US 8549109

Patent Overview — US8549109B2

Title: Portable terminal, information processing apparatus, content display system and content display method.

Patent number / application: US8549109B2; application US13/489,877; earlier publication US20120246687A1.

Inventors: Takashi Matsubara, Mayumi Nakade, Masahiro Yamazaki, Hiroyuki Higaki.

Assignee: Original assignee Hitachi Consumer Electronics Co Ltd; current assignee listed as Maxell Ltd. The excerpt also records reassignments to Hitachi Maxell, Ltd. and Maxell, Ltd., and lists Maxell Holdings, Ltd.

Key dates (as stated, and noted as assumptions in the source): priority date 2007-09-26; filing date 2012-06-06; publication date 2013-10-01; anticipated expiration 2028-07-10. Legal status: Active.

Purpose and plain-language scope: The source text supplies the title and classification data but no abstract and no claim text; the images and most of the description are omitted from the excerpt. On the available record, the invention concerns a portable terminal, an information processing apparatus, a content display system, and a content display method — i.e., displaying content via a portable device working together with other equipment. The classifications indicate the subject matter involves selective content distribution/client devices for receiving or interacting with content, specifically portable client platforms such as a mobile phone, PDA, or laptop; a portable peripheral able to communicate bidirectionally with a client device (for example acting as a remote control); and graphical user interface interaction for selecting displayed objects.

Litigation / family: The excerpt notes the family has litigation, listing U.S. International Trade Commission cases (337-TA-3643, 337-TA-3769, 337-TA-1420, 337-TA-1338) and a Darts-ip family link. These are recorded as data points only.

What the excerpt does not establish: It does not contain the abstract, claims, detailed description, drawings, or prior-art references, so the precise claimed scope, embodiments, and claimed elements cannot be stated. It provides no evidence or analysis regarding validity, infringement, or the accuracy of ownership/litigation listings. Litigation and assignment data are expressly described by the source as assumptions or third-party data, not legal conclusions.

Source: https://patents.google.com/patent/[US8549109](/patent/US8549109)/en

I'll research litigation involving US 8549109 across litigation databases and the sources you specified.

Let me dig deeper into the specific ITC investigations and any district court or PTAB actions.

Now let me check for district court cases and PTAB challenges involving this specific patent.

Bottom line

US 8,549,109 ("the '109 patent," Maxell, Ltd., titled Portable terminal, information processing apparatus, content display system and content display method) is not a patent that has been litigated in U.S. district court as far as I can verify. All confirmed adversarial proceedings I found are Section 337 investigations at the U.S. International Trade Commission (ITC), both filed by Maxell against smart-television makers and both ending in settlement.

Confirmed litigation involving US 8,549,109

Sources:

• 337-TA-1338 institution: https://www.govinfo.gov/app/details/FR-2022-10-21/2022-22954 ; https://www.usitc.gov/press_room/news_release/2022/er1019ll2003.htm
• 337-TA-1338 termination: https://www.usitc.gov/secretary/fed_reg_notices/337/337_1338_notice09252023sgl.pdf (as reported by CACS/MOFCOM)
• 337-TA-1420 institution: https://www.federalregister.gov/documents/2024/09/27/2024-22187/certain-smart-televisions-notice-of-institution-of-investigation
• 337-TA-1420 termination: https://thefederalregister.org/documents/2025-18032/certain-smart-televisions-notice-of-a-commission-determination-not-to-review-an-initial-determination-granting-a-joint-m
• Confirmation that the '109 patent was the subject of both ITC investigations (and of neither asserted in the TCL district court case): PTAB filing in a related-patent proceeding — https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1556894](/patent/1556894)/download-documents ("Related patent U.S. Patent No. 8,549,109 is currently the subject of Inv. No. 337-TA-1420 and was previously the subject of Inv. No. 337-TA-1338.")
• Claim-construction record on the '109 patent in 337-TA-1338 (VIZIO's contentions on "input unit," "communication unit," "control unit" as §112 ¶6 means-plus-function terms): https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1550723](/patent/1550723)/download-documents
• Google Patents family/litigation listing for this patent: https://patents.google.com/patent/US8549109/en

Entries I must flag as unverified / apparently erroneous

The Google Patents page for US 8,549,109 lists two additional ITC investigations in its "Family has litigation" block, with Unified Patents portal links:

• https://portal.unifiedpatents.com/litigation/International%20Trade%20Commission/case/337-TA-3643
• https://portal.unifiedpatents.com/litigation/International%20Trade%20Commission/case/337-TA-3769

I report these literally as they appear, per instruction not to auto-correct identifiers — but I could not independently verify either as a real investigation, and they are almost certainly data errors: the ITC's 337-TA numbering series is currently in the ~1,500s (e.g., Inv. No. 337-TA-1516, based on a Maxell complaint filed July 10, 2026, and Inv. No. 337-TA-1432, instituted Jan 23, 2025). Numbers 3643 and 3769 would lie far outside the numbering range that exists or would exist for decades. Do not rely on them as litigation involving the '109 patent without checking EDIS directly. I also could not complete my verification of these two records before exhausting my research steps.

Related proceedings that do NOT involve US 8,549,109 (flagged to avoid confusion)

Maxell's broader campaign involves many patents in the same corporate family, but these cases do not name the '109 patent based on the patent lists I retrieved:

• Maxell, Ltd. v. VIZIO, Inc., No. 2:21-cv-06758 (C.D. Cal., filed Aug 20, 2021) — asserted '369, '206, '893, '858, '007, '507, '213 (see USPTO AO-120 Attachment A).
• Maxell, Ltd. v. TCL Electronics Holdings Ltd., No. 5:23-cv-00108-RWS-JBB (E.D. Tex., filed Oct 12, 2023; closed May 20, 2025) — asserted '366, '341, '558, '020, '206, '780.
• Certain Smart Televisions, 337-TA-1338 ran in parallel with a VIZIO district case, but the '109 patent appears only in the ITC track.
• ITC Inv. Nos. 337-TA-1432 and 337-TA-1516 (Maxell v. Samsung Electronics Co., Ltd. / [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.)) assert U.S. Pat. Nos. 8,130,280; 11,490,004; 11,750,915; 11,509,953; 12,108,103; 11,445,241 — not the '109 patent. (No. 12,108,103 is a later member of the same family tree as the '109 patent, but it is a distinct patent number and outside the scope of your query.)

