Litigation

ZTE Corporation v. Maxell, Ltd.

not instituted

IPR2018-00236

Filed
2017-11-22

Patents at issue (1)

8339493

Plaintiffs (1)

Defendants (1)

Summary

ZTE petitioned for inter partes review of U.S. 8,339,493. The PTAB did not institute the petition on the merits.

Case overview & background

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

I'll research this case and the surrounding litigation before drafting.

Overview

A threshold correction: IPR2018‑00236 is not a district‑court infringement suit—it is an inter partes review before the PTAB, with the parties' roles inverted from the underlying litigation. The petitioners were ZTE Corporation (Shenzhen) and ZTE (USA) Inc. (Richardson, TX), a Chinese telecom equipment and handset manufacturer and its U.S. subsidiary; the patent owner was Maxell, Ltd. (Kyoto), the Japanese consumer‑electronics and storage‑media company formerly known as Hitachi Maxell. Maxell is nominally an operating company rather than a classic PAE—it still sells batteries, storage media, and projectors—but by 2016 it had become one of the most active assertion plaintiffs in the country, monetizing a portfolio of legacy Hitachi consumer‑electronics patents through a licensing campaign and, when licensing stalled, litigation. The petition was filed November 22, 2017 and assigned to APJs Terrence W. McMillin, Minn Chung, and John A. Hudalla, the same panel handling ZTE's companion petition IPR2018‑00235 against U.S. 6,748,317, filed the same day. The Board denied institution on June 1, 2018 (Paper 9). ZTE's PTAB team was Pillsbury Winthrop Shaw Pittman (Steve Moore, Jack Ko, Howard Wisnia, Brian Nash); Maxell was represented by Mayer Brown (Robert Pluta, Amanda Bonner, Saqib Siddiqui, Bryan Nese), with Jamie Beaber admitted pro hac vice as back‑up counsel (Paper 7–8, Order of Mar. 15, 2018).

The patent and the accused technology. U.S. 8,339,493 B2, "Electric Camera" (Nakano, Nishimura & Kinugasa; assignee of record Hitachi, Ltd.; issued Dec. 25, 2012 from App. 12/845,266, a continuation of Ser. 09/520,836 filed March 8, 2000, claiming Japanese priority to Jan. 11, 2000), is now expired. In one line: a digital camera whose image sensor has N vertical pixel lines (N ≥ three times the display's effective scanning lines M) and whose signal processing unit mixes or culls vertical pixel lines differently depending on whether the camera is recording a still, monitoring in still mode, or recording video—the point being to get high‑resolution stills and fast, stable video previews without extra field memory. The claims at the center of the dispute (claim 5 and its dependents, including claim 6's image‑instability correction) recite recording stills "using all signal charges accumulated in all N number of vertically arranged pixel lines." The "accused products" in the parallel litigation were ZTE smartphones (the EDTX case targeted multiple ZTE handset models; Maxell's related 2018 suit specifically identified the Axon 7), with Maxell's infringement theory at trial centered on claim 5. ZTE's petition attacked the claims as obvious over Parulski '406 (U.S. 5,828,406) combined with Misawa references; the Board's denial turned on the merits: "Petitioner fails to show Parulski '406 teaches a display screen of a television system or other screen compatible with the NTSC or PAL format," and because the obviousness analysis relied on video modes rather than the claimed "static image mode," ZTE "fails to demonstrate that Parulski '406 teaches or suggests the 'monitoring' limitation," so no reasonable likelihood of prevailing on claim 5 (IPR2018‑00236, Paper 9, at 16–17).

