Litigation

Samsung v. Maxell, Ltd.

Terminated without institution

IPR2025-01313

Patents at issue (1)

10783228PTAB institution denied

Plaintiffs (1)

Defendants (1)

Summary

This Inter Partes Review petition, filed by Samsung against Maxell, challenged the validity of claims across ten patents, including US10783228, but institution of the review was not granted on the merits.

Case overview & background

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

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.

Key legal developments & outcome

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

I'll research this case across PTAB and the parallel district court litigation.

I have strong leads. Let me dig into the district court docket, the IPR termination decision, and parallel proceedings.

Let me get the IPR denial decision, the parallel IPR outcomes, and more district court docket detail.

In the news

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

I'll research press coverage across multiple angles.

Let me dig into press coverage of the IPR specifically and the patent title discrepancy.

Press and analysis coverage

I searched extensively for dedicated press coverage of IPR2025‑01313 itself — by case number, by the Samsung/Maxell caption, and by the '228 patent number — across general and IP trade outlets. There is essentially none. I found no Reuters, Bloomberg Law, Law360, IPWatchdog, Patently‑O, IAM, JD Supra, or mainstream article naming IPR2025‑01313 or reporting the February 10, 2026 institution denial. The only public artifacts I located are the PTAB filings and docket‑aggregator pages (e.g., IP Verse, which lists the case as "Institution Denied" with a Feb. 10, 2026 institution decision date, and an Ex Parte petition summary). That is consistent with the general pattern that individual PTAB institution denials in high‑volume campaigns rarely generate standalone press.

What the press has covered is the surrounding Maxell–Samsung campaign, of which this IPR is one thread. RPX reported on 2025‑09‑22 (syndicated via Mondaq) that E.D. Tex. Judge Robert W. Schroeder III "toppled a $112M verdict against Samsung from May 2025," granting JMOL of noninfringement on all three tried patents and invalidity on two, with the reasoning under seal. RPX also mapped the campaign in detail: the first suit (No. 5:23‑cv‑00092) asserting seven patents; the December 2024 ITC complaint (337‑TA‑1432); and the April 2025 second district court case, No. 5:25‑cv‑00052, asserting ten patents — including the '228 patent at issue here. Patent Lawyer Magazine reported on 2025‑06‑24 that the jury awarded a total of USD 111.7 million (≈$38.1M on the '086 patent, $28.2M on the '848 patent, $45.4M on the '815 patent, per a Mondaq damages roundup), tied the dispute to Samsung's non‑renewal of a license that expired in 2021, and framed it as a warning that "expired licenses don't equate to expired risk." DLA Piper issued a firm press release on 2025‑10‑13 touting the JMOL win, noting the court "denied Maxell's requests for enhanced damages, interest, and a permanent injunction, and deferred issues of willfulness and damages until after appeal." None of this reporting mentions IPR2025‑01313, the '228 patent, or the PTAB denial.

The parallel forums have drawn more ink than the PTAB track. The USITC announced institution of 337‑TA‑1432 on 2025‑01‑17; Analysis Group, retained by Mayer Brown for Maxell, describes the domestic‑industry showing built on Motorola Mobility's U.S. investments and the ALJ's finding that Maxell satisfied the economic prong. A Federal Register notice records the Commission's August 2026 decision to review in part a final initial determination of violation, with a recommended limited exclusion order and cease‑and‑desist orders. In a Law360 international‑trade item dated 2026‑07‑13, the outlet reported that an ITC judge "recommended an import ban on infringing Samsung devices" and that Maxell filed a further ITC suit days later. On the European side, JUVE Patent reported that the UPC's Hague local division revoked Maxell's EP 2 061 230 (content‑casting) in its entirety and dismissed the parallel infringement action, and that Munich had earlier revoked EP 2 579 587 — calling the Hague ruling "the second UPC setback for Maxell in its dispute with Samsung within a few months." The Hague decision is analyzed in detail by Mondaq (Bardehle Pagenberg). Notably, Law360 carried a headline dated 2026‑04‑28 — "Samsung Gets PTAB To Sink Maxell Video Processing Patents" — reporting that the PTAB "thrown out all the claims [Samsung Electronics Co. Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) challenged in a pair of Maxell Ltd. video processing patents." That is about different patents (not the '228 patent), and I could retrieve only the headline/teaser, not the article body.

Two caveats on the record versus the reporting. First, this IPR is the '228‑patent petition within a ten‑petition set (IPR2025‑01307 through ‑01316, each directed to one asserted patent); the earlier case overview's statement that the petition "challenged the validity of claims across ten patents" appears to conflate the campaign with this individual IPR, and I found no press or docket support for it. Second, the technology described for the '228 patent varies by source: the prior summary titled it "Image display device, method of controlling image display device, and recording medium," while the Ex Parte database describes it as "System for Biometric Authentication and Information Display Between Paired Devices" (smartphone/smartwatch biometric unlock and wellness data), matching the Aminzade/Sowers/Soli grounds Maxell's preliminary response addresses. I could not verify the patent's official title from a primary source in this session, so treat the title as unresolved. Finally, one item that looks like reporting but is actually a PTAB exhibit: a November 25, 2025 email from Maxell's outside counsel (Nicholas Match to Hunter Morgen) in the petition file characterizes Samsung's conduct — "over 20 IPRs on virtually every patent Maxell has asserted" — as "the exact conduct that the Director's new policy on discretionary denials is aimed to combat." That is an advocacy document, not press coverage, though it is the closest thing to a public narrative about why these petitions were denied.

Sources

Plaintiff representatives

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

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.

Defendant representatives

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

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.