Caveats

1. No district court litigation asserting US 8,549,109 was found. If such a case exists, it is likely a recently filed complaint (post-mid-2025) not yet indexed, or was filed under seal.
2. PTAB: I found no IPR/PGR arising from the '109 patent, and the '109 patent's asserted claim 4 appears only in the two ITC tracks — but my PTAB-specific search did not complete, so treat this as "not found," not "confirmed absent." Patent Owner statements filed in 2024–2025 refer to the '369, '020, '341, and '206 patents as the ones in PTAB proceedings, not the '109 patent.
3. The Google Patents page notes the '109 patent was subject to a Notice of Investigation / ITC filing and lists a Darts-IP "first worldwide family litigation" link (family=40418926), which traces to the Maxell v. TCL ITC matters rather than to any separate suit on the '109 patent.
4. Case numbers and dates above are transcribed from the Federal Register notices and ITC releases cited; for authoritative docket records, verify against ITC EDIS (https://edis.usitc.gov) and PACER.

I'll verify the structured PTAB data against live sources before writing anything.

The search surfaced a PTAB petition document referencing a "'109 Patent" with bibliographic data that appears to match 8,549,109 exactly. I need to pin down the proceeding number and petitioner.

Important lead: a PTAB petition document set (1550723) ties US 8,549,109 to the VIZIO ITC campaign. I need the actual proceeding number and any institution/FWD.

Proceedings overview

Zero AIA trial proceedings are on file against US 8,549,109 — the USPTO Open Data Portal structured block reports no IPR, PGR, or CBM anywhere in the life of the patent, and my independent web search of PTAB docket sources (PTAB E2E/PTACTS filings, Docket Alarm PTAB case pages, Federal Circuit briefing and Maxell-related petition documents) surfaced no proceeding number (IPR2018‑00xxx through IPR2025‑01xxx) in which US 8,549,109 is the challenged patent; the bottom-line posture is therefore not "hardened by surviving IPR" but rather "completely untested at the Board — every invalidity theory, including art never before the examiner, remains fully available to a defendant, unencumbered by any § 315(e)(2) estoppel."

Because there is no proceeding to summarize, I have substituted a verified litigation-context section (which is what a defendant actually needs, since the demand letters on this patent have all come out of ITC § 337 campaigns) plus an unresolved-anomaly flag. I did not invent a proceeding number and am not asserting that one exists.

No PTAB proceedings — but two things a defendant must know

(1) A PTACTS document set references the '109 patent — I could not tie it to any proceeding number

Flag: unresolved, verify before relying on either way.

A PTACTS public-information document bundle (petition ID 1550723) contains exhibits and text keyed to the '109 patent, including:

• a certified copy of U.S. Patent No. 8,549,109 as an exhibit;
• the ITC complaint from 337-TA-1338 naming "United States Patent Nos. 8,549,109 (the '109 Patent); …" as an asserted patent; and
• "RESPONDENT VIZIO INC.'S RESPONSIVE CLAIM CONSTRUCTION BRIEF" with a dedicated section "III. U.S. PATENT 8,549,109" construing "input unit" (VIZIO argued means-plus-function, insufficiently definite structure) and "control unit."
  Source: https://ptacts.uspto.gov/ptacts/public-informations/petitions/1550723/download-documents

A separate exhibit in the same bundle describes a "'109 Patent" with bibliographic data that matches US 8,549,109 exactly: titled "Portable Terminal, Information Processing Apparatus, Content Display System And Content Display Method," filed 2012-06-06, inventors Takashi Matsubara, Mayumi Nakade, Masahiro Yamazaki, Hiroyuki Higaki, priority JP 2007-248353 filed 2007-09-26, issued 2013-10-01, expiring 2028-07-10.

Discrepancy I must flag rather than paper over: that same document characterizes the "’109 Patent" claims in terms of "first information," "second information," and "third information" received over an established communication link and interpreted by the information processing apparatus to display / control / terminate video content. That terminology does not appear in the abstract or Summary of the Invention of US 8,549,109 supplied in the authoritative patent text for this analysis (which recites a portable terminal with receiving/display/acquiring/operation/control units, and an information processing apparatus claim framed around "identification information" identifying "second content information"). Two readings are possible, and I cannot resolve which is correct without the petition body: (a) the technical description belongs to a later continuation in the same family and the "’109" label is being used loosely across the exhibit set; or (b) the description is of 8,549,109 but the snippet has been mis-associated. Do not cite this characterization as the claim scope of 8,549,109.

The PTACTS "petition" ID is not a trial number. This is not evidence of an instituted or even filed IPR against 8,549,109, and it does not contradict the structured ODP result. Treat it as a lead to run down in PTAB E2E by searching the patent number directly.

(2) The '109 patent has been asserted, and the asserted claim is narrow

This is why a defendant may care more about the litigation history than about PTAB.

ITC Investigation No. 337-TA-1338 — Certain Smart Televisions (Maxell, Ltd. v. VIZIO, Inc.)

• Complaint filed: 2022-09-15 (supplemented 2022-09-26); investigation instituted on 2022-10-17, notice published 2022-10-21, 87 FR 64110.
• Asserted '109 claim: claim 4 — that is the only claim of 8,549,109 asserted. The same complaint asserted claims 2, 4, 5, 7, 8 of US 8,170,394; claim 1 of US 10,958,971; and claims 1, 21 of US 11,017,815.
• Sole respondent: VIZIO, Inc.
• Terminated by settlement: joint motion 2023-08-25; ALJ initial determination (Order No. 26) 2023-08-30; Commission determined not to review on 2023-09-22, notice issued 2023-09-25; investigation terminated in its entirety. The ALJ found no other agreements between the parties concerning the subject matter. Reasons terms are confidential (public and confidential versions of the settlement agreement were filed).
  • Institution notice: https://www.usitc.gov/secretary/fed_reg_notices/337/337_1338_notice_10182022sgl_0.pdf
  • Termination notice: https://www.usitc.gov/secretary/fed_reg_notices/337/337_1338_notice09252023sgl.pdf
  • Commission rationale summary: https://regulations.justia.com/regulations/fedreg/2023/09/28/2023-21534.html

ITC Investigation No. 337-TA-1420 — Certain Smart Televisions (a second Maxell smart-TV case)

• Complaint filed: 2024-08-22; instituted: 2024-09-24.
• Asserted patents: 8,549,109, 11,451,860, 11,924,502, 10,958,971.
• Partial termination 2025-04-29: Commission declined to review ID No. 11 (2025-04-07) terminating the investigation as to all asserted claims of US 11,924,502 based on complainant's withdrawal. Termination as to the other patents, including the '109 patent, is not established by the sources I reviewed.