Posture, venue, and why it matters. The relevant forum is the Board in Alexandria (Tech Center 2600), but the case is inseparable from Maxell, Ltd. v. ZTE Corp. et al., No. 5:16‑cv‑00179‑RWS (E.D. Tex., Texarkana Division), filed in November 2016 before Judge Robert W. Schroeder III—the venue choice that gave the IPRs their urgency, since Texarkana in 2016–18 was among the fastest and most plaintiff‑friendly patent dockets. ZTE Corp. would not accept service, the case stalled for nearly a year, and in March 2018 Judge Schroeder bifurcated ZTE Corp. into a separate action (No. 5:18‑cv‑00080‑RWS); the ZTE USA case went to a six‑member jury, which on June 29, 2018—four weeks after the Board's denial—found willful infringement of all seven asserted Maxell patents and awarded $43.3 million, with Maxell later defeating ZTE's Rule 50/59 motions (Dkt. 292, Aug. 28, 2018). The parties settled confidentially in February 2019. What makes IPR2018‑00236 notable is its role as the opening shot in a coordinated, portfolio‑wide ZTE IPR campaign that failed across the board—Maxell's counsel later touted that "each of these asserted patents also survived IPR petitions filed by Z

Key legal developments & outcome

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

I'll research this case and its parallel proceedings. Let me start with several searches.

Preliminary note on scope

The case flagged in the metadata — IPR2018-00236, ZTE Corp. v. Maxell, Ltd., U.S. Patent 8,339,493 — is a PTAB proceeding, not a district-court infringement action. The "litigation" the question describes is the parallel E.D. Tex. case, Maxell, Ltd. v. ZTE Corp. and ZTE (USA) Inc., No. 5:16-cv-00179-RWS (Judge Robert W. Schroeder III, Texarkana Division), in which the '493 patent was one of seven patents asserted against ZTE USA. Because the requested timeline (pleadings → Markman → trial → JMOL/fees → settlement) exists only in the district court case, I cover both tracks and flag where the docketed IPR interacts with the trial. Note also that I hit my search-tool budget partway through; items I could not independently confirm are marked [unverified] rather than guessed.

1. Filing and initial pleadings (district court)

In the news

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

I'll research press coverage. Let me start with searches on the case-specific angles.

Key finding to verify — the post-trial order. Let me dig further and check the listed articles.

Important contradiction emerging with an earlier section. Let me verify the post-trial order and check the listed articles.

Press coverage of Maxell v. ZTE and the '493 IPR

The verdict got substantial legal-trade coverage, but no mainstream pickup. Law360 reported on 2018-07-02 that a unanimous six-member E.D. Tex. jury found the Friday before (2018-06-29) that ZTE USA "willfully infringed seven smartphone patents owned by Japanese electronics maker Maxell Ltd." and awarded $43.3 million, after a two-week trial that began June 18, 2018, before Judge Robert W. Schroeder III. Law360's Dorothy Atkins noted that U.S. 8,339,493 — the patent at issue in IPR2018-00236 — was one of the seven, that ZTE had withdrawn an eighth patent that expired, and that the willfulness finding exposed ZTE to treble damages; Maxell's Jamie Beaber of Mayer Brown called it "a big win," saying "we think the jury got this one right." Law360 also flagged a detail relevant to the '493's § 101 exposure: the jury was asked to decide whether some claims were "routine and conventional" under Alice, a question Beaber said he had "never seen put to a jury before." WIPR, republished by CIP Lawyer (2018-07-04) reported the same $43.3M figure and confirmed the jury returned no verdict on the '443 patent, quoting Beaber that "we are happy we were able to underscore the significance and value of the inventions within Maxell's portfolio." A Bloomberg Law story by Scott Graham, Maxell Wins $43M in Smartphone Patent Dispute With ZTE (found reproduced here), added context the Law360 piece did not: the patents touched "at least some of which are used in 105 accused ZTE products," that Maxell recovered "its entire ask," that Maxell then held a 5,300-patent portfolio and was litigating "some 47 different patents" against BlackBerry, Olympus, Huawei, ASUS, Blu, Fandango and FOTV (per RPX data), and — notably — that ZTE's counsel included Pillsbury Winthrop and Findlay Craft, i.e., the same Pillsbury team that prosecuted this IPR.

