ZTE Corporation et al. v. Maxell, Ltd.

Case overview — ZTE Corp. et al. v. Maxell, Ltd., IPR2018-00240 (U.S. Patent No. 8,098,695)

The parties. The petitioners are ZTE Corporation, the Shenzhen-based global telecom-equipment and handset manufacturer, and its U.S. subsidiary ZTE (USA) Inc. (headquartered in Richardson, Texas, with other Texas facilities), which sells ZTE-branded phones into the U.S. market. The patent owner is Maxell, Ltd. (Tokyo), the successor to Hitachi Maxell, Ltd. and a descendant of Hitachi's consumer-electronics business. Maxell is an operating company — it still makes and sells batteries, storage media, projectors and industrial/IoT products — but since roughly 2013 it has run one of the more active patent-assertion programs in the consumer-electronics space, with Mayer Brown LLP (Jamie B. Beaber's team) as lead litigation counsel, targeting Apple, Samsung, Huawei, LG, Motorola, Kyocera, BLU, Asus, Vizio and ZTE. Defendants and commentators generally treat Maxell as a hybrid: a real manufacturer whose revenue strategy leans heavily on licensing letters backed by infringement suits, rather than a pure PAE. (Mayer Brown/Law360, Feb. 2019, https://www.mayerbrown.com/-/media/files/news/2019/02/maxell-zte-reach-settlement-after-43m-patent-verdi.pdf; Beaber letter to Apple, Oct. 9, 2018, https://www.docketalarm.com/cases/PTAB/IPR2020-00407/...)

The technology and the patent. The accused technology is ZTE's U.S.-sold smartphone line — most prominently the ZMAX 2, Axon 7 and Max Duo LTE, plus the broader Blade/Grand X/Axon/Nubia families identified in the pleadings. U.S. Patent No. 8,098,695 (issued 2012; a continuation of U.S. Patent No. 7,447,241, which is itself a continuation of the '491 patent) is an audio-decoding patent: it claims a multiplexed audio-data decoder in which a plurality of decoding program codes for different compression/encoding formats are stored in an external ROM, a controller detects a change in format and transfers the appropriate code into an internal RAM, and the DSP then "begins decoding processing" using that code — the stated purpose being format flexibility without a large built-in ROM. Asserted claims 1 and 4 additionally require a demultiplexer that extracts the user-designated audio stream from a packet group using packet attribute information and recovers the compression/encoding method from header information. In the parallel Huawei case, Judge Schroeder held the '695 preambles limiting and construed the "packetized audio data sequences…" term (Maxell Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668 (E.D. Tex. 2018), https://www.courtlistener.com/opinion/[7329083](/patent/7329083)/maxell-ltd-v-huawei-device-us-inc/). The '695 is one of eight patents originally asserted in the underlying litigation (the others: 5,396,443; 6,748,317; 8,339,493; 8,736

I'll research this case. Note that the metadata describes a PTAB IPR (IPR2018-00240), while the request asks for the litigation chronology — so I'll need to locate the parallel district court suit between Maxell and ZTE and tie the IPR to it.

I've identified the parallel district court case (E.D. Tex. 5:16-cv-00179-RWS). Now let me pin down the IPR2018-00240 decision specifics and the district court's motion practice.

Now let me get the specific IPR2018-00240 docket/decision and the '695 patent details.

Key Legal Developments & Outcome

Scope note / framing

The docket identified in the case metadata — IPR2018-00240, ZTE Corp. et al. v. Maxell, Ltd. (PTAB, filed 2017‑11‑22) — is one of seven inter partes review petitions ZTE filed against Maxell's asserted patents, and it was denied institution. The infringement litigation it shadowed is:

Maxell, Ltd. v. ZTE Corporation and ZTE USA Inc., No. 5:16‑cv‑00179‑RWS (E.D. Tex., Texarkana Div.), filed 2016‑11‑18, before Judge Robert W. Schroeder III.

That case went to a two‑week jury trial in June 2018, produced a $43.3 million willful‑infringement verdict, and settled confidentially in February 2019 before post‑trial motions were decided. A full chronology follows. Where I could not verify a fact against a primary source, I say so.

---

1. Filing and initial pleadings

Answer/counterclaims: ZTE answered and

I'll search several angles to see what press coverage exists for this particular IPR.

Press coverage of ZTE Corp. v. Maxell, Ltd., IPR2018-00240

Bottom line first: I found no published article anywhere that discusses IPR2018-00240 by number, by caption, or as a standalone proceeding. No outlet covered the petition's filing, the patent owner's response, or the denial of institution as an event in itself. The proceeding surfaces in the press only as one of a batch of seven IPR petitions ZTE filed against Maxell's smartphone portfolio on 2017-11-22, and the only press acknowledgment of the denials I could locate is a single sentence in coverage of the parallel district court case. That sentence is the entire press record on the merits outcome.