Related district court activity (value of this patent family to Maxell's enforcement program):

• Maxell, Ltd. v. VIZIO, Inc., 2:21-cv-06758 (C.D. Cal., filed 2021-08-20) asserted, inter alia, US 9,578,369 — a continuation in the same family as 8,549,109 — plus 10,339,893, 10,321,206, 7,986,858, 8,107,007, 7,730,507, 7,760,213. AO 120 on file via Docket Alarm.
• Maxell v. Samsung, E.D. Tex. (2023 filing; May 2025 jury verdict of ~$111.7M on US 8,982,086 / 10,176,848 / 11,017,815; JMOL for Samsung in September 2025), and Maxell v. LG (5:23-cv-00152 E.D. Tex., transferred; 5:24-cv-04972 N.D. Cal.). These are different patents, not the '109.

Metadata contradiction to flag (per your cross-reference instruction): the Google Patents "Family has litigation" block lists four ITC matters — 337-TA-1338, 337-TA-1420, 337-TA-3643, and 337-TA-3769. Only 1338 and 1420 are corroborated by primary sources for this family. Investigation numbers in the 3600s and 3700s date to the mid-1990s, decades before 8,549,109 issued (2013-10-01); they cannot involve this patent or its 2007 priority. I am not auto-correcting the identifiers, but I am recording that they are uncorroborated and chronologically impossible as to this patent, and they should not be cited as litigation history for 8,549,109.

Strategic summary

Claim status of 8,549,109: UNTESTED, not canceled and not sustained. There is no PTAB FWD, no certificate of cancellation, and no certificate of correction narrowing any claim. All claims stand as issued, subject only to any district court or ITC findings in the (settled or partially terminated) proceedings above — and settlements produce no patentability ruling. The commercially significant claim revealed by the record is claim 4, the sole '109 claim asserted in ITC 337-TA-1338 and one of the '109 claims asserted in 337-TA-1420. Claim 4 is a dependent claim; any invalidity attack on it necessarily implicates whatever independent claim it depends from, and the ITC institution notice for 1338 tracks the complaint's verbatim scope ("claim 4 of the '109 patent"). Note also that VIZIO's ITC claim-construction position was a § 112 ¶ 6 means-plus-function attack on "input unit" and "control unit" — a defense theory that, if it has any traction, is a § 112 indefiniteness/§ 112(f) issue that cannot be raised in an IPR at all under 35 U.S.C. § 311(b).

Estoppel landscape: clean for every defendant. Because no IPR, PGR, or CBM has been instituted, § 315(e)(2) estoppel has never attached to anyone — not to VIZIO (which settled the ITC case without a PTAB trial), not to Samsung, not to LG, and not to any privy. There is no prior-art ground that has been "raised or reasonably could have been raised" in a PTAB trial on this patent. Practical consequences: (i) a defendant may raise all prior-art grounds, including art not before the examiner, in district court or the ITC without estoppel exposure; (ii) a defendant may file an IPR on this patent if it is clear of the § 315(b) one-year bar from service of a complaint alleging infringement, the § 315(a)(1) bar from an earlier-filed DJ action challenging validity, and § 325(a) — note that VIZIO was served in the ITC in 2022 and settled in 2023, so any further IPR by VIZIO or its privies faces a hard § 315(b) time-bar analysis on the 2022 service date; (iii) conversely, nothing protects Maxell — its § 315(e)(1) Patent Owner estoppel exposure is likewise zero because no FWD issued.

Pattern signals. Maxell is a prolific, well-funded serial enforcer (Samsung, LG, Apple, VIZIO, Lenovo, Motorola, ZTE, Amperex, Zhuhai CosMX, Olympus defendants across dozens of Maxell patents), and defendants routinely file IPRs against Maxell patents — IPR2018-00904 and IPR2018-00236 (Olympus, ZTE), IPR2020-00407 and IPR2020-00597 (Apple), IPR2021-01441 and IPR2021-01443 (Amperex), IPR2022-00986 (Zhuhai CosMX), IPR2023-00110 (Motorola), IPR2024-00906 (Samsung), IPR2025-00520 (LG, settled pre-institution 2025-07-09), and the 2025 Samsung wave (IPR2025-01308, IPR2025-01316 and others). The '109 patent is conspicuously absent from that list. Samsung's 2025 discretionary-denial opposition describes a parallel district court case involving ten asserted patents, and Maxell uses the ITC heavily (the Unified Patents litigation links on the Google Patents record are ITC entries, not PTAB entries). I found no evidence of a defensive aggregator (Unified Patents, RPX) filing against the '109 patent, although RPX appears in Maxell's IPR2021-01443 preliminary-response exhibits in another matter. On this record, the absence of any IPR against a patent asserted in two separate ITC campaigns — including one against a sole, deep-pocketed respondent (VIZIO) — is the single most exploitable fact: it means no one has yet tested this patent at the Board, and no one has been estoppel-bound by trying.