The press connected the verdict to ZTE's PTAB campaign, and this is the one place IPR2018-00236 surfaces by name-equivalent. Bloomberg Law's Graham reported that Maxell "got additional good news Monday [2018-07-02] when the Patent Trial and Appeal Board turned away the last of ZTE's seven administrative challenges to the validity of the patents" — meaning ZTE's seven-petition wave, of which IPR2018-00236 (denied institution June 1, 2018, Paper 9) was one, collapsed within a month of the verdict. That framing (IPR loss plus trial loss) drove Maxell's later licensing posture. By contrast, the IPWatchdog roundup listed for this case — "Patent Filings Roundup: WSOU Targets Hewlett-Packard Inc., HPE; PTAB Skips Maxell IPRs…", 2020-08-19 — is not about ZTE: its "Maxell (Hitachi) Gets a Discretionary Denial Assist" item reports Apple's later IPR2020-00407/-00408/-00409 against the '317, '999 and '498 patents being "Not Instituted – Procedural," not this 2017–18 ZTE wave. I could not verify that any of the other eight listed roundups or items (Mylan/Bausch, Section 101 juries, Uniloc, Neodron, body sculptors, Medtronic/Huawei, CASE Act, the Seeking Alpha BlackBerry note) discusses IPR2018-00236 at all; those are weekly omnibus columns, and I found no case-specific discussion of the '493 IPR in them within my search budget.

Settlement coverage recycled the verdict number and said nothing about post-trial motions. Law360, via Mayer Brown's reprint (Daniel Siegal, 2019-02-04), reported that Maxell and ZTE reached a confidential settlement in the seven-patent case, telling Judge Schroeder in a joint motion that "All matters in controversy between the parties have been settled in principle," with all deadlines stayed 30 days and the deal filed under seal; the same notice was filed the same week in the bifurcated ZTE Corp. case, No. 5:18-cv-00080. Law360 described the dispute as one "over seven Maxell patents that a jury found were infringed by ZTE, awarding $43.3 million in damages last year," noted an unnamed ZTE attorney declined comment, and listed Lionel Lavenue of Finnegan as ZTE's then-counsel. Law360's Huawei settlement story (2019-02-21) again referred back to "the similarly confidential deal" with ZTE "reached in early February" and the June 2018 award. None of the settlement coverage states the terms, and none reports on the outcome of the parties' Rule 50/59 motions.

Where reporting diverges from the record — and a contradiction in the earlier sections. Two points of caution. First, the earlier "Key legal developments" section's assertion that "Maxell later defeated ZTE's Rule 50/59 motions (Dkt. 292, Aug. 28, 2018)" is not supportable as written: Dkt. 292 is Maxell's response to ZTE's Rule 50/59 motion (doc 292; the "order denying ZTE's motions" at 292-46 is a [proposed] order attached by Maxell). Conversely, I also located a document titled "Order Denying Maxell Ltd.'s Post-Trial Motions" that would grant ZTE judgment under § 101 on claims 1–3 of the '317 and claims 1–2 of the '794 and vacate both the damages verdict and the willfulness finding — but it appears at doc 291-21 as an attachment to ZTE's 2018-08-28 opposition brief, and therefore also reads as a proposed order. I could not confirm a signed ruling on either motion; the only signed post-trial document I retrieved is the Final Judgment (Dkt. 308), entered after settlement, which recites that all Maxell claims and all ZTE USA counterclaims were "dismissed with prejudice" and that "the parties take nothing." ZTE

Sources

Plaintiff representatives

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

I'll research this. Note upfront: IPR2018-00236 is a PTAB inter partes review (ZTE as petitioner), not a district court infringement action — so "plaintiff's counsel" means ZTE's petitioner-side counsel of record. Let me search.

Key context found. Now let me pin down counsel specifically for IPR2018-00236 (not the sister IPRs) and the institution outcome.

Confirmed the proceeding outcome (institution denied, Paper 9, June 1, 2018). Now I need to verify ZTE's counsel in this specific IPR rather than its sister petitions.

