Litigation

Shenzhen Qianfenyi Intelligent Technology Co Ltd. v. Wacom Co Ltd.

Not Instituted - Procedural

IPR2025-01495

Filed
2025-08-29
Terminated
2026-01-09

Patents at issue (1)

9933866PTAB: discretionary denial

Defendants (1)

Summary

Shenzhen Qianfenyi Intelligent Technology Co Ltd. filed an Inter Partes Review petition against US patent 9933866, but the PTAB decided not to institute the review.

Case overview & background

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

This case involves an Inter Partes Review (IPR) petition filed by Shenzhen Qianfenyi Intelligent Technology Co Ltd. against US Patent 9,933,866, owned by Wacom Co Ltd. Shenzhen Qianfenyi, also known by its brand MAXEYE, is a Chinese company specializing in the research, development, and production of intelligent touch writing systems and active styluses, and is a significant global producer in this field. Wacom Co Ltd. is a Japanese global leader in manufacturing graphics tablets, pen displays, digital styli, and related digital ink solutions, also providing OEM solutions to other manufacturers. In this IPR, Shenzhen Qianfenyi, as the Petitioner, sought to challenge the validity of Wacom's patent, while Wacom, as the Patent Owner, defended it.

The IPR is directly linked to a parallel patent infringement lawsuit filed by Wacom against Shenzhen Qianfenyi in the U.S. District Court for the Eastern District of Texas, Case No. 2:24-cv-00702, initiated on August 28, 2024. In that district court action, Wacom alleges that Shenzhen Qianfenyi's active stylus products, including those compliant with the USI Stylus and Device Specification, infringe several of Wacom's patents, including US Patent 9,933,866. U.S. Patent 9,933,866 is titled "Active stylus with high voltage," indicating its technical focus on active stylus technology involving high voltage operation. The district court case is assigned to District Judge Rodney Gilstrap, a well-known judge in a prominent patent litigation venue.

The procedural posture of the IPR before the Patent Trial and Appeal Board (PTAB) is notable because the PTAB "Not Instituted" the review on procedural grounds, and the case was terminated on January 9, 2026. This means the PTAB did not reach the merits of Shenzhen Qianfenyi's patentability challenge. Such procedural denials often arise from the PTAB's discretionary denial policies, which consider factors like parallel district court litigation, timing, and "settled expectations" as outlined in recent USPTO guidance on IPR and PGR proceedings. The non-institution of the IPR means that Wacom's patent 9,933,866 remains unchallenged in this venue, leaving its validity for determination in the ongoing district court infringement suit. The case is notable for highlighting intense international intellectual property disputes in the digital input device market, particularly concerning active stylus technology, and for illustrating the impact of the PTAB's evolving discretionary institution standards on patent litigation strategy.

Key legal developments & outcome

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

The patent litigation involves a district court case where Wacom Co. Ltd. alleges infringement by Shenzhen Qianfenyi Intelligent Technology Co., Ltd. (also known as MAXEYE), and a parallel Inter Partes Review (IPR) proceeding initiated by Shenzhen Qianfenyi against Wacom's patent.

Key Legal Developments and Outcome

I. District Court Patent Infringement Litigation: Wacom Co. Ltd. v. Shenzhen Qianfenyi Intelligent Technology Co., Ltd. (E.D. Tex., Case No. 2:24-cv-00702)

This lawsuit was filed in the U.S. District Court for the Eastern District of Texas, asserting infringement of multiple patents, including US Patent 9,933,866.

  • Filing & Initial Pleadings:
    • 2024-08-28: Wacom Co., Ltd. filed a patent infringement lawsuit against Shenzhen Qianfenyi Intelligent Technology Co., Ltd. (MAXEYE). Wacom alleged that the import and sale of Maxeye's active stylus products infringed seven of Wacom's active electrostatic pen-related patents, including US Patent 9,933,866, and sought damages and an injunction.
    • 2025-06-03: Wacom Co., Ltd. filed a First Amended Complaint for Patent Infringement.
  • Pre-trial Motions of Substance:
    • 2025-06-02: Wacom Co., Ltd. filed an Unopposed Motion to Substitute Attorney (lead).
    • 2025-06-04: Shenzhen Qianfenyi Intelligent Technology Co., Ltd. filed a Notice of Designation of Attorney in Charge.
  • Claim Construction (Markman) Outcomes:
    • 2026-01-28: The Court held a hearing to determine the proper construction of disputed terms in the asserted patents, including US Patent 9,933,866.
    • 2026-02-03: District Judge Rodney Gilstrap signed a Claim Construction Memorandum and Order.
    • 2026-02-04: The Claim Construction Memorandum and Order was filed, detailing the court's construction of the disputed patent terms.