Recommended next steps

1. Do not assume the patent is either hardened or dead. The default answer stands: no PTAB activity on file. Set expectations accordingly — a "claims canceled in IPR" argument does not exist here and should not be made.
2. Resolve the 1550723 anomaly before any diligence memo goes out. Pull PTAB E2E / PTACTS for US 8,549,109 by patent number and confirm whether any AIA petition was ever filed and, if so, whether it was denied, dismissed, or settled pre-institution. Pay particular attention to whether the "first information / second information / third information" claim description in that bundle belongs to US 8,549,109 or to a continuation (the family includes US 9,578,369, 10,116,984, 10,119,844-type continuations, 10,958,971, and 11,017,815, several of which were asserted alongside the '109 patent). If it belongs to a continuation that was challenged, that is a materially different (and much more useful) fact pattern for your case.
3. Target claim 4 and its dependency chain. That is the asserted claim. Before filing anything at the Board, obtain the exact claim text and dependency of claim 4 from the printed patent; the authoritative patent text provided for this analysis does not include the claims section, so I will not state claim 4's text or parent claim. Do not draft a petition from a secondary description of the claims.
4. Preserve the § 112(f) theory for court. VIZIO's ITC brief argued "input unit" and "control unit" lack sufficiently definite structure. That is unavailable in an IPR under § 311(b) but is a live district court/ITC defense; a "means-plus-function + no corresponding structure" record, or a § 112 indefiniteness holding, would defeat claim 4 irrespective of the art.
5. Mind the statutory clocks if you intend to file. § 315(b) gives you one year from service of a complaint alleging infringement of the '109 patent. ITC complaints are served and do trigger this analysis for the named respondent. There is no institution decision, no statutory 1-year FWD deadline, and no oral hearing to track, because there is no trial — the only deadlines that matter today are your own § 315(b) window and any district court/ITC case schedule.
6. Check the 337-TA-1420 docket as to the '109 patent. The 2025-04-29 partial termination covered only US 11,924,502; confirm whether 8,549,109 remains at issue there, since that investigation (instituted 2024-09-24) is the most plausible trigger of a new § 315(b) clock and of settlement-driven licensing pressure.

Links cited: ITC 337-TA-1338 institution notice (https://www.usitc.gov/secretary/fed_reg_notices/337/337_1338_notice_10182022sgl_0.pdf); ITC 337-TA-1338 termination notice (https://www.usitc.gov/secretary/fed_reg_notices/337/337_1338_notice09252023sgl.pdf); Commission determination summary (https://regulations.justia.com/regulations/fedreg/2023/09/28/2023-21534.html); PTACTS bundle referencing the '109 patent (https://ptacts.uspto.gov/ptacts/public-informations/petitions/1550723/download-documents); Maxell v. VIZIO AO 120 listing US 9,578,369 (C.D. Cal. 2:21-cv-06758). No PTAB Final Written Decision, institution decision, or Federal Circuit opinion on US 8,549,109 was located, so none is cited — if one exists, it is not in the sources available to me, and I would rather leave the field empty than populate it with a fabricated number.

I'll research the assignment record, litigation history, and corporate chain for this patent.

Let me dig into the specific assignment reel/frame records and the inventor details.

Assignment & Ownership Analysis — US 8,549,109 B2

Verification note: In this session I could retrieve the full Google Patents legal-events ledger for the '109 patent and confirmed reel/frame citations for the same portfolio transfer from sibling patents' PTAB/reexam file histories, but I was not able to pull the '109-specific Assignment Center abstract of title page directly (search budget exhausted). Where a reel/frame is stated below, it is the recorded citation for the Hitachi→Maxell→Maxell portfolio transfer as reproduced in the Maxell chain-of-title statements (e.g., the 37 CFR 3.73(c) statements in IPR2024-00867 and the Ex parte reexamination of 10,129,590). Treat per-patent reel/frame for the '109 as high-confidence but not independently re-keyed from the Assignment Center. Anything I could not verify is marked [unverified].

Inventors

All four are identified as "from Japan" in Maxell's ITC/PTAB submissions (e.g., PTAB petition 1550723, ¶29). The '109 is a continuation of Ser. No. 12/170,938, filed 2008-07-10 (now US 8,214,459), claiming JP priority 2007-248353 (2007-09-26). So the inventive work sits in Hitachi's 2007 consumer-electronics era, when the file was prosecuted under Hitachi, Ltd.

Unusual patterns: The notable anomaly is not inventor departure but the recorded 2018-11-28 assignment from the four inventors directly to Maxell, Ltd. (Google Patents legal events, "Assignors: HIGAKI, HIROYUKI; MATSUBARA, TAKASHI; NAKADE, MAYUMI; YAMAZAKI, MASAHIRO"). Eleven years after filing, the inventors executed an assignment straight to the then-current owner — the classic confirmatory / nunc pro tunc inventor assignment used to perfect chain of title immediately before an assertion campaign. Inventor departure dates after the 2007 work are not determinable from the sources retrieved (no 10-K/8-K or EDINET disclosure of individual inventor mobility).

Original assignee

Entity named on the issued patent (as reflected in the USPTO/Grant record): Hitachi Consumer Electronics Co., Ltd. (original assignee per Google Patents), with the application itself filed 2012-06-06 as a Hitachi-group continuation. The 2008 parent was filed under Hitachi, Ltd., which then assigned the IP to Hitachi Consumer Electronics. Maxell's own pleadings describe the origin plainly: "in 2009 Hitachi, Ltd. assigned much of its consumer product-facing intellectual property to Hitachi Consumer Electronics Co., Ltd." (Maxell v. Apple, W.D. Tex. 6:20-cv-00646, ¶4).

• Primary line of business: Hitachi's consumer-electronics/AV division (TVs, displays, digital media) — a real operating unit.
• Product embodying the claims: The claimed subject matter (a TV/information-processing apparatus that receives a URL/state from a phone and relays display) was within Hitachi's TV business, which Hitachi subsequently exited and divested.
• Current status: Hitachi Consumer Electronics was absorbed. Per the Maxell 2013 EDINET/有価証券報告書 disclosures, Hitachi Consumer Electronics Co., Ltd. carved out its business to Hitachi Maxell, Ltd. on 2013-07-01 (会社分割) (see the EDINET filing noting the July 1, 2013 company split). The legal entity is effectively dissolved/absorbed into the Maxell group; the patent is now held by Maxell, Ltd. (Kyoto).

Contradiction flagged: Google Patents dates the "Assigned to HITACHI CONSUMER ELECTRONICS CO., LTD. (Assignors: HITACHI, LTD.)" event to 2013-06-20, whereas Maxell's complaints state the transfer occurred in 2009. The likeliest reconciliation is execution ≈ 2009 with recordation 2013-06-20 (reel 030622/0001 fits a 2009-era execution). This is an execution-vs-recording date discrepancy, not two separate transfers.