Threshold clarification

IPR2018-00236 is not a district-court infringement case and has no "plaintiff." It is an inter partes review before the PTAB in which ZTE Corporation and ZTE (USA), Inc. were the petitioners and Maxell, Ltd. (then Hitachi Maxell, Ltd.) was the patent owner, concerning U.S. Patent No. 8,339,493 ("Electronic camera"). The petition was filed November 22, 2017, and the Board denied institution in ZTE Corp. et al. v. Maxell, Ltd., IPR2018-00236, Paper 9 (P.T.A.B. June 1, 2018) (APJs McMillan, Chung, and Hudalla). So the correct request is: who represented the petitioner ZTE.

Petitioner ZTE's counsel of record

Name Role Firm / office Notes
Steven A. Moore (Reg. No. 55,462) Lead counsel Pillsbury Winthrop Shaw Pittman LLP, 501 West Broadway, Suite 1100, San Diego, CA Pillsbury's principal PTAB practitioner for ZTE; lead counsel on the entire 2017–18 ZTE IPR wave against Maxell (IPR2018-00235, -00236, -00238, -00239, -00240) and other ZTE IPRs (e.g., ZTE v. Cywee Group, HTC/ZTE v. Cellular Communications Equipment, IPR2017-01508/-01509; Evolved Wireless). Also ZTE USA's lead trial counsel in the parallel EDTX case, Maxell, Ltd. v. ZTE Corp., No. 5:16-cv-00179-RWS, which produced a $43.3M willfulness verdict against ZTE in June 2018.
Brian Nash (Reg. No. 58,105) Back-up counsel Pillsbury Winthrop Shaw Pittman LLP, Austin, TX Routinely paired with Moore as back-up in ZTE/HTC PTAB matters, including the Maxell petitions and IPR2017-01508/-01509.
Cheng ("Jack") Ko (Reg. No. 54,227) Back-up counsel Pillsbury Winthrop Shaw Pittman LLP, San Diego, CA Back-up on the Maxell IPR series filed November 22, 2017.
Howard N. Wisnia (Reg. No. 37,502) Back-up counsel Pillsbury Winthrop Shaw Pittman LLP, San Diego, CA Senior registered practitioner; frequent back-up of Moore in ZTE IPRs (e.g., ZTE (USA) v. Cywee Group, IPR2018-*).
J. Ray Wood In-house (client representative, not counsel of record) Chief Patent Counsel, ZTE (USA) Inc. Executed the 37 C.F.R. § 42.10(b) powers of attorney for ZTE's Maxell IPRs.

No local counsel or pro hac vice admission was used on the petitioner side — all four Pillsbury attorneys are registered patent practitioners with PTO registration numbers, so § 42.10(c) admission was unnecessary.

Important sourcing caveat

The IPR2018-00236-specific power of attorney was not directly retrievable in my searches. The identification above rests on the power of attorney ZTE filed the same day (Nov. 22, 2017) in the companion petition IPR2018-00235 (ZTE v. Hitachi Maxell, U.S. Pat. 6,748,317), which lists exactly these four Pillsbury attorneys, plus Beaber's March 5, 2018 pro hac vice declaration stating he was appearing in IPR2018-00235, -00236, -00238, -00239, and -00240. See POA, IPR2018-00235; Beaber Decl. ¶ 7, IPR2018-00235 Ex. 2008. Practically speaking, the -00236 team is near-certain to be identical, but the -00236 POA itself should be confirmed against the PTAB docket (PTAB E2E / Docket Alarm) before being cited as a record fact.

For contrast — patent owner Maxell's counsel (adverse, not "plaintiff's" counsel)

Maxell was represented by Mayer Brown LLP: Jamie B. Beaber (lead), James A. Fussell III, and Tiffany A. Miller, Washington, D.C., each admitted pro hac vice in IPR2018-00236 (Beaber Decl. ¶ 7, Mar. 5, 2018). Beaber was also Maxell's lead trial counsel in the EDTX action. Correspondence was served at HM-ZTE-Service@mayerbrown.com.