II. Parallel PTAB IPR Proceeding: Shenzhen Qianfenyi Intelligent Technology Co Ltd. v. Wacom Co Ltd. (IPR2025-01495)

Shenzhen Qianfenyi initiated an Inter Partes Review petition against US Patent 9,933,866.

  • Filing:
    • 2025-08-29: Shenzhen Qianfenyi Intelligent Technology Co Ltd. filed an Inter Partes Review petition challenging US Patent 9,933,866 at the Patent Trial and Appeal Board (PTAB).
  • Outcome:
    • 2026-01-09: The PTAB terminated the IPR, issuing a decision not to institute the review on procedural grounds.

III. Effect of IPR on Litigation:

The IPR proceeding (IPR2025-01495) was "Not Instituted - Procedural" and terminated on January 9, 2026. This means the PTAB did not proceed to a full merits review of the patentability of US Patent 9,933,866. Consequently, the IPR had no direct impact on the ongoing district court litigation in terms of cancelling claims or providing a stay based on a PTAB decision on the merits. The district court case, Wacom Co. Ltd. v. Shenzhen Qianfenyi Intelligent Technology Co., Ltd., continues to proceed without a PTAB ruling on the validity of the '866 patent.

Plaintiff representatives

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

Here is the counsel of record representing Shenzhen Qianfenyi Intelligent Technology Co Ltd. (Petitioner) in IPR2025-01495:

The provided search results contain information primarily about the Patent Owner's (Wacom Co Ltd.) counsel in the IPR and counsel for both parties in a related district court litigation. After a careful review of the search results, the specific counsel representing Shenzhen Qianfenyi Intelligent Technology Co Ltd. as the Petitioner in IPR2025-01495 is not explicitly identified in the provided snippets. The document that lists counsel in IPR2025-01495 (a Patent Owner's Mandatory Notice Information) clearly states that the listed attorneys (Wayne M. Helge, James T. Wilson, and Richard C. Lin from Bunsow De Mory LLP) represent Wacom Co. Ltd., the Patent Owner.

Therefore, based on the provided information, the counsel for the plaintiff (Petitioner, Shenzhen Qianfenyi Intelligent Technology Co Ltd.) in IPR2025-01495 could not be identified. Filings related to IPRs are typically publicly accessible via the PTAB's electronic filing system, which would contain the petition detailing the petitioner's counsel. However, direct access to the full IPR docket was not available in the search results.

Defendant representatives

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

I'll research the counsel representing the defendant(s), covering both the district court infringement action and the IPR framing.

Key lead found: Dorsey & Whitney represented Maxeye. Let me pin down the full counsel list, including local counsel.

Let me find the docket sheet counsel entries and any local counsel.

Counsel of Record — Defendant Side

Preliminary framing (necessary because of the two-case posture). The metadata for this matter is IPR2025-01495, in which the "Defendant(s)" field is populated with Wacom Co. Ltd. — but Wacom is the Patent Owner/respondent in that IPR, not a defendant. The only actual patent infringement case between these parties is Wacom Co. Ltd. v. Shenzhen Qianfenyi Intelligent Technology Co., Ltd., No. 2:24-cv-00702 (E.D. Tex., Marshall Div.), in which Wacom is the plaintiff and Shenzhen Qianfenyi (Maxeye) is the sole defendant. I therefore give the defendant-side counsel for the infringement action as the primary answer, and identify Wacom's IPR counsel secondarily per the “defendant” field.

A. Defendant in the infringement action: Shenzhen Qianfenyi Intelligent Technology Co., Ltd. (Maxeye)

Firm of record: Dorsey & Whitney LLP (confirmed by Maxeye's own public settlement announcement, released Aug. 28, 2026, which states that a Dorsey partner "represented Maxeye in the litigation").