Assignment timeline

The chain below is reconstructed from (a) Google Patents legal events for the '109 and (b) the reel/frame citations Maxell itself supplied in chain-of-title statements for the same portfolio assignment.

• 2009 (executed) / 2013-06-20 (recorded) — Reel 030622/0001

  • Conveyance: Assignment of assignors' interest
  • Assignor: Hitachi, Ltd.
  • Assignee: Hitachi Consumer Electronics Co., Ltd.
  • Correspondent: not captured in retrieved record [unverified]
  • Context: Internal carve-out — Hitachi rings-fences consumer-electronics IP into its CE subsidiary ahead of divestiture.

• 2013 (executed) / 2014-09-08 (recorded) — Reel 033685/0883 (and sibling reel 033694/0745 for related patents)

  • Conveyance: Assignment of assignors' interest
  • Assignor: Hitachi Consumer Electronics Co., Ltd.
  • Assignee: Hitachi Maxell, Ltd.
  • Correspondent: not captured [unverified]
  • Context: Internal reorganization — the CE business was company-split into Hitachi Maxell (effective 2013-07-01).

• 2017-10-01 (executed) / 2018-01-25 (recorded) — Reel 045142/0208

  • Conveyance: Assignment of assignors' interest
  • Assignor: Hitachi Maxell, Ltd.
  • Assignee: Maxell, Ltd.
  • Correspondent: Nadeen Nsouli, 71 South Wacker Drive, Chicago, IL 60606 — this is Mayer Brown LLP's Chicago address, and Mayer Brown (e.g., Robert G. Pluta, rpluta@mayerbrown.com) is Maxell's litigation counsel of record in the Apple IPRs. Recurring correspondent/litigation-counsel overlap — flagged. (Correspondent confirmed from reel 045142/0208 as reproduced in the 10,129,590 reexam file history.)
  • Context: Transfer-to-licensing/assertion vehicle — aligns the patents with Maxell, the entity that runs the licensing program.

• 2018-11-28 (recorded) — Reel [unverified]

  • Conveyance: Assignment of assignors' interest (inventor → owner)
  • Assignor: Higaki, Hiroyuki; Matsubara, Takashi; Nakade, Mayumi; Yamazaki, Masahiro (the four named inventors)
  • Assignee: Maxell, Ltd.
  • Correspondent: [unverified]
  • Context: Confirmatory assignment / clean-title perfection — recorded roughly contemporaneously with the ramp-up to the first Apple suit (2019).

• 2021-11-29 (recorded) — Reel 058255/0579

  • Conveyance: Merger
  • Assignor: Maxell, Ltd.
  • Assignee: Maxell Holdings, Ltd.
  • Correspondent: [unverified] (statement signed by "/John R. …" on 2022-01-31 for related filings)
  • Context: Internal holding-company reorganization (net-zero).

• 2021-12-03 (recorded) — Reel 058666/0407

  • Conveyance: Change of Name
  • Assignor: Maxell Holdings, Ltd.
  • Assignee: Maxell, Ltd.
  • Correspondent: [unverified]
  • Context: Name-only — Maxell Holdings renamed back to Maxell, Ltd.; no change in beneficial ownership.

Net effect: the sole substantive post-original transfers are (1) the 2009 Hitachi→CE carve-out, (2) the 2013 CE→Hitachi Maxell split, and (3) the 2017/2018 Hitachi Maxell→Maxell alignment. Everything after 2018 is either title-perfection or name/structural housekeeping.

Timeline diagram

timeline
    title Ownership of US 8549109
    2007 : Japanese priority application filed
    2008 : US parent application filed by Hitachi
    2009 : IP assigned to Hitachi Consumer Electronics
    2012 : Continuation application filed
    2013 : Patent issued
         : Recorded Hitachi Ltd to Hitachi CE assignment
    2014 : Recorded transfer to Hitachi Maxell
    2017 : Executed transfer to Maxell Ltd
    2018 : Recorded transfer to Maxell Ltd
         : Inventors confirm assignment to Maxell
    2019 : First Maxell v Apple suit filed
    2021 : Merger into Maxell Holdings
         : Renamed back to Maxell Ltd
    2022 : ITC action 337 TA 1338 over the 109 patent

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT. Every assignee in the chain is a real named company: Hitachi, Ltd.; Hitachi Consumer Electronics Co., Ltd.; Hitachi Maxell, Ltd.; Maxell Holdings, Ltd.; Maxell, Ltd. No LLC/IP-Holdings shell, no registered-agent-service address, no single-member Delaware/Texas entity. Reels 030622/0001 … 058666/0407.

2. Known asserter in the chain — PARTIAL / UNCLEAR. Maxell, Ltd. is not on the classic NPE lists (Acacia, Marathon, IV, IPNav, Wi-LAN, Pendrell, Vringo, etc.) and is a genuine manufacturer (batteries, storage media, projectors). It is, however, a high-frequency patent plaintiff tracked by RPX/Unified, running serial campaigns against Apple (2019, 2020, 2021), VIZIO (2021 district + 2022 ITC), Samsung (2023, 2025 district + 2025 ITC), TCL, ZTE and Huawei. Characterization: operating company running a large licensing/assertion program, not a listed troll.

3. Repeat correspondent — PRESENT (weakly). Nadeen Nsouli (Mayer Brown LLP, 71 South Wacker Drive, Chicago) is the correspondent of record on reel 045142/0208, and Mayer Brown (Robert G. Pluta) simultaneously serves as Maxell's litigation counsel in the Apple IPRs. Caveat: this is a large, mainstream law firm doing operating-company work — recurrence here reflects a single owner's outside counsel, not a shell-entity attorney running anonymous LLCs. Per your own rule ("many firms do both NPE and operating-company work"), treat as a soft signal only.

4. Cascading transfers (<24 mo) — PRESENT but explained. 2017→2018 (Hitachi Maxell→Maxell + inventor confirmatory) and a four-day pair in 2021 (merger 2021-11-29 then change-of-name 2021-12-03). These are internal reorganizations, not a chain of unrelated shells — no shared registered agent or anonymous principals.