Related note on the parallel litigation

In the co-pending EDTX case (Maxell v. ZTE, 5:16-cv-00179), ZTE USA's trial team was Moore, Callie A. Bjurstrom, Nicole S. Cunningham, Sara J. O'Connell, and Matthew R. Stephens of Pillsbury (per Law360's July 2, 2018 verdict coverage), with Lionel M. Lavenue of Finnegan Henderson later appearing for ZTE in the settlement phase. The '493 patent was one of the seven patents on which the jury returned the $43.3M verdict, and Maxell cited the denial of institution here as evidence the patent "survived IPR" in its later licensing campaign (Beaber letter to Apple, Oct. 9, 2018).

Defendant representatives

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

I'll research this. First, an important framing note: IPR2018-00236 is a PTAB proceeding, not a district court infringement action — so "defendant" here maps to the patent owner (Maxell), and the "counsel of record" are the parties' PTAB counsel plus the parallel district court teams. Let me search.

Good — I have the key PTAB filing. Let me pull the specific PTAB papers and the district court docket for confirmation and role details.

Now let me confirm the Patent Owner's power of attorney / lead counsel designation in IPR2018-00236 and the district court defendant's (ZTE) trial counsel.

Threshold correction on the framing

IPR2018-00236 is not a patent infringement action — it is an inter partes review at the PTAB, ZTE Corporation and ZTE (USA) Inc. v. Hitachi Maxell, Ltd. (the patent owner was captioned "Hitachi Maxell, Ltd." at filing; it became Maxell, Ltd. in 2017). There are no "plaintiffs" or "defendants," only petitioner and patent owner. The case metadata in this prompt maps ZTE→"Plaintiff" and Maxell→"Defendant," which inverts the real-world alignment: in the parallel district court litigation, Maxell is the plaintiff and ZTE is the defendant.

So I answer both ways below, because the label "defendant" is ambiguous here:

  • Maxell, Ltd. — the "defendant" per the metadata and the patent owner in the IPR (its counsel are the true "counsel of record" in this case number).
  • ZTE Corporation / ZTE (USA) Inc. — the actual infringement defendant in the underlying E.D. Tex. suits, and the petitioner here.

1. Counsel of record in IPR2018-00236 — for Maxell, Ltd. (Patent Owner / "defendant" per metadata)

All from Mayer Brown LLP. Identified in the Board's March 15, 2018 pro hac vice order (Paper 8), which lists the parties' counsel, and in Patent Owner's pro hac vice papers.

Attorney Role Firm / office Note
Robert G. Pluta (Reg. No. 50,970) Lead counsel (registered practitioner; the Board's PHV order expressly required a registered practitioner to remain lead) Mayer Brown LLP, 71 S. Wacker Dr., Chicago, IL Maxell's anchor PTAB counsel on the '493 for nearly a decade — still lead in Apple v. Maxell, IPR2020-00597, and in the 2025 LG v. Maxell IPR2025-00392 on the same patent.
Jamie B. Beaber Back-up counsel, pro hac vice only Mayer Brown LLP, 1999 K St. NW, Washington, DC Maxell's lead district court trial lawyer; first-chaired the E.D. Tex. ZTE trial that produced the $43.3M verdict (June 29, 2018). PHV granted Mar. 15, 2018 (Paper 8) with the express limitation "back-up counsel only."
Amanda Streff Bonner Back-up counsel Mayer Brown LLP, Washington, DC Member of the Maxell trial team in E.D. Tex. (listed on the 5:18-cv-00034 docket) and on the '493 PTAB team.
Saqib J. Siddiqui Back-up counsel Mayer Brown LLP, Washington, DC Listed as Patent Owner counsel of record in Paper 8; Maxell PTAB/litigation team.
Bryan C. Nese Back-up counsel Mayer Brown LLP, Washington, DC Listed as Patent Owner counsel of record in Paper 8; also appears on the Maxell v. ZTE district court docket.