Name Role Firm / Office Note
Hui Shen Lead/principal defense counsel (so identified by the client in its public statement) Dorsey & Whitney LLP — Washington, D.C. IP-litigation partner; named in Maxeye's settlement announcement as counsel "who represented Maxeye in the litigation" and quoted on the strategic significance of the defense for Chinese technology exporters.
Shannon Bjorklund Of counsel / member of the defense team (exact docket role not verified) Dorsey & Whitney LLP — Minneapolis, MN Law360's attorney profile for Bjorklund lists Wacom Co. Ltd. v. Shenzhen Qianfenyi Intelligent Technology Co., Ltd. (Tex. E.D., Aug. 28, 2024) among her patent matters; since Dorsey appeared for Maxeye, the listing indicates she appeared on the defense side. She has other patent-litigation matters listed on the same profile.

Sources:

What I could not verify (do not treat as complete):

  • The full PACER docket list of counsel of record for the defendant in 2:24-cv-00702 (i.e., every attorney who entered an appearance, and which of them signed the answer, invalidity contentions, or Markman briefing). PACER/CourtListener docket-level attorney data was not retrievable in my searches; the RPX and case-aggregator pages for this docket show an "Attorney" field but exposed no populated counsel list in the retrieved content.
  • Local counsel. E.D. Tex. practice ordinarily requires at least one attorney admitted in the district; I found no named local (Texas) counsel for Maxeye in the sources I could reach. I am not going to name a Marshall/Tyler firm by inference. Earlier in this case the parties filed an unopposed motion to substitute plaintiff's lead attorney (June 2, 2025) and a defense notice designating an attorney in charge (June 4, 2025) — those docket entries would identify the responsible defense attorney precisely, but the underlying filings were not accessible to me.
  • Any in-house counsel for Maxeye (no such attorney appears in the public record I could access).

B. If "defendant" is read as the PTAB "Defendant(s)" field (Wacom Co. Ltd., Patent Owner)

Wacom, as Patent Owner in IPR2025-01495, was represented by Bunsow De Mory LLP:

Name Role Firm Note
Wayne M. Helge Lead counsel (Patent Owner's Mandatory Notice) Bunsow De Mory LLP Registered practitioner; frequent PTAB counsel for Wacom in the stylus-portfolio IPRs.
James T. Wilson Backup counsel Bunsow De Mory LLP Named in the same Mandatory Notice.
Richard C. Lin Backup counsel Bunsow De Mory LLP Named in the same Mandatory Notice.

(This is the same set identified in the earlier "Plaintiff representatives" section, where the search results showed only the Patent Owner's Mandatory Notice — i.e., the only counsel names recoverable for IPR2025-01495 were Wacom's, not the Petitioner's. The Petitioner's IPR counsel for Maxeye/Shenzhen Qianfenyi was not identifiable from available sources; note that at least one sibling IPR, IPR2025-01596 against Wacom's '277 patent, was also filed by Shenzhen Qianfenyi: https://cases.arcticinvent.com/us/patent/us/petition-as-filed/ipr2025-01596/.)

C. Important status update that supersedes part of the prior sections

The previously generated sections state that, after the January 9, 2026 non-institution, "the district court case … continues to proceed without a PTAB ruling on the validity of the '866 patent." That is now outdated. Public announcements dated August 27–28, 2026 state that Wacom and Maxeye settled the E.D. Tex. case; as part of the resolution Maxeye agreed to a consent judgment acknowledging infringement, that Wacom's asserted patents are valid, and that Wacom's IP is essential to the USI protocol, plus a royalty-bearing license, and the case was dismissed (future disputes routed to binding arbitration rather than court). Sources: https://in.marketscreener.com/news/wacom-resolves-patent-infringement-case-against-pen-manufacturer-shenzhen-qianfenyi-intelligent-te-ce7858dedb8df624 and the Maxeye releases cited above. This means the invalidity theory that failed institution in IPR2025-01495 was never adjudicated, and validity of the '866 patent now stands admitted via consent judgment rather than litigated.

D. Confidence and sourcing caveats

  • High confidence: Dorsey & Whitney LLP represented Maxeye (defendant) in 2:24-cv-00702; Hui Shen (Washington, D.C.) is a named defense attorney.
  • Medium confidence: Shannon Bjorklund (Minneapolis) appeared on the defense team — sourced to her Law360 matter listing rather than to a docket entry.
  • Not established / not fabricated: the complete counsel-of-record roster, local Texas counsel, and defense in-house counsel for the infringement action; and the identity of Maxeye's Petitioner counsel in IPR2025-01495. These would require PACER docket-entry text (appearances, Rule 83.4/AT-1 designations, mandatory notices), which was not retrievable here.