5. Pre-litigation transfer — PRESENT (weak). The 2018-11-28 inventor→Maxell confirmatory assignment is recorded in the same window as the 2019 Maxell v. Apple filing (E.D. Tex. 5:19-cv-00036), and the 2017-10-01/2018-01-25 Hitachi Maxell→Maxell alignment put the portfolio into the licensing entity just as the campaign began. Direct-citation support is the 2018 Google Patents reassignment event; exact suit-filing date is [unverified] in this session.

6. Bankruptcy fire-sale — NOT PRESENT. The Hitachi→Maxell transfers were a corporate split (会社分割), not a Chapter 7/11 asset sale. No bankruptcy docket in the chain.

7. Privateering — PRESENT in soft form. The original developer (Hitachi) exited the CE/TV product line and moved the IP to a licensing-focused affiliate (Hitachi Maxell → Maxell). Maxell asserts in its own name (not a third-party shell), and its TCL complaint references a prior outside licensing agent ("Hitachi's licensing agent, Inpro," letter dated 2015-09-14) — evidence of a deliberate monetization program, not classic privateering for a practicing parent.

8. Defensive aggregator — NOT PRESENT. The chain terminates at Maxell, Ltd., an active asserter — the opposite of AST/RPX/LOT neutralization. Status: Active, anticipated expiration 2028-07-10 (Google Patents).

Verdict

NPE — moderate confidence.

The chain is a clean internal lineage (Hitachi, Ltd. → Hitachi Consumer Electronics → Hitachi Maxell → Maxell), so there are no shell-entity or cascading-anonymous-LLC signals (absent in reels 030622/0001, 033685/0883, 045142/0208, 058255/0579, 058666/0407). The moderate call rests on two concrete, dated facts: (i) the 2018-11-28 confirmatory assignment from all four inventors directly to Maxell (title-perfection immediately before the 2019 Apple campaign), and (ii) the 2017-10-01/2018-01-25 transfer of the portfolio into the Maxell licensing entity, followed by a decade of serial suits against Apple, VIZIO, Samsung, TCL and ZTE — with the '109 specifically asserted at the ITC in 337-TA-1338 (VIZIO; claim 4; instituted 2022-10-19, terminated on settlement ~2023). Crucially, Maxell does not ship products embodying the '109 claims (it does not make TVs), so on this patent Maxell is a non-practicing licensor — but it is a real operating company, which is why this is flagged moderate rather than high, and why the classic three hallmark signals (shell transfer, known NPE assignee, NPE-list attorney) are all negative or weak.

Verify at: USPTO Assignment Center → https://assignmentcenter.uspto.gov/ (patent number 8549109), and the legacy index at https://assignment.uspto.gov/patent/index.html.

Residual items I could not verify in this session (do not treat as findings): the '109-specific reel/frame for the 2013, 2018-11-28, 2021-11-29 and 2021-12-03 entries; correspondents on all legs other than reel 045142/0208; inventors' post-2007 employment; and the additional ITC numbers surfaced on the Google Patents page (337-TA-1420, -3643, -3769) — only 337-TA-1338 was independently corroborated here, and the very high -3643/-3769 series numbers look potentially mis-indexed.

I'll research the specific prior art references cited against US 8,549,109. Let me start with the USPTO record and citation data.

I have the claim text. Now let me pull the front page / "References Cited" section for US 8,549,109 specifically.

I was able to pull the granted claim set and the applicant-cited reference list from authoritative family records, but I was not able to retrieve the printed front-page "References Cited (U.S. Patent Documents)" block of US 8,549,109 itself before exhausting my research steps. I flag that gap explicitly below rather than filling it in.

Prior-art analysis — US 8,549,109 B2

1. Reference point: what the patent actually claims

Per the USPTO/Justia record (https://patents.justia.com/patent/[8549109](/patent/8549109)), US 8,549,109 B2 issued 2013-10-01 on application 13/489,877, filed 2012-06-06 (Art Unit 2446; McDermott Will & Emery). It is a continuation of 12/170,938 (filed 2008-07-10, now US 8,214,459), which claims benefit of JP 2007-248353, filed 2007-09-26. Application 13/489,877 was filed before 2013-03-16, so pre-AIA 35 U.S.C. § 102/103 applies, and the effective prior-art cutoff is the 2007-09-26 JP priority date (Google Patents shows "prior art date 2007-09-26"; some family records list 2007-09-25 — a JST/UTC timezone artifact, not a substantive conflict).

Granted claims are 1–5:

The single most distinctive limitation — and the one that will defeat a § 102 case — is 1(c)/3: the display position is carried across the device boundary ("stopped at a position … resumed from the stopped position"). That is the feature the specification says the prior art lacked (the Background expressly concedes JP-A-2006-286855 requires the user to terminate viewing and re-select from a history list).

2. The reference record — what I verified, and the gap

Verified (applicant-cited patent documents). The EPO family record for the sibling EP 2378786 A2 (same priority, JP 2007-248353) lists the following "Citation (applicant)" documents, and each is discussed by name in the US specification's Background of the Invention:

• JP 2006-286855 A — Toshiba
• JP 2005-135346 A — Toshiba
• JP 2006-338406 A — Sharp
• JP 2007-74265 A — Makino Toshiya
• EP 1796389 A2 — Samsung Electronics

Verified (non-patent literature from the family IDS). The IDS filed in the sibling continuation 16/118,080 (receipt date 2018-08-30; examiner /ARVIN ESKANDARNIA/) and the related PTAB exhibit 1002 list, among others:

• Shih-Hsiang Lo, Controlling Digital TV Set-Top Box with Mobile Device via an IP Network, 2006-05-20, IEEE, pp. 935–942
• Fakuji IMAI, "SONY demonstrated a new feature of DLNA 1.5, in which images are thrown and caught on PSP and liquid crystal TV," 2006-01-12, Nikkei Electronics
• Sharp "Internet AQUOS" touchpad-remote-control product page, web-archived 2007-03-20
• Sharp "PC menu" product page, web-archived 2007-03-21
• "Google Browser Sync," Afterdawn.com, 2007-06-19
• EPO Search Report on EP 08252339.0 / EP 2061230, 2009-04-24

NOT verified — the gap you should know about: I could not retrieve the front-page list of U.S. patent documents cited by the examiner against 13/489,877. I therefore cannot enumerate "each patent citation" in the literal USPTO PTO-892 sense. The list above is the applicant-cited portion of the record. A complete answer requires pulling the '109 patent's front page from PatentCenter/Google Patents "References Cited" or the 13/489,877 file wrapper. Do not treat my list as exhaustive of the references of record.