The nearest thing to coverage is Law.com (Texas Lawyer), which reported on 2018-07-02 that Maxell "got additional good news Monday when the Patent Trial and Appeal Board turned away the last of ZTE's seven administrative challenges to the validity of the patents" — i.e., the denial issued roughly the same week Judge Schroeder's Texarkana jury returned its verdict. That reporting, by its own framing, treats the PTAB denials as a footnote to the jury win rather than as a subject of analysis; it offers no reasoning from the institution decisions, no discussion of the prior art ZTE advanced against the '695 patent, and no docket-level detail. I could not confirm from any press source which of the seven petitions was the one denied that Monday, so attributing the 2018-07-02 denial specifically to IPR2018-00240 would go beyond what the reporting supports. Law360 (Dorothy Atkins) reported the same day that the jury found willful infringement of all seven asserted patents and awarded $43.3 million, expressly noting that the court could treble that figure — and listing the '695 patent among the patents-in-suit. WIPR reported on 2018-07-04 that ZTE and ZTE USA "have been ordered to pay" the $43.3 million, quoting Maxell's lead trial counsel Jamie Beaber of Mayer Brown: "we are happy we were able to underscore the significance and value of the inventions within Maxell's portfolio. The jury absolutely got this one correct." WIPR also characterized the eight patents as relating to "wireless flash drives, multimedia devices, and storage and memory devices" — a description that diverges materially from Law360's account (camera, cellular data transmission, power supply management, two audio decoding patents, pedestrian navigation), and neither matches the '695 patent's actual subject matter of multiplexed audio data decoding. Readers relying on the trade-press descriptions alone would misidentify what the '695 patent covers.

The § 101 thread is where the reporting most clearly goes beyond the bare verdict. Law360 reported that the jury simultaneously found some claims "routine and conventional" for Alice purposes and that Beaber said he had "never seen the question put to a jury before," with the issue left to post-trial motions. That is a genuine analytical observation, but it is counsel's characterization rather than a ruling, and no outlet I found followed up on how the court resolved it — the case instead disappeared into settlement. Law360 (Daniel Siegal) reported on 2019-02-04 that Maxell and ZTE reached a confidential settlement, quoting the joint motion's language that "All matters in controversy between the parties have been settled in principle," with the deal filed under seal; Law360 reported on 2019-02-21 that Huawei settled a companion Maxell suit weeks later, expressly referencing the ZTE deal as the template. Neither article reports any settlement figure. Notably, the press never connected the PTAB denials to the settlement — Law360's settlement story does not mention the IPRs at all, leaving the reader with no indication that Maxell had also prevailed administratively.

Two further points where the record and the coverage diverge. First, Maxell's own counsel correspondence, not the press, is the strongest public statement on the IPR outcome: Beaber's October 9, 2018 letter to Apple asserted that "each of these asserted patents also survived IPR petitions filed by ZTE" and used the ZTE result — both verdict and IPR survival — as a licensing lever against Apple. That is advocacy, not reporting, and should be weighted accordingly. Second, Chinese-language trade press took the story somewhere US outlets did not: EET-China reported on 2018-07-04 that ZTE had filed Chinese invalidation requests against the Maxell patents beginning 2017-05-10, and that the PRB maintained the patents valid in decisions of 2017-10-11 and 2017-10-18 — a parallel administrative campaign that received no English-language coverage I could find. The same piece and a companion iimedia analysis speculated that the verdict increased the pressure on Huawei and advanced a broader thesis that Maxell was targeting Chinese handset makers to force licensing; that is commentator inference, not established fact, and no outlet substantiated it with Maxell statements. Maxell did later assert the '695 patent against Lenovo/Motorola in W.D. Tex. in 2021, but the coverage of those suits treats the '695 patent as portfolio inventory and never mentions IPR2018-00240 — reinforcing that the Board's denial left no independent press footprint.

Sources

• Maxell Scores (\Phi 43M) EDTX Jury Win In ZTE Patent Trial
• From: Wisnia, Howard N
• irbis.fips.ru
• October 9, 2018
• 70. On information and belief, Defendants further infringe the '729 Patent through additional products utilizing the same or rea...
• Maxell, ZTE Reach Settlement After () 43M(Patent Verdict
• Case 5:16-cv-00179-RWS Document 292 Filed 08/28/18 Page 1 of 92 PageID #: 18771
• ZTE to pay Maxell $43m for infringing smartphone patents
• Maxell Ltd. v. Huawei Device U.S. Inc. - Maxell contends that the claimed "multiplexed audio data decoder apparatus" does not recite such an audio decoder and does not r...
• Complaint analysis | 6:21-cv-01169 | Maxell Ltd v. Lenovo Group Ltd | Ex Parte
• Maxell, Ltd. v. LENOVO GROUP LTD., et al - This case was last updated from U
• ZTE to pay Maxell $43m for infringing smartphone patents

I'll investigate the docket and PTAB records for counsel of record.

Good leads. Now let me verify the IPR2018-00240 docket specifically and confirm each side's counsel of record.

Let me pin down the IPR2018-00240 docket entries and confirm which petition covers the '695 patent.

