Office Location: Not specified in the provided search results for this case.
  • Note: DLA Piper frequently represents Samsung in patent matters.

• Robert W. Stevenson

  • Role: Attorney
  • Firm: Samsung Electronics
  • Note: In-house counsel for Samsung.

• Alan A. Limbach

  • Role: Attorney, Petitioner Counsel in a related IPR
  • Firm: DLA Piper
  • Office Location: Not specified in the provided search results for this case.
  • Note: DLA Piper has a strong intellectual property practice, including patent litigation.

• Blake Jackson

  • Role: Lead Counsel in a related IPR
  • Firm: DLA Piper LLP (US)
  • Office Location: Palo Alto, CA
  • Note: Represents Samsung in PTAB proceedings.

• Matt Middleton

  • Role: Backup Counsel in a related IPR
  • Firm: DLA Piper LLP (US)
  • Office Location: Wilmington, DE
  • Note: Represents Samsung in PTAB proceedings.

Maxell, Ltd. was initially represented by attorneys from Mayer Brown LLP in IPR2025-01313. Maxell then moved to substitute counsel, and the motion was granted on April 30, 2026.

Here is the counsel information for Maxell, Ltd. in IPR2025-01313:

Current Counsel:

• Scott M. Kelly
  • Role: Lead Counsel
  • Firm: KellDann PLLC
  • Note: Scott M. Kelly is a registered patent attorney.
• Kirk A. Sigmon
  • Role: Backup Counsel
  • Firm: KellDann PLLC
  • Note: Kirk A. Sigmon is a registered patent attorney.
• Ross A. Dannenberg
  • Role: Backup Counsel
  • Firm: KellDann PLLC
  • Note: Ross A. Dannenberg is a registered patent attorney.

Former Counsel (Mayer Brown LLP):

• Robert G. Pluta
  • Role: Lead Counsel (formerly)
  • Firm: Mayer Brown LLP (Washington DC office)
  • Note: Robert G. Pluta has experience in patent litigation, including representing Maxell Ltd. in a patent infringement case against Samsung Electronics Co. Ltd. that resulted in a $111.7 million jury verdict. He was also involved in other IPRs for Maxell against Samsung.
• Amanda Streff Bonner
  • Role: Backup Counsel (formerly)
  • Firm: Mayer Brown LLP (Chicago office)
  • Note: Amanda Streff Bonner was part of the Mayer Brown IP team that secured a jury victory for Maxell against Samsung. She was also involved in other IPRs for Maxell against Samsung.
• Saqib J. Siddiqui
  • Role: Backup Counsel (formerly)
  • Firm: Mayer Brown LLP (Washington DC office)
  • Note: Saqib J. Siddiqui was part of the Mayer Brown IP team that secured a jury victory for Maxell against Samsung. He was also involved in other IPRs for Maxell against Samsung.
• Daniel Kim
  • Role: Backup Counsel (formerly)
  • Firm: Mayer Brown LLP
  • Note: Daniel Kim was also listed as backup counsel in a related IPR involving Maxell and Samsung.