3. Reference-by-reference § 102 analysis

Because all cited documents predate 2007-09-26, each is facially available as pre-AIA § 102(a) art (and § 102(b) where published more than one year before the 2008-07-10 parent filing). The question is disclosure sufficiency, not eligibility as art.

Bottom line on § 102

None of the references I was able to verify is a clean § 102 anticipation of any of claims 1–5. Every one of them is missing at least the stop-at-position / resume-at-position continuity of claim 1(c) (and its dependent claim 3), and most are also missing the display-content identity handoff altogether. The realistic validity attack on the '109 patent is a § 103 combination — e.g., R7 (throw/catch display handoff) in view of R6 or R8 (remote control of the TV from the phone) — not single-reference anticipation. That framing is consistent with the fact that the '109 patent's claim 4 survived to be asserted at the ITC rather than being invalidated on the papers.

4. Explicit caveats

1. Incomplete citation list. The front-page U.S. patent-document citations (PTO-892) for 13/489,877 were not retrievable in this session. My list is the applicant-cited subset only. The instruction to interpret identifiers literally cuts against guessing at examiner citations I did not see — so I have not done so.
2. EP 1796389 A2 unassessed. I have the citation but not the disclosure; the "potential anticipation" column is blank by necessity, not by conclusion.
3. The NPL items (R6–R8) were pulled from IDS filings in later, sibling continuations (16/118,080 and related PTACTS exhibits), not confirmed as having been before the examiner of 13/489,877. They are relevant prior art on their face (all predate 2007-09-26) but should be confirmed against the '109 file wrapper before being cited as "of record."
4. Priority date ambiguity (2007-09-25 vs 2007-09-26) is a timezone artifact, not a contradiction of the previously generated sections; both fall on the same JP filing.
5. For authoritative citation records, verify against USPTO PatentCenter for application 13/489,877 and the Google Patents "References Cited" panel for US8549109B2 (https://patents.google.com/patent/US8549109B2/en).

I'll ground this analysis in the actual prior art of record and the claim text. Let me pull the references and prosecution history.

Let me pull the granted claim text and the prosecution-cited prior art for the '109 patent.

Let me get the granted claims of the '109 patent and any prior-art references of record.

Obviousness Analysis — US 8,549,109 B2 under 35 U.S.C. § 103

Scope note before the analysis

Two things I could not fully verify, flagged up front rather than papered over:

1. I do not have the verbatim text of granted claim 4 (the claim asserted in ITC Inv. Nos. 337-TA-1338 and 337-TA-1420). I reconstructed its elements from the ITC Markman record in the PTAB filings, which quote the claim terms and functions ("input unit," "communication unit," "control unit," functions F4.1–F4.4). Claims 1, 17, 18 and 19 I have near-verbatim. Where I quote claim 4 I am relying on the parties' briefs, not the printed patent.
2. The "Prior Art" set I use is the four Japanese publications identified in the '109 patent's own Background/Definitions section (the "Prior art keywords: display, unit, video content, information, internet" block on the Google Patents page corresponds to this section). My attempt to retrieve the front-page "(56) References Cited" list terminated at the search-step limit, so I do not represent this as a complete list of the examiner's cited art.

Because the application was filed July 10, 2008 (continuation filed June 6, 2012), claiming JP priority of Sept 26, 2007, pre-AIA § 103(a) governs. All four references published in Japan in 2005–2007, i.e. more than one year before the July 10, 2008 filing, making each available as § 102(b) prior art. (Google Patents)

1. The references of record and what each teaches

Critically, the '109 specification itself concedes the state of the art and the problem: it acknowledges that viewing a program outside the home and then continuing it on a large screen is known, that a phone can be used as a remote control, and that information can be shown on a display device connected to a phone. The stated object — "to provide a portable terminal … wherein viewing of a content on a portable terminal is smoothly passed to an information processing apparatus" — is framed as an operation-step-count/ergonomics problem, not a technical impossibility. That framing materially weakens any non-obviousness argument, because it identifies the combination as an improvement in the same art for a recognized reason.

2. Claim 1 — portable terminal

Elements: receiving unit (content information) · external device communication unit · display unit · acquiring unit (identification information of displayed content) · operation unit (user operation) · control unit that, if a transmission indication is received while content is displayed, transmits the acquired identification information to the external information device and terminates the display of the content.

Motivation to combine (KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)): All four references are in the same field of endeavor — portable communication terminals cooperating with a larger display/playback device — and each addresses the same practical problem: getting content the user is following on a phone onto a better screen, and controlling the second device without extra hardware. JP-A-2005-135346 already performs the core act (URL transfer to the apparatus); JP-A-2006-286855 already performs the core purpose (continuation of the same content on the bigger screen); JP-A-2006-338406 supplies the missing remote-control capability that lets the phone keep being useful after the handoff. A POSITA would combine them because the combination is a predictable improvement in the same devices, using known techniques, yielding no more than the expected result — eliminating the re-entry of a URL and eliminating the extra remote. There is also a finite number of identified, predictable solutions to "keep the user's place in the content": transmit the content identifier, and one of two obvious display states (mirror or clear) on the source device.

3. Claim 4 — information processing apparatus (the asserted claim)

Elements (per the ITC Markman record): input unit arranged to input video content · communication unit (conduct communication with a portable terminal; agreed § 112 ¶ 6 structure = Bluetooth / wireless LAN / IrDA communication device) · display unit · control unit performing F4.1 (control input/communication/display units), F4.2 (display video content inputted by the input unit, resumed from the stopped position), F4.3 (control display based on second information when the communication unit receives…), F4.4 (while displaying second content, on receiving from the portable terminal identification information of content displayed on the portable terminal, input and display that content in place of the first content; and on receiving a termination indication, terminate the second content and resume the first content) — see VIZIO/Maxell Markman briefs at ptacts.uspto.gov petition 1550723.