Preliminary correction to the task framing

IPR2018-00240 is not a patent infringement case — it is a PTAB inter partes review.

I'll research the counsel of record for this proceeding and the underlying district court case.

Counsel of Record — ZTE Corp. et al. v. Maxell, Ltd., IPR2018-00240 (U.S. Patent No. 8,098,695)

Framing note (important): IPR2018-00240 is a PTAB proceeding, not a district-court infringement action, so there is no "plaintiff/defendant" in the ordinary sense. The case metadata supplied lists Maxell, Ltd. as the defendant — that alignment comes from the underlying E.D. Tex. suit, Maxell, Ltd. v. ZTE Corp., No. 5:16-cv-00179-RWS (E.D. Tex., filed Nov. 18, 2016), where ZTE was the defendant and Maxell the plaintiff. In the IPR, the roles invert: ZTE is petitioner; Maxell is patent owner/respondent. I therefore give both sides below, leading with Maxell (the party the metadata labels "defendant") and then ZTE's petitioner-side team, which is the same Pillsbury team that defended ZTE in Texas.

---

1. Maxell, Ltd. — patent owner / respondent (the "defendant" per case metadata)

Maxell's PTAB team was drawn from its district-court trial team at Mayer Brown LLP:

Sourcing: Maxell's patent-owner power of attorney and counsel designations in the co-filed ZTE petitions (IPR2018-00235, Dec. 12, 2017) list the Mayer Brown registered practitioners; Beaber's PHV declaration expressly covers this case number. No local counsel appears — PTAB practice does not require it, and none was designated in the ZTE petition papers.

Caution against firm confusion: Banner & Witcoff, Ltd. (Scott M. Kelly, Christopher L. McKee, Joshua Davenport) later became Maxell's PTAB counsel in the 2020s (e.g., Motorola Mobility v. Maxell, IPR2022-01348) — that is a subsequent engagement, not the 2018 ZTE matter.

---

2. ZTE Corporation / ZTE (USA) Inc. — petitioner (defendant in the parallel E.D. Tex. case)

ZTE's papers in this seven-petition wave were handled by Pillsbury Winthrop Shaw Pittman LLP:

Sourcing: Petitioner's power of attorney under 37 C.F.R. § 42.10(b) and the counsel-designation table in the co-filed petitions filed the same day (verified on the IPR2018-00235 petition papers, which designate the identical Pillsbury team and service address for "ZTE Corporation and ZTE (USA) Inc."); Beaber's PHV declaration places -00240 in the same batch; the Nov. 2017 certificates of service identify the Pillsbury team as the attorneys of record for ZTE.

Flag / caveat: A separate Banner & Witcoff team — John R. Hutchins (Reg. No. 43,686, lead), C. Andy Mu (Reg. No. 58,216), Shambhavi Patel (Reg. No. 73,478), Gary D. Fedorochko (Reg. No. 35,509), Craig W. Kronenthal (Reg. No. 58,541), Wesley W. Jones (Reg. No. 56,552), Reilley P. Keane (Reg. No. 76,426), Washington, DC — appears in PTAB filings captioned "Counsel for ZTE Corporation and ZTE (USA) Inc." with a dedicated service address (ZTEIPRSERVICE@BANNERWITCOFF.COM). I could not tie that designation to IPR2018-00240; it appears to come from a later/related ZTE filing. Treat Banner & Witcoff as possibly a successor or parallel ZTE PTAB counsel, not as the -00240 team of record absent confirmation.

---

3. Record limitations

• Because the Board denied institution, there was no oral hearing, no scheduling order, and no final written decision; the record is thin — petition (Paper 1), any patent owner preliminary response, and the denial decision. I could not retrieve the text of the -00240 denial decision, so I cannot quote its caption block directly; the counsel designations above are derived from the contemporaneous documents in this petition family and Beaber's PHV declaration that names -00240.
• No filings in this proceeding are sealed to my knowledge; the confidentiality issue in the family was the later district-court settlement, not the IPR papers.
• Neither party used a separate "local counsel" at the Board. If you need district-court local counsel for the infringement case (5:16-cv-00179), note that Maxell's Texarkana local counsel of record appears in the parallel Huawei matter as Geoff Culbertson, Patton, Tidwell & Culbertson, LLP (Texarkana, TX) — I found that designation only in the Huawei service certificate, so I would not attribute it to the ZTE case without pulling the 5:16-cv-00179 docket sheet itself.

Bottom line: For IPR2018-00240, Maxell (respondent/de facto defendant) was represented by Mayer Brown LLP — Robert G. Pluta as lead registered counsel, with Amanda Bonner, James Fussell, Bryan Nese, Saqib Siddiqui and PHV counsel Jamie Beaber and Tiffany Miller — and petitioner ZTE by Pillsbury Winthrop Shaw Pittman LLP — Steven A. Moore as lead, with Brian Nash, Jack Ko and Howard Wisnia, coordinated in-house by Chief Patent Counsel J. Ray Wood.