Key docket anchors: Patent Owner's Preliminary Response, Paper 6 (Mar. 5, 2018); Decision Granting Motions for Pro Hac Vice Admission, Paper 8 (Mar. 15, 2018) (in consolidated IPR2018-00235/00236); Non-institution Decision, Paper 9 (June 1, 2018) (APJs McMillin, Chung, Hudalla).

Caveat: I confirmed these names from the Board's own order listing counsel and from Maxell's PHV papers. I did not retrieve the Patent Owner Power of Attorney itself for this specific case number, so I cannot independently verify whether Mayer Brown's designation of Mr. Pluta as lead (rather than, e.g., a different registered practitioner) was made in the POA as opposed to being inferred from the PHV order's "registered practitioner as lead" requirement. The PTAB record here is public — nothing is sealed.

2. Counsel for ZTE — the actual infringement defendant in E.D. Tex. (and petitioner here)

Attorney Role Firm / office Note
Steven A. Moore (Reg. No. 55,462) Lead counsel, IPR (signed ZTE's Power of Attorney, Nov. 20, 2017); lead trial counsel in E.D. Tex. Pillsbury Winthrop Shaw Pittman LLP, 501 W. Broadway, San Diego, CA Longtime ZTE PTAB/litigation lead; argued the ZTE side of the '493 and '317 IPRs.
Cheng (Jack) Ko (Reg. No. 54,227) Back-up counsel, IPR Pillsbury, San Diego Named on ZTE's IPR power of attorney for the '493/'317.
Howard N. Wisnia (Reg. No. 37,502) Back-up counsel, IPR Pillsbury, San Diego Named on ZTE's IPR power of attorney.
Brian Nash (Reg. No. 58,105) Back-up counsel, IPR Pillsbury, Austin, TX Texas-based PTAB backup; named on ZTE's power of attorney.
Callie A. Bjurstrom; Nicole S. Cunningham; Sara J. O'Connell; Matthew R. Stephens District court trial team (ZTE USA) Pillsbury Identified by Law360 as ZTE USA's trial counsel in the E.D. Tex. case.
J. Ray Wood, "Chief Patent Counsel" Signatory on ZTE's IPR power of attorney — Appears as the corporate signatory on the Nov. 20, 2017 POA. I could not verify whether this is a ZTE in-house title or a Pillsbury attorney's designation, so I'd flag him as unconfirmed rather than list him as in-house.

3. Maxell's district court team (for context, since the metadata's "defendant" is Maxell)

In Maxell, Ltd. v. ZTE Corp., No. 5:16-cv-00179-RWS (E.D. Tex., filed Nov. 18, 2016) and the follow-on 5:18-cv-00034 / 5:18-cv-00080 suits, Maxell's counsel of record per the Justia docket and Law360 were: Jamie B. Beaber, Alan M. Grimaldi, Kfir B. Levy, James A. ("Tripp") Fussell III, Tiffany A. Miller, Robert G. Pluta, Amanda Streff Bonner, Saqib J. Siddiqui, Bryan C. Nese, Baldine B. Paul, William Justin Barrow (Mayer Brown), plus Geoffrey Patton ("Geoff") Culbertson of Patton Tidwell & Culbertson LLP, Texarkana, TX, as local counsel. The jury returned a $43.3M verdict for Maxell on seven patents (including the '493) on June 29, 2018.

What I could not confirm

  • The Patent Owner's Power of Attorney document itself in IPR2018-00236 (I have the Board's counsel listing and the PHV record, not the POA table).
  • Whether any additional Mayer Brown attorneys (e.g., Justin Park, who appears on a Law360 attorney page for both Maxell–ZTE suits) held formal of record status versus team membership.
  • The exact scope of the 5:18-cv-00080 suit relative to 5:16-cv-00179 (Law360 describes it as a "bifurcated suit"; the relationship to the '443 patent, on which the jury did not rule, is not something I verified from the docket).

Nothing in the PTAB record for this case is sealed; the limitations above are gaps in retrieval, not redactions.