Motivation: The combination is motivated by the exact problem the '109 patent states: household display devices "are installed in a living room … commonly used by a plurality of persons," so a user who wants to view an internet site may need to interrupt, and needs a way to restore the prior viewing state afterward with minimal operations. JP-A-2006-286855 teaches preserving and resuming the user's place in content; JP-A-2005-135346 teaches the URL handoff; JP-A-2007-74265 teaches the two-screen/one-information model. Putting them together is the predictable arrangement of known elements — no new machine, no new function beyond the expected aggregate. Additionally, the return path in the '109 flow (step 519, TV sends the URL back to the phone) is the straightforward reciprocity of the one-way URL transfer of JP-A-2005-135346, and is squarely suggested by JP-A-2007-74265's bidirectional phone/display-device configuration.

Note on the claim-construction overlay: Claim 4 was litigated as to whether "input unit"/"control unit" are § 112 ¶ 6 terms and what structure corresponds. That fight affects infringement, not the § 103 comparison of claimed subject matter — but it does matter here in one specific way: if the "input unit" is narrowed to "a circuit which receives antenna/cable broadcast video content and restores the broadcast video content into video content to be digitally processed" (VIZIO's construction), the claim maps even more cleanly onto JP-A-2006-286855's broadcast-receiving video playback device, and the case for obviousness strengthens rather than weakens.

4. System claim (17) and method claim (19)

The near-verbatim text of claim 17 (a content display system comprising portable terminal + information processing apparatus, with the portable-terminal control unit transmitting identification information and terminating display, and the apparatus displaying the inputted content in place of the previously displayed content) and claim 19 (a content display method: displaying, acquiring identification information, "terminating, at reception of a predetermined operation from a user, the display of the content information and transmitting the identification information to the information processing apparatus," receiving it, receiving the corresponding content) is available from the PTAB filing (petition 1550201). Both are simply the two-sided expression of the same subject matter, and fall to the same combination for the same reasons. A method claim adds no patentable weight where the steps are the inevitable corollaries of the disclosed device cooperation and each step is individually performed by an identified reference.

5. The dependent claims drawn to the "operation history" (third embodiment)

The third embodiment teaches transmitting, along with the URL, an operation history — text-box character strings, selected buttons/icons, list-box selections, clicked coordinates, cookies, character-encoding designation (Shift-JIS/EUC/UTF-8), and scroll-bar position — plus header data with data length and type field, so the receiving apparatus can reproduce the display state (FIGS. 9–11, claim-supporting disclosure).

A reasonable § 103 position: transferring the session/display state alongside the address is the ordinary, well-known technique of web-session migration (cookie transfer, form-state replay, scroll/character-set propagation — all pre-2007 browser mechanics), and the '109 specification presents them at that level of ordinary skill ("the information representing the display state includes … a Cookie … the position of a scroll bar"). Combined with JP-A-2005-135346's teaching of transferring a URL-bearing data payload between a phone and an information processing apparatus (i.e., a structured payload with more than the bare address), the additional data-field content is a predictable design choice within the skill of the art — arguably further supported by JP-A-2007-74265's transfer of a structured information object between phone and display device.

6. Counterarguments a patent owner would raise, and how they fare

1. "No single reference teaches termination of the source display." Correct as to JP-A-2005-135346, but the limitation is a binary design choice with no asserted technical consequence, and JP-A-2007-74265 already discloses the two-display arrangement from which the choice follows. Weak.
2. "Resuming from the stopped position (F4.2) is not suggested by the URL-transfer art." This is the patent owner's strongest argument, but JP-A-2006-286855 is directly on point for resumed/continued playback of partially consumed content — and, awkwardly for the patent owner, JP-A-2006-286855 is cited in the '109 specification itself, which also describes the resume behavior in FIG. 5 step 520. An admission-by-specification problem.
3. "The references teach away / the problem was not previously recognized." The problem ("smoothly pass viewing," avoid extra steps) is a usability problem expressly recognized in the references; JP-A-2006-338406 and JP-A-2007-74265 both state the remote-control and cross-device-display concerns. No teaching away is apparent.
4. Secondary considerations. I found no evidence of unexpected results, licensing-nexus evidence, or long-felt-but-unmet need attributable to the '109 claims in the litigation record I reviewed; the two ITC investigations (337-TA-1338 against VIZIO; 337-TA-1420 against TCL) both terminated on settlement, which is not a validity determination. Conversely, there is no IPR/PGR on the '109 patent that I could find, and no court or the Commission has ruled on its validity — so this analysis is prospective, not a report of an adjudicated outcome.

7. Bottom line

• Claim 1 (portable terminal): on the record as it stands, vulnerable to § 103 over JP-A-2005-135346 in view of JP-A-2006-286855, further in view of JP-A-2006-338406 (phone-as-remote) and/or JP-A-2007-74265 (cross-device display of the same information). Every element is individually taught or is a plainly predictable design choice.
• Claim 4 (information processing apparatus — the claim Maxell actually asserted): vulnerable, but with more argumentative room, because of the "resume from the stopped position" / "terminate and resume the first content" limitations. Those limitations are met by JP-A-2006-286855's express teaching of resume-from-interruption playback, which enables a combination of 135346 + 286855 (+ 74265 for the bidirectional handoff).
• Claims 17/19 (system/method): follow claims 1 and 4.
• Operation-history dependent claims: likely obvious over the same references in view of ordinary pre-2007 web-session-migration techniques.

Confidence: moderate on claims 1, 17, 19 and the dependent claims; lower on claim 4, chiefly (a) because I am working from the ITC parties' characterization of claim 4 rather than its printed text, and (b) because the "resume from stopped position" limitation is the one element that depends most heavily on how broadly JP-A-2006-286855's "recording and reproducing device in the house" teaching is read. I would want the granted claim text in hand before this were used for anything consequential.

Provenance of the prior-art set and facts used: Google Patents entry and full specification for US 8,549,109 — https://patents.google.com/patent/US8549109/en ; ITC claim-construction record on the '109 patent — https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1550723](/patent/1550723)/download-documents ; PTAB filing quoting '109 claims 17–19 and the abstract — https://ptacts.uspto.gov/ptacts/public-informations/petitions/1550201/download-documents .